The Complainant is Majid Al Futtaim Holding L.L.C, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Justin Tsai, United Arab Emirates, 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 August 1, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 13, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Center received three informal email communications from the Respondent on August 18, 20, and 22, 2019. On August 25, 2019, the Complainant submitted a first Supplemental Filing. On the same date, the Center received an informal email communication from the Respondent. On August 26, 2019, the Complainant submitted a second Supplemental Filing. On the same date, the Center received an informal email communication from the Respondent. On the same day, the Center acknowledged receipt of the Respondent’s email and asked for a confirmation that the email could be regarded as the Respondent’s complete Response. The Center mentioned that, if no further communication from the Respondent would be received by the due date for Response, the Center shall regard the email communication as the Response and proceed to appoint a panel. The Center received two informal email communications from the Respondent on August 26, 2019. The Center informed the Parties on September 6, 2019, that it would proceed to panel appointment.
The Center received informal email communications from the Complainant and the Respondent on September 11, 2019.
The Center appointed Charles Gielen as the sole panelist in this matter on September 19, 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 owns and operates shopping malls, retail, and leisure establishments in the Middle East, Africa, and Asia. The Complainant owns numerous trademark registrations for the trademark MAJID AL FUTTAIM both in English and Arabic letters, such as United Arab Emirates registration No. 201644 registered on July 23, 2014, for goods in class 16, registration No. 201645 registered on July 22, 2014, for services in class 35, registration No. 201647 registered on July 22, 2014, for services in class 36, registration No. 201648 registered on July 22, 2014, for services in class 41; Jordan registration No. 132829 registered on December 22, 2013, for services in class 36, registration No. 132830 registered on December 22, 2013, for goods in class 16, registration No. 132831 registered on December 22, 2013, for services in class 35, registration No. 132832 registered on December 22, 2013, for services in class 41; Bahrain registration No. 101034 registered on December 15, 2016, for goods in class 16, registration No. 101035 registered on December 15, 2016, for services in class 35, registration No. 101036 registered on December 15, 2016, for services in class 36, registration No. 101037 registered on December 15, 2016, for services in class 41; and Egypt registration No. 96038 registered on June 15, 1999, for services in class 35.
Furthermore, the Complainant holds the domain name incorporating the trademark MAJID AL FUTTAIM.
The disputed domain name was created on September 5, 2018, and directs to a website showing a parking page containing various commercial or sponsored links of third party websites. 5. Parties’ Contentions A. Complainant
The Complainant owns and operates shopping malls, retail, and leisure establishments in the Middle East, Africa, and Asia, with operations in 15 countries, namely United Arab Emirates, Egypt, Saudi Arabia, Oman, Lebanon, Bahrain, Kuwait, Qatar, Jordan, Iraq, Kazakhstan, Pakistan, Kenya, Armenia, and Georgia, employing more than 43,000 people. The Complainant was established by Mr. Majid Al Futtaim in 1992. The Complainant manages three major operating subsidiaries: Majid Al Futtaim Properties, Majid Al Futtaim Retail, and Majid Al Futtaim Ventures. The Complainant contends it has been using and operating its business under the tradename and trademark MAJID AL FUTTAIM for several years since 1992 and continues using it in property development, retailing, leisure and entertainment services and food and beverages industries.
The Complainant contends that its extensive and continuous use of the trademark and tradename MAJID AL FUTTAIM, and the fact that the Complainant has made significant investments over the years to promote and protect this trademark and tradename demonstrates that the Complainant enjoys a substantial degree of public recognition in the trademark MAJID AL FUTTAIM and have seen this trademark become uniquely and distinctly associated with the Complainant.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark MAJID AL FUTTAIM in its entirety. Adding the letter “i” in the beginning of the disputed domain name does not distinguish it from the trademark.
