Majid Al Futtaim Properties LLC v Network Administrator

WIPO Case No. D2022-3771

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Majid Al Futtaim Properties LLC v. Network Administrator

Case No. D2022-3771

1. The Parties

The Complainant is Majid Al Futtaim Properties LLC, United Arab Emirates (“UAE”), represented by

Talal Abu Ghazaleh Legal, Egypt.

The Respondent is Network Administrator, Canada.

2. The Domain Name and Registrar

The disputed domain name <mycitycentre.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2022.

On October 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2022, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2022, 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 October 20, 2022.

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 October 21, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was November 10, 2022. The Respondent did not submit any
response. The Center received an email communication from a third party on October 25, 2022. By email
dated October 26, 2022, the Center invited the party named as Respondent and the third party to clarify their

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relationship with each other but no response was received. The Center notified the Respondent’s default on

November 11, 2022.

The Center appointed Adam Taylor as the sole panelist in this matter on November 22, 2022. 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 the holding company of a group that was established in 1992 and which owns and operates shopping malls, and retail, and leisure establishments in the Middle East, Africa, and Asia.

Since 1995, the Complainant has operated some 14 shopping malls in the Middle East which bear the name

“City Centre” plus the relevant location, e.g., “City Centre Bahrain”. The Complainant also operates the

following neighbourhood retail malls, described as “social hubs tailored to meet the needs of the region’s

growing residential communities”:

- “My City Centre Nasseriya” (opened 2014).

- “My City Centre Al Barsha” (opened 2016).

- “My City Centre Sur” (opened 2018).

- “My City Centre Al Dhait” (opened 2018).

- “My City Centre Masdar” (opened 2019).

The Complainant maintains webpages on its main “ website for each of its

“City Centre” and “My City Centre” shopping malls, and it also operates a website at

“

The Complainant owns a number of registered trade marks consisting of the stylised words MY CITY registered on September 30, 2014, in class 35.

The disputed domain name was registered on March 18, 2015.

As of September 21, 2022, the disputed domain name resolved to a Registrar parking page with pay-per-

click (“PPC”) links relating to “Citycenter”, “Mall”, and the Arabic term for “travel agency”.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant has made a significant investment in advertising and promoting both marks, including on social media.

The Complainant’s malls have become well-known to shoppers across the Middle East.

The Complainant’s malls dominate search results for “my City Centre” on Google.

As well as registered rights, the Complainant has acquired common law rights in the terms CITY CENTRE

and MY CITY CENTRE, which have become inextricably linked to the Complainant’s enterprise by virtue of

the Complainant’s extensive commercial use of these marks in the shopping malls industry.

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The Complainant has exclusive rights over its trade marks arising from UAE and international law.

The disputed domain name is identical to the Complainant’s MY CITY CENTRE trade mark and confusingly

similar to the Complainant’s CITY CENTRE trade mark. The disputed domain name reproduces both marks

in their entirety.

The Respondent lacks rights or legitimate interests in the disputed domain name.

There is no evidence that the Respondent owns any relevant trade marks.

The Complainant has never authorised the Respondent to use its trade mark or register any domain name containing the mark.

The Respondent’s trade mark rights predate the disputed domain name.

The Respondent has not been commonly known by the disputed domain name. The registrant name does not resemble the disputed domain name.

The Respondent is not using the disputed domain name for a bona fide offering of goods or services. On the contrary, the Respondent is using the disputed domain name for a parking page with PPC links including in

relation to malls, which is the Complainant’s area of business. Furthermore, such links indicate that the

Respondent was aware of the Complainant’s MY CITY CENTRE mark and that the Respondent registered

the disputed domain name to take advantage of the Complainant’s rights.

Registering a domain name comprising a dictionary word or phrase does not confer rights or legitimate interests where, as here, it has been used to trade off trade mark rights rather than in connection with the dictionary meaning.

There is no conceivable legitimate use of the disputed domain name given the global fame of the

Complainant’s trade marks.

The disputed domain name was registered and is being used in bad faith.

It is inconceivable that, when registering the disputed domain name, the Respondent was unaware of the

Complainant’s globally famous trade marks which date back to 1995 (CITY CENTRE) and 2013 (MY CITY

CENTRE), respectively.

The Respondent’s registration of a domain name identical to the Complainant’s famous trade mark of itself

creates a presumption of bad faith.

The Respondent has set out to create a likelihood of confusion with the Complainant’s mark.

The Respondent acted in wilful bad faith by deliberately failing to search online databases. A cursory trade mark search on Google or the WIPO Global Brand Database would have shown that MY CITY CENTRE is a trade mark associated with the Complainant.

The disputed domain name constitutes a passive holding in bad faith insofar as the Respondent has failed to use the disputed domain name for an active website.

The Respondent’s purpose in registering the disputed domain name was to block the Complainant and/or

disrupt its business.

The Respondent’s use of a privacy service coupled with registration of the disputed domain name

comprising the Complainant’s trade mark in its entirety is further evidence of bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

As explained in section 3 above, the Center received an email communication from an apparent third party stating:

“I am responding on behalf of our organization in regards to a complaint of our old website,

mycitycentre.org. Today, I went into our GoDaddy account and cancelled our subscription of a service

using the old email.

I am wondering what the next steps are to resolve this complaint.”

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant
has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the mark MY CITY CENTRE arising from its figurative registered

trade marks as well as unregistered trade mark rights deriving from the Complainant’s longstanding use of

that mark.

Disregarding the Top-Level Domain (“TLD”) suffix, which is excluded from the comparison, the disputed domain name is identical to the Complainant’s trade marks.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third

Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie

case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent
to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.

If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with PPC links to services which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona

fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s

mark or otherwise mislead Internet users.

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Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy are relevant in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

For the above reasons, and noting the lack of substantive Response but also the Complaint-responsive email suggesting the domain name registration had been or would be cancelled, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, by using the disputed domain name, comprising the Complainant’s trade mark, in connection with a parking page with PPC links relating to the Complainant’s industry, the Respondent has

intentionally created a likelihood of confusion with the Complainant’s trade mark in accordance with

paragraph 4(b)(iv) of the Policy.

Section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for

“automatically” generated pay-per-click links on their websites and that neither the fact that such links are

generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly
profited, would by itself prevent a finding of bad faith.

While the disputed domain name is somewhat descriptive, the Panel notes that the combination of “my” and “city centre” is not an entirely obvious one and, furthermore, the Respondent has not come forward to deny

the Complainant’s assertions of bad faith or to put forward any legitimate reason for its registration of the

disputed domain name – and has indeed either sent, or not disputed, an email response suggesting that the

registration of same has been or would be cancelled.

For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) 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, <mycitycentre.org>, be transferred to the Complainant.

/Adam Taylor/

Adam Taylor

Sole Panelist
Date: December 6, 2022