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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fortune Promoseven v. IQ
Case No. D2001-1370
1. The Parties
The Complainant is Fortune Promoseven.
Represented by Donal Kilalea, ,Exec vice President, Box 6834, Dubai, U.A.E.
The Respondent is Wael Salah, IQ, 69 Montgomery St, San Francisco, CA 94104, U.S.A.
2. The Domain Name and Registrar
The Domain Name at issue is <fp7.com>.
The Registrar is Dotster, Inc.
3. Procedural History
The original Complaint was received by WIPO by email on November 18, 2001, and in hardcopy form on November 21, 2001. WIPO issued a Complaint Deficiency Notice on November 28, 2001, detailing a number of formal defects in the original Complaint. Correspondence between the Center and the parties ensued dealing with those and other formalities. The Amendment to the Complaint was received by WIPO by email on December 19, 2001, and in hardcopy form on December 27, 2001. On January 11, 2002, additional hard copies were received by WIPO. The original Complaint and the Amendment to the Complaint are together referred to herein as "the Complaint".
WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Dotster has confirmed that <fp7.com> ("the Domain Name") was registered through Dotster and that IQ is the current registrant, Wael Salah being the administrative and technical contact. IQ and Wael Salah are treated for the purposes of the Complaint as being one and the same and are together referred to as "the Respondent". The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On January 7, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was January 27, 2002. The Respondent sought an extension of time for filing the Response and after further correspondence an extension was granted until February 6, 2002.
The Response was received by WIPO by email on February 4, 2002, and by fax on February 5, 2002.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
Since the lodging of the Response further email communications from the parties have been received by WIPO. The Panel decided initially to admit them into the evidence, but when it became apparent that their authenticity or the authenticity of some of them was in doubt, the Panel decided to ignore them.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is March 26, 2002.
4. Factual Background
The Complainant asserts and the Respondent does not dispute that:
1. The Complainant’s organisation was founded in the Middle East in 1968;
2. It has offices throughout the Middle East;
3. It numbers among its clientele clients such as Coca-Cola, Nestle and Gillette;
4. It has annual billings of around $300 million.
Clearly, it is a very substantial organisation. The Respondent states that it is majority owned by McCann Erickson. Press reports exhibited to the Complaint describe the Complainant as "a media public relations agency" and "one of the largest independent communications networks in the region".
Those same press reports, which are dated variously from July 1996, to March 2001, and which are extracts from publications such as Arab Ad, Gulf Marketing Review, Gulf News, Gulf Today, Khaleej Times and Arabian Business.com, all refer to the Complainant in the headlines as "FP7".
The Complainant asserts and the Respondent does not dispute that from about 1998, the Respondent, through his company Design Lab, worked with the Complainant’s office in Bahrain.
For a period in and around 2000, the Respondent was employed by a subsidiary of the Complainant.
At some stage the Respondent acquired the Domain Name. The Respondent claims that he acquired it at auction.
In circumstances which have not been explained to the Panel the Respondent left the employ of the Complainant’s subsidiary. Relations between the parties are strained and the Respondent claims to have been cheated by the Complainant.
The Complainant asserts and the Respondent does not dispute that at the launch of this Complaint the Respondent had the Domain Name connected to a website heralding disclosures about a media empire.
The Respondent now has an active website (wholly unconnected to any field of activity of the Complainant) attached to the Domain Name, which features on the home page the title "Fun Party of 7", said by the Respondent to be the name of a group of which he is part.
5. Parties’ Contentions
The Complainant claims that the Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to the fact that it is referred to in the industry as FP7 and it also points to the fact that its subsidiary/associated companies in Algeria and Morocco are named FP7 McCann.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. It claims that the Respondent was an employee of the group of which the Complainant is part and acquired no rights in the name thereby.
The Complainant claims that the Respondent registered the Domain Name in bad faith and is using it in bad faith. The Complainant states that the current website is different from the one which was active prior to the launch of the Complaint and exhibits print ups from the site as it was. The text on the home page starts "This site will house the complete guide to the mysteries, success, failures, tips and tricks of the media empire". The Complainant claims that the Respondent acquired the Domain Name in order to publish defamatory material on the site, calculated to cause damage to the Complainant.
In further support of the bad faith claim the Complainant has produced recent emails said to have emanated from the Respondent. For the reasons given above, the Panel has decided to ignore those emails.
The Respondent summarises his position as follows [verbatim]:
1. The name [i.e. FP7] is not registered or trademarked by the Complainant with any authority in any country.
2. The Complainant is attempting to strip the name from me as a personal vendetta.
3. The Complainant failed to prove that he is officially and legally referred to as FP7. It is clear that he does not refer to his company as FP7 as evidenced by the Complainant’s website and the sites of the Complainant majority owner McCann-Erickson Worldwide and the lack of signage on the Complainant’s place of business or the Complainant’s stationery.
4. The Complainant’s domain name for the its office in Algiers does not include the name FP7.
5. The fact that the Complainant did not file a claim to the domain name <fp7.net> and <fp7.info>
6. The failure of the Complainant to register any of the names of their other companies and to file claims for the top level domains.
7. The conclusive evidence that the Complainant operates under the name Promoseven and Fortune Promoseven, which the Complainant has acquired all TLD’s.
8. The Complainant not registering the name FP7 or the domain name <FP7.xxx >country in any of the countries they operate in.
9. The domain <fp7.com> is a 3-letter domain that can be matched to a number of companies or products.
10. The previous owner placed the domain name <fp7.com> on auction for the highest bidder and the Complainant had just as equal an opportunity to acquire the domain name, but did not.
