F J Benjamin Holdings Ltd. v. Rare Domain Nominee

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

F J Benjamin Holdings Ltd. v. Rare Domain Nominee

Case No. D2003-0898

1. The Parties

The Complainant is F J Benjamin Holdings Ltd., of Singapore, represented by Drew and Napier LLC, Singapore.

The Respondent is Rare Domain Nominee, Victoria, Australia, represented by Mr. N.K.K. Khoo, of Gelugor Penang, Malaysia. When the Complainant filed its Complaint on November 11, 2003, it named ‘Nominee Accout’ of Georgetown, Malaysia as the Respondent, because a prior WHOIS search had shown the identity of the Respondent thus. However, as at the date of filing of the Complaint, the registrant of the disputed domain name was ‘Rare Domain Nominee’. It is therefore the proper and only Respondent. The evidence shows that a Mr. N K Khoo controls both entities.

2. The Domain Name and Registrar

The disputed domain name, <fjbenjamin.com>, is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2003. On November 11, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The registrar, eNom, failed to submit a registrar's verification response, but on November 20, 2003, eNom confirmed that Rare Domain Nominee is listed as the registrant and that the domain name is in "registrar-lock" status". In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 24, 2003, naming both ‘Nominee Accout’ and ‘Rare Domain Nominee’ as Respondents. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the Amended Complaint, and the proceedings commenced on November 27, 2003. The Response was filed with the Center on December 15, 2003.

The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand, as sole panelist in this matter on December 18, 2003. The Panel finds 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 granted leave to the Complainant to file a reply to the Response on December 19, 2003. The Panel has also considered further comments from the Respondent, filed without leave being sought, on December 30, 2003.

4. Factual Background

The Complainant was incorporated in Singapore in 1973 by its founder, chairman and current Chief Executive Officer ("CEO") Mr. Frank Benjamin.

In June 1973, it became a private limited company under the name FJ Benjamin & Sons Pte Ltd. In June 1993, the name was changed to FJ Benjamin Holdings Pte Ltd.

The Group was listed on the Stock Exchange of Singapore in November 1996, and has two main core areas of business, namely fashion retailing and timepiece distribution. The group operates over 90 retail outlets in the region representing exclusively Valentino, Emanuel Ungaro, La Perla, Guess, Guess Kids, Lalique, Sheridan, La Senze and Zoomp. It has a Joint Venture for the Valentino franchise. The Group also has a credible timepiece distribution business in the region representing brands such as Girard-Perregaux, Jean Richard, Bell & Ross, Victorinox Swiss Army, Guess, Marc Ecko, Nautica and Nike on an exclusive basis. It has exclusive rights to distribute designer labels such as Lanvin, Gucci and Fendi in the region.

It recently developed its own label, RAOUL, for men’s shirts and ties. The Group is also developing its first multi-brand store concept – INEZ, representing the latest European ready-to-wear and accessory labels. The Group also has a successful design/licensing department which licenses brands such as Guess Kids, MUFC and RAOUL.

Through its retail franchise for the Manchester United Football Club in England, the Group distributes Club apparel and MUFC.

Over the past four decades, the Group has developed marketing expertise in fashion, timepieces and lifestyle brands. Its franchise also includes the dining/entertainment concept.

The Complainant’s turnover for the 2003 financial year was S$105,569,000. It has subsidiaries in Hong Kong, Malaysia, Singapore and Taiwan. It owns domain names incorporating ‘fjbenjamin’ as the first word. The Complainant and its subsidiaries have traded extensively in the Singapore/Malaysia region for many years under the ‘FJBenjamin’ name.

5. Parties’ Contentions

Complainant

(a) Confusingly Similar Name

Because the disputed domain name comprises wholly of the name of the Complainant, it is self-evident that it is identical to the Complainant’s name in which the Complainant has rights by way of a common law mark. The common law mark is based on the Complainant’s trading in Singapore and Malaysia for many years under the name ‘FJBenjamin’.

(b) No Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the said domain. This is because:

(i) The Complainant has not licensed or otherwise permitted the Respondent to use its name or to apply for any domain name incorporating its name.

