The Complainant is The Engineering and Development Group Limited of British Virgin Islands, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Domain Privacy Service FBO Registrant, Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America ("United States") / Tamara Masri of Washington, United States of America.
The disputed domain name <edgogroup.com> (the "Disputed Domain Name") is registered with Domain.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 5, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2018. On July 29, 2018, the Center received supplemental filings from the Complainant. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2018.
On August 7, 2018, and on August 8, 2018, the Center received communications from the Respondent. On August 8, 2018, the Center received an unsolicited communication from the Complainant. On August 12, 2018, the Center received unsolicited supplemental filings from the Complainant. On August 16, 2018, the Center received unsolicited supplemental filings from the Respondent. On August 22, 2018 the Center received further unsolicited supplemental filings from the Complainant. On August 27, 2018, the Center received further unsolicited supplemental filings from the Respondent. On August 28, 2018, the Center received further unsolicited supplemental filings from both the Complainant, and the Respondent.
The Center appointed John Swinson as the sole panelist in this matter on August 13, 2018. 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 Complainant is the Engineering and Development Group ("Edgo"), a company providing energy services on a global basis. The Complainant has been in business for 62 years and offers expertise in oilfield services and logistic support. The Complainant has been operating under the name "Edgo" for several years.
The Complainant, along with its subsidiary company Edgo Management Group ("EMG"), owns several registered trade marks for EDGO, the earliest of which is Jordanian registered trade mark number 98050, registered on September 23, 2007 (the "Trade Mark"). The Complainant holds a domain name <edgo.com> registered on October 12, 1998.
The Respondent is Tamara Masri, an individual of the United States. The Respondent registered the Disputed Domain Name on April 26, 2018. According to the Complainant, the Respondent is the daughter of Mr Mazen Masri, an ex-employee of the Complainant. As detailed further below, the Respondent disputes that Mr Masri is an ex-employee and instead submits that Mr Masri is the Senior Director of Edgo, as well as the Managing Director and sole Director of Edgo UK. In any case, both the Respondent and the Complainant have proceeded on the basis that in registering the Disputed Domain Name, the Respondent was acting as agent for her father, Mr Mazen Masri. As such the Panel will proceed on the same basis.
The Complainant makes the following contentions.
The Disputed Domain Name is confusingly similar to the Complainant's Trade Mark as it incorporates such mark in its entirety. The word "group" does not sufficiently distinguish the Disputed Domain Name from the Trade Mark and does not eliminate the confusing similarity. The use of the Disputed Domain Name is in conflict with the Complainant's Trade Mark in which it has rights.
The Complainant has not authorized the Respondent to use its Trade Mark nor to register any disputed domain name incorporating the Trade Mark. The Respondent is not affiliated with the Complainant and the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. The Respondent has not registered the Disputed Domain Name in connection with a bona fide purpose as the Respondent is not a licensee of the Complainant.
The Respondent has registered the Disputed Domain Name in order to suggest a connection to the Complainant and to take unfair advantage of the Trade Mark, thus misleading users. The Complainant was aware of the Respondent and its reputation, and used this to divert Internet users to the website.
The Disputed Domain Name was registered in bad faith as the Respondent must have been aware of the Complainant's Trade Mark when the Respondent registered the Disputed Domain Name. The Complainant engages in extensive advertising, has offices throughout the world and is well known. This demonstrates the Respondent must have been aware of the existence of the Trade Mark.
The Complainant's Trade Mark has been used more than 60 years prior to the registration of the Disputed Domain Name. There is no doubt that the Respondent knew or should have known about the Complainant's Trade Mark before registering the Disputed Domain Name. The Respondent has used the Disputed Domain Name to intentionally attract Internet users to a website by creating confusion with the Complainant's Trade Mark.
