The Complainant is Nakheel PJSC of Dubai, United Arab Emirates (“UAE”), represented by Gowling WLG (UK) LLP, UAE.
The Respondent is Aqeel Ahmed of Scarborough, Canada, self-represented 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2019, 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 March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. On April 17, 2019, the Center notified the Parties that it would proceed to panel appointment.
On April 26, 2019, the Center received two email communications from the Respondent and enquired of the Parties as to whether they wished to explore settlement options, in light of an apparent settlement offer contained in an email of the Respondent dated March 30, 2019 relative to another case. In said email of March 30, 2019, the Respondent offered to transfer the disputed domain name and one other to the Complainant “for free”. On April 29, 2019, the Center received a further email from the Respondent. On April 30, 2019, the Complainant indicated to the Center that it wished the case to proceed.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 3, 2019. 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 a company registered under the laws of the UAE. It is one of the world’s leading property developers and sells, leases and manages residential, commercial, retail and leisure projects in Dubai, UAE. The Complainant also develops and leases hospitality, leisure and entertainment projects, and develops and operates shopping malls. The Complainant’s current and future retail project portfolio covers nearly 17 million square feet of leasable space.
The Complainant has a current retail project named “Nad Al Sheba Mall” which will provide a new shopping, dining and leisure destination with a new 1.2 million square feet retail and lifestyle hub and 500,000 square feet of leasable space. The mall will feature 200 shops, restaurants and entertainment outlets including a supermarket, department stores, multi-screen cinema, medical center and fitness center.
In support of this development, the Complainant has registered a variety of trademarks for the device and word mark NAD AL SHEBA MALL, including UAE registered trademark no. 293212, registered on January 17, 2019 in international class 35. The Complainant produces press material indicating that it revealed its plans for the “Nad Al Sheba Mall” project in September 2016 and received further media coverage when it issued a tender for its construction in July 2017. Press reports refer to the project as part of the Complainant’s USD 4.4 billion expansion, one of 15 large-scale existing or forthcoming projects of the Complainant, and name the development “Nad Al Sheba Mall”.
The disputed domain name was created on December 29, 2018. A screenshot of the website associated with the disputed domain name dated March 10, 2019 shows a single page site which appears to be the Registrar’s parking page.
On April 22, 2018, the Complainant announced its award of an AED 825 million contract for the construction of “Nad Al Sheba Mall”. On May 28, 2018, the Complainant received an email from the Respondent addressed to the Complainant’s CEO. This email indicated that it related to five domain names, each of which appeared to relate to one of the Complainant’s construction projects and stated:
“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$49,000,000 (FORTY-NINE MILLION DOLLARS) USA$.”
The email from the Respondent did not mention the disputed domain name as it had not yet been created by that date. However, it did include a corresponding domain name to the disputed domain name in the country code Top-Level Domain (“ccTLD”) relative to the UAE, namely .
In an email to the Complainant’s representative dated August 3, 2018, the Respondent proposed a 50% discount on each of the five domain names about which he had originally emailed the Complainant, such that he would sell these to the Complainant for the sum of USD 125,000,000. The Respondent proposed that the Parties enter into a settlement agreement “in simple English no more than 50 words”. The Respondent added that if the Complainant did not agree to this proposal it would be tied up for many years in court, while its malls would not have the related domain names and corresponding websites.
Two of the other domain names featuring in the Respondent’s email of May 28, 2018 have already been the subject of disputes under the applicable domain name dispute resolution Policy, namely, Nakheel PJSC v. Shabina Ghani Aqeel,WIPO Case No. DAE2018-0006 relating to the domain name , registered in the name of the Respondent’s wife, and Nakheel (PJSC) v. Aqueel Ahmed,WIPO Case No. D2018-1620 relating to the domain name . The panel in each case ordered the transfer of the domain name concerned to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant describes its “Nad Al Sheba Mall” retail project and provides details of its relative registered trademarks. The Complainant claims unregistered trademark rights in the NAD AL SHEBA MALL mark through use which has resulted in the mark being associated with it, under reference to the press coverage of the project launch. The Complainant notes that while its trademark registrations contain a disclaimer with regard to the name “Nad Al Sheba” on its own, the totality of the Complainant’s NAD AL SHEBA MALL designation is incorporated in and constitutes the disputed domain name. The Complainant asserts that the disputed domain name and the Complainant’s registered trademarks are identical visually, phonetically and conceptually.
