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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zaid Ibrahim & Co v. Matthew

Case No. D2008-1576

1. The Parties

The Complainant is Zaid Ibrahim & Co. of Kuala Lumpur, Malaysia, representing internally.

The Respondent is Matthew of Selangor, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <zaidibrahimandco.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2008. On October 17, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 20, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 on October 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2008.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on November 26, 2008. The Panel finds that it was properly constituted. 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.

4. Factual Background

The following summary sets out the uncontested factual submissions made by the Complainant:

4.1 The Complainant is a Malaysian-based legal firm founded by Datuk Mohd Zaid Ibrahim in 1987 in Kuala Lumpur, Malaysia. The name of the Complainant is derived from the name of its founding partner, Datuk Mohd Zaid Ibrahim, who retired as Chairman of the Complainant early this year.

4.2 The Complainant is currently the largest law firm in Malaysia, offering a full range of commercial legal services including but not limited to banking, capital markets, communications and information technology, construction and engineering, corporate and commercial, e-commerce and internet, foreign investment, human capital services and industrial relations, intellectual property and media, international trade, litigation and alternative dispute resolution, mergers and acquisitions, oil and gas, privatization, projects, property, shipping and admiralty and taxation.

4.3 The Complainant rose from a one-man show into its current size of 43 Partners and more than 90 lawyers within a relatively short period of 20 years. The Complainant’s founder, Zaid Ibrahim operated out of a small office in the late 80s and broke new ground for Malaysian law firms by opening offices in Singapore in January 2003, Indonesia in March 2005, Thailand in October 2006, Vietnam in June 2008 and United Arab Emirates in July 2008.

4.4 In January 2008, the Complainant formed a strategic alliance with Allen & Gledhill LLP, which is Singapore’s largest law firm and also one of Asia’s largest law firms. The Allen & Gledhill Zaid Ibrahim alliance is able to resource over 400 lawyers across 4 jurisdictions: Singapore, Malaysia, Indonesia and Vietnam.

4.5 The Complainant enjoys a reputation as one of the leading law firms in Malaysia and has been so acknowledged in the legal guidebooks The Asia Pacific Legal 500, The International Financial Law Review 1000, Chambers Asia – Asia’s Leading Lawyers for Business and AsiaLaw Profiles. The Complainant is a recipient of the IFLR National Law Firm Award and ALB Asia Deal Firm of the Year. The Complainant is also the first Malaysian law firm to be certified ISO 9001.

4.6 The Complainant is also listed in various legal directories such as the Malaysian

Legal Directory, the Martindale-Hubbell International Law Directory and the Asian In-House Handbook.

4.7 Since it was founded in 1987, the Complainant has continuously and consistently conducted its business under the name Zaid Ibrahim & Co. The name Zaid Ibrahim & Co has appeared and continues to appear on all of the Complainant’s documents, letterheads, business cards, brochures, profiles and stationery. The Complainant has invested a considerable amount of money to build its ZAID IBRAHIM & CO brand name, and is the first Malaysian law firm to be awarded the Brand Promotion Grant by the Government of Malaysia. The Complainant engaged brand consultants APT Consult to create and enhance its ‘ZAID IBRAHIM & CO’ brand name resulting in the creation of the ‘ZAID IBRAHIM & CO’ Brand Manual.

4.8 The Complainant is also the registered proprietor of the ZAID IBRAHIM & CO’ service marks as listed below in Class 42 in Malaysia, Brunei Darussalam, Singapore and Thailand:

No

Country

Mark

Registration No.

Registration Date

Specification of Services

i

Malaysia

ZAID IBRAHIM & CO

02002493

7 March

2002

Providing advice and consultancy; providing legal and related services including but not limited to advising on banking, capital markets, communications and information technology, construction and engineering, corporate and commercial, e-commerce and internet, foreign investment, human capital services and industrial relations, intellectual property and media, international trade, litigation and alternative dispute resolution, mergers and acquisitions, oil and gas, privatization, projects, property, shipping and admiralty, taxation and any other legal and related consultancy; all included in class 42

