v.
Khaled Ali Soussi
[Indexed as: Inter-Continental Hotels v. Khaled Ali]
[Indexed as: INTER-CONTINENTAL.COM; INTERCONTINENTAL.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0252
Commenced: 25 May 2000
Judgment: 5 July 2000
Presiding Panelist: David W. Plant
Domain name - Domain name dispute resolution policy U.S. Trademark - U.S. Domain name - Jurisdiction - Identical - Confusingly similar - Rights or legitimate interest No Bad faith registration No Bad faith use 3rd Party intervention Offer to Sell Intention to develop not enough.
Complainant is owner of trademark registrations for INTER × CONTINENTAL and INTER-CONTINENTAL in association with hotel services. Respondent registered the domain names INTER-CONTINENTAL.COM and INTERCONTINENTAL.COM. Respondent claims use of the domain names in question was for the purpose of educating people in the developing world about the Internet.
Held: Domain Name Not Transferred
Respondent avers that his correct name is Khaled Ahmed Soussi and that his brother is named Ali Soussi. Complainant received a fax from Ali Soussi, claiming to be the owner of the two Domain Names and offering to sell them to Complainant for US$50,000. Respondent later sent a letter to Complainant stating that Ali Soussi had not been authorized to offer to sell the domain names. Despite this letter, Respondent reconfirmed in a telephone conversation with Complainant his desire to sell the domain names for $50,000 and stated that he would ensure no one else got the domain names for a lesser amount. In a declaration filed with this Panel, Respondents brother admitted that it was he, not Respondent, who solicited Complainant to purchase the domain names.
Khaled Ahmed Soussi has consented to the jurisdiction of this Panel
and is properly treated as Respondent in this proceeding. While the registrant
of INTER-CONTINENTAL.COM .is listed as ISPTECH, it appears that Respondent
is affiliated with ISPTECH and is personally listed as the administrative,
technical, billing and zone contact for this domain name. In these circumstances,
the Panel finds by the preponderance of the evidence that Respondent appears
to have has at least some ownership interest in or affiliation with the
fictitious entity ISPTECH, or at the minimum is its authorized agent. Thus
the INTER-CONTINENTAL.COM domain name properly is before the Panel.
It is clear that the domain names in issue are identical or confusingly
similar to Complainants trade marks. While Respondent argues that
the INTER-CONTINENTAL mark is generic or merely descriptive, the Panel
accepts that Complainants trademark registrations are themselves prima
facie evidence that the mark is distinctive.
Complainant has the burden to make a prima facie case that Respondent has no rights or interests in the domain name. If it does so, the burden of production then shifts to Respondent to offer evidence of his rights or legitimate interests, although the burden of proof remains on Complainant. While Complainant has made a prima facie showing of no rights or legitimate interests, Respondent has not met the shifted burden of production. All Respondent offers is affidavit testimony of an intention to offer services; Respondent has not provided documentary or other demonstrable evidence of his or ISPTECHs supposed plans to create a legitimate non-profit website at the URLs in question. These assertions of intent are not sufficient to prove rights or legitimate interests in the domain names in question.
Complainant and Respondent have provided contradictory evidence on
the question of bad faith. It is plausible that Respondent registered
the Domain Names for the business reasons stated and with no intention
of trespassing on any rights of Complainant and that the letters sent by
Respondents brother were unauthorized offers to sell the Domain Names.
It is plausible that Respondents telephone conference and his letter,
were not intended as offers to sell the Domain Names and may properly be
construed as only an evaluation of the worth of the Domain Names and as
an offer of Respondents Internet services.
However, it also is possible that Ali Soussi and Respondent conspired
to offer to sell the names, and that Ali Soussis offer was made with Respondents
approval. On balance though, the Panel concludes that Complainant has not
proved (by a preponderance of the evidence) that this is what happened.