(ii) The domain name bears no resemblance to the Respondent’s name or business.

(iii) The Respondent does not provide any goods or services using the FJ Benjamin name.

(c) Bad faith

On or about June 18, 2002, Mr. Girish Kumar, the IT manager of the Complainant discovered that the domain name <fjbenjamin.com> was registered by Rare Domain Nominee. Upon visiting the website "www.fjbenjamin.com", the user was automatically redirected to the website at "www.furnituretrader.com". The WHOIS search of the domain name <furnituretrader.com> revealed that it was registered by a Company called PHL Furniture Traders Dot-Com (M) Sdn Bhd. The contact person was listed as Mr. N S Khoo. The telephone and fax numbers listed were the same as those for the disputed domain name.

A Company search of PHL Furniture Traders Dot-Com (M) Sdn Bhd revealed that one of the directors was Mr. Khoo Nee Seng. However, on a date unknown but sometime between October 8, 2003, and November 11, 2003, upon visiting the website at the disputed domain name, the user was automatically redirected to the website at "www.sixsigmainstitute.com".

The Complainant emailed the then registrant on June 18, 2002, seeking

transfer of the disputed domain name to the Complainant. A reply was received

on June 23, 2003, in the name of ‘Raredomain.com’ giving the Complainant

three options to recover the domain. Namely:

(i) pay the present domain name registrant the sum of US$2,000 to US$5,000

for the transfer of the domain;

(ii) file a UDRP complaint (which would cost US5,000 to millions); or

(iii) sue the registrant of the domain.

The Complainant offered to purchase the domain for US$1,500 which offer was

accepted by Mr. Khoo. However, the Complainant required several conditions for

the transfer, namely:

(i) The charge for transfer of the disputed domain name <fjbenjamin.com>

was to be US$1,500.00 (with no additional or hidden cost);

(ii) The Respondent would not negotiate or sell the domain name to any other

party after the acceptance of the deal by e-mail confirmation;

(iii) The maximum amount payable to the Respondent for lawyer’s fees would

be S$200.00

After further email exchanges between the Complainant and Respondent (who later

signed off as Mr. Khoo) from July 5, 2002, to August 21, 2002,

negotiating on the method of transfer, the agreement to assign the domain name

failed to materialize.

On November 18, 2002, the Respondent contacted the Complainant to

revive the previous agreement to assign the domain name. However, the Complainant

no longer felt comfortable with dealing with the Respondent because of the previous

abortive dealing.

The domain names <fjbenjamin.com>, <raredomain.com>, <furnituretrader.com>

and <sixsigmainstitue.com> are all under the control and management of

Mr. Khoo. The telephone and fax numbers of the registrants listed in the WHOIS

searches of the same domain names are similar (an Australian telephone and a

US fax number). Further, the same email address and an address in Koonawarra

Street in Victoria, Australia feature prominently in the WHOIS searches.

The Respondent has acted/is acting in bad faith by:

Acquiring the disputed domain name primarily for the purpose of selling it

to the Complainant or a competitor for valuable consideration in excess of its

documented out-of-pocket costs directly related to the domain name;

The first email response from the Respondent on June 23, 2002, showed

that the Respondent’s intention was to sell the domain to the Complainant for

between US$2,000 to US$5,000. The purpose of stating the two other options (options

(ii) and (iii) and the much higher costs involved was to highlight to the Complainant

that option (i) (i.e. to purchase the domain name from the Respondent)

was the cheapest option.

Further, in the Respondent’s email of July 5, 2002, the Respondent

had threatened to sell the domain to the Complainant’s competitors if the price

was right. In the same email, the Respondent had highlighted that proceedings

under the Policy against his client’s domain name <genting.com> had been

unsuccessful and as a result, his client was now only prepared to assign the

name for millions of ringgit (i.e. Malaysian currency). The Respondent admitted

in his email of August 15, 2002, to having "sold domains to few

public listed companies in Singapore and Malaysia".