The Respondent has registered the Disputed Domain Name in bad faith, to harm the Complainant and to mislead recipients into assuming that the Disputed Domain Name belongs to the Complainant. Using the fake email address of "[…]@edgogroup.com" to send emails to employees, customers and partners of the Complainant is evidence that the Respondent is attempting to imply a connection with the Complainant. The bad faith is clear from the fact that the Respondent appeared to be a daughter of an ex-employee to the Complainant who registered the Disputed Domain Name fraudulently.
The Complainant made a number of supplemental filings which reiterated the above points and were largely irrelevant to the domain name ownership issue.
The Respondent did not formally reply to the Complainant's contentions, but provided detailed submissions in response to the Complainant via email.
On August 7, 2018 the Respondent sent an email to the Center attaching a legal opinion regarding Mr Masri's position in the Edgo group. According to the Respondent, Mr Masri is the longest serving executive director at the Complainant's Edgo business, and remains the Senior Director of Edgo, as well as the Managing Director and sole Director of Edgo UK. The Respondent submits that there is an internal family dispute in which Mr Masri's younger brother is attempting to take over the company.
On August 8, 2018 the Respondent sent a further email stating that Mr Masri is the Managing Director of Edgo UK and remains so today.
On August 16 and 27, 2018 the Respondent sent a further email replying to the Complainant's supplemental complaint and providing further details of the family dispute. These submissions were received after the Panel was appointed and are largely irrelevant to the domain name ownership issue.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a formal Response.
Both the Complainant and the Respondent submitted a number of supplemental submissions, which the Panel has reviewed. The submissions were largely irrelevant, and did not change the Panel's decision in this matter.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark is included in full in the Disputed Domain Name, with the addition of the word "group". The inclusion of the word "group" is generic and does nothing to detract from this confusing similarity. The trade mark is clearly recognizable in the Disputed Domain Name.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant and the Respondent have both submitted extensive submissions, most of which center around the conduct of the Complainant's family-owned and run business, Mr Masri's current status in the business and the associated dispute regarding the control and ownership of the Complainant. The submissions are conflicting, not always supported by evidence and in any case largely irrelevant to the domain name dispute.
The Complainant argues that the Respondent is an ex-employee, has no affiliation with the business, and has no prior rights in the Disputed Domain Name. The Complainant failed to mention any family dispute in the Complaint and in the supplemental filings denies that there is a current affiliation between Mr Masri and the Complainant.
The Respondent argues that Mr Masri is still the Senior Director of Edgo, as well as the Managing Director and sole Director of Edgo UK. The Respondent argues that Mr Masri has been heavily involved in Edgo from 1987 and continues to be so. The Respondent further provides that Mr Masri owns 100 percent of the Edogo shares in their Iranian operation and is a Board Member.
The question of Mr Masri's involvement in the business is relevant to whether or not he has rights or legitimate interests in the Disputed Domain Name. For example, if in fact he is still operating a business associated with the Complainant under the name Edgo UK, it may be open for the Panel to find that the Disputed Domain Name was registered for the benefit and use of the Edgo business, or that the Disputed Domain Name was used in connection with a bona fide offering of goods or services.
It is well established that the Policy is not designed to address complex business disputes (see, e.g., Ruff Roofers, Inc., Ruff Roofing, Inc. and Roofing by Ruff, Inc. v. Jean Ruff, WIPO Case No. D2014-1755 and UTVG Europe Holding B.V. v. Vitali S, WIPO Case No. D2014-1345). In this case, there are clearly unresolved business issues and a current dispute between Mr Masri and others involved in the Edgo dispute. This is demonstrated both by the conflicting submissions of the parties, as well as the various legal opinions and cease and desists letters provided as evidence.
As the panel in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 stated, "[t]his Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting".
The Panel considers that the dispute raised in these proceedings forms part of a broader business and family dispute which is not suitable for resolution under the Policy.
Based on the conflicting material provided, the Panel considers that the Complainant has not proven that the Respondent does not have the rights or legitimate interests in the Disputed Domain Name.
In light of the Panel's finding in relation to the second element of the Policy, the Panel is not required to consider the final element.
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: August 28, 2018