The Complainant is Nakheel PJSC of Dubai, United Arab Emirates (“UAE”), represented by Gowling WLG (UK) LLP, UAE.
The Respondent is Shabina Ghani Aqeel of Scarborough, Canada, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2019. On March 19, 2019, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On March 19, 2019, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2019. The Center received an email communication issued on behalf of the Respondent on March 30, 2019. On April 23, 2019, the Center notified the Parties it will proceed to panel appointment. The Center received a further email communication issued on behalf of the Respondent on May 2, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 2, 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 Dubai, UAE. It is one of the world’s leading property developers and is based in Dubai, UAE. It 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 “Deira Mall” set in Dubai’s oldest cultural district with 4.5 million square feet of leasable space, which it says will be the biggest and most scenic retail, lifestyle and entertainment destination in said district. It will feature department stores, luxury and fashion retail spaces, a hypermarket, cinema, cafés and restaurants, 12,500 parking spaces and a 15,000 square feet entertainment zone. In support of this development, the Complainant has registered a variety of trademarks for the device and word mark DEIRA MALL, including UAE registered trademark no. 293209, registered on January 17, 2019 in international class 35. The Complainant produces extensive press material indicating that it revealed its plans for the “Deira Mall” project in June 2014. Press reports refer to the proposed shopping mall as “Deira Mall” and the “Deira Islands Mall” after its location on “Deira Islands”, a project of four linked islands of resorts, apartments and shops.
The disputed domain name was created on September 18, 2016. A screenshot of the website associated with the disputed domain name dated March 10, 2019 shows a single page site under the heading “Domain Name Is For Sale”, listing the disputed domain name along with a price of GBP 75,000,000 plus 13% Canadian HST and giving the Respondent’s contact details.
On May 28, 2018, the Complainant received an email from the Respondent’s husband addressed to the Complainant’s CEO. This email indicated that it related to the disputed domain name and four others, 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$.”
In an email to the Complainant’s representative dated August 3, 2018, the Respondent’s husband 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’s husband proposed that the Parties enter into a settlement agreement “in simple English no more than 50 words”. The Respondent’s husband 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 husband’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 and Nakheel (PJSC) v. Aqueel Ahmed,WIPO Case No. D2018-1620, registered in the name of the Respondent’s husband, 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 disputed domain name has been registered or is being used in bad faith.
The Complainant describes its “Deira Mall” retail project and provides details of its relative registered trademarks. The Complainant claims unregistered trademark rights in the DEIRA MALL mark through the use, reputation and goodwill earned therein, 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 “Deira” on its own, the Complainant’s DEIRA MALL designation is incorporated in its entirety 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 Panel notes in passing that the Complaint treats the Respondent as synonymous with her husband for the purposes of this proceeding. It is worthy of note that the Respondent’s husband’s informal response of March 30, 2019, the terms of which are outlined below, makes it clear that the Respondent and her husband are in business together and was submitted by the Respondent’s husband expressly on both his own and the Respondent’s behalf.
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 DEIRA 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 acknowledges an awareness of the Complainant’s operations in an email of May 28, 2018. The Complainant contends that the Respondent would not have registered and used the disputed domain name if the Respondent had not known of the Complainant’s mark.
The Complainant asserts that the Respondent’s only use of the disputed domain name has been to attempt to sell it for a very substantial amount, adding that this cannot constitute a bona fide offering of goods or services. The Complainant notes the terms of the correspondence between the Parties, which it says indicates that the Respondent intended to sell the disputed domain name in violation of the Complainant’s rights for a sum exceeding the Respondent’s out of pocket costs directly related to the registration of the disputed domain name.
The Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, adding that trading domain names reproducing third parties’ trademarks for commercial gain cannot constitute a fair use.
The Complainant asserts that panels under the Policy consistently consider 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 submits that the Respondent was fully aware of the Complainant’s rights, noting that the Respondent acknowledges in his email to the Complainant that its DEIRA MALL development is well-known with reference to the 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 asserts that it is obvious that the Respondent was aware of the Complainant’s operations under the DEIRA MALL mark when the disputed domain name was registered. The Complainant submits that the disputed domain name was registered after the Complainant’s proposed development became public knowledge, that the purpose of the Respondent’s registration of the disputed domain name was to sell it to the Complainant and therefore that the Respondent had the Complainant and its rights in the DEIRA MALL mark in mind when it registered the disputed domain name.
