Emaar Properties PJSC v. Marguerite Patrie
Claim Number: FA1508001635622
Complainant is Emaar Properties PJSC (“Complainant”), represented by Pallavi Mehta Wahi of K&L Gates LLP, Washington, United States. Respondent is Marguerite Patrie (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <al-manzil-hotel-dubai.com>, registered with Fabulous.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2015; the Forum received payment on August 28, 2015.
On September 3, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <al-manzil-hotel-dubai.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 September 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2015 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@al-manzil-hotel-dubai.com. Also on September 14, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 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 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
Complainant 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 has registered the AL MANZIL HOTEL mark with the United Arab Emirates Trademark Office. Complainant also owns common law rights in the mark. The <al-manzil-hotel-dubai.com> domain name is confusingly similar to the AL MANZIL HOTEL mark as it wholly incorporates Complainant’s mark in its entirety, deviating only to the extent that it adds the geographically descriptive term “Dubai,” which is also the geographic location of Complainant’s hotel, as well as hyphenation between words and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of the AL MANZIL HOTEL mark. Additionally, Respondent does not make a bona fide offering of goods or services through the disputed domain name or provide a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to resolve to a website that purports to be the “official” website of Complainant’s Al Manzil Hotel in Dubai. Respondent’s website also features copyrighted photographs that were, upon information and belief, taken directly from Complainant’s website, and purports to offer hotel reservations for Complainant’s Al Manzil Hotel.
Respondent has registered and is using the disputed domain name in bad faith. Respondent intentionally and fraudulently set out to attempt to impersonate Complainant for commercial gain by creating a likelihood of confusion with the AL MANZIL HOTEL mark. Specifically, customers may become confused as to the source, sponsorship, affiliation or endorsement of the products and services advertised by the links on Respondent’s website. Further, Respondent has engaged in bad faith by registering the disputed domain name with actual knowledge of Complainant’s mark and by asking consumers to provide their names, email addresses, billing addresses, and credit card information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Emaar Properties PJSC, 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 has rights in the AL MANZIL HOTEL mark through registration with the United Arab Emirates Trademark Office. Complainant also has common law rights in the AL MANZIL HOTEL mark.
Respondent, Marguerite Patrie, registered the <al-manzil-hotel-dubai.com> domain name on October 12, 2009. Respondent uses the disputed domain name to resolve to a website that purports to be the “official” website of Complainant’s Al Manzil Hotel in Dubai. Respondent’s website also purports to offer hotel reservations for Complainant’s Al Manzil Hotel.
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 has registered the AL MANZIL HOTEL mark with the United Arab Emirates Trademark Office. However, the submitted copy of Complainant’s trademark registration is not printed in English; therefore, the registration date of Complainant’s mark cannot be confirmed from Complainant’s evidence.
Complainant argues that because the AL MANZIL HOTEL mark has been continuously used by Complainant in connection with its goods and services since at least 2006, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). Additionally, Complainant asserts that it has expended substantial time and effort since 2006 developing and maintaining goodwill in the mark by advertising and promoting the mark in association with its construction and real estate business. The continued use of a mark and advertising to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Accordingly, the Panel finds that Complainant has shown common law rights to the AL MANZIL HOTEL mark pursuant to Policy ¶ 4(a)(i), dating back to 2006.
The <al-manzil-hotel-dubai.com> domain name is confusingly similar to the AL MANZIL HOTEL mark under Policy ¶ 4(a)(i) as it wholly incorporates Complainant’s well-known mark in its entirety, deviating only to the extent that it adds the geographically descriptive term “Dubai,” which is also the geographic location of Complainant’s hotel. The domain also includes hyphenation between terms and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <al-manzil-hotel-dubai.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the AL MANZIL HOTEL mark. The WHOIS information lists “Domain Hostmaster, Customer ID : 09390993121033” as registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Respondent uses the disputed domain name to resolve to a website that purports to be the “official” website of Complainant’s Al Manzil Hotel in Dubai, thereby misleading and diverting customers for commercial gain. Complainant alleges that Respondent’s website also features copyrighted photographs that were taken directly from Complainant’s website, and purports to offer hotel reservations for Complainant’s Al Manzil Hotel. A respondent’s use of a complainant’s mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith. Specifically, Complainant contends that Respondent intentionally and fraudulently attempts to impersonate Complainant for commercial gain by creating a likelihood of confusion with the AL MANZIL HOTEL mark. Complainant asserts that customers may become confused as to the source, sponsorship, affiliation or endorsement of the products and services advertised by the links on Respondent’s website. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent uses a complainant’s well-known mark to attract users to the respondent’s website and likely profits. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent has engaged in bad faith Policy ¶ 4(a)(iii) Policy ¶ 4(a)(iii) by registering and using the disputed domain name with actual knowledge of Complainant’s AL MANZIL HOTEL mark. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Respondent has engaged in bad faith by asking consumers to provide their names, email addresses, billing addresses, and credit card information. The Panel finds that Respondent’s behavior constitutes bad faith registration and use of the subject domain name under Policy ¶ 4(a)(iii). See also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Accordingly, the Panel finds that Respondent has engaged in bad faith pursuant to 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 <al-manzil-hotel-dubai.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 22, 2015
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