WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nakheel PJSC v. Shabina Ghani Aqeel
Case No. DAE2018-0006
1. The Parties
The Complainant is Nakheel PJSC of Dubai, United Arab Emirates (“UAE”), represented by Gowling WLG (UK) LLP, UAE.
The Respondent is Shabina Ghani Aqeel of Scarborough, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <alkhailavenuemall.ae> (the “Domain Name”) is registered with AE Domain Administration (.aeDA).
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 AE Domain Administration (.aeDA) a request for registrar verification in connection with the Domain Name. On July 22, 2018, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on July 25, 2018 to resolve an administrative formality.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy - UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, Sections 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, Section 5(a), the due date for Response was August 15, 2018. The Response was filed with the Center on July 30, 2018.
The Center appointed Ian Lowe as the sole panelist in this matter on August 4, 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, Section 7.
On August 6, 2018, the Complainant made an unsolicited supplemental filing of an incomplete additional Annex to the Complaint comprising further email exchanges between the Respondent and the Complainant’s representatives. The Panel made an order requesting a complete copy of the additional Annex. This was duly filed on August 7, 2018 and provoked a further email from the Respondent.
The Panel has considered the additional material, but as section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition makes clear, unsolicited supplemental filings are generally discouraged. The Panel does not consider that there are any exceptional circumstances justifying the supplemental filing and accordingly declines to admit the further material.
4. Factual Background
The Complainant is one of the world’s leading property developers based in Dubai, United Arab Emirates. It develops, sells, leases and manages residential, commercial, retail, and leisure projects in Dubai as well as operating shopping malls. One of the Complainant’s current retail projects is Al Khail Avenue Mall, located to serve the Jumeirah Village, Jumeira Park and other neighborhoods in Dubai, which will comprise over 1.1 million square feet of leasable space, 350 stores, a multi-screen cinema, cafes, supermarkets, and restaurants.
The Complainant is the registered proprietor of United Arab Emirates trademarks numbers 223920 to 2239223 inclusive in respect of AL KHAIL AVENUE and device in Classes 35, 36, 41, and 43, all filed on December 24, 2014 and registered on May 5, 2015.
The Domain Name was registered on August 14, 2016. It resolves to a parking page comprising a link to a web page of pay-per-click links to third party websites.
On May 28, 2018, prior to commencement of these proceedings, the Respondent sent an email addressed to the CEO of the Complainant, referring to the Domain Name and three other domain names, in the following terms:
“My name is Aqeel 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$49,000,000 (FORTY-NINE MILLION DOLLARS) USA$.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its AL KHAIL AVENUE trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered or is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In its Response, the Respondent first sets out a statement of some provisions of the UAE legislation on trademarks and trademark infringement and suggests that the Complainant may be infringing the rights of the owner of Al Khail Mall that is around 22km away from the Complainant’s Al Khail Avenue Mall development. However, it goes on to say that “…I know I that I am violating domain trademark violations with [the Domain Name] but what about Al Khail Avenue,…are they going to change the name to something else, because Al Khail Mall is owned by Al Fattan Properties….I am unaware if I can keep these domains because If I am violating trademark so is Nakheel properties too”.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of the United Arab Emirates trademark AL KHAIL AVENUE and device in which the words AL KHAIL AVENUE are the dominant feature. Although the Respondent questions whether the Complainant’s use of that mark may infringe the rights of the owner of Al Khail Mall in Dubai, there is no evidence that there has been any such challenge, quite apart from any arguments as to the nature of that owner’s rights in the mark AL KHAIL MALL or as to whether the Complainant’s use of AL KHAIL AVENUE would infringe those rights. The Domain Name comprises the entirety of the Complainant’s word mark and differs only by the addition of the word “mall”. In the view of the Panel, this addition does not detract from the confusing similarity between the Domain Name and the mark. In the circumstances, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name and the Respondent does not make any relevant submissions or put forward any evidence of such rights or interests in its Response. Indeed, the Respondent admits in its Response that it is “violating domain trademark violations with [the Domain Name]”. The Respondent has not used the Domain Name for a bona fide offering of goods or services but only for a parking page with links to a webpage with pay-per-click links to third party websites. Accordingly, the Panel finds that the Respondent has not rights or legitimate interests in respect of the Domain Name.
C. Registered or is Being Used in Bad Faith
The Complainant apparently learned of the registration of the Domain Name when the Respondent sent an email to the Complainant offering to sell it for USD 49 million. The legitimate inference is that the Domain Name was registered not only after the Complainant’s AL KHAIL AVENUE trademark was registered but after the Complainant’s proposed development of Al Khail Avenue Mall became public knowledge. In light of the very limited use of the Domain Name by the Respondent, and its unsolicited offer to sell the Domain Name (and other similar domain names) to the Complainant for a very substantial sum, the Panel is in no doubt that the Respondent had the Complainant and its rights in AL KHAIL AVENUE in mind when it registered the Domain Name and that, as envisaged by Section 6(b)(i) of the Policy, the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name. In the view of the Panel, this clearly amounts to bad faith registration and bad faith use for the purposes of Section 6(b) of the Policy.
For the foregoing reasons, in accordance with Sections 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <alkhailavenuemall.ae> be transferred to the Complainant.
Date: August 10, 2018