The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates (“UAE”), represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Raja Abdulkader, EMKE Group of Abu Dhabi, UAE, represented by United Trademark & Patent Services, UAE. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. On August 22, 2018, the Respondent requested a four days extension to file its Response. The Response was filed with the Center on August 26, 2018. On September 6, 2018, the Complainant filed a supplemental filing. On September 10, 2018, the Respondent filed a reply to the Complainant’s supplemental filing.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 12, 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.
The Panel has determined to admit the Complainant’s supplemental filing in this case. The Respondent has objected to that supplemental filing and has requested the opportunity to reply to that filing if admitted. For reasons that will become apparent, it is unnecessary for the Respondent to reply to the Complainant’s supplemental filing. 4. Factual Background
The Complainant is a limited liability company registered in Dubai. It is part of a group held by Majid al Futtaim Holdings LLC that owns and operates shopping malls, retail and leisure establishments in the Middle East and elsewhere.
The Respondent is a company located in the UAE. It is part of a group named LuLu Group International that operates hypermarkets, shopping malls and other businesses in the Middle East and elsewhere.
The Complainant registered the domain name on July 6, 2003. It has operated a shopping mall named “Mall of the Emirates” in Dubai since 2005.
The Respondent registered the disputed domain name, , on January 29, 2007. The disputed domain name does not appear to have resolved to any active website.
The Complainant is the owner of Sultanate of Oman (“Oman”) trademarks number 43575 and 43576 for MALL OF OMAN, filed on February 10, 2007 and registered on November 11, 2007 in Classes 35 and 36.
The Complainant registered further trademarks in various territories for MALL OF EGYPT on February 27, 2007, MALL OF ALGERIA on April 13, 2011, MALL OF TUNISIA on April 6, 2011 and MALL OF THE KINGDOM on November 29, 2011.
The Complainant has operated a shopping mall named “Mall of Egypt” in Egypt since 2017. 5. Parties’ Contentions A. Complaint
The Complainant states that its group is the leading developer of shopping malls together with hotels and mixed-use community projects in the Middle East and North Africa, owning 21 malls, 12 hotels and three mixed-use communities. It states that it has a presence in 15 countries and employs more than 40,000 people and that, in 2016, its malls attracted more than 181 million visitors.
The Complainant states that it first used the “Mall of” brand when it opened the “Mall of the Emirates” in 2005. It states that the “Mall of the Emirates” welcomes more than 42 million visitors annually and is home to more than 630 international stores. It subsequently opened the “Mall of Egypt” in 2017, including an indoor skiing slope and cinema, and has plans to open the “Mall of Oman” by 2020 and the “Mall of Saudi” by 2022.
The Complainant provides evidence that, on May 2, 2016, it announced a major increase in its investment in Oman to include, among other projects, plans for a “Mall of Oman” at an estimated cost of OMR 275 million. The Complainant states that this will be the largest shopping destination in Oman with 350 retail outlets and a snow park among other attractions. The Complainant provides links to marketing and publicity for the “Mall of Oman” and states that a Google search for that name will clearly direct users to the Complainant’s mall.
The Complainant states that, as a result of the above matters, the trademark MALL OF OMAN is exclusively associated with the Complainant and the Complainant is entitled to prevent any third party from using that mark.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name wholly incorporates its trademark MALL OF OMAN and is identical to that mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it is not affiliated with the Respondent in any way and did not authorize the Respondent to use its trademark MALL OF OMAN. It further states that the Respondent has no prior rights in respect of the disputed domain name and has not commonly been known by that name.
The Complainant submits that the Respondent’s passive holding of the disputed domain name for 11 years does not give rise to rights or legitimate interests and that, even if a domain name corresponds to a dictionary term or phrase, it must genuinely be used in connection with that term or phrase and not to trade off third-party trademark rights.
