WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Majid Al Futtaim Holding LLC v. Majidal Futtam
Case No. D2019-1786
1. The Parties
The Complainant is Majid Al Futtaim Holding LLC, United Arab Emirates (“UAE”), represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Majidal Futtam, United States of America.
2. The Domain Name and Registrar
The disputed domain name <majidalfuttam.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2019, 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on September 3, 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 company based in Dubai, that owns and operates through various subsidiaries shopping malls, retail, and leisure establishments in the Middle East, Africa and Asia, with operations in 15 countries; UAE, Egypt, Saudi Arabia, Oman, Lebanon, Bahrain, Kuwait, Qatar, Jordan, Iraq, Kazakhstan, Pakistan, Kenya, Armenia, and Georgia. It owns and operates 24 shopping malls and 13 hotels. It employs more than 43,000 people. The group was established by Majid Al Futtaim in 1992.
The Complainant owns several registrations for “MAJID AL FUTTAIM” – in English and Arabic letters – for example United Arab Emirates trademark No. 201644 registered on November 26, 2013. These trademarks are referred to as the “MAJID AL FUTTAIM trademark” in this decision.
The Complainant’s website is linked to <majidalfuttaim.com>, which it registered on February 9, 2002.
The Disputed Domain Name was registered on November 15, 2018. It does not resolve to any active website.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is confusingly similar to the MAJID AL FUTTAIM trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “Majid Al Futtaim” or “Majid Al Futtam”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it must have been chosen with knowledge of the Complainant’s MAJID AL FUTTAIM trademark and cannot legitimately be used.
The Complainant says that panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith and references section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
It also says that the fact that Disputed Domain Name is passively held does not prevent a finding of bad faith. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate Internet purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy and refers to the well known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
No Response has been filed.
6. Discussion and Findings
Preliminary Matters - No Response
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the MAJID AL FUTTAIM trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It involves the omission of the space between the words and of the letter “i”. The Panel agrees in this regard with the approach set out in WIPO Overview 3.0 namely:
“1.9 Is a domain name consisting of a misspelling of the complainant’s trademark (i.e., typosquatting) confusingly similar to the complainant’s mark?A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MAJID AL FUTTAIM trademark. The Complainant has prior rights in the MAJID AL FUTTAIM trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. In reaching this conclusion the Panel notes that according to the WhoIs data the name of the Respondent is “majidal futtam”. If this were genuinely the Respondent’s name (ii) above would likely be applicable. However, the burden is upon the Respondent to provide to the Panel the relevant evidence to establish this ground is applicable. It has not done so. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Panel infers it is more likely than not that the Respondent registered the Disputed Domain Name because it corresponded to the Complainant’s name or its MAJID AL FUTTAIM trademark. On the evidence that the Respondent has made no use of the Disputed Domain Name in the time it has owned it. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 3.0 at section 3.3 as follows:
“Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the present case the Panel adopts this approach and notes in particular the Respondent’s failure to provide any evidence of actual or contemplated good-faith use.
Overall it does not generally matter that the Respondent has not as yet used the Disputed Domain Name. “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, Westdev Limited v. Private Data, WIPO Case No. D2007-1903, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
Accordingly, and applying the principles in the above noted UDRP decisions the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <majidalfuttam.com> be transferred to the Complainant.
Nick J. Gardner
Date: September 17, 2019