Domain name - Lebanese trade mark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Domain name not generic - Offer to settle during litigation should not be admitted into evidence.

Complainant is a Lebanese company registered in 1961 under both arabic and french translations of its name.  It also owns a trademark for the name Credit Libanais.  Respondent registered the domain name creditlibanais.com.

Held, Name Transferred to Complainant.

The domain name is condusingly similar to the trademark of Complainant.  Although the words are possibly generic, the combination of "credit" which suggests a banking operation and "libanais" (Lebanese) are likely to create confusion. 

Respondent has no legitimate rights or interests in domain name.  The ".com" signifier is not restricted to the United States.  Respondent may have a legitimate interest in re-selling the domain name, so long as the market is not limited to Complainant, directly or indirectly.

As a Lebanese citizen, Respondent is likely to have been aware of the mark of Complainant.   Respondent advertised that domain name was for sale on the web.  This demonstrates bad faith.  It is not determinative whether Respondent approached Complainant or vice versa.  In assessing bad faith, the offer to settle by Respondent was not considered.  Settlement offers should not be used to compromise the legal positions of the parties.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel Decisions Referred to
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Elibrachy, Panelist: -

1. The Parties

Credit Libanais SAL (Complainant)
Address: Sofil Centre, Fifth Floor, Charles Malek Ave, Ashrafieh, Beirut
Telephone: +961 1 200028/29
Fax: +961 1 325713
E-mail: [email protected]

v.

Mr. Fadi Skaf (Respondent)
Address: P.O. Box 16-7218, Beirut, Lebanon
Fax: +961-1-612179
E-mail: [email protected]
 

2. The Domain Name(s) and Registrar(s)

Disputed Domain Name: creditlibanais.com

Registrar of Disputed Domain Name: Register.com, Inc.
 

3. Procedural History

Complainant filed an e-mail of the complaint on May 4, 2000. A hard copy was received by WIPO on May 9, 2000. The WIPO Arbitration and Mediation Center verified that the complaint 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 for Uniform Domain Name 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.

Respondent was properly notified. The commencement date of the administrative proceedings is deemed to be May 16, 2000. The deadline for Respondent’s response was June 5, 2000. Response was received on June 2, 2000. Response is therefore made in a timely fashion.

A single-member Administrative Panel was appointed and notified to the parties on June 13, 2000. The Panelist submitted the Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.

On May 18, 2000, the Complainant submitted to the Center and e-mail purportedly containing an offer of settlement by the Respondent. The offer was rejected.

The date set for a decision is June 26, 2000.
 

4. Factual Background

Complainant has alleged that Complainant is a Lebanese company registered in 1961 under the Arabic name (Etemad Lebnany) and its French translation Credit Libanais. Respondent requested the registration of a trademark comprising his trade name on January 12, 2000. The trademark also had drawings emphasizing the Lebanese nature of the trademark (e.g. Cedar tree). A certificate issued on January 21, 2000, certified that this trademark was actually issued under no. 82200. Complainant registered creditlibanais.com.lb on August 20, 1999. Respondent registered the disputed domain in February 2000. He did not initiate contact with Complainant. Complainant initiated contact with Respondent. Respondent requested Complainant to name his price. Respondent feels that he is entitled to profit in addition to the costs he incurred in connection with the disputed domain.
 

5. Parties’ Contentions

Complainant claims that Respondent has confused the public with his domain name which is similar to his trade name, trademark as well as with its domain name creditlibanais.com.lb. It claims that the Respondent does not have any legitimate claim to the domain name in dispute. Finally, it claims that Respondent has acted in bad faith. The Complainant after filing of the
response sent a copy of an e-mail claimed to be sent to the Respondent in which the latter offered to settle the dispute by selling the disputed domain name for US$10,000. Complainant introduced this as evidence of bad faith on the part of the Respondent.

