Majid Al Futtaim Holding L.L.C. v. Navin Wadhwani / Reliance Industries Limited
Claim Number: FA2105001944057
Complainant is Majid Al Futtaim Holding L.L.C (“Complainant”), represented by Shahdan Essam of Abu-Ghazaleh Intellectual Property TMP Agents (AGIP), Egypt. Respondent is Navin Wadhwani / Reliance Industries Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <majidalfuttaim.us>, registered with Key-Systems GmbH.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2021; the Forum received payment on May 9, 2021.
On May 7, 2021, Key-Systems GmbH confirmed by e-mail to the Forum that the <majidalfuttaim.us> domain name (the Domain Name) is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 15, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@majidalfuttaim.us. Also on May 10, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on June 15, 2021.
On June 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”).
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a holding company whose subsidiaries develop and own shopping malls, retail stores, entertainment hubs, and leisure facilities in Asia, Africa, and the Middle East. Complainant has rights in the MAJID AL FUTTAIM mark through its registrations of that mark with the trademark authorities of several countries, including Bahrain, Egypt, Oman, United Arab Emirates, and Jordan. It also has common law rights in the mark. Respondent’s <majidalfuttaim.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, merely adding the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It does not own a trademark or service mark that is identical to the Domain Name. It is not commonly known by the Domain Name, and Complainant has not authorized or licensed it to use its MAJID AL FUTTAIM mark. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use in that it simply redirects Internet users to Complainant’s website.
Respondent registered the Domain Name in bad faith. It had actual knowledge of Complainant and its rights in the MAJID AL FUTTAIM mark when it registered the Domain Name, and it registered the confusingly similar Domain Name having no connection or affiliaton with Complainant.
B. Respondent
Respondent did not intend to mislead anyone. The similarity in names is probably coincident to Respondent’s formation of a Delaware SVP for execution of its mergers and acquisitions growth strategy.
Respondent has rights in the MAJID AL FUTTAIM mark based upon its application to register that mark with the USPTO.
Respondent does not intend to use the Domain Name in bad faith as it is against the values of its organization. The Domain Name is not currently active as the web site is under construction. Respondent has no intention of misusing the Domain Name. It is purely for the purpose of corporate use by the SVP organized in the State of Delaware.
C. Complainant Additional Submission
Following the filing of this proceeding, Respondent sent a number of emails to Complainant proposing settlement that would involve a transfer of the Domain Name to Complainant, but it later proved that this was only a delaying tactic, which is further evidence of Respondent’s bad faith.
Reliance Industries Ltd has issued a fraud notice to the effect that unknown persons have been posing as Reliance representatives to pursue purported business deals that involve the raising of funds.
Respondent’s trademark application filed with the U. S. Patent and Trademark Office (USPTO) on May 27, 2021, after the commencement of this proceeding, does not confer upon Respondent any right in either a trademark or the Domain Name.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
The MAJID AL FUTTAIM mark was registered to Complainant with the Bahrain Ministry of Industry, Commercial, and Tourism (Reg. No. 101,034) on December 15, 2016, as well as with other governmental trademark authorities in the Middle East (Complaint Annex 2). These registrations establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Respondent’s <majidalfuttaim.us> Domain Name is identical or confusingly similar to Complainant’s MAJID AL FUTTAIM mark. It incorporates that mark in its entirety, merely adding the “.us” ccTLD. This change does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Lifetouch, Inc. v. Fox Photographics, FA 414667 (Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the change described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the MAJID AL FUTTAIM mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s 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;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name, (ii) Respondent is not affiliated with Complainant and Complainant has not authorized or licensed Respondent to use its mark, (iii) Respondent is not commonly known by the Domain Name, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the Domain Name redirects Internet users to the web site of Complainant. These allegations are addressed as follows:
Complainant addressed but did not offer evidence specifically bearing upon the Policy ¶ 4(c)(i) factor stated above. Typically, Complainants in usTLD cases search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while it would have been preferable for Complainant to have offered evidence bearing specifically upon this element of the case, the evidence that is available is sufficient to establish a strong inference that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The Domain Name was registered in February 2021 (Complaint Annex 8). The only evidence of any other use of that name by Respondent consists of a “Certificate of Formation” attached to the Response signed by an assistant secretary for “Harvard Business Services, Inc.” stating that that firm is the registered agent for a Delaware limited liability company named “Mujid Al Futtaim Holding LLC.” There is no representation that this “Certificate” is issued by the State of Delaware, and no official stamp or other marking on it which indicates that it was. In short, there is no documentation issued by the State of Delaware demonstrating that this LLC actually exists. The Trademark Status & Document Retrieval information issued by the USPTO (Complainant Additional Submission Annex B) shows that an application for a USPTO registration of the mark MAJID AL FUTTAIM was filed on May 27, 2021 by “Mujid Al Futtaim Holding LLC.” Complainant’s Additional Submission shows that it did not file this application. It thus appears that Respondent is impersonating the Complainant in a fraudulent effort to gain some color of right or legitimate interest in the Domain Name. In any event, the Additional Submission Annex B shows that the USPTO has taken no action on this application yet. The Fraud Alert issued by Reliance Industries Limited (Complainant Additional Submission Annex D) lists one of the named Respondents here, Navin Wadwhani, among the persons sending emails purportedly on behalf of Reliance Industries. On this evidence, and in the absence of any evidence that Respondent may be the owner or beneficiary of a trademark or service mark identical to the Domain Name, the Panel finds that it is not.
Complainant states that Respondent has no association with Complainant and that Complainant has not authorized or licensed Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS report submitted as Complaint Annex 8 lists “Navin Wadwhani / Reliance Industries Limited” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Annex 9 is a screenshot of the web site at Redirection Checker which demonstrates that the Domain Name redirects traffic to <majidalfuttaim.com/en>, which is Complainant’s web site. Using a confusingly similar domain name to redirect traffic to a complainant’s web site is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name). [i]
Respondent’s claim that it organized a Delaware LLC for legitimate purposes is not proven. Even if it did organize such a company, it had no right to do so using Complainant’s mark. Respondent’s conduct, expressly including its application to register the MAJID AL FUTTAIM mark with the USPTO, is patently fraudulent in nature and does not serve to confer upon it any right or legitimate interest in the Domain Name.
The evidence furnished by Complainant establishes the required prima facie case. On that evidence the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in February 2021 (Complaint Annex 8 shows creation date). Complainant’s businesses are well-known throughout the Middle East and Africa (Complaint Annex 3) and, most compellingly, Respondent copied Complainant’s mark and the name of its founder exactly into the Domain Name. This does not fit within any of the circumstances listed above, but Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering and using a confusingly similar domain name with actual knowledge of a complainant’s rights in a mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Second, Respondent registered and is holding the Domain Name, which fully incorporates the MAJIDALFUTTAIM mark. As discussed above, however, Respondent has no connection with that mark or its owner, the Complainant. Again, this may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but given the nonexclusive nature of Policy ¶ 4(b), registering and using a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
For the reasons set forth above, the Panel finds that Respondent registered or is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <majidalfuttaim.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
June 18, 2021
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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