The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Solidere of Beirut, Lebanon, internally represented. 2. The Domain Name and Registrar
The disputed 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 January 3, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2018, 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 January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. Upon request by the Respondent, the Center granted an extension of Response due date until February 2, 2018. The Response was filed with the Center on February 2, 2018. On February 5, 2018, the Complainant submitted a Supplemental Filing to the Complaint, after which the Respondent submitted a Supplemental Filing to the Response on February 7, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 22, 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. 4. Factual Background
The Complainant is part of the Majid Al Futtaim group.
According to the Complaint, the Complainant develops, owns and manages shopping malls, hotels and communities throughout the Middle East and North Africa region. It has a portfolio of 21 shopping malls, 12 hotels, three mixed-use communities and four office buildings across the United Arab Emirates, Egypt, Lebanon, Bahrain and Oman. It considers the shopping malls its core business. The shopping mall portfolio includes Mall of the Emirates, Mall of Egypt, City Centre malls, My City Centre neighbourhood centres, and four community malls which are in joint venture with the Government of Sharjah.
The Complainant opened its City Centre Deira in Dubai in November 1995. According to the Complaint, that shopping mall has in excess of 22 million visitors annually. In addition, the Complainant has been operating the following shopping malls since the dates shown:
- City Centre Ajman since 1998;
- City Centre Sharjah and City Centre Muscat since 2001;
- City Centre Maadi since 2002;
- City Centre Alexandria since 2003;
- City Centre Bahrain and City Centre Qurum since 2008;
- City Centre Mirdif since 2010;
- City Centre Fujairah since 2012;
- Beirut City Centre (subsequently renamed City Centre Beirut) since April 4, 2013;
- City Centre Meaisem since 2015;
- City Centre Shindagha since 2016;
- My City Centre Nasseriya since 2014; and
- My City Centre al Barsha since 2016.
The Complainant has also provided evidence of numerous trademark registrations for, or including, CITY CENTRE in the United Arab Emirates, Saudi Arabia and Lebanon. Further, the Complainant has the following trademarks registered in Lebanon:
- Registered Trademark No 151152 for the words BEIRUT CITY CENTRE (in Arabic and English) and device in respect of Brokerage services in the sale, purchase and rental and management of real estate in International Class 36. This trademark was registered on November 21, 1998.
- Registered Trademark No 154773 for the words CITY CENTRE (in Arabic and English) and device in respect of a range of goods and services in International Classes 16, 35, 36, 41 and 43. This trademark was filed on January 8, 2014.
- Registered Trademark No 154828 for the words CITY CENTRE (in Arabic and English) and device (in blue and white) in respect of a range of goods and services in International Classes 16, 35, 36, 41 and 43. This trademark was filed on January 10, 2014.
- Registered Trademark No 164797 for the words CITY CENTRE BEIRUT in respect of a range of services in International Classes 35, 36 and 37. This trademark was filed on March 10, 2015.
- Registered Trademark No 164798 which is also for the words CITY CENTER BEIRUT in respect of a range of services in International Classes 35, 36 and 37. This trademark was filed on March 10, 2015.
- Registered Trademark No 175195 for the words BEIRUT CITY CENTER in respect of a range of services in International Classes 35, 36 and 37. This trademark was filed on July 26, 2016.
The Complainant has registered and is using the domain name . Retailers at the Complainant’s Beirut mall include internationally famous brands such as Carrefour, Marks & Spencer, Karen Millen, Lacoste and Victoria’s Secret.
According to the Response, the Lebanese Parliament set the Respondent up to undertake the reconstruction and development of (to use a neutral expression) the town center of Beirut following the conclusion of the civil war which had been raging since 1975.
As set out in its articles of incorporation, the Respondent’s full name is: Société Libanaise pour le Développement et la Reconstruction du Centre Ville de Beyrouth S.A.L. (SOLIDERE – Centre de Beyrouth).
The Respondent was established under a special law of the Lebanese Parliament (Law No. 117/91) in 1991. Its articles of incorporation were approved by a decree of the Lebanese Council of Ministers, Decree No 2537, in 1992 and it was formally registered in the Beirut Commercial Register on May 10, 1994.
The disputed domain name was registered on January 18, 2000.
At the time this administrative proceeding commenced, the disputed domain name resolved to a
pay-per-click website which appears to have links provided by the Registrar, Network Solutions, LLC. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
As the Complainant’s Supplemental Filing seeks to respond to and correct issues raised in the Response, the Panel admits it into the record pursuant to paragraph 10 of the Rules: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: see WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the generic Top-Level Domain (“gTLD”) “.com” and in the case of Trademark No. 151152, the device element (see WIPO Overview 3.0, section 1.10), the disputed domain name consists solely of the Complainant’s Trademarks Nos 151152 and 175195. The Panel finds therefore that the disputed domain name is identical to these trademarks. The disputed domain name is also confusingly similar to the Complainant’s other registered trademarks in Lebanon. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that the Respondent has no association with it or its shopping malls. Moreover, it has not licensed the Respondent to use the Complainant’s trademarks. The Complainant then points out that it registered its “Beirut City Centre” trademark in Lebanon before the disputed domain name was registered and contends that the use of the disputed domain name to resolve to a parking page with
pay-per-click links does not qualify as a legitimate interest under the Policy.
In its Response, the Respondent points to its official name which it says translates into English as “the Lebanese Company for the Development and the Reconstruction of Beirut City Center (Solidere - Beirut City Center”. Accordingly, it seeks to bring itself within paragraph 4(c)(ii) of the Policy.
The Complainant disputes this translation. It points out that the Respondent describes itself in English on its website “/corporate/about” as “The Lebanese Company for the Development and Reconstruction of Beirut Central District s.a.l.” (emphasis supplied).
The Panel notes that the relevant webpage immediately follows that description with the statement “Its business is the reconstruction and development of Beirut City Center”. The Panel notes further that the expression in French “Centre-ville” might be translated into English as “town centre”. In these circumstances, the Panel does not consider “Beirut City Centre” to be an unreasonable interpretation of the relevant parts of the Respondent’s official names.
The Complainant had been using the term City Centre to identify its Deira and Ajman shopping malls before the Respondent registered the disputed domain name. The Complainant also registered its Trademark No 151152 on November 21, 1998 before the Respondent registered the disputed domain name. The Complainant did not start operating its shopping mall in Beirut until 2013, many years after the Respondent’s registration of the disputed domain name.
The Respondent’s corporate names, however, had been adopted by 1994; the long form of the name having been prescribed in the Decree of the Lebanese Council of Minister in July 1992.
The expression “city centre” is plainly a descriptive term which can have an extremely wide range of references that have nothing to do with the Complainant. Moreover, Trademark No 151152 is not for the words “Beirut City Centre” alone, but for those words with a distinctive device element. The words are arranged in a stylized way around that device element. The directly descriptive nature of the words “Beirut City Centre” is likely to mean that the Complainant’s trademark has a very finely focused scope requiring a very close resemblance to the trademark as a whole. Moreover, the Complainant did not register its trademark until several years after the Respondent’s name had been adopted and the Respondent had commenced its reconstruction and development work.
In these circumstances, the Panel is unable to find that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the Complaint must fail, no good purpose would be served by considering whether the Respondent has registered and used the disputed domain name in bad faith. Rather, bearing in mind the limited nature and scope of the Policy, the use that the Respondent has been making of the disputed domain name, if objectionable, falls to be assessed under normal principles of trademark law outside the scope of the Policy. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: March 8, 2018
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