WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Majid Al Futtaim Properties LLC v. Medhat Eissa
Case No. D2015-1151
1. The Parties
The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Medhat Eissa of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <mallofegypt.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2015. The Respondent sent emails to the Center on July 28 and 29, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on August 13, 2015. 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.
On August 24, 2015, the Panel issued a Panel Order under paragraph 10 and 12 of the Rules, in the following terms:
“The Complainant names the Respondent as ‘Domain Admin’ and the Respondent’s organization as ‘Huge Domains’. The Registrar is GoDaddy.com, LLC.
As indicated in the case file, on July 7, 2015, the Registrar confirmed that the disputed domain name is registered to Domain Admin / Huge Domains, based in Colorado, United States of America. The Registrar confirmed that the disputed domain name has been registered since at least January 13, 2015.
On July 20, 2015, the Respondent’s (Huge Domains’) legal representative wrote to the Registrar, with a copy sent to the Center. The letter attached evidence that ownership of the disputed domain name had been transferred from Huge Domains. Huge Domains claimed that the Registrar failed to update the WhoIs information to reflect the new registrant. Huge Domains requested the Registrar to update the WhoIs information accordingly.
On July 28, 2015, Huge Domains filed a request with the Center to extend the time for the Response, based on the extenuating circumstances surrounding the identity of the true registrant. In that request, the Respondent noted that the Registrar had represented during a telephone conversation with the Respondent that the current owner of the disputed domain name was unaware of these proceedings.
On July 23, 2015, the Registrar sent an email to a ‘Medhat Eissa’ notifying him of the UDRP proceedings and noting that ‘Unfortunately, because you failed to update your WhoIs information for the Domain Name, you are in danger of losing the UDRP action and having the registration for the Domain Name transferred to another registrant.’ In some further correspondence, Medhat Eissa sent an email to the Registrar noting that he had tried to update the contact details but could not, because the domain status was ‘locked for dispute’. In reply, on July 27, 2015, the Registrar stated that it could not update the information and suggested that Medhat Eissa should contact the Center ‘explaining that you are the current registrant’. Medhat Eissa then sent an email to the Center seeking support in unlocking his account to update his details.
On July 28 2015, the Center sent an email to the parties, and separately to Mr. Eissa, noting that the identity of the registrant would be a matter for the administrative Panel. On July 29, 2015, Mr. Eissa sent evidence to the Center that he had purchased the disputed domain name from Huge Domains.
There was some further correspondence between the parties and the Center in late July and August regarding the identity of the proper Respondent. This included a communication from the Complainant to the Center, asking whether it should amend its Complaint to identify Mr. Eissa as the Respondent. The Center’s reply was that the identity of the Respondent remains a matter for the determination of the Panel.
On August 7, 2015, Huge Domains filed a Response stating that it was erroneously named as the Respondent and objecting to the Complaint.
The Registrar has, in effect, confirmed that Mr. Eissa is the current registrant of the disputed domain name. Mr. Eissa himself confirms that he is the owner in fact of the disputed domain name, and provides evidence. But the WhoIs details were never updated to that effect before this proceeding was commenced. Now that this dispute is on-foot, the paragraph 8 of the Policy requires that the registration of the disputed domain name cannot be transferred during the pending administrative proceeding. The Panel has no power to order the change of registration details per se during a pending proceeding.
However, from the evidence in the case file, the Panel will proceed on the basis that Mr. Eissa is the Respondent in-fact.”
Accordingly, the Panel requested the Complainant to amend its Complaint by August 31, 2015, to identify Mr. Eissa as the Respondent, remove Domain Admin / Huge Domains, and make any other consequential amendments to the Complaint. An amended Complaint was received by that date.
As Mr. Eissa was not given an opportunity to formally reply to the Complaint, Mr. Eissa (as the Respondent-in-fact) was also requested to submit a Response to the amended Complaint by September 21, 2015. A Response was submitted by the Respondent (Mr. Eissa) by that date.
On September 29, 2015, the Complainant submitted a further filing.
The Panel also extended the date for the decision until October 2, 2015, as a consequence of the further time allowed for the Response.
4. Factual Background
The Complainant is Majid Al Futtaim Properties LLC which was founded in 1992. The Complainant is a leading shopping mall, retail and leisure pioneer across the Middle East and North Africa. The Complainant’s businesses spans 12 international markets and employs over 27,000 people.
