A three member UDRP panel just rejected the attempt of WALA-Heilmittel GmbH of Bad Boll, Germany, to grab the domain name Wala.com
This is another UDRP with an interesting set of facts which was first registered in 1999 and for a time had on its homepage a message that the domain was for sale for $5,000,000.
Here are the revelant facts and findings by the three member panel:
The Complainant is incorporated in Germany.
Since the 1930s, it has developed, produced and marketed natural and homeopathic medicines under the name “Wala”.
The Complainant has branches in Australia, Belgium, Chile, Denmark, Finland, France, Greece, United Kingdom of Great Britain and Northern Ireland, Hong Kong, China, Ireland, Italy, Japan, Canada, Croatia, Malaysia, Mexico, New Zealand, The Netherlands, Norway, Austria, Poland, Portugal, the Russian Federation, Sweden, Switzerland, South Africa, Spain, Turkey, Hungary and the United States of America.
The Complainant owns a range of registered trade marks for the word WALA including a German Trademark registered in 1996 and a US trademark registered in 1991
On or about September 14, 2000, the Respondent uploaded a web page at “http://wala.com/lasik/” to thank the doctor with whom he had had successful Lasik laser eye surgery.
On or about April 2, 2001, the Respondent forwarded the disputed domain name to a website consisting of an index to the Quran.
In 2003/2004, the Respondent used the disputed domain name for an information website about a new business he was starting, called “JOB General Transport”.
On May 17, 2004, the Respondent incorporated a general trading company in Dubai by the name of “Canada FZE”. (The acronym, FZE, stands for “Free Zone Establishment”. A “Free Zone” enables foreign-owned businesses to be licensed in the UAE.)
For most or all of the period from about July 2004 to 2010 the home page of the website comprised different versions of a “not for sale” notice, one of which comprised a translation of the term “Not for Sale” into ten languages.
An archive WhoIs record dated September 4, 2004, shows that the registrant and administrative contact name was “Iyad Aswad” and what appears to be a complete (Dubai) address is given for both contacts. There was also an “aswad@[…]” email address and a telephone/fax number.
From 2004 to 2006, the Respondent used the website to upload photos of various trips abroad, although not visible to the public from the front page of the website.
As of January 7, 2011, the home page of the Respondent’s website carried a message stating: “DOMAIN FOR SALE: US$= 5,000,000,00 ONLY. THIS DOMAIN IS FOR SALE. US$ = 5,000,000.00 = ONLY.”
According to an archive WhoIs record dated March 16, 2011, the registrant name for the disputed domain name was shown as “Canada”, with “Iyad Aswad” still listed as administrative contract. Both were shown as located at the same Dubai address as previously (although the street/house number had been removed from the address). The email address had been changed to a Gmail one.
As of March 22, 2011, the disputed domain name was switched into the name of a proxy service.
At some point later in 2011, the Respondent switched the front page to a simple “under reconstruction” notice.
In around November/early December 2011, the Complainant sent a cease and desist email to the Respondent. The Respondent replied on December 7, 2011, stating: “You should know that our domain has never been exposed to your trade mark or to any equivalent related deals or businesses, and being registered for ages under our name. Please feel free to start any procedure you like and our New York lawyer will act accordingly. Regards, Wala.com.”
When visited by the Panel in the course of preparing this decision, the website at the disputed domain name comprised a large family photograph labelled “Aswad family”, with a notice at the bottom stating “personal website”.
D. Registered and Used in Bad Faith
The Complainant bases its case in part on the contention that the Respondent “could easily have known” about the existence of the Complainant’s trade mark.
