WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jumeirah International LLC v. A. Kurbatoff
Case No. D2017-0029
1. The Parties
The Complainant is Jumeirah International LLC of Dubai, United Arab Emirates, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is A. Kurbatoff of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <jumeirahcentral.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 January 9, 2017. On January 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. On February 5, 2017, the Respondent requested the extension of the Response due date, which was subsequently extended until February 10, 2017 in accordance with paragraph 5(b) of the Rules.
The Response was filed with the Center on February 10, 2017.
The Center appointed Hoda T. Barakat as the sole panelist in this matter on February 23, 2017. 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 Dubai-based international luxury hotel chain which was founded in 1997 and which owns various trademarks in the United Arab Emirates and in many countries and jurisdictions all over the world for JUMEIRAH as a plain wordmark, in its stylized form, and with other elements. In this context, the Complainant owns, inter alia, the trademark JUMEIRAH, Registration Number 3888119, registered with the United States Patent and Trademark Office ("USPTO") on December 7, 2010, for, inter alia, hotel and temporary housing accommodation services.
The Complainant's primary domain name is <jumeirah.com> which resolves to its website where customers can book hotels, manage their bookings etc. The domain name <jumeirah.com> displays the Complainant's registered trademarks.
The Complainant's holding company Dubai Holding is the registered owner of the domain name <jumeirahcentral.ae> which was registered on June 21, 2000 to promote a new real estate project called Jumeirah Central.
The Respondent is an individual, Mr. Kurbatoff, residing in Dubai, United Arab Emirates. The Respondent registered the disputed domain name on February 28, 2012.
The disputed domain name resolves to a parking page, containing links to, inter alia, services competing with the Complainant's.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights due to the following arguments by the Complainant:
- The Complainant has acquired substantial registered rights for the wordmark JUMEIRAH as a trademark;
- The Complainant's trademark forms the prominent part of the disputed domain name;
- The Top-level portion of a disputed domain name is not relevant when comparing confusing similarity;
- The Respondent has added a generic, descriptive term to the Complainant's trademark to make up the disputed domain name;
- The disputed domain name consists of the Complainant's trademark with an additional term that closely relates to and describes that Complainant's business and so is confusingly similar to the Complainant's trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name due to:
- The Complainant's registration of the wordmark JUMEIRAH in the United Arab Emirates is prima facie evidence of the distinctiveness of the term "Jumeirah" and that it grants exclusive rights to the Complainant to use it in commerce in or in connection with the goods and/or services specified in the registration certificates;
- The Respondent is not commonly known by the disputed domain name;
- The Complainant did not license or authorise or permit the Respondent to register the disputed domain name which incorporates the Complainant's mark;
- The Respondent has used the disputed domain name to feature links to third party websites, some of which redirect users to websites which compete with the Complainant's services;
- The Respondent has failed to demonstrate any attempt to make legitimate use of the disputed domain name and website;
- The Respondent offered to sell the disputed domain name for AED 3-4 million which is in excess of the out-of-pocket expenses incurred by it;
- The disputed domain name was registered on February 28, 2012 which significantly post-dates the Complainant's filing and use of its trademark JUMEIRAH in the United Arab Emirates.
(c) The disputed domain name was registered and is being used in bad faith due to:
- Dubai, the place of residence of the Respondent, meaning that the Respondent knew or should have known that he was registering a domain name corresponding to the Complainant's mark;
- The presence of the third-party pay-per-click links previously at the website and the current resolution to a generic Registrar parking page prove bad faith;
- The Respondent's offer to sell the disputed domain name for an amount which substantially exceeds the cost of registration is an indicator of bad faith.
The Respondent contends that there is a lack of similarity or possible confusion between the Complainant's trademarks and the disputed domain name and that there is an absence of bad faith due to:
- The fact that the Complainant's trademarks do not cover all extensions and words;
- The term "Jumeirah" refers to a geographic area in Dubai, the United Arab Emirates and so the Complainant cannot have exclusive use to that name without extraordinary circumstances which do not exist in the instant case and the term "Jumeirah" has not gained any secondary or distinctive meaning;
- The USPTO only accepted registration of the JUMEIRAH trademarks in limited forms;
- There are many businesses (even competitors) in the United Arab Emirates which incorporate the term "Jumeirah" in their name;
- The Complainant purchased the domain name <jumeirah.com> in June 2005 from another company who had registered it in 1999;
- The Respondent has not used the Complainant's trademark as the Complainant does not own a trademark registration for JUMEIRAH CENTRAL and the Respondent has not engaged in any plagiarism which would show bad faith;
- The Respondent's use of the word "central" with the non-distinctive term "Jumeirah" pre-dates the Complainant's use of the words together;
- The word "central" is not descriptive of the Complainant's goods or services;
- The Complainant often adds the words "properties", "group" or "hotels" or even the name of the holding company "Dubai Holdings" when referring to new projects;
- The Respondent has been unable to verify the registration date of the <jumeirahcentral.ae> domain name by the Complainant and argues that in fact it was made in 2016 and not in 2000 as claimed by the Complainant as the Respondent believes that the Complainant registered <jumeirahcentral.ae> many years after the Respondent initially registered the disputed domain name in 2007;
- The Respondent is an expatriate resident in the United Arab Emirates and had registered the disputed domain name in the hope of establishing his own company after a number of years and so it showed a parked page by the Registrar
- The Respondent acquired the disputed domain name legally and without bad faith and prior to the Complainant's project or services and so it is not anyone's place to force him to hand it over;
- The Respondent did not offer or list the disputed domain name for sale nor did he contact the Complainant to offer to sell it. In fact it was the Complainant's representative that contacted the Respondent to attempt to purchase the disputed domain name;
- The domain name has other uses than the website such as the use as for email purposes;
- The Respondent's filing of an Internet search result for the words "Jumeirah Central" is illogical as the search was conducted in 2016, after the launch of the Jumeirah Central project by the Complainant while the result would have been different had the search been conducted prior to the launch of the project by the Complainant;
- The Respondent had initially registered the disputed domain name on October 30, 2007 but due to a lapse in renewal, he re-registered it on February 28, 2012. Both of these dates pre-date the launch of the Complainant's project on September 3, 2016;
- The Respondent denies that he has ever placed any type of pay-per-click links on the website the disputed domain name resolves to and any such links were placed there by the Registrar as part of the contract at the time of purchase of the disputed domain name and regarding their selection the Respondent had no choice;
- The Complainant's claim of fame due to the revenues and projects are not justified as these are not factors that show fame.
