WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nakheel (PJSC) v. Aqueel Ahmed
Case No. D2018-1620
1. The Parties
Complainant is Nakheel (PJSC) of Dubai, United Arab Emirates ("UAE"), represented by Gowling WLG (UK) LLP, United Arab Emirates.
Respondent is Aqueel Ahmed of Scarborough, Canada.
2. The Domain Name and Registrar
The disputed domain name <alkhailavenuemall.com> (the "Domain Name") 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 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. On July 26, 2018 and August 5, 2018, the Center received email communications and unsolicited supplemental filings from Complainant. On August 5, 2018, and August 6, 2018, the Center received email communications from Respondent. On August 7, 2018, and August 14, 2018, the Center received further email communications and unsolicited supplemental filings from Complainant. On August 16, 2018, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed John C. McElwaine as the sole panelist in this matter on August 21, 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.
As an initial matter, under the Policy and the Rules, parties have no right to unilaterally submit additional arguments or evidence beyond the Complaint and Response. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 12 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. In this matter, both parties submitted supplemental filings in the form of emails to the Center, the subject matter of which was a potential settlement of this matter. The Panel will consider the updated Complaint filed by Complainant on July 26, 2018 and Respondent's emails dated August 5, 2018 and August 6, 2018 (the "Response"). There is no exceptional reason to consider the additional supplemental filings by both parties.
4. Factual Background
Complainant is real estate development company based in Dubai, United Arab Emirates.
Complainant owns four trademark registrations for marks containing the words AL KHAIL AVENUE, UAE Trade Mark Registration: No. 223916 (business management services in class 35), UAE Trade Mark Registration: No. 223917 (real estate development services in class 36), UAE Trade Mark Registration: No. 223918 (entertainment services in class 41), and UAE Trade Mark Registration: No. 223919 (restaurant and hotel services in class 43), all registered on May 5, 2015.
On August 14, 2016, Respondent registered the Domain Name with the Registrar. Respondent has passively held the Domain Name which resolves to a webpage displaying generically, "Future home of something quite cool".
5. Parties' Contentions
Complainant asserts to be one of the world's leading property developers, and specifically, to be engaged in the developing, selling, leasing, and managing of residential, commercial, retail, hospitality and leisure projects in Dubai. Complainant also develops and operates shopping malls. Complainant's current and future retail project portfolio covers nearly 17 million square feet of leasable space.
Complainant alleges that one of its innovative retail projects is named, "Al Khail Avenue Mall" and will be a retail and entertainment destination ideally located to serve the fast-growing communities of Dubai, with over 1.1 million square feet of leasable space, 350 stores, multi-screen cinema, cafés, supermarkets, and restaurants.
The Domain Name was registered on August 14, 2016, more than one year after the filing and registration by Complainant of its four registered trademarks comprising the designation "AL KHAIL AVENUE" (the "AL KHAIL AVENUE mark").
Complainant provided evidence that on May 28, 2018, Respondent sent an unsolicited email to Complainant stating:
"My name is Aqueel Ahmed from Toronto, Canada, as we all know that Nakheel is doing
construction on these three Malls and definitely, you gonna, need the Domain names for them I am the owner of these three malls domain I wanna know if you are interested in purchasing of these domains.
We are taking offers from the owner of these malls.
Our asking price for each domain name is USD $ 49,000,000 USA$
Please feel free to send me your offer if you are interested by email or you can reach me by Cell
With respect to the first element of the Policy, Complainant contends that the Domain Name is identical to Complainant's AL KHAIL AVENUE mark except for the addition of the word "mall". Complainant asserts that the fact that the word "mall" was added to the Domain Name does not prevent a finding of similarity between Complainant's AL KHAIL AVENUE mark and the Domain Name, since "mall" is a descriptive word. Furthermore, Complainant submitted supporting materials showing Complainant is developing a shopping mall under the AL KHAIL AVENUE mark.
With respect to the second element of the Policy, Complainant asserts that there is no connection between Respondent and Complainant and no evidence that Respondent has rights or a legitimate interests in the Domain Name. Complainant asserts that there is nothing in the record, including the WhoIs information, to suggest that Respondent is commonly known by the Domain Name. Instead, Complainant points out that Respondent, which has no legitimate interests in respect of the Domain Name, and is not operating any active website through the Domain Name, has made no bona fide use of the Domain Name. In addition, Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. In this respect, Complainant asserts that Respondent's offer to sell the Domain Name for USD 49,000,000 cannot constitute a bona fide use of the Domain Name.
With respect to the final element of the Policy, Complainant alleges that Respondent has engaged in bad faith registration of the Domain Name because Respondent acquired the Domain Name for the purpose of profiting from Complainant's AL KHAIL AVENUE mark. As support, Complainant points to Respondent's email of May 28, 2018, where Respondent acknowledges that the AL KHAIL AVENUE real estate development is well known: "[A]s we all know, Nakheel is doing construction on these three Malls."