In support, the Complainant cites a number of previous UDRP cases, all of which are cited as relevant decisions in conjunction with the following paragraph within paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which addresses the question as to whether constructive notice, or a finding that a respondent “knew or should have known” about a trade mark, or willful blindness, can form a basis for finding bad faith:
“Knew or Should Have Known: Some panels have in certain circumstances found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (other than through the above-mentioned US concept of constructive notice). This may be seen as an instance of the panel attributing readily obtainable knowledge to a respondent even if the respondent avers that it did not have the knowledge. Circumstances in which panels have made such finding have included those in which the complainant’s trademark was shown to be well-known or in wide use on the Internet or otherwise at the time the domain name was registered, or when a respondent’s denial of knowledge is otherwise highly improbable […]”
The preceding paragraph in WIPO Overview 2.0 observes that UDRP panels have mostly declined to introduce the US concept of constructive notice per se into the UDRP – although some UDRP panels have done so in certain circumstances involving US-located respondents.
“In the Panel’s view, the question for the Panel in this case is not whether the Respondent “could” or “should” have known of the Complainant’s trade mark but rather whether, on the balance of probabilities, it is likely that the Respondent was in fact aware of the Complainant’s trade mark on registration of the disputed domain name taking account of all of the circumstances including the fame or otherwise of the Complainant’s mark, the plausibility or otherwise of the Respondent’s denial of knowledge of the Complainant and of the Respondent’s rationale for selecting the disputed domain name, and the manner in which the Respondent has in fact used the disputed domain name.”
As to the fame of the Complainant’s trademark, the Complainant has produced a vast amount of evidence of trade mark use.
A mixed picture emerges.
Some examples relate solely to use of the DR. HAUSCHKA mark (and can be disregarded).
Others principally demonstrate use of “Dr. Hauschka” but also include subsidiary reference to WALA, usually as part of the manufacturer name shown on product labels and at the end/back of marketing literature: “aus dem Hause WALA Heilmittel GmbH”.
There are yet further instances of documents which are indeed primarily branded WALA but many of these are directed to the relevant trade, not “public-facing” documents. A batch of product brochures, which are said to carry the distinctive WALA logo, in fact either replace the word WALA with “Dr. Hauschka” or simply contain only the design part of the logo, omitting any words at all.
Further, there is no information, such as turnover figures or marketing spend, indicating the scale of the Complainant’s activities by reference to the WALA brand as at the date of registration of the disputed domain name in 1999 (or indeed thereafter). Nor is there any evidence at all of pre-registration use specifically referable to the UAE or any of the other countries in which the Respondent has been located – Canada or Syria.
Accordingly, while the Complainant has clearly used the mark WALA in Germany and elsewhere, both as a primary brand and as a subsidiary one to DR HAUSCHKA, the Panel is not convinced from the evidence before it that the Complainant’s WALA brand has achieved such a level of fame as to render the Respondent’s denial of knowledge implausible.
The Respondent has provided a declaration “under penalty of perjury” setting out, amongst other things, the reason why he registered the disputed domain name.
The Panel does not of course automatically accept that the facts stated in the declaration are true, but simply notes that the declaration is said to be made under penalty of perjury; this declaration is just one factor to be considered in weighing the evidence as a whole.
The Respondent’s explanation is that he would frequently be referred to as “wala” by his friends and family because he was married later in life in comparison to his friends and because he had lived “a quite full social life” as a single man. He says that “wala” is a common colloquial, or slang, Arabic term referring to a “naughty boy” or, in certain contexts, to someone who is a “playboy”. He says he believes that this slang term comes from the word, “walad”, which means “boy” in Arabic. The Respondent adds that to his knowledge “wala” is a very common word in Arabic referring amongst other things to a “kind of oath”.
The Panel notes that the Respondent has not produced any document in which he is actually referred to as “wala” although perhaps one it is unreasonable to expect a nickname to feature in written, as opposed to face-to-face, communications. The Response exhibits a translation/transliteration of the lyrics of an Arabic song entitled “Elzam 7doudak Ya Wala” / “Know Your Limits, Boy!” in support the Respondent’s assertion as to the “naughty boy”/“playboy” meaning, but no other supporting evidence.
