WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Majid Al Futtaim Properties LLC v. Ekramy Gaber El Said Ashry
Case No. D2018-1637
1. The Parties
The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates ("UAE"), represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Ekramy Gaber El Said Ashry of Salalah, Oman, represented by Rabbit IP LLC, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <citycentresohar.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, 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 and contact information for the disputed domain name.
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 July 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Response was filed with the Center on August 8, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 16, 2018. 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 developer of shopping malls, often combined with hotels and/or mixed-use community projects in the Middle East and North Africa. It owns and operates 21 shopping malls, 12 hotels and 3 mixed-use communities. The Complainant employs more than 40,000 people and its malls and associated hotels attract millions of visitors each year. The Complainant's revenue in 2016 was approximately AED 4.5 billion.
The Complainant owns several trademark registrations for CITY CENTRE SOHAR, namely:
Oman Registration No. 102294 dated 04/28/2016 for CITY CENTRE SOHAR Design
Oman Registration No. 102295 dated 04/28/2016 for CITY CENTRE SOHAR Design
Oman Registration No. 102296 dated 04/28/2016 for CITY CENTRE SOHAR Design
The Complainant also owns a family of trademark registrations which incorporate the words CITY CENTRE, including:
UAE Trademark Registration No. 191165 for CITY CENTRE Design
UAE Trademark Registration No. 191166 for CITY CENTRE Design
UAE Trademark Registration No. 191167 for CITY CENTRE Design
UAE Trademark Registration No. 202922 for CITY CENTRE and Arabic Equivalent Design
UAE Trademark Registration No. 202923 for CITY CENTRE and Arabic Equivalent Design
UAE Trademark Registration No. 202924 for CITY CENTRE and Arabic Equivalent Design
The Complainant has used the trademark CITY CENTRE since at least as early as November 1995, when it opened its first shopping mall under the name CITY CENTRE DEIRA, Dubai. Since then the Complainant has opened numerous malls featuring the words CITY CENTRE, including:
CITY CENTRE AJMAN – 1998
CITY CENTRE SHARJAH – 2001
CITY CENTRE MUSCAT – 2001
CITY CENTRE MAADI – 2002
CITY CENTRE ALEXANDRIA – 2003
CITY CENTRE BAHRAIN – 2008
CITY CENTRE QURUM – 2008
CITY CENTRE MIRDIF – 2010
CITY CENTRE FUJAIRAH – 2012
CITY CENTRE BEIRUT – 2013 (formerly BEIRUT CITY CENTRE)
CITY CENTRE MEAISEM – 2015
CITY CENTRE SHINDAGHA - 2016
On May 2, 2016, the Complainant announced its plans to open a shopping mall called CITY CENTRE SOHAR in late 2018.
The disputed domain name was registered on May 2, 2016 at 20:18. At the time the Complaint was filed the disputed domain name reverted to a website which featured links to third party websites which offered hotel booking services.
5. Parties' Contentions
A. Complainant
The Complainant submits that it owns many registrations for CITY CENTRE and three Oman Trademark Registrations for CITY CENTRE SOHAR, as listed in paragraph 4 of this Decision. The disputed domain name incorporates the entirety of its registered trademarks for CITY CENTRE and CITY CENTRE SOHAR, and as such is confusingly similar to the Complainant's registered trademark rights.
The Complainant asserts that its shopping malls and hotels are well known in the Middle East and North Africa and that the Respondent knew or should have known about the Complainant's trademark rights before he registered the disputed domain name. The Complainant highlights the fact that the disputed domain name was registered on the same date that the Complainant announced its plans to build and open a new mall under the name CITY CENTRE SOHAR.
The Complainant submits that the Respondent is not affiliated with the Complainant, and not otherwise authorized to use the Complainant's trademarks. The Respondent is not known by the name CITY CENTRE SOHAR, and has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and/or services. The Respondent is using the disputed domain name in association with a parking page which features links to third parties which offer hotel booking services, which is in direct competition with one aspect of the Complainant's business.