The Complainant submits that the Respondent is unable to demonstrate any preparations to use the disputed domain name in connection with any bona fide offering of goods or services. The Complainant further submits that, by reason of the global fame of the Complainant’s “Mall of” brands in various territories, there is no legitimate use to which the disputed domain name could conceivably be put. The Complainant contends that the disputed domain name will inevitably mislead Internet users as to a connection with the Complainant and, for that reason also, cannot give rise to legitimate rights or interests on the part of the Respondent.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It states that, since the Complainant had traded as “Mall of” since 2005 (and had registered in 2003), it is implausible that the Complainant was unaware of its brand when it registered the disputed domain name, particularly as the Respondent has an address in the UAE.
The Complainant submits that the registration of the disputed domain name only 12 days before the date of filing for the Complainant’s trademark is not likely to be coincidental. It alleges that the Respondent must have become aware of the name of the Complainant’s plans for that name and must have rushed to registered the disputed domain name in order to prevent the Complainant from registering it. The Complainant submits that, where a Respondent is aware of an impending announcement concerning a particular name, it may register a domain name in bad faith even if the Complainant has not yet obtained trademark rights in that name (see, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,WIPO Case No. D2003-0845).
The Complainant contends that the Respondent would clearly not have registered the disputed domain name unless it was aware of the Complainant’s “Mall of” brand. It states that the Respondent has made no active use of the disputed domain name and it is clear therefore that its purpose was to prevent the Complainant from registering it. The Complainant adds that, by using the disputed domain name, the Respondent will attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant requests the transfer of the disputed domain name. B. Response
The Respondent states that it was founded in 1966 and claims to have reinvented the concepts of supermarkets in the Middle East. It states that the LuLu group owns several entities including the Respondent with interests in hypermarkets, shopping malls, tourism, hospitality and other sectors. The Respondent says that its group has an annual turnover in excess of USD 6.9 billion and staff of over 40,000. It states that it operates 150 shopping malls, hypermarkets and supermarkets in the Middle East, North Africa and other territories.
The Respondent challenges the Complainant’s claim to have rights in the “Mall of” brand. It states that the Complainant’s trademark MALL OF OMAN consists of three elements, and that it is well-established that a trademark owner does not obtain rights over non-distinctive elements. The Respondent submits that the “Mall of” brand was not invented by, and is not exclusively associated with, the Complainant in any event, and points to a “Mall of the World” concept being devised by the government of Dubai. The Respondent also refers to the “Mall of America”, “Mall of Africa” and other examples in various territories.
The Respondent states that it has itself used the “Mall of” concept, having obtained approval of the trade name “Mall of Umm Al Quwain” on March 12, 2014 from the government of that emirate. It also provides evidence of a UAE trademark for MALL OF UAQ, registered on March 28, 2018 with effect from November 10, 2016.
The Respondent states that it operated a shopping mall in Oman and on May 18, 2006 entered into a memorandum of understanding to acquire additional land for expansion. It exhibits a copy of that document. The Respondent states that it intended to name the mall “Mall of Oman” and registered the disputed domain name for that purpose. The Respondent states that it was not aware at that time of any plans by the Complainant to use the name “Mall of Oman”.
The Respondent agrees that that the proximity of the registration dates of the disputed domain name and the Complainant’s trademark is unlikely to be coincidental. It submits, however, that the actual scenario appears to be the opposite of what the Complainant is claiming: specifically, that upon seeing that the Respondent had registered the disputed domain name, the Complainant rushed to register the trademark MALL OF OMAN some 12 days later in order to prevent the Respondent from registering that trademark.
The Respondent submits that the Complainant registered its trademark in bad faith because it has failed to use the trademark MALL OF OMAN for over ten years after its date of registration. It notes that the Complainant appears to ignore this fact in complaining of the Respondent’s non-use of the disputed domain name. C. Complainant’s Supplemental Filing
In addition to restating previous submissions, the Complainant submits that the Respondent’s trademark MALL OF UAQ is not registered in the name of the Respondent but that of another entity. It also contends that the governmental approval document for that name has the status of a reservation only and carries no evidential weight.
The Complainant submits that the memorandum of understanding exhibited by the Respondent is, again, in the name of another entity. It also points out that the name “Mall of Oman” does not appear anywhere in that document. It states that the Respondent has provided no other evidence of plans to operating a shopping mall under the name “Mall of Oman”.
