The Complainant is Majid Al Futtaim Holding L.L.C, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Ahlam sayegh, Canada. 2. The Domain Name and Registrar
The disputed domain name (“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 5, 2019. On August 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 6, 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 7, 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 8, 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 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2019. The Complainant submitted a supplemental filing on September 11, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 23, 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 based in Dubai which owns and operates various shopping malls, retail and leisure establishments across the Middle East, Africa and Asia.
The Complainant is the owner of numerous trade mark registrations for the MAJID AL FUTTAIM mark in English and Arabic, including the United Arab Emirates Trade Mark No. 201644, registered on November 26, 2013 in class 16. The Complainant also owns the domain name , which was registered on February 9, 2002 and is the official website of the Complainant.
The Respondent is an individual based in British Columbia, Canada. The Disputed Domain name was registered by the Respondent on July 22, 2018 through a privacy shield and does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark MAJID AL FUTTAIM, which has been wholly incorporated into the Disputed Domain Name;
(b) the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use its MAJID AL FUTTAIM mark, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) the reputation of the Complainant’s trade mark, combined with the Respondent’s use of a privacy shield in registering the Disputed Domain Name, support the fact that the Respondent is acting in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MAJID AL FUTTAIM trade marks, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s MAJID AL FUTTAIM mark in its entirety with the addition of the word “investments”. The Panel agrees with the Complainant that the mere addition of the dictionary term investments, does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s MAJID AL FUTTAIM trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the MAJID AL FUTTAIM mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the MAJID AL FUTTAIM mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(1) before any notice to him 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 was in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(3) 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 trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in accordance with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is generally recognized that passive holding of a domain name does not as such prevent a finding of bad faith use. As stated in “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. God, Inc.,WIPO Case No. D2017-0246, “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”.
See section 3.3 of the WIPO Overview 3.0.
In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith use and registration due to the following:
(i) the Complainant’s MAJID AL FUTTAIM mark is well-known. A quick Internet search shows that the top search results returned for “MAJID AL FUTTAIM” are the Complainant’s official website and affiliated social media pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been fully aware of the Complainant and that the Disputed Domain Name incorporated the Complainant’s MAJID AL FUTTAIM mark;
(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;
(iii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal his identity in the WhoIs records; and
(iv) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is at least confusingly similar to the Complainant’s MAJID AL FUTTAIM mark and registered domain name . Any use of the Disputed Domain Name would likely result in misleading Internet users into believing the Disputed Domain Name is associated with the Complainant, particularly given that the incorporation of the generic word “investments” in the Disputed Domain Name could be seen as describing the Complainant’s diversified portfolio of investments across multiple industries.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: October 4, 2019
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