The Panel is reluctant to reject the two sworn statements submitted by
Respondent and, a conspiracy theory is inconsistent with the evidence that
Ali Soussi took steps to keep his offer secret from Respondent. The
Panel acknowledges the concern that Respondent and Ali Soussi are trying
to avoid a finding of cybersquatting by using Ali Soussi as a shill, but
must conclude that there is insufficient evidence in this record to allow
the Panel to make that finding.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted October 24,
1999
Service Agreements referred to
Network Solutions, Inc. Service Agreement, effective March 29, 1996
CORE Internet Council of Registrars Service Agreement, effective July 7, 1997
Cases referred to
Document Technologies, Inc. v. International Electronic Communications
Inc., Case No. D2000-0270 (WIPO June 6, 2000)
EAuto, L.L.C. v. Available-Domain-Names.com, Case No. D2000-0120 (WIPO
April 13, 2000)
Eauto L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,
Inc., Case No. D2000-0047 (WIPO March 24, 2000)
Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph
Pillus, Case No. D2000-0166 (WIPO June 1, 2000)
Panel Decisions referred to
--
Plant, Panelist-
1. The Parties
Complainant is Inter-Continental Hotel Corporation ("Inter-Continental"),
a Delaware corporation with its principal place of business in Atlanta,
Georgia, U.S.A. The complaint names as the Respondent Khaled Ali Soussi,
an individual located in Culver City, California, U.S.A. According to the
response, Respondents correct name is Khaled Ahmed Soussi.
2. Domain Name and Registrar
The domain names in issue are "INTER-CONTINENTAL.COM" and "INTERCONTINENTAL.COM"
(the "Domain Names"). The registrar of the first domain name is Network
Solutions, Inc. ("NSI"). The registrar of the second domain name is CORE
Internet Council of Registrars ("CORE").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received Inter-Continentals
complaint on April 3, 2000. The Center verified that the complaint satisfied
the formal requirements of the ICANN Uniform Domain Name Dispute Resolution
Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution
Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy. Inter-Continental made the required payment
to the Center.
The complaint (paragraph 5) identifies Khaled Ali Soussi as Respondent
and as the Registrant for the domain name INTERCONTINENTAL.COM. The complaint
(paragraph 6) identifies ISPTECH, a California fictitious corporation,
as Registrant for the domain name INTER-CONTINENTAL.COM and Khaled Soussi
as the Administrative, Technical, Billing and Zone Contact for ISPTECH
(with an address in Buena Park, CA, which is different from the Culver
City address for Khaled Soussi listed in the INTERCONTINENTAL.COM domain
name registration (paragraph 7)). ISPTECH is not named as a party in this
proceeding.
On April 10, 2000, the Center transmitted via email to NSI a request
for registrar verification in connection with INTERCONTINENTAL.COM. On
April 11, 2000, NSI transmitted via email to the Center NSIs Verification
Response, confirming that the registrant is "isptech" and the administrative,
technical, billing and zone contacts are "soussi, khaled", at the Buena
Park, CA address, as averred in the complaint.
Also, on April 10, 2000, the Center transmitted via email to CORE a
request for registrar verification in connection with INTER-CONTINENTAL.COM.
On April 13, 2000, CORE transmitted to the Center COREs verification response,
confirming that the registrant is "Khaled Soussi", at the Culver City,
CA address.
On April 13, 2000, the Center transmitted via post/courier, fax and
email to Mr. Khaled Ali Soussi and to ISPTECH its Notification of Complaint
and Commencement of the Administrative Proceeding, together with a copy
of the Complaint. The Center advised that the response was due by May 2,
2000 and that Inter-Continental had elected that the Administrative Panel
consist of three members.
On May 2, 2000, the Center received Respondents response via email.
On May 4, 2000, the Center received a hard copy of the response.
On May 25, 2000, the Center advised the parties that David H. Bernstein,
Esq., Professor Mohamed Hossam Loutfi, and David W. Plant, Esq. had been
appointed as the panelists in this proceeding, with Mr. Plant as the Presiding
Panelist. To accommodate the panelists schedules, some difficulties in
arranging communications among this international panel, and the complexities
of this case, the Panel notified the parties that, pursuant to Rule 15,
it would require extra time for the completion of its decision.
4. Factual Background; Parties Contentions
A. The Complaint
The complaint (paragraph 16) is based on the service marks "Inter·Continental"
and "Inter-Continental", as registered in the U.S. Patent and Trademark
Office ("USPTO") pursuant to two registrations, copies of which appear
at Annexes D and E to the complaint, viz.
Inter·Continental Reg. No. 890,271 April 28, 1970
Inter-Continental Reg. No. 1,635,689 Feb. 19, 1991.