The Complainant submits evidence that it has received a building permit for its own “Mall of Oman” and states that it has already commenced construction of that project. It submits that there cannot be two shopping malls of that name and that the Respondent is plainly seeking to cause confusion. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trademark rights for the mark MALL OF OMAN. The disputed domain name is identical to the Complainant’s trademark but for the generic Top-Level Domain (“gTLD”) “.com” which is typically to be disregarded for the purposes of comparison. The Panel therefore finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel notes, however, that the test under the first element of 4(a) of the Policy is a threshold test, directed to the question of whether or not the Respondent has sufficient standing to bring the proceeding. It is irrelevant for the purpose of this test that the trademark may have been registered after the date of the disputed domain name, which may be a factor that is highly relevant to the second and third elements. B. Rights or Legitimate Interests
In the light of the Panel’s findings on the question of bad faith below, the Panel does not consider it necessary to determine whether or not the Respondent has rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
In order to establish bad faith, the Complainant must meet the conjunctive requirement of showing both that the disputed domain name was registered and that it has been used in bad faith.
The Complainant makes much of its trading under the “Mall of” brand and suggests that that branding is exclusively associated with the Complainant in the minds of the general public. However, it is important to note that the disputed domain name in this case was registered on January 29, 2007. At the date of that registration, the Complainant had owned the domain name since 2003 and had been operating the “Mall of the Emirates” in Dubai since 2005. However, all of the Complainant’s other trademark registrations for “Mall of” names, and other actual and projected mall openings under that style, are dated after the date of registration of the disputed domain name.
The Respondent registered the disputed domain name on January 29, 2007 and the Complainant filed an application for the trademark MALL OF OMAN on February 10, 2007. The Complainant submits that the Respondent must have been aware of its plans to obtain that trademark, but provides no evidence of any prior publicity for that name or any other explanation of how the Respondent’s supposed knowledge may have come about. The Respondent claims, on the other hand, that the Complainant is likely to have made its trademark application after becoming aware of the Respondent’s registration of the disputed domain name. In the view of the Panel, the Respondent’s version of events is at least as likely as the Complainant’s version, and the Complainant has not, therefore, established to the satisfaction of the Panel that the Respondent is likely to have been aware of its intention to obtain the MALL OF OMAN trademark at the date the disputed domain name was registered.
The Panel accepts that the Respondent may have been aware of the Complainant’s operation of a shopping mall in Dubai named “Mall of the Emirates” and of the Complainant’s domain name at the time it registered the disputed domain name. However, for purposes of the Policy, the Panel does not consider that the use of the name “Mall of the Emirates” invested the Complainant with exclusivity in the descriptive term “Mall of” such that other registrations employing this terminology, including the Respondent’s registration of the disputed domain name, must necessarily constitute either an impersonation of the Complainant or an attempt unfairly to benefit from the Complainant’s goodwill, even if the registration had the effect of preventing the Complainant from registering the disputed domain name. To the extent that Internet users were aware of the Complainant’s “Mall of the Emirates” name in January 2007, the Panel does not consider on the basis of the evidence in front of it that such users would be likely to assume that the disputed domain name was registered by the Complainant as opposed to another mall operator.
The Complainant submits that there cannot be two shopping malls named “Mall of Oman” and that any use by the Respondent of the disputed domain name will necessarily involve an infringement of the Complainant’s trademark. The Respondent argues in reply that the Complainant’s trademark was registered in bad faith. However, it is not the task of a Panel under the UDRP to resolve a potential trademark dispute between the Parties and the Panel may only have regard to the terms of the Policy. Such a dispute may be rather suited for resolution in an appropriate court which may be able to resolve issues of fact and law which are outside the purview of this Panel. Under the terms of the Policy, the Panel finds that the Complainant has failed to establish that the disputed domain name was registered in bad faith and for that reason the Complaint must fail. 7. Decision
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Sole Panelist
Date: September 18, 2018
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