The Complainant owns and operates 17 shopping malls, 11 hotels and three mixed-use communities in the Middle East and North Africa, with further developments underway in the region. This includes the iconic Mall of the Emirates, City Centre malls, and also 4 community malls which are in joint venture with the Government of Sharjah.
The Complainant owns the domain name <majidalfuttaim.com> since February 9, 2002 and the domain name <malloftheemirates.com> since July 6, 2003.
The Complainant has several registrations for the trademark MALL OF EGYPT in English and Arabic letters. Those marks are registered in Egypt since February 2007, including registrations nos. 196982 and 196980 in class 36, nos. 196979 and 196981 in class 35.
The Complainant is the owner of other malls bearing its trademark in many countries worldwide. For example, MALL OF ALGERIA is registered in Algeria in the name of the Complainant in classes 35 and 36. MALL OF SYRIA is registered in class 36, and MALL OF TUNISIA is registered in classes 35 and 36 in Arabic and English.
The disputed domain name was registered in August 2014. At the date of this decision, the disputed domain name did not revert to an active website.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to its MALL OF EGYPT trademark because that mark is entirely incorporated in the disputed domain name. The Complainant says that its mark enjoys a world-wide reputation and in particular is famous in Egypt and the Middle East.
The Complainant’s project “Mall of Egypt” is one of the most recent mega projects in Egypt. This matter is obvious through media recognition and the advertisements and Mall of Egypt’s leasing brochure for the huge project “Mall of Egypt” as well as advertisements of Mall of Egypt in its location at Cairo, Egypt, for which evidence is provided in the Complaint.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name for the following reasons:
- The Respondent is not affiliated with the Complainant in any way.
- The Complainant has not authorized the Respondent to use its trademarks, or to seek the registration of any domain name incorporating the trademark MALL OF EGYPT.
- The Respondent has no prior rights or legitimate interests in the disputed domain name; since the fact that the Complainant’s registrations of the trademark dates back to 2007, and preceded the Respondent’s registration of the disputed domain name in August 2014.
The Respondent has not registered the disputed domain name in connection with a bona fide intent as the Respondent is not a licensee of the Complainant with regard to its trademark.
The Complainant also contends that the disputed domain name has been registered in bad faith and it is implausible that the Respondent was unaware of the Complainant’s trademark when he registered the disputed domain name. This is because the Complainant’s company was established since 1992 and the Complainant had registered its domain names <majidalfuttaim.com> since 2002 and <malloftheemirates.com> since 2003. The Complainant’s well-known trademark is incorporated in its entirety in the disputed domain name, which demonstrates that the Respondent must have been aware of the existence of the Complainant’s trademark.
The Respondent’s use of the Complainant’s trademark in the disputed domain name confuses Internet users who may wrongly ascribe the services and offers on the Respondent’s website to the Complainant’s business. It seems that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to his own website.
There is no doubt that the Respondent knew or should have known about the Complainant’s trademark rights before registering the disputed domain name. Such use of the disputed domain name is neither legitimate, nor in good faith. Using a domain name to intentionally attract Internet users to a website by creating confusion with a complainant’s trademark is evidence of bad faith.
The Respondent says that it lawfully purchased the disputed domain name from Huge Domains (via Godaddy) with the intention of starting Egypt’s first online mall and has spent “considerable development funds in that vein”. To this end, the Respondent says that it has retained a web design firm and has started building a website with a view to launch its service in the second quarter of 2016. The Respondent says that the name is very generic and it was unaware that there was a project of the same name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed as follows, immediately after a discussion of the identity of the proper Respondent and whether to admit a supplemental filing made by the Complainant.
A. Identity of the Respondent
Paragraph 1 of the Rules provides that the Respondent means “the holder of a domain-name registration against which a complaint is initiated”. This requires the Panel to identify the actual “holder” of the disputed domain name registration. In this case, the WhoIs details for the Respondent identified “Domain Admin” as the registrant, and “HugeDomains.com” as the registrant organization. However, there is no dispute that the registrant-in-fact is Medhat Eissa. Accordingly, the Panel has proceeded on the basis that Mr. Eissa is the proper Respondent.