The foregoing service marks are for inter alia (a) hotel services and
consulting services to others in the development and planning of hotels,
and (b) stenographic and typing services, conference center services, management
and staffing of hotels, etc. for others, consultation services in construction,
operation and management of hotels, restaurants and conference centers,
development and organization of tour travel and packages for hotel guests,
entertainment services for hotel guests, and restaurant, bar, cocktail
lounge and concierge services. (paragraphs 18 and 19)
At paragraph 13, Inter-Continental avers that it owns and operates
the "well-known" Inter-Continental hotel chain and owns the "well-known"
service marks identified above.
At paragraph 14, Inter-Continental avers it maintains a "significant
presence" on the Internet, with its website located at "www.interconti.com".
At paragraph 15, Inter-Continental avers that "Respondent Soussi" is
neither licensed nor otherwise authorized to use any Inter-Continental
mark, including the two in issue here.
At paragraph 20, Inter-Continental avers it has used its service marks
in connection with its website.
At paragraph 21, Inter-Continental avers its marks have become "an
identifier of genuinely-sponsored Inter-Continental Hotel Corporation goods
and services."
At paragraphs 22 - 33, Inter-Continental purports to describe Respondents
"and/or" ISPTECHs activities:
At paragraph 22 -- Soussi and/or ISPTECH have registered the two Domain
Names, which are "identical or confusingly similar to" the two Inter-Continental
marks.
At paragraph 23, -- Soussi and/or ISPTECH have no rights or legitimate
interests in the Domain Names.
At paragraph 24 -- Neither Respondent nor ISPTECH is known by either
of the Domain Names.
At paragraph 25 -- On July 7, 1997, ISPTECH, on behalf of Respondent,
registered the domain name INTERCONTINENTAL.COM. Thereafter, Respondent
transferred the registration from NSI to CORE and placed the registration
under his own name. Inter-Continental refers to Annexes A and F to the
complaint. According to Annex A, the CORE record was created July 30, 1997.
According to Annex F, the NSI record was last updated October 20, 1997.
At paragraph 26 -- On March 29, 1996, ISPTECH, on behalf of Respondent,
registered the domain name INTER-CONTINENTAL.COM with NSI (Annex B).
At paragraph 27 -- On March 14, 1999, Inter-Continental received a
fax from "Ali" (Annex G), claiming to be the owner of the two Domain Names,
offering to sell them to Inter-Continental for US$50,000, and stating the
offer was valid until March 23, 1999. (The fax is addressed:
"Dear Mr. John Kuhoman
"Intercontinental Inc.
"President
"Dear Hyde".
The fax closes with:
"Sincerely,
"Ali
"Fax 323-938-3313
"[email protected]".)
At paragraph 28 -- On April 1, 1999, Marylee Jenkins, counsel for Inter-Continentals
parent Bass Hotels & Resorts, "sent a letter to Respondent Soussi"
(Annex H). The letter was addressed to Khaled Ali Soussi at ISPTECH, acknowledged
receipt of the March 14 letter, and stated (a) "your company, ISPTECH,
without authorization from our client," registered the Domain Names, and
(b) the registrations and offer to sell violated Inter-Continentals trademark
rights. Ms. Jenkins demanded that uses of the Inter-Continental name and
mark cease and the registrations be transferred to Inter-Continental. Ms.
Jenkins enclosed Registrant Name Change Agreements for Respondent to execute
and return to Ms. Jenkins.
At paragraph 29 -- On April 7, 1999, Mr. Sermid D. Al-Sarraf wrote
to Ms. Jenkins (Annex C) in reply to the April 1 letter, stating (a) "my
client, Ali Soussi is the owner" of the two Domain Names, and (b) "if your
client is interested in purchasing them from Mr. Soussi they may contact
him" at the same email address and fax number set out in the March 23 letter.
The letter also stated "Mr. Soussi has agreed to extend his offer to April
23, 1999."
At paragraph 30 -- On April 19, 1999, "Respondent Soussi" wrote to
Ms Jenkins (Annex I). The letter is on ISPTECH letterhead and is signed
by Khaled Soussi. It states in part:
"Please know the letter you received from Ali wasnt from our company
and doesnt represent our company business approach.
"We chose the name for a special international non-profit project....
At this time the project is in the planning phase.
* * *
"... The Domain names ... where [sic] available for your client before
we registered them to our company. Your client chose not to take them,
I assume it made more sense ... to choose a shorter name INTERCONTI.COM.
"I have been a guest in your client hotels from the early 70s ...
