Emaar Properties PJSC v. Syed Hussain / Domain Management
Claim Number: FA1409001582402
Complainant is Emaar Properties PJSC (“Complainant”), represented by Pallavi Mehta Wahi of K&L Gates LLP, Washington, USA. Respondent is Syed Hussain / Domain Management (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emaarmalls.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2014; the National Arbitration Forum received payment on September 29, 2014.
On September 30, 2014, Name.com, Inc. confirmed by email to the National Arbitration Forum that the <emaarmalls.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emaarmalls.com. Also on October 1, 2014, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
The Forum received email correspondence from Respondent on October 1, 2014, stating as follows:
Your email has left impression on me that I have registered myself with you to use your services to resolve any domain issue but that is not the case. I would like use our Court System to protect my Domain "emaarmalls.com". I have not received any letter from any party challenging ownership of my rightfully created and owned domain name. What is going on, please let me know ASAP.
(The Panel notes that Respondent has been a party to numerous previous proceedings under the Policy, as discussed infra.)
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complaint is a large land and real estate developer based in Dubai, United Arab Emirates. Through its subsidiary, Emaar Malls Group LLC, Complainant operates The Dubai Mall and other malls in Dubai. Complainant states that it has used the EMAAR mark in connection with this business continuously since 1997. The mark is registered in the United States and other countries, and Complainant also claims common-law rights in the mark.
Complainant contends that the disputed domain name <emaarmalls.com> is confusingly similar to its EMAAR mark. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent has not made active use of the domain name, instead merely parking it with Sedo. The domain name resolves to a website that displays various third-party click-through links, including links to Complainant’s competitors. Complainant states that Respondent is soliciting offers from Internet users to buy the disputed domain name through Sedo’s domain name marketplace. Complainant alleges that Respondent has not been commonly known by the EMAAR mark or the disputed domain name, and that Respondent registered and used the domain name to capitalize on the substantial goodwill associated with Complainant’s mark. Complainant also notes that Respondent has been involved in at least 29 adverse decisions under the Policy, evincing a pattern of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent’s email correspondence is quoted in full above.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The disputed domain name is identical to Complainant’s registered mark, with the generic term “malls” and the “.com” top-level domain appended thereto. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Emaar Properties PJSC v. Castillos / Hector Castillos, FA 1472933 (Nat. Arb. Forum Jan. 20, 2013) (finding <emaarinvestmentgroup.com> confusingly similar to EMAAR); Emaar Properties PJSC v. Nobalaa co, FA 1472100 (Nat. Arb. Forum Dec. 30, 2012) (finding <emaar-iraq.com> confusingly similar to EMAAR); Hermès Int’l v. Private Whois Service, D2012-0264 (WIPO Apr. 18, 2012) (finding <hermesmalls.com> confusingly similar to HERMES); America Online, Inc. v. USACOOP.COM a/k/a Bingo Giant, FA 105763 (Nat. Arb. Forum Apr. 10, 2002) (finding <aolmalls.com> confusingly similar to AOL). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s arbitrary mark, and apparently has been used solely for a website containing advertising links, including links to competitors of Complainant. See, e.g., Enterprise Holdings, Inc. v. Domain Management c/o Syed Hussain, FA 1514513 (Nat. Arb. Forum Sept. 11, 2013) (finding lack of rights or legitimate interests in similar circumstances). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Respondent has been a party to numerous prior proceedings under the Policy, including Enterprise Holdings, Inc. v. Domain Management c/o Syed Hussain, supra (finding that <enterpriselocauto.com> was registered in bad faith); Onmobile USA LLC v. Domain Management, Syed Hussain, D2013-1038 (WIPO July 26, 2013) (finding that <onmobilelive.com> was registered in bad faith); LEGO Juris A/S v. Domain Management, Syed Hussain, D2012-2476 (WIPO Feb. 18, 2013) (finding that <legobatmanthemovie.com> was registered in bad faith); Reed Elsevier Inc. v. Domain Management / Syed Hussain, FA 1416531 (Nat. Arb. Forum Jan. 4, 2012) (finding that <lexisnexis-es.com> and <lexisnexises.com> were registered in bad faith). For the same reasons as those expressed by the panels in those cases, the Panel finds that the disputed domain name <emaarmalls.com> was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emaarmalls.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 31, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page