6. Discussion and Findings
A. Identical or Confusingly Similar
The term "Jumeirah" is registered as a trademark such that it is considered distinctive (in relation to specific goods/services) and no third party successfully challenged this finding through opposition. In this case, based on the evidence submitted by the Complainant, the trademark JUMEIRAH has the status of a
well-known trademark at least in the United Arab Emirates (where the Respondent resides) and the region. The proof and evidence submitted by the Complainant are the commonly known factors considered when considering the fame of a mark.
The Complainant has submitted sufficient evidence to prove its ownership of the trademark JUMEIRAH.
There can be no doubt that the disputed domain name incorporates the Complainant's registered trademark in its entirety. The addition of the word "central" which is generic and non-distinctive does not detract from the main and distinctive element of the disputed domain name; namely the term "Jumeirah". Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's main trademark given the similarity between the disputed domain name and the Complainant's marks
In Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313, a domain name was found to be confusingly similar where it substantially incorporated the Complainant's mark and that simply incorporating the Complainant's trademarks in a slightly different word sequence was not sufficient. Further, it is well established that in cases where the distinctive and prominent element of a disputed domain name is the Complainant's mark and the only deviation from this is the inclusion of an indicator as a prefix or a suffix, such prefix or suffix does not typically negate the confusing similarity between the disputed domain name and the mark (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768). In this case, "Jumeirah" is the prominent component of the disputed domain name and the addition of the word "central" does nothing to distinguish it from the Complainant's JUMEIRAH trademark for purposes of the Policy.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark in which it has rights, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a Respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it 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.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The WIPO Overview 2.0, paragraph 2.2 goes on to clarify that factors that "a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples…". In this instant case, the Respondent claims that the disputed domain name is a name for a geographic area but he does not use the disputed domain name in any way that could be said to be related to the geographical area.
The Respondent has not provided evidence that it has become commonly known by the disputed domain name nor has the Respondent proven that he is using the disputed domain name in relation to the dictionary meaning of the term "Jumeirah". The Respondent has not provided any evidence to demonstrate a registration of the JUMEIRAH trademark anywhere in the world in any classification or any evidence that he has any connection. Accordingly, the Panel is of the view that a prima facie case is established and the Respondent has failed to prove otherwise and has merely claimed to be holding the disputed domain name until he can start a company without any intimation of what the goods/services will be or his/their connection to the name.
The Complainant has been using the JUMEIRAH mark in relation to the provision of hospitality services, in the Middle East and around the world prior to the registration of the disputed domain name. The website that the disputed domain name resolves to is a parking page which the Respondent claims is not his direct doing but is a result of the exercise of his right to purchase any domain name. The Panel therefore finds on balance that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, especially as the disputed domain name was registered for so many years without any direct use by the Respondent. The Respondent's only defence is that he has a right to commercial gain and to own the disputed domain name which is insufficient under the circumstances to establish rights or legitimate interests in the disputed domain name for purposes of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant's contention that the JUMEIRAH trademark is a well-known mark in multiple countries and jurisdictions but most notably in the jurisdiction of the Respondent; namely Dubai. Therefore, the Panel accepts that the Respondent most likely knew of the Complainant's JUMEIRAH trademark.
The Panel finds that:
(a) the Respondent's use of a domain name which is so similar to the Complainant's trademark especially when the said trademark is well-known can give an inference of use in bad faith;
(b) the Complaint's JUMEIRAH trademark and <Jumeirah.com> domain name are confusingly similar to the disputed domain name, with the only difference being the word "central", which is added as a suffix to the "Jumeirah" brand in the disputed domain name and acts as a descriptor;
(c) the Respondent registered the disputed domain name in the knowledge of the Complainant's fame in the trademark JUMEIRAH.
The Panel reviewed the Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889 as it considers the fact that when the complainant's representative offered to compensate the respondent reasonably for his time and effort involved, the respondent and, subsequently, his representative sought to sell it at a price reflecting the Complainant's desire to own the domain name. In this instant case, the Respondent insisted on a sizable figure far exceeding the out-of-pocket costs for the transfer of the disputed domain name.
Based on the above, the Panel infers that the Respondent registered the disputed domain name with the intention of trading on the reputation of the Complainant's JUMEIRAH trademark to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's JUMEIRAH mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. In the alternative, the Respondent sought to sell the disputed domain name to the Complainant for an amount in excess of its out-of-pocket costs. This constitutes evidence that the disputed domain name was registered and is being used in bad faith.
The Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning 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 <jumeirahcentral.com> be transferred to the Complainant.
Hoda T. Barakat
Date: March 13, 2017