. Please let Mr. John Kuhlman know that we are business people and our
business is IT & Internet consulting. If there is an opportunity to
work out some arrangement we will be more than happy to work with him or
his representatives."
At paragraph 31
"Despite Respondent Soussis alleged April 19th disaffirmance of the
March 14, 1999 offer of sale, which Mr. Soussis lawyer had confirmed on
April 7, 1999, Respondent Soussi reconfirmed in a telephone conversation
with Ms. Jenkins on April 21 [sic] his desire to sell the domain names
for $50,000. Respondent Soussi also told Ms. Jenkins that he would make
sure that no one else got the domain names for a lesser amount."
A copy of Ms. Jenkinss April 21, 1999 memo of the telephone conversation
is assertedly attached as Annex J. The memo states:
"On April 14 [sic], 1999, Mr. Soussi telephoned concerning the cease
and desist letter that we sent to ISPTECH. He stated that an overzealous
employee sent the letter received by our client asking for $50,000 for
the domain names and that the letter should not have been sent. He, however,
indicated that the amount in the letter was an accurate amount to request
for the domain names and he would make sure that no one else got the domain
names for less than that amount."
At paragraph 32 -- Respondent Soussis bad faith registration of the
Domain Names is demonstrated by (1) the April 7 offer from "his counsel",
(2) Respondent Soussis April 19th letter offering to work out "an arrangement,"
and (3) the April 21st [sic] telephone conference with Ms. Jenkins.
At paragraph 33 -- The April 19th letter and the April 21st [sic] telephone
conference also demonstrate bad faith use of the Domain Names because Respondent
Soussis primary purpose in registering the Domain Names was to sell, rent
or otherwise transfer them to Inter-Continental for valuable consideration
in excess of the documented out-of-pocket costs directly related to the
domain name.
At paragraph 35, Inter-Continental requests that the panel direct the
Registrars to transfer the two Domain Names in issue to Inter-Continental.
At paragraph 41 (second number 41), Inter-Continental certified that
the information in the complaint is complete and accurate.
B. The Response
In Section A of the response, "Respondents" contact details are set
out. They are the same as the Culver City, CA details set out in paragraph
7 of the complaint and in the CORE verification response with respect to
INTERCONTINENTAL.COM.
In Section B (1), declarations of Respondent Khaled Ahmed Soussi and
Ali Soussi, at Annexes 1 and 2, are said to provide the factual basis "in
large part" for the response.
In Section B (2), Respondents declaration is said to show that Respondents
wife, who uses ISPTECH as a fictitious business name, is the owner of INTER-CONTINENTAL.COM,
and, with respect to this domain name,
"As such, Respondent is not subject to this dispute procedure."
Citing the Paragraph 4 of the Policy, Respondent contends that "the
owner of a domain name is subject to these administrative proceedings....
As Respondent has no ownership rights in INTER-CONTINENTAL.COM, he cannot
be subject to these proceedings. For the purpose of responding to this
Complaint however, and without conceding that he is subject to this administrative
proceeding with respect to INTER-CONTINENTAL.COM, Respondent responds to
the substantive points of the Complaint as if he were so subject."
In Section B (3), Respondent urges that the two Domain Names are neither
identical nor confusingly similar to a mark in which Inter-Continental
has rights. Respondent distinguishes between INTERCONTINENTAL and INTER-CONTINENTAL,
stating that Inter-Continental has no rights to the former and only limited
rights in the latter. The separate registrations of these terms shows the
USPTO "recognizes the obvious fact" that the terms are distinguishable.
Further, Inter-Continental has no registration in the USPTO for INTERCONTINENTAL.
As allegedly shown in Annex 3 "the mark INTERCONTINENTAL" (without a hyphen)
has been registered by other parties, including Intercontinental Software
Solutions, Inc., Intercontinental Coffee Service Inc., and Intercontinental
Financial Corporation. Accordingly, Inter-Continental has no rights to
INTERCONTINENTAL. In addition, the terms are merely descriptive, and INTER-CONTINENTAL
is "extremely weak." Inter-Continentals rights are "clearly strictly delineated
to its current registrations and by no means to any of the uses which Respondent
envisages, namely the international promotion of the Internet to the developing
world." Unless Respondent were to open a chain of hotels, any use "they"
make of the domains are clearly descriptive or generic. Respondent has
not infringed and is not reasonably likely to infringe and marks owned
by Inter-Continental, and there is no risk of confusion. "Respondent is
not even using the domain at the moment." Finally, Inter-Continental did
not trademark or register the Domain Names, thus indicating "their lack
of ownership of the name." Inter-Continental is using the URL www.interconti.com.
