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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talal Abu-Ghazaleh v. Tony Dabbas and Fadi Mahassel
Case No. D2000-1479
1. The Parties
Complainant is Talal Abu-Ghazaleh, Queen Noor Street, P. O. Box 921100, Amman 11192, Jordan.
The joint Respondents in the present case are Tony Dabbas, P. O. Box 28522, Santa Ana, Ca 92799,USA and Fadi Mahassel P.O. Box 4305, Costa Mesa, CA 92628., USA.
2. The domain name and Registrar
Disputed Domain Name is <talalabughazaleh.com>.
Registrar of Disputed Domain Name is Network Solutions, Inc.
3. Procedural History
Complainant filed by e-mail the complaint on October 30, 2000. The hard copy was received by WIPO on November 2, 2000. The WIPO Arbitration and Mediation Center verified that the Complainant satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999; the requirements of the Rules of Uniform Dispute Resolution Policy; and the requirements of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Those rules in our opinion are indeed met. Payment in the required amount was made to the WIPO Arbitration and Mediation Center. Respondents were properly notified. The commencement date of the administrative proceedings is deemed to be November 10, 2000. The deadline for Respondents’ responses was November 29, 2000. A Response was received from the Second Respondent on November 27, 2000. The Response of the Second Respondent is therefore made in a timely fashion. There was no response from the First Respondent.
The single-member Administrative Panel was appointed and notified to the parties on December 12, 2000. The panelist submitted the corresponding Statement of Acceptance and Declaration of Impartiality and Independence to WIPO Arbitration and Mediation Center.
The date set for a decision is December 25, 2000.
4. Factual Background
The complainant alleges that he is the owner of several companies including his name or derivatives of his name. His companies are Talal Abu-Ghazaleh International, Talal Abu-Ghazaleh & Co. and Abu Ghazaleh Intellectual Property. Complainant provided copies of applications and registrations of the following trademarks:
Talal Abu-Ghazaleh International, Talal Abu-Ghazaleh & Co. and Abu Ghazaleh Intellectual Property in classes 16, 35, 36, 41 and 42. His related companies have made such applications and/or obtained such registrations in numerous countries.
Talal Abu-Ghazaleh International (TAGI) registered the domain name <tagi.com> on July 17, 1997. TAGI also registered <talalabu-ghazalehinternational.com> on May 14, 2000.
Talal Abu Ghazaleh & Co. registered <abughazaleh.com> on January 9,1999.
Talal Abu Ghazaleh registered the domain name <abughazaleh.com> on April 8, 1999.
First Respondent registered the disputed domain name <talalabughazaleh.com> on August 11, 1999.
Complainant alleges that he sent an e-mail on June 11, 2000 to First Respondent to inform him that the domain name was his trademark. The e-mail provided by the Complainant annexed to the complaint states that the domain name is the personal name of the Complainant. There was no response thereto.
On July 7, 2000 the ownership of the disputed domain name was transferred to the Second Respondent.
Complaint sent another e-mail on July 24, 2000 to the Second Respondent informing him that the domain name is his name. There was no response thereto.
According to the complaint and response the web page on the disputed domain name is still under construction. Second Respondent stated that he could not afford to finalize it. He shall do so as soon as he can cover the cost to build the web page.
5. Parties’ Contentions
Complainant contends that he owns common law trademark rights in the trademark "Talal Abu-Ghazaleh". He also owns such trademarks that he has already registered namely: Talal Abu- Ghazaleh International, Talal Abu-Ghazaleh & Co. and Abu-Ghazaleh Intellectual Property.
Complaint contends that the disputed domain name <talalabughazaleh> is identical to the Complainant’s common law trademark "Talal Abu Ghazaleh" and confusingly similar to the complainant’s registered trademarks, "Talal Abu Ghazaleh International, and "Talal Abu Ghazaleh & Co.".
Complainant claims that Respondents have no right or legitimate interest to register the disputed domain name. Respondents are not authorized to use the Complainant’s common law trademark "Talal Abu Ghazaleh" or any other similar trademark. The web page <www.talalabughazaleh.com> is not used.
Complainant claims that Respondents registered and used the disputed domain name in bad faith by having the domain name ownership transferred to the Second Respondent. He claims that this is disruptive to the professional reputation of the Complainant.
Complainant further claims that the disputed domain name is registered to prevent the complainant from using his common law trademark rights as a domain name.
Complainant requested the transfer of the disputed domain name registration to him.
Second Respondent states that complainant does not have a trademark for TALALABUGHAZALEH. He acknowledges that the Complainant has trademarks on "Abu-Ghazaleh Intellectual Property", "Talal Abu-Ghazaleh International", and "Talal Abu-Ghazaleh & Co.".
