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Dewey Ballantine LLP v. Person Technology Group aka Traxi Technologies LLC, Lou Person, Robert J. DiSciullo, DiSciullo Botchman LLP [2005] GENDND 69 (27 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Brasserie Almaza S.A.L v. Orbyt

Case No. D2004-0799

1. The Parties

The Complainant is Brasserie Almaza S.A.L, Jdeidet el Metn of Lebanon, represented by Fadi Nachef, Lebanon.

The Respondent is Orbyt, Montreal, Quebec, of Canada, represented by Dann, Dorfman, Herrell & Skillman, PC., United States of America.

2. The Domain Name and Registrar

The disputed domain name <almaza.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2004. On October 1, 2004, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On October 1, 2004, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response October 28, 2004. The Response was filed with the Center November 1, 2004.

The Center appointed David Perkins, Hub. J. Harmeling and David E. Sorkin as panelists in this matter on November 26, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On November 5, 2004, the Complainant submitted a Supplement to the Complaint in answer to the Response. On November 23, 2004, the Respondent filed a Submission by way of Supplementary Response.

Having reviewed the Complaint, the Response and the two said Supplementary Submissions from the parties, on December 10, 2004, the Center transmitted to the parties a request by the Panel for further information pursuant to paragraph 12 of the Rules, such information to be provided by December 22, 2004.

On December 22, 2004, the Complainant and the Respondent duly made additional Submissions addressing the Panel’s said request.

Then, on December 23, 2004, the Respondent made a third Supplementary Submission responsive to the further particulars provided by the Complainant on December 22, 2004. Finally, on December 31, 2004, the Complainant made a third supplementary Submission responsive to the further particulars filed by the Respondent on December 22, 2004, and to the Respondent’s subsequent third Supplementary Submission of December 23, 2004.

Ordinarily, a Complaint under the Policy is determined upon the basis of the Complaint, the Response and any documents submitted with them. However, the Panel does have power admit additional Submissions from the parties and to request further statements and documents from either of the parties: Rules, paras. 10(a) and 12. Furthermore, the overriding duty of the Panel is to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case and, where appropriate, the Panel may accordingly admit supplementary submissions: Rules, para. 10(b). This is not, however, the green light for parties routinely to supplement the Complaint and the Response with multiple additional Submissions. Each case must be treated on its own facts and, in the somewhat exceptional circumstances of this case, there being no prejudice to either party nor any substantial delay to the due expedition with which this administrative proceeding has been decided, the Panel will admit the various Supplementary Submissions.

4. Factual Background

4.1 The Complainant

4.1.1 The Company

The Complainant [Brasserie Almaza S.A.L] was incorporated in the Lebanon in 1933. It is involved in the business of producing and selling, inter alia, beer under and by reference to the ALMAZA brand. A majority stake in the Complainant company was acquired by Heineken in 2002.

4.1.2 Sales of ALMAZA Beer

Sales of the Complainant’s ALMAZA beer have been made for very many years in the Lebanon and in all Middle Eastern countries. In 1986, the Complainant began to sell ALMAZA beer internationally, specifically to Canada, United States of America and to Europe. Documentary evidence has been produced of sales to Canada (May 1996 and September 2000); the United Kingdom (September 1997); the United States (April 1986, March 1998, April 2004 and September 2004): France (November 1992 and October 1997).

4.1.1.1 The ALMAZA Trademark

The Complainant has the following trademark registrations.

The registrations asterisked were registered before creation of the domain name in dispute. The Complainant also has pending applications to register ALMAZA as a trademark in Canada and in the United States.

4.1.1.2 The Complainant’s Domain Name

The Complainant registered the domain name <almaza-beer.com>” on February 16, 1999. At the website to which that domain name resolves is depicted, inter alia, a bottle of the Complainant’s Pilsner Beer, the label bearing the diamond device trademark and the word ALMAZA prominently below. The cap of the bottle carries the words “ALMAZA BEER”.

4.1.1.3 Correspondence between the parties

On February 4, 1999, Mr. Bernard JABRE, then Deputy General Manager of Brasserie Almaza emailed the Respondent in the following terms:

“Subject: Domain Almaza.

Do you want to sell this domain? How much?”

On February 8, 1999, George-Emile KARAM replied:

“Subject: Re Domain Almaza.com

Thank you for your interest in almaza.com. This domain is for sale at US$14,000. Best regards Georges-Emile Karam.