The Panel has taken some trouble to set out in section 4 above its detailed factual findings as to the Respondent’s use of the disputed domain name for an assortment of private and business purposes over the years, based of course on the evidence before it. It is striking that none of these uses relate in any way to the Complainant or to the Complainant’s area of business – despite the Respondent having held the disputed domain name for some 14 years.
The Complainant lays particular weight on the message on the Respondent’s website in 2011 which stated that the disputed domain name was for sale for US dollars 5 million.
Out of context, such a notice might indeed raise suspicions about the bona fides of the Respondent.
The Respondent, however, asserts that the message was an “exasperated effort” to get the point across to the world at large that the disputed domain name was not for sale – in response to a constant stream of purchase enquiries.
The Respondent’s explanation is corroborated by evidence of a dozen or so purchase enquiries from 2010 to date.
Only one of those pre-dates the Respondent’s notice – the Respondent says that previous enquiries are no longer available due to his switching computers and email services over the years – but the volume of more recent enquiries is at least an indicator of what is likely to have occurred previously.
Further, the evidence shows that, for some six years or so before the sale notice appeared, the home page of the Respondent’s website comprised a “not for sale” notice in differing formats. In view of this, and although it was a somewhat unusual route for the Respondent to take, in the particular circumstances of this case the Panel accepts the Respondent’s assertion that, by proposing an extraordinarily high price which was bound to deter prospective purchasers, the sale notice was intended to convey the message that the disputed domain name was not in fact for sale rather than it being an offer of sale directed at the Complainant or indeed anyone else.
The position might have been different if there had been evidence linking the sale notice with the Complainant in some way, but there is none.
In any case, the sale notice was displayed some 12 years after the Respondent’s acquisition of the disputed domain name and so, even if it had been intended as a genuine offer for sale, and even if it had been directed at the Complainant, that of itself would not necessarily signify that the disputed domain name was originally acquired for that purpose, which the Complainant would have to establish in order to succeed under paragraph 4b(i) of the Policy.
The Complainant contrasts the price of US dollars 5 million with the prices of under US dollars 2,000 which the Respondent has sought for a number of other domain names which he has offered for sale.
However, the Panel has accepted the Respondent’s explanation for the US dollars 5 million price tag in the particular circumstances relating to the disputed domain name, as explained above, and so nothing turns on the distinction between this and the prices he has sought for his other domain names.
The Complainant also claims that of itself the Respondent’s ownership of 158 domain names, many of which are actively marketed for sale, is indicative of a pattern of bad faith. However, in the absence of any suggestion, let alone evidence, that any of those domain names reflect third party trademarks, this assertion must fail.
Finally, the Complainant relies on the alleged attempt by the Respondent to conceal his identity, particularly on the basis of use of the registrant name “Canada” and thereafter by transfer into a privacy service.
In the Panel’s view, the evidence does not show that the Respondent set out to conceal his identity. As mentioned in section 4 above, before the registrant switch to “Canada”, Mr. Aswad was shown as the registrant and administrative contact for the disputed domain name. There is no reason to think that the address or other contact information shown for Mr. Aswad was false. And while, on the face of it, the change of registrant to “Canada” may seem questionable, it is now clearly explicable given the Respondent’s evidence that he had incorporated a trading company called “Canada FZE” in the UAE in 2004.
Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the “true” or “underlying” registrant (possibly including that registrant’s actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith.”
The Panel sees nothing untoward in the manner in which the Respondent has used the proxy service which might be indicative of bad faith.
Accordingly, having carefully weighed up all of the above matters, including the long period for which the disputed domain name has been registered and its use for multifarious personal and business purposes all unconnected with the Complainant, the Panel concludes that on the balance of probabilities the Respondent’s explanation of his purpose in registering the disputed domain name and his denial of knowledge of the Complainant at the time of registration of the disputed domain name are credible.
The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.”””