The suggested sale price of US$2,000 to US$5,000 is far in excess of a reasonable

estimate of the costs incurred by the Respondent in registering and maintaining

the website, especially since the domain name is merely redirecting traffic.

The fact that the Complainant initiated inquiries should not be a material

consideration in this matter. See SembCorp Industries Limited v Hu Huan Xin

(WIPO Case No. D2001-1092).

The Respondent registered the domain name to prevent the Complainant from reflecting

its name in a corresponding domain name. The Complainant believes that this

is not the first time the Respondent had done so. In the case of International

Organization for Standardization v. International Supplier Operations Audit

Services (WIPO Case No. D2002-0460),

the panelist ordered that the domain names <isoquality.com>, <isoaudit.com>

and <isoconsultant.net> (registered with eNom, Inc) be transferred to

the Complainant.

In the above case, the Respondent was purportedly known as International Supplier

Operations Audit Services 007, of Victoria, Australia. However, the Respondent

in that case gave its contact details to be in Penang, Malaysia with a fax number

in the United States and an email address <araneum@email.com>.

In view of (i) the identical email address; (ii) identical fax numbers; (iii)

the use of the same address in Australia; (iv) the identical Malaysian contact

address and (v) (to a lesser extent) the use of the same domain name registrar,

eNom Inc, the Complainant has reason to believe that the Respondent in the above

case is also the party responsible for registering <fjbenjamin.com>.

The Respondent (or Mr. Khoo) has automatically redirected users visiting the

website at the disputed domain name to the website at "www.furnituretrader.com"

and subsequently "www.sixsigmainstitute.com". By doing so, the Respondent

is intentionally attempting to attract, for financial gain, Internet users to

Mr. Khoo’s website by creating a likelihood of confusion with the Complainant’s

name as to the source, sponsorship, affiliation, or endorsement of the Respondent’s

website or location, or of a product or service on the Respondent’s website

or location.

Respondent

It is wrong for Complainant to use two WHOIS records for one single domain.

Complainant does not have a service or trademark registered in USA or Malaysia.

The disputed domain name was not put up for sale.

Complainant’s documents concerning the alleged sale are ‘faked’.

The disputed domain name is not being used in bad faith but is being used by

Respondent in his bona fide consulting business.

The current Respondent was not involved in WIPO

Case No. D2002-0460. The Complainant has purported to make several

false and baseless accusations against the Respondent by basing on a doubtful,

unreliable and factually wrong Exhibit.

There are two deficiencies or flaws identified in Exhibit 15 given by Complainant.

They are described by the Respondent thus:

"(i) The whole "story telling" is based on Exhibit 2, a wrong

and invalid document confirmed by registrar’s whois record. A person with this

email araneum@eamil.com is not an authorized person to sell or transfer <fjbenjamin.com>

to any party as accused by Complainant in their Exhibit 15. This evidence can

be drawn from Complainant’s Exhibit 19(b) because araneum@email.com is not registered

either as an administrator and/or registrant. Therefore, the respondent (registrant)

categorically denies that the registrant and/or administrator had made or engaged

in any negotiation for selling <fjbenjamin.com> to Complainant or their

representative in the past.

(ii) There is no computer forensic study by any computer expert to show that

those email messages in the printouts are genuine and unaltered by any party

or hacker during the electronic transmission, storage and printing stages. As

a matter of fact, we did receive emails from someone who claimed he is from

Microsoft support center, but we realized it was the work of a computer worm

from unidentified source. This is to let Panel aware such unencrypted and unauthenticated

email is an unreliable source and was not accepted as a conclusive and legal

evidence in the court of Malaysia. We always insist hardcopies must be delivered

to/received from any parties for the technical and legal reasons in this WIPO

case.

There is an attempt to "reverse hijack" the domain name from the

registrant."

The Respondent registrant is a quality consultant and owner of <sixsigmainstitue.com>,

and <sixsigma.com.my>, operating under a company named "FJBEN Jamin

Kualiti Konsultant" (The English translation is FJBEN Quality Assurance

Consultant). Though registrant has not acquired "fjbenjamin" trade

or service marks in Malaysia, he had been using "FJBEN Jamin Kualiti Konsultant"

publicly in his website for almost two years. (see hhtp://www.sixsigma.com.my/

aboutus.shtml) and legal notice (see hhtp://www.sixsigma.com.my/legal.shtml).

