The Complainant is Majid Al Futtaim Holding LLC, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Domain Man, United Arab Emirates, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2021, 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 November 10, 2021 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 November 14, 2021.
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 November 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2021. The Response was filed with the Center on December 5, 2021. The Complainant filed a Supplemental Filing on December 7, 2021.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on December 13, 2021. 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 BackgroundThe Complainant operates in the field of retail, leisure, and shopping malls in Middle East, Africa, and Asia. The Complainant is part of a group of companies founded in 1992. The Complainant owns many trademark registrations for MAJID AL FUTTAIM with logo such as United Arab Emirates trademark registration No. 201644 and No. 201648, both registered on July 23, 2014.
The disputed domain name was registered by the Respondent on December 19, 2019.
According to the evidence contained in the case file, the disputed domain name resolved to a parked page hosting PPC (pay-per-click) sponsored links. Currently, the disputed domain name resolves to an inactive website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns the trademark MAJID AL FUTTAIM and has registered it in many countries. The Complainant’s trademark MAJID AL FUTTAIM has been recognized by prior UDRP panels and is also the tradename of the Complainant derived from the name of the Complainant’s founder. The disputed domain name is identical to the Complainant’s trademark as it incorporates it in its entirety. The addition of the generic top-level domain (gTLD) “.xyz” does not eliminate confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not authorized or licensed by the Complainant to use its trademark nor is it affiliated with the Complainant. There is no evidence that the Respondent owns any trademark or service mark rights identical or similar to the disputed domain name. The use of the trademark by the Complainant precedes the registration of the disputed domain name by 27 years. The Respondent is not commonly known by the disputed domain name which is evident by the fact that he has registered the disputed domain name anonymously. The disputed domain name directs to a parking page containing commercial links of third-party websites. Hence, there is no bona fide offering of goods or services. There is also no evidence to show the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is attempting to trade off the reputation of the Complainant and its mark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademark as the disputed domain name has incorporated it in its entirety and as the Complainant’s trademark is well known. The disputed domain name was registered with the intent to attract Internet users by creating confusion with the Complainant’s trademark. It has been established that the incorporation of a well-known trademark can itself constitute registration in bad faith. Passive holding and use of privacy service can in certain circumstances be evidence of bad faith use.
B. RespondentThe Respondent provided a Response on December 5, 2021. The Respondent contended that the Complainant’s trademark will show up alone when used without the gTLD “.xyz”. The Respondent argues that “Majid Al Futtaim” supposedly has an trademark application in the United States of America that challenges the rights or service mark asserted by the Complainant. The Respondent argues that the use of the gTLD “.xyz” is open to anyone from the public and that it can be used to spread information about the Complainant. The Respondent contends that there is no evidence that the Respondent is using the disputed domain name in bad faith, And that in fact, the Respondent plans to start an information/fan page about the Complainant.
B. Complainant’s Supplemental FilingThe Complainant further contended that the MAJID AL FUTTAIM United States Patent and Trademark Office (USPTO) trademark, filed under No. 90739582 in class 36, is a fraudulent trademark application trying to impersonate the Complainant by establishing a fraudulent company in State of Delaware under “Majid Al Futtaim Holding LLC”. The trademark registration procedure has been suspended pending administrative review of suspected improper submissions made to the USPTO in relation with a fraudulent scheme carried out by a group of entities operating out of Pakistan. The Complainant has filed a complaint before the Delaware Department of Justice, Fraud & Consumer Protection Division on August 12, 2021 against the fraudulent registration of the “Majid Al Futtaim LLC” in Delaware. A panel has referred to this fraudulent company and trademark in a previous UDRP decision issued in favor of the Complainant. The Respondent's actions are clearly fraudulent and commercial.
6. Discussion and Findings A. Supplemental FilingNeither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 230”), section 4.6.
The Complainant’s Supplemental Filing provides clarity regarding the Respondent’s reference to the MAJID AL FUTTAIM United States of America trademark No. 90739582, supposedly filed by “Majid Al Futtaim Holding LLC”. Moreover, the Supplemental Filing offers additional context and evidence regarding the alleged fraudulent scheme in Delaware under “Majid Al Futtaim Holding LLC”. As the existence of the MAJID AL FUTTAIM United States of America trademark No. 90739582 was brought by the Respondent in the Response, the Panel considers appropriate to take into consideration the Complainant’s Supplemental Filing.
B. Identical or Confusingly SimilarThe Complainant owns trademark registrations for MAJID AL FUTTAIM. The Panel is satisfied that the Complainant has established its ownership of the trademark MAJID AL FUTTAIM.
The disputed domain name incorporates the Complainant’s trademark MAJID AL FUTTAIM in its entirety. MAJID AL FUTTAIM is a well-known trademark in the United Arab Emirates and other countries where the Complainant has its operations. It is established that the incorporation of a well-known trademark is sufficient to establish confusing similarity. The generic Top-Level Domain (“gTLD”) “.xyz” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is identical to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Complainant further asserts that the Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, and the Respondent is not commonly known by the disputed domain name. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.
The Respondent contends that he plans to start an information/fan page about the Complainant. However, the Respondent did not provide any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services although almost two years have lapsed since the registration of the disputed domain name. Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and good will of the complainant’s mark. The PPC links seem to resolve to property websites amongst others. Given that the business of the Complainant involves property as it develops shopping malls and hotels, the Panel is of the view that the Respondent is trying to capitalize on the reputation and good will of the complainant’s mark. In Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708, it was found that the Respondent had no rights or legitimate interests as “the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain name”.
The Respondent has not been able to provide any evidence to show that it has any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe Respondent must have been aware of the Complainant’s trademark as MAJID AL FUTTAIM, which is a well-known trademark.
The disputed domain name resolved to a parked page with sponsored links. Such use here constitutes bad faith. In Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 the Panel found that “While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.”
Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely within the meaning of paragraph 4(b)(iv) of the Policy. The use of a privacy shield service is under the circumstances a further indication of bad faith. Given the above, the Panel believes that the Respondent has registered the disputed domain name in order to trade off the reputation of the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Nayiri Boghossian
Sole Panelist
Date: December 27, 2021