The Complainant denies any direct connection with the Respondent and asserts that there is no license, consent or other right by which the Respondent would have been entitled to register or use the disputed domain name. The Complainant notes that it has not found any evidence that the Respondent was commonly known by the disputed domain name at the point of registration and adds that a “Google” search does not reveal any legitimate interests vesting in the Respondent. The Complainant asserts that the Respondent was aware of the Complainant’s unregistered trademark rights in the NAD AL SHEBA MALL mark at the time of registration of the disputed domain name because it was well-known in relation to the Complainant’s mall development both in the Middle East and within the real estate industry, adding that the Respondent himself acknowledges that he was aware of the Complainant’s operations in his email of May 28, 2018. The Complainant contends that the Respondent would not have registered and used the disputed domain name if he had not known of the Complainant’s mark.
The Complainant submits that the Respondent’s use of the disputed domain name cannot constitute a bona fide offering of goods or services, adding that the Respondent is not operating any active website via the disputed domain name.
The Complainant notes the terms of the correspondence between the Parties which it says indicates that the Respondent intended to sell five other domain names registered in violation of the Complainant’s rights for the sum of USD 49 million each. The Complainant notes that the Respondent reiterated during such correspondence that he intended to make money out of these domain names. The Complainant notes that the domain names concerned are the subject of other proceedings before the Center and that, while preparing a complaint in respect of one of the domain names, , the Complainant discovered that the Respondent had registered the disputed domain name.
The Complainant states that the Respondent’s activity of trading domain names reproducing third parties’ trademarks for commercial gain cannot constitute a fair use.
The Complainant submits that the Respondent has no prior rights in the NAD AL SHEBA MALL mark, had no authorization to use it in any form and knows the mark perfectly well. The Complainant notes that the Respondent acknowledges in his email to the Complainant that its NAD AL SHEBA MALL development is well-known with reference to the Respondent’s phrase “[…] as we all know […]” and the mention of “[…] these three Malls […]” which the Complainant notes refer to its “Deira Mall”, “Al Khail Avenue Mall” and “Nad al Sheba Mall”. The Complainant states that it is obvious that the Respondent was aware of the Complainant’s operations when he registered the disputed domain name, adding that this took place after the Complainant’s proposed development became public knowledge.
The Complainant notes that the business of the Respondent is to trade domain names reproducing third party trademarks, adding that an offer to sell domain names for valuable consideration in excess of out of pocket costs constitutes evidence of bad faith registration and use. The Complainant also submits that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and/or to gain significant sums from the Complainant. B. Respondent
The Respondent did not file a formal Response to the Complainant’s contentions. However, the Respondent did make a number of pertinent observations in an email to the Center dated March 30, 2019. A copy of said email was attached to the Center’s communication to the Parties of April 26, 2019, as noted in the procedural background section above.
At first sight, the email of March 30, 2019 appears to have been filed in connection with a different case under the Policy. However, in pertinent part, it does mention the present disputed domain name along with one other and offers to transfer these “for free” to the Complainant, while simultaneously taking issue with several of the Complainant’s contentions in the present case. The Panel considers that the intent of the Respondent appears to be that said email should be treated as a response to a variety of complaints filed by the Complainant against the Respondent or his wife under the Policy. In that context, the Panel notes that said email was received in advance of the due date for Response in the present case.
In the above circumstances, the Panel has accepted the Respondent’s email of March 30, 2019 as a response to the present Complaint, albeit that the Panel is conscious that such email does not feature the certificate of truth and accuracy required by paragraph 5(c)(viii) of the Rules and must therefore be treated with great caution. The Panel notes in passing that the observations in the email were not particularly intelligible. Nevertheless, the Panel has done its best to decipher the Respondent’s contentions relative to the present Complaint from the content.
The Respondent indicates that his email of March 30, 2019 relates to the present disputed domain name and several others which are not the subject of these proceedings. The Respondent states that he accepts the decisions in Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra and adds that he wishes to offer the Complainant the disputed domain name “for free” along with although he insists that he has a valid case for retention of certain other domain names. The Respondent submits that he registered the disputed domain name on January 4, 2018 [sic] yet the Complainant filed its application for the corresponding registered trademark on June 4, 2018. The Respondent notes that one of the media reports produced by the Complainant was dated April 22, 2018. The Panel notes in passing that the pertinent part of the Respondent’s email overlooks the fact that the disputed domain name was created on December 29, 2018.
The Respondent appears to assert that his registration of the disputed domain name predates the Complainant’s trademark registrations. In relation to certain other domain names, the Respondent asserts that the registrations are simply a coincidence, given that he and his wife live in Canada and could not have predicted the name of a forthcoming shopping mall in the UAE. The Respondent notes that he and his wife have a small business buying and selling domain names including the names of many place names in the UAE, some also containing the word “mall”. The Respondent says that he and his wife generally retain these for a period and that if they do not receive any offers for such domain names they are allowed to lapse.
