[gnso-irtpd] a good example of the "employee takes the domain name with them" use-case -- and how UDRP was the wrong tool to use

["Mike O'Connor" <mike@xxxxxxxxxx>]

hi all,

i thought of our use-case conversation when i saw this piece by Mike Berkins 
(www.thedomains.com).  this is a UDRP case that failed mostly because UDRP 
wasn't the right way to solve this problem.  this emphasizes for me the need 
for a clear description, somewhere, of what course people should pursue under 
different use-cases.  

here's the link;

http://www.thedomains.com/2013/12/09/udrp-panel-fails-to-order-transfer-of-domain-back-from-ex-employee/

and here's the write-up;

UDRP Panel Fails To Order Transfer Of Domain Back From Ex-Employee

2013 December 9
by Michael Berkens
Follow @TheDomains

The Law Firm Dr. Khalid Alnowaiser of Jeddah, Saudi Arabia, just lost its bid 
to get the domain name lfkan.com in a UDRP

The Complainant is a law firm established in 1996, with offices in Riyadh and 
Jeddah, Saudi Arabia. The Complainant offers a range of legal services to local 
and international clients, in both Arabic and English.

Although the one member UDRP panel found that “The record suggests bad faith on 
the part of a disaffected former employee of the Complainant, who seems to have 
hijacked the Domain Name and thereby caused injury to the Complainant’s 
business. ”

“The Complainant may be able to pursue other legal remedies for this conduct, 
but the UDRP offers no remedy without establishing rights in a relevant mark, 
which the Complainant has failed to do.”

“The Complainant does not claim a registered trademark right.

According to the Complaint, the Complainant has been “known in the market” 
since 1996 by the initials “LFKAN”: “LF” for “Law Firm”, “K” for “Khalid”, and 
“N” for “Nowaiser”, eliding the prefix “AL” (the definite article “the” in 
Arabic) because it so commonly appears at the beginning of surnames in Saudi 
Arabia. (The Complaint does not explain why the letter “A” is used nonetheless 
in the abbreviation.)

The Complainant asserts, with support from DomainTools screen shots of 
historical WhoIs records, that the Complainant registered and used the Domain 
Name from November 2000 until July 2013 for its firm website and email 
addresses.

In July 2013, however, the registration of the Domain Name was updated, 
apparently by Mr. S. Faraz, who was the Complainant’s employee responsible for 
information technology and whose firm email address was formerly listed in the 
administrative and technical contact details for the Domain Name.

According to the Complaint, the firm had recently terminated Mr. Faraz for 
unrelated reasons.

Mr. Faraz refused to furnish the password used to administer the Domain Name 
registration, and he changed the name servers so that the firm’s website was no 
longer displayed and its email addresses were deactivated. At the time of this 
Decision, the Domain Name resolves to a version of the Complainant’s website 
that appears not to display information dated more recently than 2012.

The current registration details for the Domain Name show the registering 
organization as “andrewsmith”, which does not appear to be a registered legal 
entity in the United Kingdom or in Saudi Arabia.

The administrative and technical contact person is listed as “andrew smith”, 
with a Google Gmail address. (The Complaint attaches a message from Gmail 
regarding the creation of this particular Gmail account, which was found on the 
firm laptop used by Mr. Faraz).

The updated postal address in the WhoIs database shows London as the 
registrant’s city and lists a London postal code.

However, Guam is shown as the state or province, and Guam, of course, is a 
territory of the United States of America. The telephone number given for the 
administrative and technical contact is actually the Complainant’s telephone 
number in Saudi Arabia. On the face of it, then, the registration data are 
inaccurate and misleading.

The Policy does not require a registered mark right, but a complainant relying 
on a common law or unregistered mark right must demonstrate that the mark has 
acquired secondary meaning:

“Consensus view: The complainant must show that the name has become a 
distinctive identifier associated with the complainant or its goods or 
services. Relevant evidence of such ‘secondary meaning’ includes length and 
amount of sales under the trademark, the nature and extent of advertising, 
consumer surveys and media recognition. [...] a conclusory allegation of common 
law or unregistered rights (even if undisputed) would not normally suffice; 
specific assertions of relevant use of the claimed mark supported by evidence 
as appropriate would be required.” WIPO Overview of WIPO Panel Views on 
Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.)

“The Complainant has simply not furnished such evidence in this proceeding. The 
Complainant only asserts that it has been “known in the market” by the initials 
“LFKAN” since 1996. However, the evidence in the record concerns only the use 
of those initials in the Domain Name itself.”

The Complainant relies on the fact that many of the published articles and 
interviews displayed Dr. Alnowaiser’s email address, which used the Domain 
Name. An email address is not sufficient to establish a trademark, or the basis 
for the filing of a UDRP action. There is no evidence in the record, for 
example, showing that the initials “LFKAN” are used on the firm’s stationery, 
advertising, or business cards. It is telling that even the Complainant’s 
website does not prominently display the initials “LFKAN”. Instead, it is 
headed “The Law Firm of Dr. Khalid Alnowaiser & Partners”.

“The Complainant must establish that the Domain Name is identical or 
confusingly similar to “a trademark or service mark in which the complainant 
has rights”. The Complainant does not establish that unregistered trademarks 
are recognized under common law or otherwise in Saudi Arabia, or that the 
Complainant’s initials are otherwise legally protected in any jurisdiction. 
Even if such protection were theoretically available, the Complainant has not 
demonstrated on this record that the initials “LFKAN” have acquired secondary 
meaning as a distinctive identifier of the Complainant or its goods or services 
in any geographic market.”

“The Panel concludes that the first element of the Complaint has not been 
established.”


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