Respondent did not challenge the facts presented by the Complainant. Respondent claims that the similarity between the two domain names is irrelevant. He also denies possible confusion between the disputed domain and Complainant’s business. The two constituents of the disputed domain name are generic names (Lebanese credit). He confirms his legitimate interest in the disputed domain name. He contends that he intended to cause it to be operational through a US based operation. Finally, he denies any bad faith. He highlights the fact that he did not approach the Complainant to sell him the name. Complainant was the one to initiate the contact.
 

6. Discussion and Findings

The Complainant needs to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (not necessarily its owner). It is therefore irrelevant to this test whether the domain name is similar to another domain name he owns. Furthermore, it is irrelevant whether the domain name is similar to the trade name of the Complainant. This is because trade names have limited geographical force unlike the trademarks which may be protected worldwide and could in the case of famous trademarks, gain such global protection even without specific registration in each jurisdiction.

The Respondent contests such potential confusion with the trademark of the Complainant on the basis that it consists of two generic French words meaning Lebanese credit. Although this could in other instances have been a convincing argument, nevertheless it holds less power of conviction in our case. "Credit" is a word frequently associated with banking activities such as "Credit Suisse, Credit Lyonnais etc". The geographic identifier in the disputed domain name referring to Lebanon is quite likely to result in confusion.

We therefore conclude that the disputed domain name is confusingly similar to the trademark no. 82200 referred to above.

The argument that the Complainant does not conduct any activities in the USA is not convincing. The .com identifier is not necessarily restrictive to companies operating in the USA.

The Respondent does not have any apparent legitimate interest in the name used in the disputed domain. This shifts the burden of proof to Respondent to establish his legitimate interest. Respondent did not bring forward any indication of such interest. His alleged intention of self-utilization of the disputed domain out of an operation based in the USA is an allegation that was not supported and lacks credibility.

Interest need not be restricted in Respondent’s intention to personally use the disputed domain. Respondent may have legitimate interest in reselling it so long as the market for the disputed domain would not likely be limited, directly or indirectly, to the Complainant: directly by selling it to the Complainant; indirectly by selling it to third parties who wish to buy it to harm Complainant or re-sell it to him. The disputed domain is not likely to be disposed of in a manner directly or indirectly unrelated to the Complainant.

We therefore conclude that Respondent does not have any legitimate interest in the disputed domain name.

Respondent challenges the allegation that he has acted in bad faith. He bases the denial of bad faith on the fact that he was not the first to approach the Complainant.

Respondent is a Lebanese citizen. As such he was very likely aware at the time of registration that the disputed domain was confusingly similar to the Claimant’s trademark. He sought to capitalize on such confusion. Initiating contact with Complainant is not the only vehicle to prove bad faith. Respondent advertised on the web that his site was for sale. It did not take long before the Claimant discovered this.

But it is not enough to demonstrate that the Respondent registered the disputed domain in bad faith. Claimant has to demonstrate that it has been used in bad faith. We do not admit into evidence Respondent’s settlement offer. Settlement offers should not be used to compromise the legal positions of the parties. Furthermore, this evidence was presented ex-parte to the Respondent. Notwithstanding, we do find that Respondent not only registered the disputed domain name in bad faith but also used it in bad faith. Seeking the sale of the site in itself constitutes bad faith use of the disputed domain. Furthermore, Respondent himself admitted in his response that he sought a profitable offer from the Claimant to sell the disputed domain. He expected this profit to include a windfall in excess of his expenses.
 

7. Decision

For all of the foregoing reasons, the Panel decides that the disputed domain name registered by Respondent is confusingly similar to Claimant’s trademark no. 82200; that the Respondent does not have any legitimate interest in respect of the disputed domain name <creditlibanais.com>; and that the disputed domain name was both registered and used in bad faith. Accordingly, the Panel decides that the disputed domain name be transferred from Mr. Fadi Skaf (Respondent), address: P.O. Box 16-7218 Beirut, Lebanon, to Credit Libanais SAL (Complainant), address: Sofil Centre, Fifth Floor, Charles Malek Ave, Ashrafieh, Beirut.
  Bahieldin H.Z. Elibrachy
Sole Panelist
Dated: June 25, 2000