The Complainant concludes that the disputed domain name is an opportunistic registration made and used in bad faith which disrupts the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, while the Respondent did not file a formal Response, the Respondent’s husband made a number of observations in an email to the Center dated March 30, 2019. The subject line of this email references a different case number under the Policy but mentions the present disputed domain name. The body of the email lists a variety of different domain names but likewise makes reference to the present disputed domain name. The intent of the Respondent’s husband appears to be that such email should be treated as a response to a variety of complaints filed by the Complainant under the Policy against the Respondent or her husband. The email was received in advance of the due date for Response in the present case.
In all of the above circumstances, the Panel accepts the said 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(b)(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 contentions made on the Respondent’s behalf relative to the present Complaint from the content.
The Respondent’s husband indicates that his email of March 30, 2019 is written on behalf of himself and his wife and relates to the present disputed domain name and several others which are not the subject of the present proceeding. The Respondent’s husband states that he accepts the decisions Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra and adds that he wishes to offer the Complainant two other domain names “for free” although he insists that he and his wife have a valid case for retention of the disputed domain name and one other. The Respondent’s husband 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’s husband 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’s husband states that he and his wife did not know anything about the Complainant’s construction plans because they do not read Arabic and do not have access to the websites of construction companies as these are subscription based. The Respondent’s husband maintains that neither he nor his wife have any such subscriptions. The Respondent’s husband criticizes the material produced by the Complainant to demonstrate its announcement of its DEIRA MALL project as Arabic community newspapers or material from the Complainant’s own website. The Respondent’s husband points out that the creation of the disputed domain name on September 18, 2016 predates the Complainant’s trademark registrations and adds that this is 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’s husband suggests that the Complainant should proceed with the name “Deira Islands Mall” instead.
The Respondent’s husband concludes with what he terms a “Friendly Message” which threatens the Complainant with business failure if the Complainant is successful in the present proceeding. 6. Discussion and Findings
Section 6(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(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 or is being used in bad faith.
Section 6(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. Section 6(b) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration or use of the disputed domain name 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 DEIRA 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. It is often convenient in cases under the Policy to review relevant authorities and consensus views of panels under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), due to the substantive and procedural similarities and the greater body of prior decisions available. The approach which panels typically take with regard to trademarks featuring both graphical and word elements under the UDRP 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 Complainant has also commented upon the fact that its mark contains a disclaimer in respect of the “Deira” 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 DEIRA 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 DEIRA 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. It is entirely reasonable to infer from this that the mark DEIRA MALL will be sufficiently associated in the public’s mind with the Complainant and its property development such that it is reasonable to find that corresponding unregistered trademark rights vest in the Complainant.
The Complainant’s DEIRA 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 country code Top-Level Domain (“ccTLD”) of the disputed domain name, in this case, “.ae” 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 Section 6(a)(i) of the Policy have therefore been satisfied. B. Rights or Legitimate Interests
Section 6(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 Section 6(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 husband’s communications with it. These communications are strongly suggestive of the notion that the Respondent and her husband were aware of the names of a number of the Complainant’s building projects and intended to target these through the registration of the disputed domain name and others. In these circumstances, the burden of production shifts to the Respondent to bring forward relevant evidence of her rights or legitimate interests in the disputed domain name.
The Respondent’s case, as put forward by her husband, appears to be focused upon the fact that she and her husband have allegedly made multiple domain name registrations of geographic terms together with the word “mall”, some of which are listed in the Respondent’s husband’s email communication with the Center. The Respondent has not however provided any evidence of her holding any of these other domain names. Even if she had done so, this would not take the Respondent’s case very far. As section 2.10 of the WIPO Overview 3.0 notes, panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests and that mere arguments that a domain name corresponds to such a term or phrase will not necessarily suffice. It is also necessary that the domain name be used or demonstrably intended for use in connection with the relied-upon dictionary meaning and not to trade off third party rights. The Panel must therefore consider whether there is any indication on the record that the Respondent’s intention was to trade off any such rights.