P.S. Only serious offers will be dealt with.”

4.2 The Respondent

4.2.1 The Company

The Respondent, Orbyt, is the trading name of a Canadian corporation, NIP.com Inc. NIP was incorporated in December 2000, but prior to then the Respondent operated as a non-incorporated entity.

4.2.2. The Domain Name in Issue

The domain name in issue, <almaza.com>, was registered on June 15, 1998.

4.2.3 The Respondent’s trading activities

The Respondent’s business is Internet marketing. An undated “To whom it may concern” statement from a Chartered Accountant states that the average yearly sales figure for the last two years is $184,415.00 CDN.

4.2.4 The Respondent’s use of the domain name in issue

Three examples are provided by the Respondent. First, in January 2003, the Respondent joined the overstock.com affiliate program. The “www.overstock.com” website includes pages relating to jewellery retail. Almaza means “diamond” in Arabic. Under the affiliate program, the Respondent earns revenue when visitors to the almaza.com domain name click through to the “www.overstock.com” jewellery webpage.

Second, in December 2003, the Respondent joined another affiliate program with online jewellery merchant, bluenile.com. In the period from January 1, 2004 to December 10, 2004, the Blue Nile affiliate sales link generated $3,789.50 in sales resulting in payment of $189.93 in commission to the Respondent.

Third, more recently the Respondent also joined yet another affiliate program with online jewellery merchant, Diamonds International.

Although the Complainant says that as at October 10, 2004, the domain name in issue did not resolve to a website, it now does. That website is captioned “Almaza.com The Diamond Store”, which provides general information relating to diamonds, including the composition, structure, hardness, durability and surface properties of diamonds. The Respondent states that 93% of visitors to the “www.almaza.com” website click on the jewellery advertisement and that this generates revenue for the Respondent of $0.15 per click, presumably through one or more of the affiliate programs in which the Respondent is involved.

5. Parties’ Contentions

A. Complainant

5.A.1 The Complainant’s case is that it is the proprietor of the various ALMAZA trademarks listed in paragraph 4.1.3. and that ALMAZA beer is very well known in the Middle East. ALMAZA beer has also been sold internationally outside the Middle East in countries including Canada, where the Respondent has its address, since 1986. The Respondent’s domain name in issue is identical to the Complainant’s ALMAZA trademark and/or is confusingly similar to that mark.

5.A.2 The Complainant has not licensed or otherwise permitted the Respondent to use the ALMAZA trademark. Further, no use was made by the Respondent of the domain name in issue until after the Complaint was notified to the Respondent in October 2004, a period of over 6 years after that domain name was registered in June 1998. Accordingly, the Complainant’s case is that the Respondent has no rights or legitimate interests in respect of the domain name.

5.A.3 The alter ego of the Respondent is, the Complainant says, a Lebanese citizen. The name of the Respondent’s representative who replied to the Complainant’s offer to purchase the domain name in issue in February 1999, was “Karam”, which the Complainant says is a common Lebanese name. So, the Complainant says that this fact, coupled with the notoriety of the ALMAZA trademark in the Lebanon and The Middle East and the sales of ALMAZA beer to Canada all point to the Respondent deliberately registering the domain name in bad faith.

B. Respondent

5.B.1 First, the Respondent points to the meaning of ALMAZA in Arabic, namely diamond. It is, therefore, a generic word and the Respondent’s use of the domain name has been in relation to the sale of jewellery, in other words use of ALMAZA in its generic sense. In the circumstances, there can be no question of confusion between the Complainant’s product - namely, beer – and the Respondent’s business use of ALMAZA in relation to gemstones and jewellery.

5.B.2 Further, the Respondent says that as at the date of registration of the domain name in issue [July 13, 1998], the only registered ALMAZA trademarks then owned by the Complainant were not for the ALMAZA word mark simpliciter. For example, Lebanese registration 63,755 of August 5, 1994, is a device mark and incorporates the words ALMAZA BEERA and Lebanese registration 76,076 of June 12, 1998, is for ALMAZA PILSNER BEER. The Respondent’s case is that paragraph 4(a)(i) of the Policy requires the Complainant’s trademark to be in existence prior to registration of the domain name in issue.

5.B.3 For both the foregoing reasons, the Respondent says that the Complaint fails to meet the requirements of paragraph 4(a)(i) of the Policy and must fail.