ii

Brunei Darussalam

ZAID IBRAHIM & CO

36,785

26 January 2005

Providing advice and consultancy; providing legal and related services including but not limited to advising on banking, capital markets, communications and information technology, construction and engineering, corporate and commercial, e-commerce and internet, foreign investment, human capital services and industrial relations, intellectual property and media, international trade, litigation and alternative dispute resolution, mergers and acquisitions, oil and gas, privatisation, projects, property, shipping and admiralty, taxation and any other legal and related consultancy; all included in Class 42

iii

Singapore

ZAID IBRAHIM & CO

T05/14286Z

17 August 2005

Providing legal advice and legal consultancy to legal inquiries; providing legal advice and legal services relating to banking, capital markets, communications and information technology, construction and engineering, corporate and commercial, e-commerce and internet, foreign investment, human capital services and industrial relations, intellectual property and media, international trade, litigation and alternative dispute resolution, mergers and acquisitions, oil and gas, privatisation, projects, property, shipping and admiralty, taxation and any other legal and related consultancy; all included in Class 42

4.9 The Complainant is also the registrant of the following domain names:

No

Domain Name

Creation Date

i

<zaidibrahim.com>

1st February 2004

ii

<zaidibrahim.net>

5th September 2003

iii

<zaidibrahim.biz>

5th September 2003

iv

<zaidibrahim.info>

5th September 2003

v

<zaidibrahim.org>

26th September 2006

vi

<zaidibrahim.com.sg>

26th December 2002

vii

<zaidibrahim.sg>

3rd January 2005

viii

<zaidibrahim.asia>

18th February 2008

ix

<zaidibrahim.my>

29th January 2008

The Complainant’s domain name <zaidibrahim.com> has been in active status since 2004.

4.10 The Respondent’s disputed domain name <zaidibrahimandco.com> is believed to have been in active status from an undetermined date in the month of August 2008, as the disputed domain name <zaidibrahimandco.com> was only created on August 2, 2008.

4.11 The Complainant retained investigators to obtain more information and to collate evidence on the Respondent and the use of the disputed domain name <zaidibrahimandco.com> prior to giving any notice to the Respondent. The Investigation Report revealed inter alia the following:

(a) the Respondent is a fictitious, bogus and non-existent person.

(i) Respondent’s Address

- The Respondent’s address is listed as “34 Jalan Tun Perak, KLK, Selangor, 56000, Malaysia”.

- There is no city known by the abbreviation KLK in Malaysia, the closest abbreviation is KL which is the short form for Kuala Lumpur.

- There is a road called Jalan Tun Perak in Kuala Lumpur, however the postcode for that area is 50050 and not 56000.

- 34 Jalan Tun Perak, 50050 Kuala Lumpur is a 3 storey shophouse. The ground floor is unoccupied the second and third floor houses CIMB Bank.

- Inquiries made by the investigator reveal that there is no employee by the name of ‘Matthew’ working in the CIMB Bank branch located at 34 Jalan Tun Perak, 50050 Kuala Lumpur.

(ii) Respondent’s Telephone Number

- The Respondent’s telephone number is listed as 013 [XXX XXX]. This is a handphone number.

- Inquiries made by the investigator reveal that the subscriber of this handphone number is one “Sudway Martins” (NRIC No: A2877634) of Selangor, Darul Ehsan, Malaysia.

- Pretext calls made by the investigator to this handphone number suggest that the person using this number is one “Abdul Hakim”.

(b) A comparison of the information posted on the disputed domain name’s website “www.zaidibrahimandco.com” with the information posted on the Complainant’s website at “www.zaidibrahim.com” reveal that crucial information has been deliberately copied from the Complainant’s website and posted on the disputed domain name’s website:

(i) Addresses

- The disputed domain name’s website advertises the services of a law firm purportedly known as “Zaid Ibrahim & Co Lawfirm”.

- According to the information posted, this “Zaid Ibrahim & Co Lawfirm” purportedly has locations in Bangkok, Dubai, Jakarta, Kuala Lumpur, Kuching, Labuan, Penang and Singapore.

- The addresses of the locations listed in Bangkok, Dubai, Jakarta, Kuala Lumpur, Kuching, Labuan, Penang and Singapore in the disputed domain name’s website are in fact the Complainant’s actual and legitimate law offices located in these very same cities.

(ii) Partner’s Photographs

- The disputed “Zaid Ibrahim & Co Lawfirm” purportedly has 5 Partners going by the names Abdul Mohammed Khan, Kashif bin Abdullah, Shaibu Ahmad, Azman Hafizu and Othman bin Onn. There are photographs posted next to the purported biodatas of these 5 Partners.