The Respondent concludes with what he terms a “Friendly Message” which threatens the Complainant with business failure if the Complainant is successful in obtaining a transfer of certain other domain names. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
Under the first element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar thereto. It is not necessary for the purposes of the assessment under this element that the trademark concerned pre-date the creation of the domain name at issue although this may be relevant to the Panel’s assessment of the second and third elements.
The Panel is satisfied that the Complainant has rights in its registered NAD AL SHEBA MALL marks, including that listed in the factual background section above. The Panel notes that these marks contain both a word and a graphical element. The approach which panels typically take in cases under the Policy with regard to trademarks featuring both graphical and word elements is discussed in section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As the design elements of the Complainant’s mark do not comprise the dominant portion thereof, and not all of the textual elements are disclaimed, the Panel considers that the word element prima facie satisfies the requirement under the Policy that the Complainant show rights in a mark.
The Panel notes that the Complainant has specifically commented upon the fact that its mark contains a disclaimer in respect of the “nad al sheba” element on its own. A translation of the certificate of registration states that the mark owner may “not claim any exclusive right in the word “NAD AL SHEBA” if used separately from the mark and in other forms, being the name of a geographical place/city”. This is not of any particular consequence for the first element assessment in the present case given that not all of the mark is disclaimed and the disputed domain name is not made up of only elements which have been so disclaimed (see section 1.2.3 of the WIPO Overview 3.0). On the contrary, the geographical term in the Complainant’s mark is not used only in an ordinary geographical sense but rather as one element of a mark which represents, cumulatively, the name and indeed the identity of the Complainant’s property development project.
Furthermore, the Complainant has also claimed unregistered trademark rights in the mark NAD AL SHEBA MALL and the Panel accepts this claim based upon the media coverage produced by the Complainant as discussed in more detail in connection with the second and third elements below. This demonstrates to the Panel’s satisfaction that substantial publicity attended the launch of the Complainant’s project and the issuing and award of the relative construction tender. It is entirely reasonable to infer from this that the mark NAD AL SHEBA MALL is sufficiently associated in the public’s mind with the Complainant and its project such that it is reasonable to find that corresponding unregistered trademark rights vest in the Complainant.
The Complainant’s NAD AL SHEBA MALL trademark is alphanumerically identical to the second level of the disputed domain name, with the exception of white space which is not permissible in a domain name for technical reasons. The generic Top-Level Domain (“gTLD”) of the disputed domain name, in this case, “.com” is typically disregarded for the purposes of the comparison under the first element confusing similarity test.
In all of the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name.
In the present matter, the Panel finds that the Complainant has established the requisite prima facie case. The Complainant asserts that it has provided no license or permission to the Respondent to register the disputed domain name and that it has no direct connection with the Respondent. The Complainant indicates with reference to a “Google” search that there is no evidence that the Respondent was commonly known by the disputed domain name at the point of registration. The Complainant provides evidence of the Respondent’s communications with it. These communications are strongly suggestive of the notion that the Respondent was aware of the names of a number of the Complainant’s building projects and intended to target these through the registration of various domain names which it then offered for sale at a high price to the Complainant. Following the conclusion of this correspondence and the outcome of Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra, the Respondent proceeded to register the disputed domain name and has since passively held it. The disputed domain name matches in its second level the domain name , which was one of the domain names contained and offered for sale in the Respondent’s email communication to the Complainant of May 28, 2018. In all these circumstances, the burden of production shifts to the Respondent to bring forward relevant evidence of his rights or legitimate interests in the disputed domain name.
The Respondent does not offer any formal response in the present proceeding. The Respondent’s informal email to the Center dated March 30, 2019 begins with an offer to transfer the disputed domain name to the Complainant “for free”. This amounts to a significant concession on the Respondent’s part and suggests that the Respondent has no meaningful answer to the Complainant’s contentions. However, as the proposal is also accompanied by a suggestion that the Respondent registered the disputed domain name before the Complainant’s trademarks were filed and before relative media coverage was published, the Panel will examine whether this is sufficient to rebut the Complainant’s prima facie case.
In the first instance, the Panel notes that the disputed domain name was not created until December 29, 2018. By this date, it was impossible for the Respondent to deny having full knowledge of the Complainant or its activities given that it had already been in correspondence with the Complainant regarding five other domain names corresponding to the Complainant’s malls and had also been called as the respondent in the cases of Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra.