11. The Complainant failed to prove any bad faith with my owning the domain name <FP7.COM>.
12. The Complainant did not show any proof of authority to act on behalf of the companies Promoseven Network Inc and FP7McCann.
13. The Complainant’s failure to comply with the UDRP.
In certain respects the above summary is incomplete. Point 2 acknowledges the existence of a bitter dispute between the parties, but does not acknowledge that as part of that dispute the Respondent intends "to expose [the Complainant’s] fraudulent business activities". The Respondent’s view is that this complaint "challenges [the Respondent’s] right to free speech, which [has] nothing to do with this domain name". Point 4 does not reflect the fact, as asserted by the Respondent, that he was responsible for registering the domain name, <fp7mccannalger.com>, for the company FP7McCann Algiers. Points 10 and 11 do not record the Respondent’s claim that he acquired the Domain Name "to add to my collection", nor that "for years [he] has been part of a group referred to as Fun Party of 7". In the Response he says that this is why the Domain Name appealed to him. Moreover, FP7 is the name of a railway locomotive and he happens to be a fan of trains. Point 13 is a reference to formal defects in the original Complaint and procedural irregularities on the part of the Complainant at the outset.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant claims rights in the abbreviation of its name, FP7. The Respondent does not dispute that the Complainant is referred to as such by others, but disputes that that is sufficient to give the Complainant rights in the abbreviation. The Respondent points to the fact that the Complainant does not hold itself out as FP7 and has not registered the abbreviation as a trade mark.
What rights other than registered rights does this administrative procedure recognise? Common law rights (i.e rights to common law trade marks). These are rights in and to a name or logo, for example, which are ordinarily rights acquired through long and extensive use such as to entitle the holder to succeed in a passing off action or unfair competition action. The basis of the action is that the unauthorised use of the name or logo or other device by a third party will be likely to lead people to believe that the use in question is by or with the authority of the rights owner. The rights extend to confusingly similar names, logos or other devices.
Here there is no dispute that Fortune Promoseven is the Complainant’s name and that it is a very well known name in the Middle East, at least within its field of activity. Nor can it be in dispute that FP7 is a natural abbreviation of that name. The press have adopted it to refer to the Complainant and, to the knowledge of the Respondent, associated companies of the Complainant have adopted it in one form or another (e.g. FP7McCann).
The Panel finds that the Complainant is known and recognised by the abbreviated form of its name and that if an unauthorised third party were to seek to trade under the abbreviation in any media-related field in the Middle East, the Complainant would on the balance of probabilities be entitled to restrain that third party use in legal proceedings based on the inevitable risk of deception and confusion. Accordingly, the Panel finds that FP7 is a common law trade mark of the Complainant.
The Domain Name comprises the Complainant’s trade mark and the generic dot com suffix. For the purposes of comparison under paragraph 4(a)(i) of the Policy, it is well established that the suffix may be disregarded.
The Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
Why did the Respondent purchase the Domain Name? The Respondent says that he registered it to add to his collection and in recognition of his group named "Fun Party of Seven", the name appearing on the current version of his website. Additionally, FP7 is the name of a railway locomotive and he is a fan of trains. The Complainant says that the Respondent acquired it to publish defamatory material about the Complainant on a website connected to the Domain Name as part and parcel of a dispute between them.
Which story is the Panel to believe? Clearly, if the Respondent’s story is correct, the Respondent has legitimate interests in respect of the Domain Name pursuant to paragraph 4(c)(iii) of the Policy. If the Complainant’s claim is correct, the Respondent can have no rights or legitimate interests.
The Panel has found the Respondent’s position a very difficult one to accept. The Respondent has known of the Complainant since at least as early as 1998, and must have been well aware that it was known as FP7. It seems to the Panel inherently unlikely that that fact did not enter the Respondent’s mind when acquiring the Domain Name. However, so far as the Panel is concerned, what has tipped the scales against the Respondent has been the Respondent’s failure to answer the Complainant’s claim that the Respondent’s current website was, prior to the Complaint, preceded by another design of website purporting to herald disclosures about a media empire.
Under the circumstances, the Panel finds that the Respondent acquired the Domain Name with a view to using it to attack the Complainant. The choice of domain name was precisely because it is apt to describe the Complainant.
In those circumstances, the Panel finds that the explanation provided by the Respondent is untrue and that the Respondent has no rights or legitimate interests in respect of the Domain Name.
For the same reasons the Panel finds that the Respondent acquired the registration of the Domain Name in bad faith and is using it in bad faith.
The motives behind the acquisition of the Domain name were clearly, on the Panel’s findings, abusive. Whether or not the Respondent is entitled to expose what he believes to be the shortcomings of the Complainant in exercise of his right of free speech, that right does not extend to the unauthorised use of the Complainant’s trade mark or service mark for the purpose. The Respondent has demonstrated that he is capable of changing his website at will and the Panel has no doubt that if given the opportunity to do so following the conclusion of this proceeding, he will do so. The Panel notes that the home page at <www.fp7.com> contains the passage reading "More fun, more games … all the time. At least for now!" In the view of the Panel that threat hanging over the head of the Complainant constitutes a bad faith use of the Domain Name.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if shown to be present, constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. If the Respondent can be regarded as a competitor of the Complainant, sub-paragraph 4(b)(iii) is applicable in that the Respondent’s intent is clearly to disrupt the Complainant’s business. However, the Panel does not feel the need to let the matter rest on such niceties. The list in paragraph 4(b) is not an exhaustive list and the Panel is in no doubt that to acquire a domain name comprising the trade or service mark of an ex-employer with a view to using it to damage that ex-employer is bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
In the result, the Panel having found that the Domain Name is confusingly similar to a trade 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 in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <fp7.com>, be transferred to the Complainant.
Dated: March 19, 2002