In Section B (4), Respondent asserts that it "has and has always had
legitimate rights in the domain names." The Domain Names were registered
for a specific purpose, viz. educating people in the developing world about
the Internet. Respondent has been offered at least $10,000 for the names
and has refused to sell them.
In Section B (5), Respondent asserts that the attached declarations
show Respondent registered "the name" for a legitimate purpose. "The names"
were chosen because they reflected the international, "inter-continental"
nature of the service "they wished to offer." Further:
"Their information service was quite literally inter-continental in
that it wished to address the information gap between the continents. The
names were certainly not registered to resell to Complainant. Indeed, contrary
to what is stated in the Complaint they still have not been offered to
Complainant for a price or at all for that matter."
Respondent avers that Inter-Continental does not understand the correspondence
and is confused about the chain of events, e.g. (1) the telephone conference
occurred on April 14, not April 21, 1999, and (2) Ali Soussi, not Respondent,
offered the domains to Inter-Continental.
Respondent asserts that the circumstances covered by the Policy at
paragraph 4(b) are not present here.
In Section G, Respondent certifies that the information in the response
is complete and accurate.
C. The Declarations
The declaration of Khaled Ahmed Soussi, dated May 1, 2000 and apparently
signed by him, appears at Annex 1 to the response. It is said to be based
on personal knowledge of the facts "to which I declare hereunder."
In paragraph 2, Khaled Ahmed Soussi states his name is not Khaled Ali
Soussi. He owns INTERCONTINENTAL.COM, but not INTER-CONTINENTAL.COM. His
wife, Njela Elmukhtar, who does business under the fictitious business
name ISPTECH, owns the INTER-CONTINENTAL.COM domain name. He registered
the name for and on behalf of his wife. He also registered INTERCONTINENTAL.COM
on behalf of his wife, but when he transferred the registration from NSI
to CORE (to save on the annual fee), he mistakenly named himself as the
registrant.
In paragraph 3, Khaled Ahmed Soussi states his current residence is
in Buena Park, California. He is currently employed as a manager for in
ISP provider (Q-ROUTE). He originally registered INTER-CONTINENTAL.com
in March 1996. At the time, he and his wife wished to establish on-line
businesses and ventures. His wife provided both the money and "creative
impetus" to invest in new on-line ventures.
In paragraph 4, they "essentially wished to start a non-profit service
that could provide information about the Internet to individuals and entities
in the developing world.... We wished to use a domain name which reflected
the global reach of the Internet and also our target audience. The word
Inter-continental and variations thereof was an obvious choice."
In paragraph 5, Soussi registered INTERCONTINENTAL.COM in about July
1997 "to cover both spelling variations of the word INTER-CONTINENTAL."
In paragraph 6, Soussi states that when Soussi registered INTER-CONTINENTAL.COM,
"I remember thinking that Complainant had not registered this name for
the reason that they obviously did not want it. I also considered the names
to be truly generic... my wife had no intention of entering the hotel business....
Neither my wife or I had any intention of reselling the name to Complainant
or any one else for that matter nor diverting business from Complainant."
In paragraph 7, Soussi agrees with the declaration of his brother Ali,
recounts his call to Marylee Jenkins where he allegedly informed her that
Ali had "no right to act as he had," and describes confronting his brother
and his anger with his brother. He states he did not offer to sell the
names to Ms. Jenkins for $50,000, but, rather, as her memo allegedly confirms
"merely stated that that was what I thought they were worth and would
not sell them for less. Ms. Jenkins misunderstood me if she believed that
I was actually offering to sell them."
In paragraph 8, Soussi stands by his April 19, 1999 letter and states
that Inter-Continental misunderstands it
"All the final paragraph of this letter means is that I was in the
Internet business and was in fact was [sic] offering our services as Internet
consultants and was not offering to sell the names."
Soussi adds that in the past "we received three [offers for the names],
one of which was for $10,000. Of course we did not sell the names."
In paragraph 9, Soussi states that neither his wife nor he has "ever
offered to sell any of the other domain names we own." Soussi lists those
domain names in Exhibit A to his declaration and states every one has been
selected for legitimate reasons 1. Also, "We are not in the habit of selecting
names that infringe on others trademark rights and which are to be resold
at a profit."