From the details outlined in the Panel Order (reproduced above) it appears that Mr. Eissa was not identified in the WhoIs details because he had not updated those details to reflect his registration, prior to this proceeding being initiated. Once this proceeding was initiated, the concerned Registrar put the disputed domain name in “lock” status. Doing so prevented any further changes to the WhoIs details pending the Panel’s decision. It also had the consequential effect of preventing the Respondent from updating the record. Nevertheless, as noted by the Center to the parties, the proper identity of the Respondent was a matter for determination by the Panel, once the proceeding was on foot. While in this case, there appears to be no disagreement that Mr. Eissa holds the registration of the disputed domain name, the identity of the Respondent is a matter that is fundamental to this proceeding. As such, it is a matter that was properly determined by the Panel in accordance with the Rules and the Policy.
B. Supplementary Filing
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable. As noted above, the Center received a further submission from the Complainant on September 29, 2015, which sought to restate and reargue some additional matters already covered in the Complaint.
The filing was not requested by the Panel pursuant to paragraph 12 of the Rules. The objectives of the Policy and the Rules is to ensure a speedy and inexpensive determination of the relevant issues. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to objectives to invite or allow supplementary pleadings and evidence. The Panel does not consider there to be compelling reasons to admit the further filing and the Complainant did not advance any. Accordingly, the Panel has not considered that submission in rendering this decision.
C. Identical or Confusingly Similar
The Complainant provided evidence of having registered trademark rights in Egypt for MALL OF EGYPT. It is self-evident that the disputed domain name is relevantly identical to that mark. The only difference between them is that the disputed domain name adds the “.com” extension – a difference which previous UDRP panels have determined is generally irrelevant.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to a trademark in which it has rights, for the purpose of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. A prima face case is one which appears credible on its face. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant in this case has mounted a credible argument against the Respondent, and supported that case with evidence and argument. Essentially, the Complainant’s argument is based on the allegation that the Respondent was never authorized to register and use the disputed domain name and has no relevant trademark rights. The Complainant provided evidence of its reputation, including through media recognition and advertising using its mark.
On the other hand, the Respondent says that the disputed domain name contains a generic term and the Respondent intended to use it in connection with an “online mall”. In effect, the Respondent’s argument is that it has a legitimate interest described in paragraph 4(c) of the Policy. In particular, paragraph 4(c)(i) provides that a respondent may demonstrate rights or legitimate interests by showing, before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Panel does not consider that this bare assertion by the Respondent rebuts the Complainant’s prima facie case. This is for the following reasons:
Firstly, the Respondent provides no evidence at all to rebut the Complainant’s case. As noted by the panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. This proceeding was extended to ensure that the Respondent had adequate opportunity to answer the case against him. Although given almost a month to do so, the Response is essentially three sentences long. The Respondent says that he has spent considerable funds on starting up an on-line shopping mall. The Respondent provides no evidence to support this bare assertion. Had the Respondent spent considerable funds in connection with the disputed domain, the Panel would not expect it to be difficult for the Respondent to advance some related evidence.
Secondly, the Respondent’s statement that the Complainant’s mark is generic does not advance its case. The Complainant has a registered mark and is entitled to rely on it. Further, it is a mark that has a reputation in the same jurisdiction where the Respondent has its address.
Thirdly, in the face of the Complainant’s evidence, the Respondent’s case is not sufficiently credible. The Respondent denies any awareness of the Complainant’s mark. This is in the face of the Complainant’s evidence of its reputation in Egypt and evidence of media recognition of its “Mall of Egypt” project.
Lastly, there is no other evidence in the case file which suggests that the Respondent might have a right or legitimate interest in the disputed domain name. Paragraph 4(c)(ii) and (iii) of the Policy outline other circumstances by which the Respondent might demonstrate rights or legitimate interests. These include circumstances where:
“(ii) the Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The case file provides no evidence to support either of these circumstances. Indeed, the Respondent positively disclaims the possibility of paragraph 4(c)(iii) applying, by claiming a commercial intent for the disputed domain name.
For all of these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The totality of the evidence in this case is at least suggestive of bad faith for the purpose of paragraph 4(b)(iv). The Respondent has registered a domain name that entirely incorporates the Complainant’s well-known mark and provided no evidence to support a right or legitimate interest in doing so. If the Respondent was, as he claims, intending to establish an on-line shopping mall, the Panel considers it unlikely that the Respondent, being located in the same jurisdiction as the Complainant and intending to operate a related business, would have been unaware of the Complainant’s mark. The Panel considers there is a reasonable inference that the Respondent accordingly sought to obtain some unfair advantage from registering the disputed domain name.
For these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <mallofegypt.com>, be transferred to the Complainant.
James A. Barker
Date: October 2, 2015