Second Respondent contests the similarity between Complainant's trademarks and the disputed domain name, as they all have another words accompanying "talalabu-ghazaleh" such as the words "Intellectual Property", "International", "& Co.". In addition, the Second Respondent mentioned that all Complainants’ trademarks have dash between the letter U and the letter G.
Second Respondent asserted that his business name is Tal Alabu Ghazaleh. Second Respondent further added that he started doing business in the field of pet grooming on August 1st, 1999, in the State of California in the United States of America. The business name means "The Hill of the Deer’s Father". Moreover Second Respondent mentioned that he registered "Tal Alabu Ghazaleh" as a service mark in the State of California.
Second Respondent alleged that he did not buy the contested domain name from the First Respondent. He alleged that the First Respondent registered it in his name and to the account of the Second Respondent. This was because the Second Respondent did not have access to the internet at that time. In July 2000, he transferred the domain from his friend the First Respondent since he got the internet access.
6. Discussion and findings
To satisfy the requirements of paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy (the "policy") complainant must prove the following:
1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
The panel does not find basis for the complainant’s alleged common law trademark rights in the trademark "Talal Abu-Ghazaleh". The Complainant makes such assertions without indicating the elements and basis thereof. Therefore, the claim of common law trademark rights by the complainant is dismissed.
The disputed domain name <talal abu-ghazaleh.com> is similar to the complainant’s related companies' trademarks, Talal Abu-Ghazaleh International and Talal Abu Ghazaleh & Co. The distinctiveness of the above trademarks lies in the words Talal Abu-Ghazaleh and not the words "International" or "& Co.". Neither the words "International" and "& Co." nor the "-" are identifiers that would disperse the similarity. But similarity is not enough. Similarity should lead to confusion. Confusion is achieved between trademarks especially if they are in the same categories. Confusion is achieved between domain names if the services provided are similar. Selling services in the accounting or IP fields could not be confused with providers of pet grooming services. It is true that the use of the Second Respondent is not yet established till the site becomes functional, but we do not currently have any indication that this is not the intended use.
The panel therefore concludes that according to current facts, the disputed domain name is not confusingly similar to the trademarks of the complainant namely Talal Abu-Ghazaleh International and "Talal Abu Ghazaleh & Co.".
Furthermore, the above trademarks are not registered in the personal name of the Complainant. He therefore does not have standing to raise the issue of confusion. The Complainant, even if he is the legal representative of his companies, should have brought the proceedings in the name of such companies owning the similar registered trademarks.
The First Respondent claims legitimate interests in "Tal Alabu Ghazaleh". He claims a service mark to provide pet grooming services. The panel notes that the meaning given to the alleged business name and service mark of the Second Respondent "The Hill of the Deer Father" is not convincing. An Arabic name for a pet grooming business in California is not an obvious business choice. Furthermore and regardless of the meaning alleged, it would be more appropriately written "Tal Abu Ghazaleh" without second "Al" before "Abu Ghazaleh".
The panel notes that the Second Respondent's e-mail address contains the word "amman". This could indicate his relationship to Jordan where the Complainant is located. The panel therefore believes that the name selected by the Second Respondent is probably inspired by the name of the Complainant. This alone does not constitute bad faith. Bad faith should also include elements of attempt to misguide the public as to the source of products or services provided, an intended invasion of a registered trademark, or services provided or alternatively to deprive the Complainant from the right to use the contested domain name. Paragraph 4(b) of the policy provide for circumstances which evidence the registration and use of a domain name in bad faith according to paragraph 4(a) (iii). Paragraph 4b(ii) of the policy provide that registration and use shall be in bad faith if the registration of the domain name was in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Second Respondent has engaged in a pattern of such conduct.
The Second Respondent alleges that he has operated his business as of August 1999. This constitutes an offering of services before notice of the dispute. This indicates right or legitimate interest with respect to the domain name pursuant to Paragraph (4)(c)(i) of the Uniform Domain Name Dispute Resolution Policy.
The Complainant’s related companies have domain names registered to reflect its existing trademarks. The Respondents did not appear to have exhibited bad faith use of the domain name. They did not seek to profit from selling it to the Complainant. Their declared intended use does not seem to indicate any bad faith.
In view of the above the panel cannot find, from the facts before it, that the Second Respondent’s domain name has been registered and is being used in bad faith.
The panel concludes that the domain name <talalabughazaleh.com> is not confusingly similar to the trademarks mentioned by the Complainant and which are in fact registered by companies not joining the Complainant in the current proceedings. Lack of confusion is based on the use of the site in relationship to services declared by Second Respondent regarding the pet grooming business.
Furthermore the Panel does not find that the disputed domain name was both registered and used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the policy, the panel decides to reject that the disputed domain name <talalabughazaleh.com> be transferred to Complainant.
Bahieldin H.Z. Elibrachy
Dated: December 24, 2000