In paragraph 10, Soussi states:
"In short, I registered the domain names for legitimate purposes and
charitable ones at that. The names lend themselves to the service we hoped,
and still hope, to provide. My brother ALI was the one who solicited Complainant
and not I. My wife and I have acted in good faith throughout and simply
want to retain our own domain names."
The declaration of Ali Soussi, at Annex 2, appears to have been executed
by the declarant on April 29, 2000, in Sanaa, Yemen.
In paragraph 1, Ali Soussi states "I am the brother of the Respondent
KHALID [sic] AHMED SOUSSI, and states he has personal knowledge of "all
facts to which I declare hereunder."
In paragraph 3, Ali Soussi states that he has never owned the two Domain
Names in issue. "To my knowledge these names are owned by my brother KHALID
[sic] AHMED SOUSSI or his wife."
In paragraph 4, Ali Soussi states he attempted the sell the names to
Inter-Continental in order to get a firm offer, and
" ... thereupon try to persuade KHALED to sell the name to me so that
I could make a profit. Although I knew that KHALED has registered the names
for some kind of international on-line business I thought that if I might
be able to make an offer he could not refuse. I knew he did not really
want to part with these names."
In paragraph, 5, Ali Soussi acknowledges writing the March 14, 1999
letter. He used his then current email address and his brother MANSOURs
fax number. "KHALID [sic] had no idea what I was doing. It was of course
me, not KHALED, who hired the attorney ... to further contact Complainant."
In paragraph 6, Ali Soussi states:
"When KHALED learned of what was going on, he was very disturbed and
upset."
In paragraph 7, Ali Soussi states:
"In short, it was I and not my brother KAHLED who solicited Complainant
to purchase the domain names as is described in the Complaint."
5. Discussion and Findings
Paragraph 4(a) of the Policy directs that Inter-Continental must prove,
with respect to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to
Inter-Continentals service marks, and
(ii) Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) The domain name has been registered and is being used in bad
faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances,
which for purposes of Paragraph 4(a)(iii) above shall be evidence of the
registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances
which, if proved by respondent, shall demonstrate respondents rights or
legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
above.
a. Jurisdiction
Complainant has named "Khaled Ali Soussi" as the Respondent. Apparently,
there is no such person rather, this is a combination of the names of
the brothers Khaled Ahmed Soussi and Ali Soussi. Nevertheless, Khaled Ahmed
Soussi, the registrant of INTERCONTINENTAL.COM, has received notice of
and actively participated in this proceeding. Accordingly, Khaled Ahmed
Soussi has consented to the jurisdiction of this Panel and is properly
treated as the Respondent in this proceeding. See Plaza Operating Partners,
Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, Case No. D2000-0166
(WIPO June 1, 2000) (finding jurisdiction proper where Respondent, although
not named in the Complaint, voluntarily subjected himself to the jurisdiction
of the panel).
The more difficult question is whether Respondent also is the registrant
of INTER-CONTINENTAL.COM. The registrant of this domain name is listed
as ISPTECH, which Respondent alleges is a business owned by his wife. Registrant,
however, also appears to be affiliated with ISPTECH it was he, and not
his wife, who responded to Inter-Continentals counsels April 1, 1999
letter (which was addressed to Khaled Ali Soussi at ISPTECH), he did so
on ISPTECH letterhead, and he referred to ISPTECH as "our company." Moreover,
Respondent concedes that he personally registered the domain name (albeit
for and on behalf of his wife), lists the name in Annex A to the response
as one of the "domain names owned by myself and my wife ISPTECH" (emphasis
added), and is personally listed as the administrative, technical, billing
and zone contact for this domain name. In these circumstances, although
it is a close question, the Panel finds by the preponderance of the evidence
that Respondent appears to have has at least some ownership interest in
or affiliation with the fictitious entity ISPTECH, or at the minimum is
its authorized agent. Thus the INTER-CONTINENTAL.COM domain name properly
is before the Panel. In reaching this determination, the Panel notes that
it need not be concerned about whether ISPTECH received actual notice;
not only is Respondent personally the sole contact for this domain name,
but also, the Center expressly notified ISPTECH of the commencement of
this proceeding. 2
b. Identity or Confusing Similarity
Complainant must prove that the Domain Names in issue are either "identical
to or "confusingly similar" to its service marks. The Panel finds that
Complainant has met that burden. The INTERCONTINENTAL.COM and INTER-CONTINENTAL.COM
Domain Names are, for purposes of this dispute, identical or nearly identical
to the Inter-Continental service marks. Separate registrations in the USPTO
of the two marks on which this complaint is based do not in any material
sense distinguish those marks from the Domain Names. Nor does the Panel
accept Respondents arguments that the INTER-CONTINENTAL mark is generic
or merely descriptive. Although "intercontinental" may be an English language
word and may be the subject of third party trademark registrations for
other goods and services, Complainants trademark registrations are themselves
prima facie evidence that the mark is distinctive. EAuto, L.L.C. v. Available-Domain-Names.com,
Case No. D2000-0120 (WIPO April 13, 2000), § 6. Thus, Inter-Continental
has carried its burden of proof on this factor.