5.B.4 As to the Respondent’s rights and legitimate interests in the domain name in issue, the Respondent relies on its use of that domain name before receiving notice of this dispute in connection with a bona fide offering of goods. For example, the Respondent’s participation in the affiliate programs of Overstock.com, Blue Nile and Diamonds International: paragraph 4.2.4 above.

5.B.5 The Respondent also maintains that such use of the generic word ALMAZA in the context of the domain name is legitimate and fair and without risk of misleadingly diverting consumers looking for the Complainant’s ALMAZA beers. Nor does such use, tarnish the Complainant’s ALMAZA trademark, being use of the word ALMAZA in its generic sense and being in respect of products (gemstones / jewellery) very far removed from beer.

5.B.6 As to registration in bad faith, the Respondent points to its registration of the domain name in issue pre-dating almost all of the Complainant’s registered trademarks: see, paragraph 4.1.3 above. Further, the Respondent is a Canadian company and there is absolutely no assertion of prior rights by the Complainant in the ALMAZA trademark in Canada.

5.B.7 As to use in bad faith, the Respondent points to paragraph 4(1)(b) of the Policy and states that the Complainant has failed to bring any evidence of the circumstances of bad faith identified in that provision or even to assert such circumstances. Further, the Respondent states that the ethnic origin of its principals is irrelevant and that it has no recollection of any conversation with the Complainant relating to an offer to sell the domain name in issue to the Complainant. But, even had there been such a conversation, it is not bad faith under the Policy for the owner of a domain name to offer to sell it. The Respondent also points to the fact that the click through revenue which it has derived from the domain name in issue has been in relation to jewellery, not beer or other beverages and is, therefore, hardly indicative of use in bad faith.

5.B.8 In its Third Supplementary Submission of December 23, 2004, the Respondent dealt more fully with the offer to sell the domain name made on February 8, 1999. First, there was no indication then that Mr. Jabre, who made the enquiry by email on February 4, 1999, was in any way connected with Brasserie Almaza. Second, the Respondent’s price of $14,000.00 to sell the domain name was a fair one given the ability of that domain name to earn revenue as now demonstrated by the affiliate programs: paragraph 4.2.4. above. Third, the Respondent exhibits four (4) other unsolicited emails received by the Respondent over the period from 1998 to 2004, offering to purchase the domain name in issue, all offers being totally unconnected with Brasserie Almaza. Two of the emails came from people with Arabic sounding names – namely, Rizkallah and Fouad – the latter enquiry on behalf of the Arab-owned Almaza Jewellery of Houston, Texas.

5.B.9 The Respondent also points to a number of examples of common use of ALMAZA or ALMAZ. For example, a racehorse, Maleki ibu Almaza (“Royal Son of a Diamond”) featured on a stud and livery website and jewellery stores known as Almaz Jewellery in Brooklyn, New York and Almaz Diamond Co in Los Angeles.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Respondent contends (paragraph 5.B.2 above) that, because the Complainant had no relevant ALMAZA registered trademark before the date of creation of the domain name in issue (July 13, 1998), the Complaint must fail under this primary requirement of the Policy. As a matter of fact, which is not challenged by the Respondent, prior to July 13, 1998, the Complainant had registered trademarks for the word ALMAZA in the Lebanon as part of a device mark (registration 63,755 of August 5, 1994) and the composite mark ALMAZA PILSNER BEER (registration 76,076 of June 12, 1994). The Respondent argues that since neither registration is for the word mark ALMAZA simpliciter, then the Complainant cannot claim to have a registered trademark which is identical to the domain name in issue, <almaza.com>. This is correct. The question then remains whether the domain name is confusingly similar to either of these registered marks.

6.6 However, the Complaint also implicitly relies on the Complainant’s long standing reputation in the ALMAZA mark for its beverage products dating back to the 1930s, in The Middle East and spreading internationally to countries including the Respondent’s residence, Canada, from 1986, onwards and certainly prior to July 13, 1998, when the domain name in issue was created.

6.7 The Complaint also relies upon two trademark registrations in Syria which predate creation of the domain name in issue. They are for ALMAZA BEERA (registration 53,493) and for ALMAZA PILSNER BEER (registration 53,494) both of November 5, 1994. Again, like the early registrations in The Lebanon, neither are for the word mark ALMAZA simpliciter and so the same issue arises as that identified in paragraph 6.5 above.

