The Complainant is Fawaz Abdulaziz Al Hokair & Partners Co (Salman Al-Hokair) of Riyadh, Saudi Arabia, represented by Ahmed Mourady, Egypt.
The Respondent is Basel Al Salah of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2010. On November 1, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2010, 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 Complainant filed an amended Complaint on November 8, 2010. 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 November 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2010. The Response was filed with the Center on November 30, 2010 following the issue by the Center of a Notice of Respondent Default earlier the same day.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 9, 2010. 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.
On December 13, 2010, the Panel issued a procedural order seeking translation of parts of certain annexes to the Complaint. The Complainant duly responded with the requested information on December 14, 2010.
A procedural issue for the Panel is whether or not to accept the Respondent’s Response, which was submitted out of time. The issue is a purely academic one as the Panel is able to decide this dispute on the basis of the Complaint and without considering the Response. Nonetheless, the Panel has read the Response. 4. Factual Background
The Domain Name was registered on January 26, 2000.
The Complainant is the registered proprietor of 6 trade mark registrations of marks comprising or including the name MALL OF ARABIA, the earliest of which is a Saudi Arabian registration dated May 28, 2002 (registered October 28, 2002) and from photographs annexed to the Complaint appears to be a developer of shopping malls trading under the name “Mall of Arabia”.
The Domain Name is currently connected to a partially developed site featuring a banner indicating that it is a shopping site, but for many years no use was made of it. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its MALL OF ARABIA registered trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. As to this last contention, the Complainant acknowledges that the circumstances do not fall neatly within the confines of paragraph 4(b) of the Policy, the date of registration of the Domain Name pre-dating the Complainant’s trade mark rights, but contends that the list of examples set out in paragraph 4(b) is a non-exhaustive list. The Complainant contends that the Respondent’s use of the Domain Name is designed to take unfair advantage of the Complainant’s trade mark rights and the Complainant refers to the many previous years of non-use of the Domain Name. B. Respondent
As indicated in section 3 above, the Response was submitted out of time. Nonetheless, the Panel has read it and the only contention of significance in the context of this dispute is the fact (acknowledged by the Complainant) that the Domain name was registered before the Complainant had acquired any trade mark rights. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Identical or Confusingly Similar
In light of the Panel’s finding under D below, it is unnecessary for the Panel to address this issue. However, while the Respondent denies the allegation that his use of the Domain Name infringes the Complainant’s trade mark rights, there is no dispute between the parties that the Domain Name is identical or confusingly similar to the Complainant’s registered trade marks details of which are set out in section 4 above. Nor could there be any dispute about it, since the substance of the Domain Name (absent the generic top level domain suffix) is the Complainant’s trade mark. C. Rights or Legitimate Interests
In light of the Panel’s finding under D below, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
As can be seen from section 4 above the Domain Name was registered more than two years ahead of the earliest of the Complainant’s trade mark registrations.
Generally, for a complaint to succeed under the Policy it is a requirement that the Domain Name was both registered in bad faith and is being used in bad faith. This is because the principal vice at which the Policy was directed was the bad faith registration of the trade marks of others. For there to be bad faith intent at time of registration of a domain name, the registrant must at the very least be aware of the existence of the trade mark right, which he/she is seeking to exploit. Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which is to be found on the Center’s website reads as follows:
“Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?
Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.”
The Complainant asserts that the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are non-exhaustive and that the fact that the Domain Name was registered prior to the coming into existence of the Complainant’s rights should not be fatal to the Complaint. This is a topical issue which has been addressed in several cases over the last year or so. See for example City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE,WIPO Case No. D2009-0643; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226; and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (“the Octogen trio of cases”); Denver Newspaper Agency v. J LLC, NAF Claim No. 1282148; Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 and Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, WIPO Case No. D2009-1313. See also Hertz System, Inc. v. HVH Worldwide Ventures, LLC,WIPO Case No. D2009-1181; Hertz System, Inc. v. Kwan ming Lee,WIPO Case No. D2009-1165; Richard “Cheech” Marin, Tommy Chong v. Traced, Inc.,WIPO Case No. D2009-1273; Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276; Camon S.p.A. v. Intelli-pet, LLC WIPO Case No. D2009-1716; A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800; Jappy GmbH v. Satoshi ShimoshitaWIPO Case No. D2010-1001.
From a study of the above-cited decisions it is plain that there is plenty of scope for intelligent minds to diverge, when it comes to interpreting paragraphs 4(a)(iii) and 4(b) of the Policy. However, for this Panel the preferred approach is the one most likely to lead to consistency, namely that identified as the “consensus” view in the Overview derived from over 10 years of decisions and supported by the overwhelming majority of cases cited in the WIPO Index under the heading of “Good Faith Registration, Bad Faith Use”.
The Panel gratefully adopts the succinct approach applied by the panel in Buddy Treats LLC v. Skylabs Corporation, David Morton WIPO Case No. D2010-1744:
“Paragraph 4(a)(iii) of the Policy obliges the Complainant to establish that “the Domain Name has been registered and is being used in bad faith”. This provision expressly concerns the Respondent’s likely intentions at the time of registration as well as subsequently. In some circumstances, the Respondent’s intentions may be inferred from its later conduct. Thus, paragraph 4(b), which provides a non-exhaustive list of circumstances that indicate bad faith, includes the following:
“(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 web site or location or of a product or service on your web site or location.”
Bad faith may be inferred from the registration of a domain name corresponding to a trademark, and its subsequent use for a pay per click advertising portal, where the evidence suggests that the domain name was selected for its trademark value rather than for its generic value. See Philip Morris USA Inc., supra. Such an inference is simply not possible, however, where the trademark did not exist at the time the domain name was registered and there is no evidence that the respondent had advance knowledge of the mark. See Dori Media International GmbH v. Sikreto LLC,WIPO Case No. D2007-1525 (and cases cited therein).”
That is the position in the current case. There is nothing before the Panel to suggest that at date of registration of the Domain Name the Respondent could have been aware of the Complainant’s future plans for its MALL OF ARABIA trade mark; indeed there is nothing before the Panel to suggest that as at that date the Complainant had any such plans.
The Complainant cites four cases in support of its contention that the Respondent’s use or non-use of the Domain Name suffices to render the Domain Name a bad faith registration within the meaning of paragraph 4(iii) of the Policy. The first case cited is the well-known Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, a case very different from this one in that the Complainant’s trade mark preceded registration of the domain name in issue by many years. Two of the other three cases are dealt with in the following extract from the decision in the third of those cases, namely General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online WIPO Case No. D2003-0845:
“The Panel follows the precedent set in Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320, and Madrid 2012, A.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The Panel concludes that Respondent knew of the pending widespread announcement of the mall at the time he registered the domain name . Respondent hoped to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. This constitutes bad faith registration of the domain name.”
Accordingly, none of the cases cited by the Complainant assists its case. All are cases where the respondent was either aware of the complainant’s trade mark rights when registering the domain name in issue or registered the domain name in issue in anticipation of those rights.
Here there is no suggestion that at time of registration of the Domain Name the Respondent was or might have been aware of the Complainant’s plans for the future. The Panel is not persuaded that the Domain Name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: December 15, 2010
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