c. Rights or Legitimate Interests
Proper analysis of factor two of the Policy (at paragraph 4(a)(ii))
involves a shifting of the burden of production from the Complainant to
the Respondent. The Complainant first has the burden to make a prima facie
case that Respondent has no rights or interests in the domain name. If
it does so, the burden of production then shifts to the Respondent to offer
demonstrative evidence of his rights or legitimate interests, although
the burden of proof remains on the Complainant. As explained in Document
Technologies, Inc. v. International Electronic Communications Inc., Case
No. D2000-0270 (WIPO June 6, 2000):
This "burden shifting" is appropriate given that Paragraph 4(c) of
the Policy, which is entitled "How to Demonstrate Your Rights to and Legitimate
Interests in the Domain Name in Responding to a Complaint," discusses the
kind of evidence a Respondent should provide to show that it has rights
to or legitimate interests in the domain name. The burden of proof, however,
does not shift as the Policy makes clear that "the complainant must prove
that each of these three elements are [sic] present." Policy, paragraph
4(a).
Although the task of proving a negative may be a difficult one, in
order to make a prima facie case against the Respondent, the Complainant
must at least make some assertions regarding Respondents lack of rights
or interests. Complainant may make this showing with reference to the non-exclusive
factors detailed in paragraph 4(c) of the Policy, or with other evidence
showing that the Respondent has no rights or legitimate interests. Here
Complainant asserts in paragraph 23 of the Complaint that "Respondent Soussi
and/or ISPTECH have no rights or legitimate interests in the domain names"
and in paragraph 24 that "Neither Respondent Soussi nor ISPTECH is known
(either as an individual, business, or other organization) by the names
INTER-CONTINENTAL.COM or INTERCONTINENTAL.COM". Although minimal, these
statements along with the rest of the evidence in the record, are sufficient
to make out a prima facie showing of no rights or legitimate interests.
See EAuto, Inc. v. Available-Domain-Names.com, §§ 5-6.
Respondent has not met the shifted burden of production. All Respondent
offers is affidavit testimony of an intention to offer services; Respondent
has not, however, provided documentary or other demonstrable evidence of
his or ISPTECHs supposed plans to create a legitimate non-profit website
at the URLs in question (nor, curiously, has ISPTECHs alleged owner, Respondents
wife, submitted an affidavit). The Policy plainly requires such demonstrable
evidence, paragraph 4(c)(i), and therefore mere assertions of intent are
insufficient to meet the burden.
Because Respondent has failed to provide sufficient demonstrable evidence
to rebut Complainants prima facie showing of no rights or legitimate interests,
Complainant has met its burden of proof with regard to factor two of the
Policy.
d. Bad Faith
Registration and use of the Domain Names in bad faith are matters of
the appropriate inferences to draw from circumstantial evidence. In this
case, Complainant and Respondent have provided contradictory evidence on
the question of bad faith. On the one hand, Respondent offers the sworn
testimony of Khaled Soussi and Ali Soussi that Khaled Soussi registered
the names for his wifes business and never authorized Ali Soussi to offer
the names for sale. On the other hand, Complainant certifies that Respondent
himself noted in a discussion with Complainants counsel $50,000 was "an
accurate amount to request" and that "he would make sure that no one else
got the domain names for less." 3
In the face of this contradictory evidence, and in the absence of a
live hearing where the Panel can make credibility determinations based
on the witnesses oral testimony, the Panel must determine whether Complainant
has proven bad faith by a preponderance of the evidence.