The Malaysian government has approved "FJBEN Jamin Kualiti Consultant"

as a company registration with the registration number MA0074079-P under the

Quality Management and Industrial Training Provider category. The word "Konsultant"

was changed to "Consultant" to conform to the Malay language statute

requirement for the company’s legal document. Both words mean the same.

The registrant had also tried to register <fjben.com> and <jamin.com>

in the past for his own company used, but both domains were already registered

by other parties residing in other countries. The registrant fully understands

that other parties have equal rights when registering the domain name.

This is to say and prove that the registrant registered these domains such

as <fjbenjamin.com>, <kualiti.com> and <donsultant.com> for

his own legitimate consulting company by reflecting his parent company’s (FJBEN

Jamin Kualiti Konsultant) name on the Internet. All these domains are pointing

to same website, <sixsigmainstitue.com> and <sixsignma.com.my>.

The Complainant’s Malaysian subsidiary is no longer active and is not a legal

entity in Malaysia.

Complainant’s Reply

The Complainant strongly resents and refutes any implication that it has fabricated

evidence to support its Complaint. A company called "FJBENjamin Kualiti

Konsultant" has not been registered as yet in Malaysia according to a search

made on December 17, 2003. Any application for such registration was

an ‘afterthought’ to frustrate the Complainant’s claim.

As at November 28, 2003, the Respondent’s website showed that he

was using the name ‘FJBenjamin Consulting Service (Malaysia)’ in an attempt

to legitimize his registration of the disputed domain name. The relevant page

on the website has been amended subsequently to reflect the name "FJBENjamin

Kualiti Konsultant".

The Respondent has given no reason to using the name "FJBen" or "FJBenjamin".

A statutory declaration from the Complainant’s IT Manager, Mr. Girish Kumar

Nagaraj, refuted the allegation of fabrication made in the Response. He exhibited

to his declaration the exchange of emails between himself and Mr. Khoo and declared

that he had actually spoken to Mr. Khoo in the course of the negotiations. He

declared that two law firms were engaged in the abortive transfer negotiations.

Respondent’s Additional Comments

The Respondent added little to the debate in the unsolicited further comments

which have, nevertheless, been considered by the Panel. The comments came from

Mr. Khoo. He says that his company was formed with the word ‘Consultant’ not

‘Konsultant’ in its name. The Respondent had displayed this company’s name since

the launch of the "www.sixsigma.com.my" website. The Complainant was

fabricating evidence and Mr. Khoo challenges it to bring the accusations

before the High Court of Malaysia.

The remainder of Mr. Khoo’s additional comments add little to the debate. He

did not deny that he had spoken to Mr. Kumar or that a legal firm had been acting

for him at the time of the proposed transfer. Nor did he deny that he had been

using the name of ‘F.J.Benjamin Consulting Service (Malaysia)’ on the Six Sigma

website as at November 28, 2003.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) the domain name is identical and confusingly similar to a trademark or

service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the

domain name; and

(iii) The domain name has been registered in bad faith and is being used in

bad faith.

Identical or Confusingly Similar

For the purposes of paragraph 4(a)(i) of the Policy, the Complainant has to

have rights in a trademark or service mark and the domain name must be identical

or confusingly similar to that trademark or service mark. It is of no consequence

in which jurisdiction the trademark or service mark rights reside. They may

be anywhere in the world. Additionally, those rights may be registered or unregistered.

Accordingly, it is immaterial that, as the Respondent asserts, the Complainant

has no relevant trademark or service mark registrations in the United States

and Malaysia. The disputed domain name is identical to the mark ‘FJBenjamin’

under which the Complainant has traded widely for many years in Singapore, Malaysia

and other Asian countries. The Complainant has demonstrated that the mark is

sufficiently well-known in Singapore and Malaysia so that it can be regarded

as a common law mark in which the Complainant has rights. Accordingly, the first

criterion is proved.

