Re: [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

[Holly Raiche <h.raiche@xxxxxxxxxxxxxxxx>]

Hi Mikey

Fascinating reading.  And it fleshes out one of our scenarios - and 
inter-company dispute that has little to do with trade mark law and everything 
to do about a disaffected employee who absconds - in this case with the domain 
name.

The next question relates to a response James gave, really in passing, where it 
is the company that should be seen as the owner (maybe this is something that 
needs further work?).  

Holly


On 16/12/2013, at 12:29 AM, Mike O'Connor wrote:

> 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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