Olayan-consulting.com

The timeline behind olayan-consulting.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AN D MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Olayan Financing Company Limited v. Mohammed AlOlayyan, Olayan Consulting Case No. D2023-3468 1. The Parties The Complainant is Olayan Financing Company Limited, Saudi Arabia, represented by DLA Piper UK LLP, United Kingdom. The Respondent is Mohammed AlOlayyan, Olayan Consulting, Saudi Arabia. 2. The Domain Name and Registrar The disputed domain name <olayan-consulting.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Reg istrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2023. On August 16, 2023, the Center transmitted by email to the Registrar a request f or registrar verif ication in connection with the disputed domain name. On August 16, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Olayan Consulting) and contact inf ormation in the Complaint. The Center sent an email communication to the Complainant on August 17, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint on August 22, 2023. The Center verif ied that the Complaint together with the amended Complaint satisf ied the f ormal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center f ormally notif ied the Respondent of the Complaint, and the proceedings commenced on August 25, 2023. The Respondent’s Tech Contact sent inf ormal email communications to the Center on September 6, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2023. The Respondent did not submit any f ormal response. The Center notified the Respondent of the Commencement of Panel Appointment Process on September 15, 2023. page 2 The Center appointed Edoardo Fano as the sole panelist in this matter on September 27, 2023. The Panel f inds 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. The Panel has not received any requests f rom the Complainant or the Respondent regarding f urther submissions, waivers or extensions of deadlines, and the Panel has not f ound it necessary to request any f urther inf ormation f rom the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Theref ore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benef it of a f ormal response f rom the Respondent. The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Olayan Financing Company Limited, a Saudi Arabia company established since 1969 and belonging to The Olayan Group, which operates in several f ields, including investing on public and private equities, real estate, distribution, manufacturing and marketing. The Complainant and other Olayan Group’s companies own several trademark registrations worldwide f or OLAYAN, among which: - Saudi Arabia Trademark Registration No. 141001442 f or OLAYAN and design, registered on June 25, 1990; - European Union Trademark Registration No. 004653151 for OLAYAN, registered on March 2, 2007. The Complainant also operates on the Internet, its main website being “www.olayan.com”. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on March 17, 2023, and it is inactive. However, the Complainant has provided evidence that before the Complaint was filed, the disputed domain name resolved to a website in which the Complainant’s trademark was reproduced and investing services were purportedly offered by a self-declared Olayan Consulting in two of the same f ields as the Complainant, namely oil & gas and offshore & shipping, in the same geographic area as the Complainant, namely Saudi Arabia and Middle East. Following a cease-and-desist letter sent by the Complainant’s representatives on May 19, 2023 to the Registrar of the disputed domain name, the website corresponding to the disputed domain name was shut down. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy f or a transf er of the disputed domain name. Notably, the Complainant contends that disputed domain name is conf usingly similar to its trademark OLAYAN. page 3 Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolved to a website in which the Complainant’s trademark was reproduced and investing services were purportedly off ered by a self-declared Olayan Consulting in two of the same fields as the Complainant, namely oil & gas and offshore & shipping, in the same geographic area as the Complainant, namely Saudi Arabia and Middle East. The Complainant submits that the Respondent has registered the disputed domain name in bad f aith, since the Complainant’s trademark OLAYAN is well known, particularly in Saudi Arabia and the Middle East. Theref ore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to impersonate the Complainant and attract, f or commercial gain, Internet users to the Respondent’s website, creating a likelihood of conf usion with the Complainant’s trademark as to the source, sponsorship, af f iliation, or endorsement of the Respondent’s website, qualif ies as bad f aith registration and use. B. Respondent The Respondent has made no f ormal reply to the Complainant’s contentions. A respondent is not obliged to participate in a proceeding under the Policy, but if it f ails to submit a f ormal response, reasonable facts asserted by a complainant may be taken as true, and appropriate inf erences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisf y in order to succeed: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad f aith. A. Identical or Confusingly Similar It is well accepted that the f irst element f unctions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark f or the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel f inds the entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms, here “consulting”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. page 4 It is also well accepted that a generic Top-Level Domain, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel f inds the f irst element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rig hts o r legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossib le task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come f orward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent f ails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come f orward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for impersonation/passing of f can never co nf er rig hts o r legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Moreover, the Panel f inds that the composition of the disputed domain name carries a risk of implied af f iliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel f inds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that f or the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad f aith. In the present case, regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark OLAYAN in Saudi Arabia and the Middle East is clearly established, and the Panel f inds that the Respondent must have known of the Complainant, and deliberately registered the disputed domain name in bad f aith. The Panel f urther notes that the disputed domain name was also being used in bad f aith since the Respondent was trying to attract Internet users to its website by creating likelihood of conf usion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the Complainant’s business. Panels have held that the use of a domain name for impersonation/passing off constitutes bad f aith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad f aith under the Policy. page 5 The above suggests to the Panel that the Respondent intentionally registered and was using the disputed domain name in order both to disrupt the Complainant’s business, and to attract Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. As regards the current use of the disputed domain name, which is inactive, Panels have found that the non- use of a domain name (including a blank or “coming soon” page) would not prevent a f inding of bad f aith under the doctrine of passive holding. Having reviewed the record, the Panel f inds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, f actors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of f alse contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, the composition of the disputed domain name, and the f ailure of the Respondent to submit a response, and f inds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad f aith under the Policy. Furthermore, the Panel considers that the nature of the inherently misleading disputed domain name, which includes the Complainant’s trademark in its entirety with the addition of the term “consulting”, ref erring to a Complainant’s field of activity, further supports a f inding of bad f aith. WIPO Overview 3.0, section 3.2.1. Based on the available record, the Panel f inds the third element of the Policy has been established. 7. Decision For the f oregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <olayan-consulting.com> be transf erred to the Complainant. /Edoardo Fano/ Edoardo Fano Sole Panelist Date: October 11, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.