Rights or Legitimate Interests

There is confusion in the Respondent’s documents over the focus that the Panel

has to bring to the issues for determination. It is the conduct of the domain

name registrant that must be the prime focus. The current domain name registrant,

the Respondent, is ‘Rare Domain Nominee; which acquired registration on some

date between October 8, 2003, and November 11, 2003. There

is no evidence that this particular entity has itself – as distinct from its

controller, Mr. Khoo – ever carried on any business.

The Complainant gave the Respondent no rights to or interests in the disputed

domain name. The Respondent attempts to come within paragraph 4(c)(i) of the

Policy and Mr. Khoo asserts that he has been carrying on a bona fide

business before he had notice of the Complainant’s rights. This intention cannot

be correct for the following reasons:

(i) The attempt by Mr. Khoo to register a company in Malaysia with a strained

reference to FJBenjamin, i.e. "FJBENjamin Kualiti Konsultant", after

the administrative proceedings had been commenced, demonstrates an intention

to gain some advantage in these proceedings. Whether registration has been achieved

or not is immaterial;

(ii) Even if the Respondent claims to have traded under this name for some

years, it produced no documentation, statutory declaration or affidavit or any

other independent corroboration which would give verisimilitude to this bland

assertion;

(iii) The Panel infers that because of the Complainant’s trading activities

in Malaysia, the Respondent and Mr. Khoo must have known of the Complainant’s

reputation;

(iv) There is no evidence whether the entity, allegedly carrying on business

under the ‘FJBenjamin’ name, is the Respondent, the previous registrant or Mr.

Khoo who appears to control both.

The Panel finds no credible evidence that could bring the Respondent within

paragraph 4(c) of the Policy and accordingly finds the second criterion proved.

Bad Faith

Because of Mr. Khoo’s control over the present Respondent and the previous

registrant, his conduct must be assessed as if it were the conduct of the Respondent.

The Panel finds that the Respondent deliberately and unjustifiably selected

the disputed domain name with a view to associating itself and/or its services

with the Complainant. It hoped that it would attract Internet users to its or

Mr. Khoo’s website for commercial gain, those Internet users believing that

they would be visiting a site of the Complainant. This is shown by the ease

with which users of the website, to which the disputed domain name resolves,

are transferred to other sites in which Mr. Khoo has commercial interests. Mr.

Khoo, with his Malaysian connections must have known of the Complainant’s long-standing

reputation on the Malay Peninsula.

The automatic redirection of visitors to the website of the disputed domain

name shows that the Respondent is intentionally attempting to attract Internet

users to the website for financial gain by creating a likelihood of confusion

with the Complainant’s name as to the source of sponsorship, affiliation or

endorsement of the Respondent’s website, products or services.

The conduct of Mr. Khoo, in participating in an unconsummated negotiation to

sell the disputed domain name (when it was under the name of the previous registrant),

shows that he (or the Respondent) acquired it for the purposes of sale at a

price in excess of the reasonable costs of registration.

The Panel rejects the suggestion by the Respondent of a lack of genuineness

in the email correspondence between the Complainant and Mr. Khoo. This allegation

was ‘broad brush’ and unsupported by credible evidence. Serious allegations

of this nature, even in a civil as distinct from a criminal context, require

strict proof which was not offered by the Respondent. On the contrary, Mr. Kumar’s

statutory declaration (which is made under sanction of criminal offending) is

quite clear and more credible than the Respondent’s assertions.

According to the emails, Mr. Khoo was closely involved in this abortive transaction.

Mr. Khoo did not deny that he had spoken to Mr. Kumar or that a lawyer had been

instructed by him. These uncontested facts suggest that the negotiations took

place and that the emails were not tampered with or corrupted.

Accordingly, the Panel accepts that the third criterion of bad faith registration

and use has been proved.

7. Decision

For the foregoing reasons, the Panel orders that the domain name <fjbenjamin.com>

be transferred to the Complainant.

Hon Sir Ian Barker, QC

Sole Panelist

Dated: January 3, 2004