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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MAJID AL FUTTAIM Holding LLC v. Thomas Jacobo

Case No. D2019-1725

1. The Parties

The Complainant is MAJID AL FUTTAIM Holding LLC, United Arab Emirates, represented by Talal Abu‑Ghazaleh International, Egypt.

The Respondent is Thomas Jacobo, United States of America.

2. The Domain Name and Registrar

The disputed domain name <majidelfuttaim.com> (the “Domain Name”) is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 24, 2019, 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 28, 2019.

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 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 28, 2019. 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.

4. Factual Background

The Complainant is a limited liability company registered in Dubai. It owns and operates shopping malls, retail and leisure establishments in the Middle East, Africa and Asia, with operations in 15 countries. The Complainant employs more than 43,000 people. It is a holding company in a group established by Majid Al Futtaim in 1992. Majid Al Futtaim manages three major operating subsidiaries: Majid Al Futtaim Properties, Majid Al Futtaim Retail, and Majid Al Futtaim Ventures.

The Complainant owns several trademark registrations for MAJID AL FUTTAIM in English and Arabic letters. The Complainant also owns the domain name <majidalfuttaim.com> since February 9, 2002. The Complainant has been operating its business under the tradename and trademark “Majid Al Futtaim”. The Complainant’s tradename and trademark is extended to social media such as YouTube, Facebook and Instagram.

According to the Registrar, the Domain Name was registered on September 26, 2016. At the time of filing the Complaint, and at the time of drafting the Decision, the Domain Name resolved to an error page.

5. Parties’ Contentions

A. Complainant

The Complainant has registered trademark rights in MAJID AL FUTTAIM. The Complainant submits that it also has common law rights and the trademark enjoys a worldwide reputation. According to the Complainant, the Domain Name reproduces the trademark and tradename in its entirety. The Domain Name is therefore confusingly similar to the Complainant’s trademark.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the Domain Name, as the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use its trademark. Moreover, the Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent is not commonly known in the market by the Domain Name. Finally, the Domain Name does not resolve to any active website.

The Complainant argues that the Respondent must have had knowledge of the Complainant’s and its trademark at the time of registration of the Domain Name. The Complainant submits that the Domain Name has been registered with a deliberate intent to create an impression of an association with the Complainant and/or its licensee/s. The mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. The apparent lack of so-called active use does not as such prevent a finding of bad faith in the circumstances of this case. Finally, the Respondent’s use of privacy service also suggests bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark MAJID AL FUTTAIM. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark save the change of “al” to “el”. This minor misspelling does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. The Domain Name does not resolve to any active website.

The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Taking into account that the Domain Name is a misspelling of a well-known trademark and the Respondent has offered no explanation for the registration, the Panel concludes that is likely that the Respondent knew of the Complainant and its business at the time of registration of the Domain Name.

The apparent lack of active use does not prevent a finding of bad faith in the circumstances of this case, see WIPO Overview 3.0”), section 3.3.

The use of a privacy protection service coupled with the fact that the Respondent has not replied to the Complainant’s contentions, further points to bad faith.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <majidelfuttaim.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: September 4, 2019

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