In the present case, the Respondent’s husband insists that it is a mere coincidence that his wife registered the disputed domain name and that neither she nor he could have anticipated the Complainant’s DEIRA MALL project approximately two and a half years ahead of the registration of the corresponding trademark. In the Panel’s opinion, such a coincidence is belied by the apparent pattern of the Respondent’s approach, given that the Respondent’s husband’s communication with the Complainant dated May 28, 2018 targets not one, not two, but rather three specific names of the Complainant’s mall developments. This approach appears to have been both coordinated and unsolicited. It covers several other domain names which were created after the Complainant’s corresponding registered trademarks, even if that is not the case for DEIRA MALL itself (see Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra). In any event, the Complainant demonstrates through the use of various media articles that its DEIRA MALL development was common knowledge from June 2014, albeit sometimes described as “Deira Islands Mall” and at other times as “Deira Mall”. The Respondent’s argument that neither he nor his wife saw any of the specific articles produced by the Complainant does not mean that the Respondent must necessarily have been unaware of such a prominent and high value development project and, indeed, the contrary appears to be more probable given the totality of the domain names with which the Respondent’s husband approached the Complainant.
The record shows that the bundle of domain names created by the Respondent and her husband specifically matched the names of three of the Complainant’s prominent building projects. Not only does this not suggest any coincidence, as discussed above, it also runs contrary to the Respondent’s husband’s averment that he and his wife hold domain names for a time while awaiting offers, in other words, that they do not actively solicit potential purchasers by contacting them. The greatest significance, however, lies in the fact that the Respondent’s husband 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 and her husband 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 disputed domain name, along with others, for a very substantial price is the only use which has ever been made of the disputed domain name. In these circumstances, and on the balance of probabilities, there appears to be an intent on the Respondent’s part to trade off third party rights in the corresponding names of the malls which the Complainant was developing. Such intent cannot confer any rights or legitimate interests upon the Respondent.
In all of the above circumstances, 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 Section 6(a)(ii) of the Policy have been satisfied. C. Registered or is Being Used in Bad Faith
Section 6(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration or 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 on-line 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 Complainant’s submissions focus primarily on section 6(b)(i) of the Policy, namely that there are circumstances indicating that the Respondent registered the disputed domain name primarily to sell it to the Complainant for consideration in excess of the Respondent’s documented out of pocket costs. A key question on the issue of registration in bad faith, particularly in light of the averments made by the Respondent’s husband on her behalf, is whether the Respondent had prior knowledge of the Complainant’s rights, given that the disputed domain name was created approximately two and a half years before the Complainant’s registered trademark was granted.
The Complainant asserts that notwithstanding the date of its registered mark, it had established unregistered trademark rights in DEIRA MALL by virtue of use, reputation and goodwill before the disputed domain name was created. The evidence which it uses to demonstrate this is a series of media articles from 2014 and 2015 detailing its plans for a major property development project under this name. This evidence illustrates the public nature of the Complainant’s launch of its project and that its extent and scope was of media interest. Some of the materials refer to the “Deira Islands Mall” while others use the term “Deira Mall” alone. Although the Respondent’s husband argues that neither he nor his wife had seen the specific items produced by the Complainant because they do not read Arabic and have no access to certain subscription based publications, the Panel is satisfied that these articles are merely illustrative of the sort of coverage which the project generated rather than the sum total of likely media attention.
In all of the media coverage which is produced, dating from one to two years prior to the creation of the disputed domain name, the Complainant’s DEIRA MALL project is described as extremely substantial and valuable, such that the Panel finds it entirely reasonable to infer that considerable interest and public awareness will have been generated which will have associated the DEIRA MALL mark with the Complainant in the minds of the public. For those reasons, and as noted above, the Panel has found that the Complainant has established unregistered trademark rights in the term DEIRA MALL. The Panel has likewise set out its reasoning for concluding on the balance of probabilities that the Respondent had prior knowledge of these rights in the preceding section.
The Respondent’s husband’s email of May 28, 2018 amply demonstrates both registration and/or use in bad faith in accordance with paragraph 6(b)(i) of the Policy, as does the website associated with the disputed domain name. This finding is broadly in line with the findings of the panels in the related cases of Nakheel PJSC v. Shabina Ghani Aqeel, supra and Nakheel (PJSC) v. Aqueel Ahmed, supra, the subject of which were other domain names listed in the same email.
Finally, the Panel notes that it disapproves of the Respondent’s husband’s threats regarding the Complainant and its project. These are not appropriate submissions for a party to make in a proceeding under the Policy and they do not further the Respondent’s case to any extent.
For the requirements of section 6(a)(iii) of the Policy to be established, a Complainant need only prove registration in bad faith or use in bad faith, as these are expressed in the alternative. In the present case, for the reasons set out above, the Panel finds both that the disputed domain name was registered and has been used in bad faith. The requirements of Section 6(a)(iii) of the Policy have therefore been satisfied. 7. Decision
For the foregoing reasons, in accordance with section 6(i) of the Policy and paragraph 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 16, 2019
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