WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Majid Al Futtaim Properties LLC v. Whoisguard Protected / Whoisguard, Inc. / M M
Case No. D2015-1153
1. The Parties
The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates ("UAE") represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Whoisguard Protected / Whoisguard, Inc. of Panama / M M of Zuid-Hollahd, Netherlands, self-represented.
2. The Domain Name and Registrar
The disputed domain name <citycentremeaisem.com> is registered with eNom (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 the same date, 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 9, 2015 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 July 13, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Response was filed with the Center on July 29, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 6, 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.
4. Factual Background
The factual background is taken from information provided in the Complaint.
The Complainant is an Emirati holding company based in Dubai that owns and operates shopping malls, retail and leisure establishments in the Middle East and North Africa, with operations in 13 countries and over 27,000 employees.
The Complainant is part of the Majid Al Futtaim Group, the scale of which is that it operates, among other businesses, 17 shopping malls, 58 hypermarkets and 69 supermarkets, 11 hotels, 3 mixed-use communities, 9 movie theatre locations with 129 screens, 45 fashion stores, and 18 Magic Planet sites. The group has a presence in the UAE, Egypt, Saudi Arabia, Oman, Lebanon, Bahrain, Kuwait, Qatar, Jordan, Pakistan, Iraq, Armenia and Georgia.
Me'aisem is a district of Dubai where the Complainant has opened or is shortly to open a new shopping centre under the CITY CENTRE ME'AISEM trademark, for which purpose the company Majid Al Futtaim City Centre Meaisem LLC has been incorporated. The name of the new shopping centre is in keeping with the Complainant's other shopping centres in the Middle East including City Centre Deira, City Centre Ajman, City Centre Muscat, City Centre Maadi, City Centre Bahrain, City Centre Mirdif, City Centre Fujairah and City Centre Beirut.
The Complainant is the registrant of trademarks for CITY CENTRE ME'AISEM in English of which the following are representative:
CITY CENTRE ME'AISEM, with design, UAE Ministry of Economy Trade Marks Department, application April 3, 2014, registration granted August 26, 2014, registration number 209207, class 16;
CITY CENTRE ME'AISEM, with design, UAE Ministry of Economy Trade Marks Department, application April 3, 2014, registration granted August 26, 2014, registration number 209208, class 35;
CITY CENTRE ME'AISEM, with design, UAE Ministry of Economy Trade Marks Department, application April 3, 2014, registration granted August 26, 2014, registration number 209210, class 36.
The Complainant also holds similar trademarks to the above in Arabic.
No factual background information is known about the Respondent. The Respondent's address as disclosed by the Registrar, in Zuid-Hollahd, is presumed to mean Zuid-Holland. The disputed domain name was registered on August 17, 2014.
5. Parties' Contentions
The Complainant's contentions include the following.
The Complainant contends that it has rights in the registered trademarks listed in section 4 above and has produced images of the respective registration certificates. It is contended that the disputed domain name <citycentremeaisem.com> effectively reproduces the Complainant's trademark CITY CENTRE ME'AISEM in its entirety and is confusingly similar to it. The Complainant has also produced copies of documents referencing the expression "City Centre Me'aisem", including a purchase order for related advertising artwork dated July 2, 2014, and press reports.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The CITY CENTRE ME'AISEM trademark applications were filed on April 3, 2014, preceding the registration of the disputed domain name by the Respondent on August 17, 2014. The Complainant says that the Respondent is not affiliated with the Complainant in any way, and has not been authorised to use the Complainant's trademark, or to register any domain name incorporating the Complainant's trademark. The Respondent is not an authorized dealer, distributor or licensee of the Complainant.
The Complainant submits that a domain name that misleads users does not confer legitimate rights or interests upon the Respondent.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant says the Respondent must have been aware of the Complainant's CITY CENTRE ME'AISEM trademark when it registered the disputed domain name because the Complainant's company was established in 1992 and the Complainant had registered the domain name <majidalfuttaim.com> on February 9, 2002. The Complainant also says the Respondent must have been aware of the Complainant's trademark CITYCENTRE ME'AISEM because it is well-known throughout the world and has been incorporated in its entirety by the Respondent in the disputed domain name.
The Complainant says that the Respondent is using the Complainant's company name MAJID AL FUTTAIM CITY CENTRE MEAISEM L.L.C. as it appears on the Commercial Register entry for the Complainant. The website to which the disputed domain name resolves lists contents that include malls, shops, and the Complainant's registered trademark in order to create an impression that the disputed domain name is related to the Complainant.
The Complainant contends that the Respondent, by using the disputed domain name, has in all likelihood intentionally attempted to attract, for commercial gain, internet users to the Respondent's website by creating confusion with the Complainant's trademark.
The Complainant has cited previous decisions under the Policy that it considers may support its position.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent, replying under the name Whoisguard Protected and informing an email address only, has made brief submissions that include the following.
Notwithstanding the Complainant's trademark, the Complainant does not own the rights for the domain names <citycentre.ae>, <citycentre.com> or <citycentrebeirut.com>.
The disputed domain name has not been offered for sale or rental.
In the Complaint there is no proof that the disputed domain name was registered and is being used in bad faith.