- These 5 photographs are in fact photographs of the Complainant’s Partners which are the photographs posted in the Complainant’s website.

- The photograph of Abdul Mohammed Khan is in fact the photograph of Ainor Khaliq Anuarudin, a Partner of the Complainant.

- The photograph of Kashif bin Abdullah is in fact the photograph of Ahlan Nasri Nasir, a Partner of the Complainant.

- The photograph of Shaibu Ahmad is again the photograph of Ainor Khaliq Anuarudin, a Partner of the Complainant.

- The photograph of Azman Hafizu is in fact the photograph of Dato’ Dr Nik Norzrul Thani, a Partner of the Complainant.

- The photograph of Othman bin Onn is in fact the photograph of Faizal Razak, an ex- Partner of the Complainant.

5. Parties’ Contentions

5.1 Complainant

(a) The Complainant asserts that it has acquired reputation and goodwill in the name Zaid Ibrahim & Co and that the name Zaid Ibrahim & Co is synonymous and distinctive of the Complainant. The Complainant asserts further that the Zaid Ibrahim & Co name is today a symbol of internationally reputed services with high commercial standards and global associations. The Complainant contends that the disputed domain name <zaidibrahimandco.com> is virtually identical and confusingly similar to the Complainant’s ZAID IBRAHIM & CO name and service mark for the following reasons:

(i) <zaidibrahimandco.com> is phonetically, visually and conceptually identical with the Complainant’s registered service mark ZAID IBRAHIM & CO and the Complainant’s domain name <zaidibrahim.com>.

(ii) the suffix ‘& Co’ is a generic term for law firms, and is pronounced as “and co”. Hence when pronounced, the disputed domain name <zaidibrahimandco.com> is identical to the ear with the Complainant’s registered service mark ZAID IBRAHIM & CO. Further the distinctive and operative part of the Complainant’s name is Zaid Ibrahim & Co and this is also identical when the disputed domain name <zaidibrahimandco.com> is compared with the Complainant’s domain name <zaidibrahim.com>.

(iii) the Respondent’s purported services which are identified in its website “www.zaidibrahimandco.com” are identical to the Complainant’s services registered in Class 42. Thus, members of the trade and public who are well-informed, reasonably observant and circumspect who visit the Respondent’s website at “www.zaidibrahimandco.com” will undoubtedly be confused into the false supposition and belief that the services advertised and offered therein are services offered by, originating from, associated with, or endorsed by the Complainant and that the website “www.zaidibrahimandco.com” and disputed domain name <zaidibrahimandco.com> belongs to the Complainant or is in some way connected with or associated to the Complainant when this is clearly not the case.

(b) The Complainant further contends that the Respondent does not have any rights or legitimate interests in respect of the domain name because:

(i) the Respondent’s use of the domain name is motivated by ill will and bad faith calculated and designed with an aim to tarnish the valuable reputation and goodwill associated with the Complainant’s ZAID IBRAHIM & CO service mark and name, as is evidenced by the Investigation Report.

(ii) the Respondent may also be using the disputed domain name with intent for unlawful commercial gain by misleadingly diverting unsuspecting consumers to its website.

(c) In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:

(i) the Respondent’s choice of the disputed domain name is inherently deceptive in light of the Complainant’s tremendous reputation and goodwill in the service mark and name ZAID IBRAHIM & CO in Malaysia and elsewhere. The Complainant is the first user of ZAID IBRAHIM & CO to which the disputed domain name is identical with, and the Complainant avers that the Respondent was actuated by ill will and bad faith in deliberately setting out and registering the disputed domain name and thereafter activating the same and posting information which mimics and copies the information posted on the Complainant’s website.

(ii) the Respondent set out to intentionally deceive and mislead or is likely to deceive and mislead the unsuspecting trade and public into a belief that the disputed domain name is that of the Complainant’s or is otherwise associated, affiliated, endorsed by or connected with the Complainant.

(iii) the Respondent’s actions and conduct suggests that the disputed domain name is an instrument of fraud which could cause serious damage to the Complainant’s valuable goodwill and reputation and will result in the dilution and erosion thereof.