The Complainant claims that the Respondent has registered and used the disputed domain name in bad faith because it was aware of the Complainant's registered trademark rights in the name CITY CENTRE and CITY CENTRE SOHAR at the time he registered the disputed domain name, and is using a confusingly similar domain to (i) interfere with the Complainant's business; and (ii) divert Internet consumers looking for the Complainant to the Respondent's website which features links to third parties which offer hotel booking services in direct competition to the Complainant for purposes of monetary gain.
B. Respondent
The Respondent claims that the Complainant does not own registered trademark rights in CITY CENTRE SOHAR, and that the Complainant has shown no use of its alleged mark or the Respondent's domain name that will lead to confusion or dilution.
The Respondent submits that the words "city centre" are descriptive and have a wide range of references that may have nothing to do with the Complainant. Further, the Complainant's trademarks for CITY CENTRE SOHAR include a design element. The descriptive nature of the words means that the Complainant's trademark has a narrow ambit of protection requiring a very close resemblance to the trademark as a whole.
The Respondent further asserts that the Complainant did not attempt to communicate with the Respondent before filing the Complaint, which is evidence that the Complainant knew it could not demonstrate bad faith.
The Respondent claims that there is nothing to suggest that the Respondent was or should have been aware of the Complainant's trademark rights.
The Respondent also claims that the Complainant is engaging in Reverse Domain Name Hijacking for purposes of harassing the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the 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
The Panel finds that the Complainant does have recognizable trademark rights in the trademarks CITY CENTRE and CITY CENTRE SOHAR by virtue of its trademark registrations listed in paragraph 4 of this Decision. The CITY CENTRE element itself is a prominent feature in all the noted registrations.
The Panel finds that the disputed domain name <citycentresohar.com> is confusingly similar to the Complainant's registered trademark CITY CENTRE SOHAR, as the disputed domain name replicates the dominant elements of the Complainant's registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element".
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests.
The Complainant has owned relevant rights in the registered mark CITY CENTRE since at least as early as 1995. In the Middle East, where the Respondent resides and carries on business, the Complainant's shopping malls and associated properties are well-known to the public under the various CITY CENTRE Marks. The Respondent appears to have been fully aware of those rights when he registered the disputed domain name, as he registered the name on the same date the Complainant announced its plan to open a new shopping mall called CITY CENTRE SOHAR.
The Respondent has registered and used a confusingly similar domain name in association with a website that redirects Internet users to websites of third parties which offer hotel booking services in direct competition with the Complainant's associated business.
Once the Complainant has established a prima facie case, the burden of production then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The fact that the disputed domain name was registered late on the day when the Complainant announced its project is a matter which calls for a clear explanation. Instead of providing a direct answer, the Respondent attempts to mischaracterize the Complainant, arguing that there "is nothing to suggest that the Respondent was or should have been aware of the Complainant's use of the trademark." In fact, the Complaint offers convincing evidence on this point, which remains unanswered.
Accordingly, the Panel finds that the Respondent is not commonly known by the disputed domain name, is not affiliated or permitted by the Complainant to register and/or use the disputed domain name, and is not using the disputed domain name in association with a bona fide offering of goods or services.
The Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As set out above, the Panel is prepared to find that the Respondent registered the disputed domain name <citycentresohar.com> with knowledge of the Complainant's registered trademark rights in CITY CENTRE SOHAR. The date of registration of the disputed domain name on the same day as the Complainant's announcement of its new shopping mall is not a matter of coincidence, but rather reflects an intention to interfere with the Complainant's business in a manner which is abusive under the Policy. The Respondent has failed to provide any cogent evidence to explain his conduct.
As indicated under paragraph 6B of this Decision, the disputed domain name is used to redirect Internet users to websites of third parties which offer hotel booking services in competition with the Complainant's business, which is evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
The Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of the Policy.
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 <citycentresohar.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: August 21, 2018