One coherent and plausible version of the events can be construed based
on the affirmations of Khaled Soussi and Ali Soussi. It is plausible that
Respondent registered the Domain Names for the business reasons stated
and with no intention of trespassing on any rights of Inter-Continental
4. It is plausible that the letters of March 14 and April 7, 1999 were
unauthorized offers to sell the Domain Names. It is plausible that Respondents
April 14, 1999 telephone conference and his April 19, 1999 letter were
not intended as offers to sell the Domain Names and may properly be construed
as only an evaluation of the worth of the Domain Names (April 14 conference)
and as an offer of Respondents Internet services (April 19 letter).
It also is possible, though, that Ali and Khaled Soussi (and perhaps
also Respondents wife) conspired to offer to sell the names, and that
Ali Soussis offer was made with Respondents (or his wifes) approval.
On balance, though, the Panel concludes that Complainant has not proved
(by a preponderance of the evidence) that this is what happened. Not only
is the Panel reluctant to reject the two sworn statements submitted by
Respondent, but also, a conspiracy theory is inconsistent with the evidence
that Ali Soussi took steps to keep his offer secret from his brother Khaled,
including the use of his personal email account and the fax machine of
his other brother, Mansour Soussi.
Nevertheless, the Panel notes that this is a close question. Among
other things, there is no explanation in the record for why Ali Soussis
counsel responded on April 7 to Complainants April 1 letter 5 even though
the letter was sent to Respondent at ISPTECH, nor is there an explanation
for why Respondent himself did not respond to that letter until April 14,
one week after Mr. Al-Sarrafs letter.
In sum, we acknowledge our concern that Khaled and Ali Soussi are trying
to avoid a finding of cybersquatting by using Ali Soussi as a shill, but
must conclude that there is insufficient evidence in this record to allow
the Panel to make that finding. This determination, based as it must be
on this truncated record, does not preclude Complainant from seeking to
prove such a conspiracy or some other basis for a finding of cyberpiracy
in another forum, especially one like a court that permits for discovery,
cross examination, and a searing search for truth among disputed facts.
See Document Technologies, Inc. v. International Electronic Communications
Inc., Case No. D2000-0270 (WIPO June 6, 2000) ("This proceeding is not
conducive to such credibility determinations given the lack of discovery
and, in the normal course, the lack of live testimony."); Eauto L.L.C.
v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047
(WIPO March 24, 2000).
6. Decision
In light of the foregoing, the Panel decides that Respondent is the
owner of the domain name INTERCONTINENTAL.COM and is an alter ego of or
an authorized agent for ISPTECH, the owner of the domain name INTER-CONTINENTAL.COM.
The Panel further decides that, Complainant has carried its burden
of proof with respect to the first and second factors of the Policy --
namely that the Domain Names are identical or confusingly similar to a
trademark in which Complainant has rights, and that Respondent lacks any
rights or legitimate interests in the Domain Names -- but that Complainant
has not satisfied its burden of proof on the third factor, Respondents
bad faith registration and use of the Domain Names. Accordingly, the relief
sought by Complainant with respect to the Domain Names is denied.
David W. Plant
Presiding Panelist
David H. Bernstein Prof. Mohamed Hossam Loutfi
Panelists
Dated: July 5, 2000
Footnotes:
1. Exhibit A is entitled "DOMAIN NAMES OWNED BY MYSELF
AND MY WIFE -- ISPTECH." The domain names are: Isptech.com, Isptech.net,
Space-net.net, Space-net.com, Soussi.net, Soussi.org, Soussi.com, Intercontinental.com,
Inter-continental.com, q-route.net, q-route.com, and q-route.org.
2. Notwithstanding this decision, the Panel notes that
the better practice would have been for Complainant to have named the actual
registrant in the Complaint. This would avoid any issue as to whether the
registrant properly was before the Panel.
3. The Panel relies for this point on the telephone notes
taken by Ms. Jenkins and attached to the complaint, although it would have
preferred declaration testimony from Ms. Jenkins concerning the precise
details of her conversation with Respondent.
4. Both letters are apparently entirely incorrect in
attributing ownership of the two Domain Names to Ali Soussi.
5. In this connection, the Panel notes that it would
have been useful to have received declaration testimony from Mr. Al-Sarraf
as to his role in these events.
Domain Name Not Transferred