The Respondent’s original communication with the Complainant dated May 28, 2018 targets not one, not two, but rather three specific names of the Complainant’s mall developments, in part via a domain name matching in its second level the second level of the disputed domain name in the present case. This approach appears to have been both coordinated and unsolicited. It covers domain names which were created after the Complainant’s corresponding registered trademarks, even if that is not the case for the disputed domain name (see Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra). In any event, the Complainant has demonstrated by way of various media articles that its NAD AL SHEBA MALL development was common knowledge from its original announcement in September 2016. This, and the date of award of the construction tender in April 22, 2018, both predate the creation date of the disputed domain name.
The Respondent began his correspondence with the Complainant with the phrase “[…] as we all know that Nakheel is doing construction on these three Malls […]”. This is strongly suggestive of the notion that the Respondent had prior knowledge of the development of the Complainant’s malls and the names which had been selected and publicised for them. There is considerable force in the Complainant’s submission that the Respondent’s offer to sell the domain names listed in the email of May 28, 2018 for a very substantial price is the only use which has ever been made of them.
It appears to the Panel that the disputed domain name in the present case was created by the Respondent as an afterthought, albeit one which is inextricably linked to the Respondent’s apparent intent to target the Complainant’s rights by way of the original offer of sale. The disputed domain name fits a pattern which is established by the other domain names described in the Respondent’s email of May 28, 2018, given that, in relation to two of the three mall names referred to, the Respondent evidently registered the “.com” and “.ae” variants of the domain names concerned and, in relation to the third, , the Respondent had only registered the “.ae” variant by that date and has since created the disputed domain name to provide a similar matching pair.
In all of the above circumstances, and on the balance of probabilities, the Panel finds that the Respondent has shown an intent to trade off third party rights in the corresponding names of the malls which the Complainant was developing, including that relating to the disputed domain name. Such intent cannot confer any rights or legitimate interests upon the Respondent.
The Panel finds on the balance of probabilities that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of of paragraph 4(a)(ii) of the Policy have been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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”.
The Panel notes that the disputed domain name is currently passively held and reminds itself that non-use thereof does not, in and of itself, prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0).
On this topic, the Complainant asserts that the Respondent has no prior right and no authorization given by the Complainant to use the NAD AL SHEBA MALL trademark, that the Respondent was fully aware of the Complainant’s prior rights and that the main activity of the Respondent is to trade domain names reproducing third parties’ trademarks for amounts exceeding the costs of registration.
The Panel is satisfied that the Complainant’s submissions, supported in particular by the correspondence between the Parties, make a compelling case that the Respondent registered the disputed domain name with knowledge of the Complainant’s rights and with intent to target the same by selling the disputed domain name to the Complainant for an amount considerably in excess of its out of pocket costs. The Respondent does not appear to challenge the Complainant’s submissions in any material respect, given that he indicates that he will transfer the disputed domain name to the Complainant “for free” in his email of March 30, 2019. The Respondent’s argument regarding the date of registration of the disputed domain name is not borne out by the facts of the case.
The Respondent has not overtly offered the disputed domain name for sale to the Complainant, and did not specifically mention it in his offer of sale of five domain names to the Complainant featuring the names of three of the Complainant’s forthcoming malls, because the disputed domain name was not registered at that point. By the time that the Respondent did register the disputed domain name, the Panel is satisfied that the Complainant had established an unregistered mark in the term NAD AL SHEBA MALL arising from the notoriety of its substantial and valuable property project, originally announced in September 2016. It is reasonable to infer that there will have been a considerable degree of public interest as indicated by the media coverage produced with the Complaint. It is likewise reasonable to infer, given the scope and value of the construction project, that the name of the proposed mall will have become associated with the Complainant in the public mind.
Furthermore, in the present case, the Respondent could not credibly deny having prior knowledge of the Complainant or its rights on any view. The evidence shows that by the date of creation of the disputed domain name, the Respondent had already been in correspondence with the Complainant and in particular that such correspondence had already been the focus of other proceedings between the Parties, namely Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra.
The Panel cannot imagine any purpose which the Respondent might have had for the disputed domain name other than to sell it to the Complainant for a price in excess of its out of pocket costs along with the remainder of the bundle of domain names which were the subject of the Respondent’s original approach to the Complainant. The Panel notes that by the date of creation of the disputed domain name, transfer had already been ordered in respect of the domain names which were the subject of Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra in August and September 2018 respectively.
In all of the above circumstances, the Panel finds on the balance of probabilities that the Complainant has proved that the disputed domain name has been registered and is being used in bad faith and accordingly that the requirements of of paragraph 4(a)(ii) of the Policy have been established. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: May 17, 2019
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