Emaar Properties PJSC v. Castillos / Hector Castillos
Claim Number: FA1211001472933
Complainant is Emaar Properties PJSC (“Complainant”), represented by Pallavi Mehta Wahi of K&L Gates LLP, Washington, USA. Respondent is Castillos / Hector Castillos (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emaarinvestmentgroup.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2012; the National Arbitration Forum received payment on November 27, 2012.
On November 28, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <emaarinvestmentgroup.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 2012 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@emaarinvestmentgroup.com. Also on November 28, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent has never been known by or operated a business under the EMAAR name. Respondent’s WHOIS information lists “Hector Castillos” as the registrant of the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain names incorporating the trademark.
ii. Respondent is using the disputed domain name to misdirect Internet traffic to Respondent’s website, which purportedly offers real estate investment services that compete with Complainant’s services.
iii. Respondent’s domain name is being used as part of a scheme to impersonate Complainant.
i. Respondent selected, registered, and is using the <emaarinvestmentgroup.com> domain name for its own commercial advantage.
ii. Respondent was aware of Complainant and Complainant’s EMAAR mark at the time that it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its EMAAR mark.
2. Respondent’s <emaarinvestmentgroup.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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.”).
Complainant, Emaar Properties PJSC, contends that it is a Dubai-based Public Joint Stock Company that creates master-planned communities across the globe, operates hotels and commercial buildings in numerous countries, and offers a wide range of related services, including property investment and development, in support of its worldwide construction and real estate business. Complainant asserts that it owns and operates a website located at <emaar.com>. Complainant argues that it owns and shows evidence of trademark registrations with the USPTO for the EMAAR mark (e.g., Reg. No. 3,797,685, registered June 1, 2010). See Complainant’s Appendix H. Complainant argues that it also owns numerous trademark registrations for the EMAAR mark in various countries throughout the world. See Complainant’s Exhibit H. The Panel finds that Complainant’s registration of the EMAAR mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <emaarinvestmentgroup.com> domain name is confusingly similar to Complainant’s EMAAR mark as it wholly incorporates Complainant’s mark and merely adds the descriptive phrase “investment group.” Complainant asserts that the term “investment” describes services that are identical to and/or which overlap with services offered by Complainant. Complainant further asserts that the term “group” is a generic business entity name, the use of which implies that Respondent is part of Complainant’s business “group.” The Panel finds that the addition of descriptive terms does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the end of the disputed domain name. The Panel determines that the addition of a gTLD does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel concludes that Respondent’s <emaarinvestmentgroup.com> domain name is confusingly similar to Complainant’s EMAAR mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never been known by or operated a business under the EMAAR name. Complainant contends that Respondent’s WHOIS information lists “Hector Castillo” as the registrant of the disputed domain name. See Complainant’s Appendix K. Complainant argues that it has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain names incorporating the trademark. The Panel notes that Respondent has not provided evidence showing that it is known by the disputed domain name. Accordingly, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the disputed domain name to misdirect Internet traffic to Respondent’s website, which purportedly offers real estate investment services that compete with Complainant’s services. Complainant asserts that Respondent uses Complainant’s EMAAR mark throughout the website and uses images of high-rise buildings similar to those that Complainant develops and operates. See Complainant’s Appendix L. Complainant contends that Respondent’s domain name is being used as part of a scheme to impersonate Complainant. Complainant asserts that Respondent’s domain name has been used in connection with several e-mails sent to third-parties purportedly from various senior executives of Complainant. Complainant contends that Respondent sent a document entitled “Emaar Investment Group Debt Funding Process” with one of the e-mails. See Complainant’s Appendix M. Complainant argues that the email correspondence has been sent by “Abdul Ahmed,” “Paul Solanki,” and “Umaru Ashique.” Complainant contends that there are no employees of Complainant with these names. Complainant contends that it has received multiple complaints from third-parties seeking clarification as to whether Respondent’s “Emaar Investment Group” is actually a subsidiary of Complainant’s, as it falsely claims. The Panel finds that Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant contends that Respondent selected, registered, and is using the <emaarinvestmentgroup.com> domain name for its own commercial advantage. Complainant argues that Respondent is using the disputed domain name to impersonate a subsidiary of Complainant so that Respondent can solicit investment funds. See Complainant’s Appendix L and M. Complainant asserts that Respondent uses Complainant’s EMAAR mark throughout the website and uses images of high-rise buildings. See Complainant’s Appendix L. The Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant shows bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that Respondent was aware of Complainant and Complainant’s EMAAR mark at the time that it registered the disputed domain name. Complainant argues that Respondent’s pervasive use of the EMAAR mark throughout its website in association with services that are essentially identical to Complainant’s evidences Respondent’s knowledge of Complainant’s rights in the EMAAR mark. See Complainant’s Appendix L. The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emaarinvestmentgroup.com> domain name be TRANSFERRED from Respondent to Complainant .
Tyrus R. Atkinson, Jr., Panelist
Dated: January 10, 2013
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