It was asserted, therefore, to be obvious that Respondent was aware of Complainant's operations under the AL KHAIL AVENUE and AL KHAIL AVENUE MALL marks when the Domain Name was registered. Additionally, Complainant asserts that Respondent's bad faith is demonstrated by the fact that Respondent offered to sell the Domain Name for USD 49,000,000, which is a sum that exceeds the out of pocket costs directly related to the Domain Name registration.
On August 5, 2018 and August 6, 2018, Respondent submitted its Response. In this Response, Respondent indicated it sent the offer for settlement in case Complainant wanted to settle the case and pay Respondent "some kind of amount in money". Respondent also forwarded a copy of its email of August 1, 2018 addressed to Complainant, in which Respondent indicated it was open to settlement.
Additionally, Complainant's updated Complaint included copies of an email from Respondent to Complainant dated July 18, 2018, in which, pertinent to this proceeding, Respondent asserts that it has not violated any law or rights of Complainant. Respondent concludes by indicating that its USD 49,000,000 opening demand is negotiable.
6. Discussion and Findings
Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629. Having considered the Complaint, the Response, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has valid trademark rights in the AL KHAIL AVENUE mark by virtue of the four UAE trademark registrations that it owns. Complainant further provided evidence attached to the Complaint of use, reputation and goodwill earned in the AL KHAIL AVENUE mark. "Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. Respondent has not challenged, and in fact, acknowledges, Complainant's trademark rights in the AL KHAIL AVENUE mark. Instead, Respondent argues that the Domain Name is not confusingly similar because it contains the word "mall".
The Panel finds that the Domain Name is confusingly similar to Complainant's AL KHAIL AVENUE mark because it contains said trademark in its entirety plus the generic word "mall". It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. In fact, Complainant is using the AL KHAIL AVENUE mark in connection with the development of a mall, and therefore, confusion is more likely than if another unrelated word had been selected.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's valid AL KHAIL AVENUE mark. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name in question. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant has demonstrated that there is no evidence in the WhoIs data for the Domain Name indicating that Respondent has been commonly known by the term "Al Khail Avenue Mall". Complainant also has established that Respondent is not authorized to register or use the AL KHAIL AVENUE mark. Respondent failed to submit any arguments on this point. Instead, Respondent admitted to registering the Domain Name to sell it to Complainant.
Respondent may establish a right or legitimate interest in the Domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
"(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 non-commercial 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."
Respondent's only use of the Domain Name has been to attempt to sell the Domain Name to Complainant for an amount far exceeding Respondent's out of pocket expenses. An offer to sell a domain name for an amount exceeding the respondent's out of pocket expenses has been found not to be a bona fide use of the Domain Name provided that profiting from the complainant's mark was evident. Express Scripts, Inc. v. TheSonicNet, WIPO Case No. DCO2010-0010; Groupon, Inc. v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services, WIPO Case No. D2014-2139. Here, Respondent does not assert to be known by the Domain Name. Likewise, Respondent is not making noncommercial or fair use of the Domain Name. Instead, Respondent registered the Domain Name when he discovered that Complainant had failed to do so, stating in a May 28, 2018 email to Complainant, "we all know that [Complainant] is doing construction on these three Malls, and definitely, you gonna, need these domains for them […]". Such an exploitation of a brand owner is not a bona fide offering goods and services under the Policy.
For all of the reasons discussed above, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
As an initial matter, paragraph 4(b)(i) of the Policy indicates that bad faith exists where a respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Here, the evidence establishes the purpose of Respondent registering the Domain Name was to sell it to Complainant. Respondent admits this crucial fact in its Response. Respondent's bad faith is further exhibited because it targeted Complainant's Al Khail Avenue project and two others, Diera Mall and Nad Al Sheba Mall.
In addition, registration and use of the Domain Name is likely to cause customer confusion due to the word "mall" because it is known to the public that a shopping mark is being developed as a part of the Al Khail Avenue project. Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Although the Domain Name is being passively held and links to a "coming soon" webpage, the fact that Complainant and its three projects were targeted and Respondent admitted to knowing that Complainant would want the Domain Name is further evidence of bad faith. See UK lnsurance Limited v. PrivacyDotlink, Customer 28001 118 / Futureproof Domains, WIPO Case No. D2017-1584 (finding bad faith where respondent linked the domain name to form "for sale" webpage, demanded USD 500 for the domain name and threatened to raise the price for such sale by USD 100 every day an offer was not accepted). As such, the Panel finds that Respondent's passive holding of the Domain Name also satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
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 <alkhailavenuemall.com> be transferred to Complainant.
John C McElwaine
Date: September 4, 2018