5.2 Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate rights in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.1 Identical or Confusingly Similar Trade Mark

The various trademark registrations and the evidence of reputation and goodwill adduced by the Complainant, amply evidences the Complainant’s rights to the “ZAID IBRAHIM & CO” mark. For instance, the Complainant is the registered proprietor of the “ZAID IBRAHIM & CO” service mark in Class 42 in Malaysia, Thailand, Singapore and Brunei Darussalam.

The domain name in dispute is phonetically identical and confusingly similar to the ZAID IBRAHIM & CO mark. The fact that the ampersand is not used in the disputed domain name does not materially alter the character of the disputed domain name. The ampersand is often used as a shortened version or a stylised form of the word “and”. Moreover, it is not possible to register “.com” domain names comprising ampersands and as such, registrants would have to resort to using the word “and” instead of an ampersand. Accordingly, this Panel concludes that the domain name in dispute is identical or confusingly similar to the Complainant’s ZAID IBRAHIM & CO mark.

Based on the above, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.

6.2 Rights or Legitimate Interests in the Domain Name

The Complainant’s assertions have not been rebutted by the Respondent to indicate whether it has rights or legitimate interests to the domain name in issue. The Respondent, therefore, failed to answer whether it has any rights or legitimate interests in the domain name.

The Complainant indicated that it had no dealings with the Respondent and that it had not consented to the use of the ZAID IBRAHIM & CO mark by the Respondent.

No evidence leads to indicate that the Respondent is known by the name “Zaid Ibrahim” or “Zaid Ibrahim and Co”.

The fact that the website located at “www.zaidibrahimand.com” contains matter deliberately copied from the Complainant’s website and presented in a false and misleading manner lends support to the Complainant’s assertion that the domain name is not being used for legitimate non-commercial or fair use. Based on the evidence adduced by the Complainant, it is probable that the intent of the Respondent is to disrupt the Complainant’s business or to otherwise derive some direct or indirect form of commercial gain. Such use cannot be regarded as legitimate non-commercial or fair use.

Given the circumstances of its use and the notoriety of the ZAID IBRAHIM & CO mark held by the Complainant in Malaysia, the Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the domain name.

Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

6.3 Registration and Use in Bad Faith

Having reviewed the evidence adduced by the Complainant and in particular the relevant portions of the Investigation Report and the print-outs from the website located at <www.zaidibrahimandco.com>, the Panel could not find any justifiable link between the Respondent and the ZAID IBRAHIM & CO mark. The absence of such a link suggests that the name Zaid Ibrahim & Co and the mark ZAID IBRAHIM AND CO was calculatively selected by the Respondent to form a domain name in order to disrupt the Complainant’s ongoing business, to extract some form of direct or indirect commercial gain or to otherwise ride on the established goodwill of the Complainant.

This finding is fortified by the fact that the domain name resolves to a website that contains false and misleading information regarding a law firm purportedly known as “Zaid Ibrahim & Co Lawfirm”. The website actually reproduces locations of the Complainant’s firm and photographs of partners of the Complainant’s law firm which is then represented as the Respondent’s office locations and partners.

It appears that the Respondent either wishes to disrupt the Complainant’s ongoing business or to seek to generate Internet traffic (and, hence, commercial gain resulting from the flow of such traffic) resulting from the confusion which arises due to the similarities between the Complainant’s trademark and the disputed domain name. In Digital Spy Limited v. oniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, the panel held that “[R]egistering a domain name with knowledge of another company’s rights in the name, and with intention to divert traffic is evidence of bad faith”. Given the careful selection of the domain name and the set up of the Respondent’s website, it is improbable that the Respondent could not have known of the Complainant and its business.

Although no evidence of solicitation was adduced by the Complainant, the Respondent could also be holding on to the domain name with the intent of soliciting an offer from the Complainant to purchase the domain name. This Panel will not, however, speculate further on this possibility as no evidence of solicitation was adduced by either party unlike the case of Skrine v. Skrine & Ors, WIPO Case No. D2000-1105 where the respondent made an offer to sell the domain name <skrine.com> to another Malaysian law firm by the name of Skrine.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zaidibrahimandco.com> be transferred to the Complainant.


Syed Naqiz Shahabuddin
Sole Panelist

Dated: December 10, 2008

 

: https://internet-law.ru/intlaw/udrp/2008/d2008-1576.html

 

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