6.8 The Respondent also says that it is a sine qua non to satisfying the requirements of paragraph 4(1)(a) of the Policy that the Complainant’s registered trademark(s) must be in existence before the date of creation of the domain name in issue. The current approach is that this question is probably more relevant to the issues of good faith arising under paragraphs 4(1)(b) and (c) of the Policy. See Execujet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669. In other words, although paragraph 4(1`)(a) of the Policy does not specifically require the Complainant’s trademark rights to be in existence before creation of the domain name, it may be difficult to see how – if it is not – a Complainant can establish that the Respondent does not have rights or legitimate interests in the prior registered domain name or how the Respondent can be shown to have registered the domain name in bad faith.

6.9 Here, however, resolution of that issue is not necessary to the Panel’s decision. The Panel is satisfied that prior to July 13, 1998, the Complainant had established trademark rights in the ALMAZA mark for its beer and beverage products, such rights deriving from its long use of ALMAZA, whether alone or in combination with other words, such as BEERA or PILSNER BEER. The issue, therefore, comes down to confusing similarlity.

6.10 When making a decision as to the confusing similarity of a domain name, the traditional test used in trademark law is the natural starting point. However, under the Policy, the concept of confusing similarity is not restricted to that test. For example, the location or the class of the trademark is not relevant under the Policy. This has led to cases where domain names have been found to be confusingly similar to a trademark despite the fact that a strict trademark test would have found differently.

6.11 Following that approach, it follows from the Panel’s finding that the Complainant has prior trademark rights in the ALMAZA mark (see, paragraph 6.9 above), that the domain name in issue is identical or confusingly similar to that trademark and that, accordingly, the Complaint meets the first requirement of the Policy under paragraph 4(1)(a).

Rights or Legitimate Interests

6.12 There is evidence that, before notice of the dispute to the Respondent in October 2004, the Respondent was using the domain name with a view to generating click through revenue through the affiliate programs identified in paragraph 4.2.4 above. Was such use bona fide? That prior use was exclusively in relation to jewellery products, the value of the domain name being in its association to Arabic speakers with diamonds, “almaza” meaning diamonds in Arabic. There is no evidence that the domain name was used in relation to beer or beverage products, nor that it was used in such a way as to trade-off the Complainant’s reputation in the ALMAZA trademark for such products. Accordingly, the Panel finds that the Respondent has established rights and legitimate interests in the domain name in issue under paragraph 4(c)(i) of the Policy.

6.13 The Respondent’s use of the domain name is also, in the circumstances, a fair use which is not intended to and which has not misleadingly diverted the Complainant’s customers for its beverage products, nor to tarnish the Complainant’s ALMAZA trademarks. Accordingly, the Panel finds that the Respondent has also brought itself within paragraph 4(c)(iii) of the Policy. Since the Respondent has established rights and legitimate interests in the <almaza.com> domain name, the Complaint must fail.

Registered and Used in Bad Faith

6.14 Although, given the Panel’s finding under paragraph 4(a)(ii) of the Policy, it is not necessary to address this third requirement, for completeness sake the Panel finds that the Complaint also fails to meet the twin requirements of paragraph 4(a)(iii) of the Policy.

6.15 As stated, “Almaza” is a word which translates from Arabic to mean diamonds. It is also, as the Respondent points out, a geographical location: the Almaza air base in Cairo. There is no evidence that the domain name was originally registered in bad faith in June 1998, and, indeed, its subsequent use in the click-through affiliate program, although very modest in terms of the revenue thereby generated, has been entirely consistent with the generic meaning of the word “almaza”. The fact that Mr. Karam of the Respondent may be of Arabic origin does not assist the Complainant to establish bad faith registration. Again, it is consistent with using the word “almaza” in connection with gemstone / jewellery products. Nor is it probative of bad faith that the “www.almaza.com” website may only have been created after the Respondent was put on notice of the Complaint in October 2004, since use of the domain name in the click-through affiliates programs dates back to 2003.

6.16 It follows from the forgoing that the Complainant has produced no credible evidence of use in bad faith either. None of the circumstances of paragraph 4(b) of the Policy are met in the Complaint. This seems not to be a case of a cybersquatter attempting to hold-up the trademark owner to ransom. The Respondent’s evidence of a number of unsolicited offers to purchase the domain name, of which the Complainant’s email of February 4, 1999, from Mr. Jabre was but one, supports this.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David Perkins Presiding Panelist
Hub. J. Harmeling Panelist	David E. Sorkin Panelist

Dated: January 13, 2005