Complainant is Ski Dubai branch of Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
Respondent is Ronald Sayegh, Grey Matter SARL of Sheileh, Kesrwan, Lebanon, represented by Abou Jaoude & Associates, Lebanon. 2. The Domain Names and Registrar
The disputed domain names and (the "Domain Names") are registered with TierraNet d/b/a DomainDiscover (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 7, 2015. That day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 13, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2016. The Response was filed with the Center on December 21, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 29, 2015. 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
Complainant Ski Dubai is a limited liability company established in August 2005 in the United Arab Emirates. Complainant is a branch of Majid Al Futtaim Properties LLC, a company established in 1992 in the United Arab Emirates. According to Complainant, "SKI DUBAI is the Middle East's first and only indoor ski resort and the world's largest indoor snow park." It appears from the record that Complainant's indoor ski resort opened in 2005. Complainant holds several trademark registrations for SKI DUBAI (and device), including United Arab Emirates trademark SKI DUBAI (and device), registered May 22, 2005.
Majid Al Futtaim Properties LLC is also developing the "Mall of Egypt," scheduled to open in 2016, of which "Ski Egypt" is planned as a "leisure component" of the Mall of Egypt. Complainant holds an Egyptian registered trademark for SKI EGYPT, registered August 23, 2012.
Respondent, a company based in Lebanon, has been in the business of winter tourism and online booking services (such as hotels and tour packages) since 1997.
The Domain Name was registered on January 12, 2003 and the Domain Name was registered on September 11, 2010. Both Domain Names resolve to active commercial websites where Respondent offers online booking services for tourists looking to ski in Dubai or Egypt. The websites also contain a few commercial advertisements (such as flower sales and dating opportunities) from unrelated parties. Respondent's websites include specific references to, and discussions of, Complainant's indoor ski resorts.
According to Respondent, and as corroborated by documents annexed to the Response, Complainant "approached the Respondent for cooperation and the former has requested the Respondent to handle its online booking." Respondent alleges that this initial approach from Complainant occurred in 2005, when the SKI DUBAI resort opened, and the documents in the record reflect that these cooperative efforts were underway at least as early as July 2006.
The record also includes an October 23, 2013 "Letter Agreement for Usage of Vouchers at Ski Dubai," on Majid Al Futtaim letterhead. This letter from Complainant was addressed to Respondent "Grey Matter" and its owner, Respondent Ronald Sayegh, and made express reference in the caption to the Domain Name . The letter agreement purportedly governed Respondent's online booking activities for tourist visits to the Ski Dubai resort.
The record also includes an email dated January 13, 2013 from Complainant to Respondent, which confirmed that "it is possible to integrate our booking system into your website."
Further, the record includes a July 12, 2011 email from Complainant, which said "MF Leisure has come up with a rebate scheme to reward Grey Matter for their support."
In June 2015, the record reflects, Complainant sought a transfer of both Domain Names and apparently wished to bring the online booking activities in-house and end the relationship with Respondent. The Parties discussed some prices and transition periods. Respondent offered to accept AED 50,000 plus commissions for 18 months on the SKI DUBAI business in exchange for the immediate surrender of and the surrender of after the 18-month period. This offer evidently was not accepted. 5. Parties' Contentions A. Complainant
Complainant asserts that it is entitled to a transfer of both Domain Names under the terms of the Policy. Complainant asserts, among other things, that "Respondent is not affiliated with the Complainant in any way," that "Complainant has not authorized the Respondent to use its trademarks," and that "Respondent is not an authorized dealer, distributor or licensor [sic] of the Complainant."
Complainant also argues that Respondent has registered and is using the Domain Names in bad faith by "taking an advantage of the Complainant's fame and reputation" and misleading Internet users into believing that Respondent is the "owner" of Complainant's marks. With reference to the website to which the Domain Name resolves, for example, Complainant asserts that "Respondent uses the Complainant's trademarks, company name (trade name), the detailed information of Complainant's resort, its pictures and videos. The matter which indicates by fraud and counterfeiting that the Respondent is the owner of the trademark 'Ski Dubai' and hence misleading the users." B. Respondent
Respondent asserts that it registered both of the Domain Names before Complainant's ski resorts went into operation.
Moreover, Respondent argues that it did not register and is not using the Domain Names in bad faith, since Complainant has been using Respondent to conduct online booking activities for Complainant's tourism guests. According to Respondent, this Complaint is the result of Complainant having decided in the past year to take over the online bookings for its resorts. As Respondent states: "After 10 years collaborating with Respondent as a travel partner reselling Ski Dubai services online, the Complainant decides without any justified cause to stop the agreement with the Respondent in order to run the online business itself; without any consideration of the Respondent efforts done throughout those 10 years and without any fair compensation for the latter efforts in promoting SKI DUBAI online booking business." 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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. A. Identical or Confusingly Similar
The Panel accepts that Complainant holds trademark rights in SKI DUBAI and SKI EGYPT, and that the Domain Names are identical to the word part of these marks.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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.
In view of the Panel's conclusion under the "bad faith" head below, the Panel declines to address the "rights or legitimate interests" element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that, for each of the Domain Names, the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
This is not a clear case of cybersquatting, which is the type of case the Policy was designed to address. Rather, this is a business dispute which is ill-suited for resolution under the Policy. Whether Complainant can and should wrest these Domain Names from Respondent is a matter for negotiation between the parties or resolution by another tribunal with broader jurisdiction than the Policy affords.
As respects the Policy's "bad faith" requirement, the record here is devoid of evidence indicating bad faith registration and use by Respondent. Instead, Complainant presents a series of seemingly compelling and categorical statements ("Respondent is not affiliated with the Complainant in any way"; "Complainant has not authorized the Respondent to use its trademarks"; and "Respondent is not an authorized dealer, distributor or licensor [sic] of the Complainant") which, if they were a true and complete representation of the relevant facts, would tend to support a transfer of the Domain Names.
Despite these bald assertions, Complainant omits some critical information from its Complaint, which omission the Panel finds troubling. Although Complainant's categorical statements might, under a strict reading, be literally true, they are misleading in view of the undisclosed decade-long relationship between the Parties. The record reflects that Complainant knew fully well that Respondent was using the Domain Name for the express purpose of booking guests to Complainant's resort. Not only did Complainant know this, but Complainant worked with Respondent to integrate their online booking systems. Indeed, Complainant had written agreements with Respondent, and even rewarded Respondent's "support" at one point with a "rebate scheme."
In these circumstances, it is galling for Complainant to apply the word "fraud" to Respondent in the Complaint. Unless Respondent simply made up out of thin air all of the ten-year history between the Parties (and if that had occurred, one would have expected some type of rejoinder from Complainant), this appears simply to be a business relationship gone sour, not a case of fraud or cybersquatting. Nothing in the record (apart from Complainant's selective and unsupported allegations) says otherwise.
The Panel concludes that Complainant has failed to prove that Respondent registered and used the Domain Names in bad faith within the meaning of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: January 12, 2016
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