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. Firstly, the Respondent is not affiliated with the Complainant in any way. Secondly, the Complainant has not authorized the Respondent to use its trademark or tradename MAJID AL FUTTAIM, or to seek the registration of any domain name incorporating this trademark and tradename. Thirdly, the Respondent is not commonly known in the market by the disputed domain name and no use prior to the first use of the trademark and the tradename of the Complainant has been established. Fourthly, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. In fact, the disputed domain name directs to a parking page containing various commercial or sponsored links of third party websites and the Respondent likely earns pay-per-click revenue in relation to those links. Finally, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant first of all contends that it is implausible that the Respondent was unaware of the Complainant’s trademark that was first used in 1992. The trademark of the Complainant is well-known throughout the world and the fact that this trademark is incorporated in its entirety in the disputed domain name demonstrates that the Respondent must have been aware of the existence of the Complainant’s trademark. The Complainant argues that bad faith of the Respondent clearly follows from the fact that the disputed domain name is connected with the well-known trademark of the Complainant. The Complainant also contends that the Respondent by using the disputed domain name which is similar to the Complainant’s trademark MAJID AL FUTTAIM will attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In the two Supplemental Filings the Complainant raised further arguments to support the bad faith registration and use of the disputed domain name. The first Supplemental Filing followed an email by the Respondent sent to the Center and the Complainant on August 20, 2019, in which the Respondent among other things said: “If they want to buy this domain, I’m welcome to discuss.” The second Supplemental Filing followed two further emails of the Respondent. The first one was sent to representatives of the Complainant on August 25, 2019, saying: “I own the domain . Would you like to discuss in details that how we work out this concern? My offer is 184,000USD to buy this domain.” The second email was sent to the Center and the Complainant on the same day and says among other things: “I’m not saying they certainly can buy the domain, It was said welcome to discuss. Now, I decided to use this domain for self purpose.” On the basis thereof, the Complainant argues in its second Supplemental Filing that it is clear that the Respondent by offering for sale the disputed domain name has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, which evidences the Respondent’s bad faith in registering and using the disputed domain name. B. Respondent
The Respondent did not file a formal Response to the Complaint and Supplemental Filings but send a few informal emails that this Panel considers to form the Respondent’s response. In one email of August 20, 2019, the Respondent argues that the trademark is totally different from the disputed domain name giving a few examples of domain names incorporating famous trademarks preceded by the letter “i”. The other emails do not contain arguments against the arguments used by the Complainant in support of its claim. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel accepts the two Supplementing Filings because their contents are based on the informal emails sent by the Respondent which could not have been anticipated by the Complainant. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark MAJID AL FUTTAIM based on numerous trademark registrations. This trademark is entirely reproduced in the disputed domain name which causes the disputed domain name to be identical to the trademark at least in that respect. The fact that the term “majidalfuttaim” in the disputed domain name is preceded by the single letter “I” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark MAJID AL FUTTAIM, since the word “majidalfuttaim” remains clearly recognizable. The Panel therefore disagrees with the Respondent where he argues that the trademark and the disputed domain name are totally different. Furthermore, the added generic Top-Level Domain (“gTLD”) suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” suffix is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the gTLD “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark and tradename MAJID AL FUTTAIM. The Panel is convinced that the term “majidalfuttaim” in the disputed domain name has no other meaning except to refer to the name of the person who incorporated the business of the Complainant and to the name of the Complainant. The Respondent must have been aware of the prior existence of this trademark, which is well-known in many countries. Furthermore, it has not been established that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. On the contrary, the disputed domain name directs to a parking page containing various commercial or sponsored links to third party websites and the Respondent likely earns pay-per-click revenue in relation to those links. Finally, the Respondent has not come forward with evidence of any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The first reason is that in an email to the Complainant, the Respondent offered the disputed domain name for sale for an amount of USD 184,000. This shows that the Respondent’s primary objective was to sell, or otherwise transfer the disputed domain name to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. This is evidence that the Respondent registered and is using the disputed domain name in bad faith. Furthermore, the Panel finds that it is implausible that the Respondent was unaware of the Complainant’s trademark that was first used in 1992. The trademark of the Complainant is well-known in a number of countries and the fact that this trademark is incorporated in its entirety in the disputed domain name demonstrates that the Respondent must have been aware of the existence of the Complainant’s trademark. The Panel is of the opinion that the Respondent by using the disputed domain name which is similar to the Complainant’s trademark MAJID AL FUTTAIM will attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Panel therefore concludes that registration and use of the disputed domain name as described in this decision constitutes bad faith under the Policy.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met. 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.
Charles Gielen
Sole Panelist
Date: October 3, 2019
Full & Egal Universal Law Academy