The Registrar automatically created the landing page of the disputed domain name without any revenue or profit for the registrant, and the registrant has no control over this landing page.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced evidence satisfactory to the Panel of its rights in the registered trademark and design CITY CENTRE ME'AISEM under UAE law. The "trademark name" on the certificate is "City Center Me'aisem" (with that spelling of "center") and the accompanying image consists of a design with the words CITY CENTRE ME'AISEM in plain and prominent script.
The disputed domain name <citycentremeaisem.com>, disregarding the generic Top-Level Domain (gTLD) designation ".com", and taking into account the character limitations of a ".com" domain name, comprises the descriptive words "city" and "centre", qualified by the geographical location "meaisem". In combination these words effectively read identically to the Complainant's distinctive and specific trademark CITY CENTRE ME'AISEM.
It is noted that the trademark registration applications in the different classes were filed on April 3, 2014, and that registrations were granted on August 26, 2014. The disputed domain name was registered on August 17, 2014, which falls after trademark registration was applied for but before it was granted.
This discrepancy of dates is of no consequence for the purposes of paragraph 4(a)(i) of the Policy, which is written in the present tense and requires only that the Complainant "has" rights in a trademark. Furthermore it may be presumed that the trademark application was available for public consultation and objection and was therefore in the public domain.
Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has certified that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says it has no affiliation with the Respondent, which has not been authorised to use the Complainant's trademark and has not been authorised to register a domain name in which it is incorporated. The Respondent is not an authorized dealer, distributor or licensee of the Complainant.
The Complainant having stated a prima facie case to the effect that the Respondent does not have rights or legitimate interests in respect of the disputed domain name, the Respondent has the opportunity under paragraph 4(c) of the Policy to establish such rights or legitimate interests by demonstrating:
"(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The above circumstances are illustrative and rights or legitimate interests may be established alternatively by the Respondent.
The Respondent has not claimed, and there is no evidence to suggest, that the disputed domain name is in bona fide use for trade, or that the Respondent is commonly known by the disputed domain name, or that the disputed domain name is in noncommercial or fair use. The Respondent's assertion that the Complainant does not own the rights for the domain names <citycentre.ae>, <citycentre.com> or <citycentrebeirut.com>, is of no relevance.
The Panel finds that the Respondent does not have any right or legitimate interest in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
The Respondent has made no submission as to its purpose in registering the disputed domain name.
The Complainant has produced documentary evidence of its commitment to build the City Centre shopping mall at Me'aisem. Some documents such as invoices are not in the public domain and the Respondent could not have been aware of them. Other items such as press reports are dated later than the registration date of the disputed domain name. Other potentially pivotal evidence, including photographs of large hoardings in Dubai announcing the construction of CITY CENTRE ME'AISEM, are regrettably undated.
Significantly, however, a news item on the website "www.arabianbusiness.com" written by Neil Halligan, with a dateline August 17, 2014, is headed "Dubai's Majid Al Futtaim to build new $74m City Centre mall". The article gives substantial detail of the project including an expected opening date by the third quarter of 2015.
Another item, on the website "www.brookfieldmultiplex.com", is headed "Brookfield Multiplex appointed to City Centre Me'aisem, Dubai" and has the date of August 17, 2014 in the URL for the page.
August 17, 2014 is the same date as the registration date of the disputed domain name. The compelling conclusion, from the evidence, is that the Respondent made an opportunistic registration of the disputed domain name on hearing in some way of the Complainant's plans, which by the time of the announcements on August 17, 2014 were already well advanced, for the construction of the City Centre Me'aisem mall. On the balance of probabilities, the Panel finds the Respondent to have registered the disputed domain name in bad faith.
The usage of the disputed domain name appears to have been limited to its resolution to a parking page, a screen capture of which has been produced by the Complainant. A banner states: "Welcome to namecheap.com. This domain was recently registered at namecheap.com. The domain owner may currently be creating a great site for this domain. Please check back later!" A number of apparent link headings include, for example, "Shopping Mall", "Business Centre", "Mall Stores", "Stores Inside Mall of America", and some services offered by Namecheap. It may reasonably be anticipated that these link headings were placed by the hosting company and lead to websites that may be generally in competition with the Complainant. It is well established that, unless signals of good faith registration and use are discernible, the holder of a domain name is responsible for content on a parking page, including content automatically placed (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at paragraph 3.8).
The present circumstances, on the evidence, are that the Respondent, being a person or entity availing itself of the Whoisguard privacy service (which, of course, is a service intended for entirely legitimate purposes), to which it has provided the uninformative identification "M M" and an incomplete address in the Netherlands, has registered the disputed domain name comprising the predictable next trademark in the "City Centre [placename]" series that dates back to at least as early as 1998 in relation to the Complainant's Middle Eastern and North African businesses. The provisions of paragraph 4(b) of the Policy relating to bad faith are without limitation. It is not necessary to speculate as to whether the Respondent may have expected the Complainant, on discovering that the domain name corresponding to its trademark had been already registered, to offer to buy it from the Respondent; or whether the Respondent may have intended to attract potential customers of the Complainant by confusion for the commercial gain of either itself or another entity. Having regard to all the circumstances and the Respondent's lack of explanation, the Panel is satisfied by the evidence, on the balance of probabilities, that the Respondent could make no plausible legitimate use of the disputed domain name comprising another's well-known trademark and that its use to host a website with pay-per-click links in the circumstances constitutes use in bad faith.
Accordingly the Respondent is found to have registered the disputed domain name in bad faith and to be using it in bad faith within the requirements 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 <citycentremeaisem.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: August 13, 2015