MallOfOman.com: #UDRP Complainant loses case for the 2nd time

Majid Al Futtaim Properties LLC lost the UDRP filed against the domain MallOfOman.com in 2018. The domain had been registered long before the Complainant acquired its mark.

Complainants that lost a UDRP can refile, if new developments warrant such filing; the 2nd time their UDRP filing was also denied, despite no official response by the Respondent, who noted:

Since the issue was earlier raised to WIPO by the same complainant, disposed of by WIPO and closed way back in 2018, please refrain from such allegations and attempts to tarnish our image quoting a baseless complaint by another entity, till it is proven. We would appreciate your understanding and looking forward to your earliest confirmation of our request of one month for filing the response being our right as the domain was registered by us much prior to the complainant using our domain name in Oman for TM registration etc.

Indeed, the sole panelist at the National Arbitration Forum found no reason to justify this 2nd filing and ordered the domain MallOfOman.com to remain with the Respondent.

The domain transfer was denied.

Majid Al Futtaim Properties LLC v. LuLu Group / LuLu Group International

Claim Number: FA2106001949322

PARTIES

Complainant is Majid Al Futtaim Properties LLC (“Complainant”), represented by Shahdan Essam of Abu-Ghazaleh Intellectual Property TMP Agents (AGIP), Egypt. Respondent is LuLu Group / LuLu Group International (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mallofoman.com> (the “Disputed Domain Name”), registered with Omnis Network, LLC.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Douglas M. Isenberg (chair), Adam Taylor and Katalin Szamosi as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically, which the Forum received on June 2, 2021; the Forum received payment on June 6, 2021.

 

On June 2, 2021, Omnis Network, LLC confirmed by e-mail to the Forum that the <mallofoman.com> domain name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, LLC 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 June 7, 2021, the Forum notified Complainant of deficiencies in the Complaint regarding the identity and contact information of the Respondent and informed Complainant to rectify the deficiencies within five calendar days. Complainant submitted a revised complaint (hereafter, the “Complaint”) on June 8, 2021.

 

On June 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 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@mallofoman.com. The Forum has informed the Panelists that on June 8, 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.

 

On June 30, 2021, a representative for Complainant informed the Forum: “Please note we have not received any communication on this earlier to 29 Jun 2021. May be, if sent, these may have gone to the spam folder.”

 

Having received no response from Respondent by the due date, the Forum stated that it transmitted to the parties a Notification of Respondent Default.

 

On July 7, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Douglas M. Isenberg (chair), Adam Taylor and Katalin Szamosi as Panelists.

 

On July 8, 2021, a representative for Complainant informed the Forum that “we are not in receipt of your Written Notice of Complaint and all Annexes.”

 

On July 18, 2021, Respondent submitted its Response, after the due date. Given this late submission and the fact that, as described below, the Panel has decided to deny the Complaint as improperly refiled, the Panel does not consider the Response other than as set forth herein.

 

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.

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant states that “[t]his case involves a refiled complaint… brought by the Complainant against the Respondent’s ‘LuLu Group /LuLu Group International’ affiliate entity ‘EMKE Group’.” In the previous proceeding, a panel at the World Intellectual Property Organization (WIPO) denied a transfer because “the Complainant has failed to establish that the disputed domain name was registered in bad faith.” Majid Al Futtaim Properties LLC v. Raja Abdulkader, EMKE Group, WIPO Case No. D2018-1670. Complainant contends that the instant proceeding is a properly refiled complaint for the following reasons: (1) Respondent is now redirecting the Disputed Domain Name to its own website, which was not the case at the time of the previous proceeding (as further discussed below); (2) Complainant has now provided an “instruction letter” to its agent regarding filing of an application for the MALL OF OMAN Trademark that “was reasonably unavailable to the complainant during the original case” (as further discussed below); (3) Complainant has now received a favorable decision for the domain name <mallofsaudi.com> in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, WIPO Case No. D2018-1776 (as further discussed below); (4) a document submitted by Respondent in the previous proceeding “falsely convince[d] the panel of its legitimate rights” and “is considered a serious misconduct”; and (5) “failing to examine the second UDRP element and lack of good examination of the bad faith element by the panel in the original case… amounts to breach of natural justice.”

 

Complainant states that it “provides properties management services”; that it “develops, owns, and manages shopping malls, hotels, residential, leisure, and entertainment facilities”; that it “serves customers globally”; that it “has commenced use for its ‘Mall of’ brand in connection with the operation of ‘Mall of the Emirates’ in Dubai, UAE, the region’s first shopping resort and flagship luxury destination, first opened its doors in year 2005”; that “[b]y year 2017, the complainant opened ‘Mall of Egypt’ in Cairo, Egypt”; that it “is set to open Mall of Oman by September 2021”; and that it “is set to open Mall of Saudi by year 2022.”

 

Complainant states that it “owns several registrations for ‘Mall of Oman’ in Oman and family trademark registrations, which incorporates the words ‘Mall of’ in various countries around the world.” In support thereof, Complainant provides documentation showing its ownership of Reg. Nos. 43575 and 43576 for the mark MALL OF OMAN in Oman (the “MALL OF OMAN Trademark”), which were applied for on February 10, 2007, and issued on December 3, 2007.

 

Complainant contends that the Disputed Domain Name is identical to the MALL OF OMAN Trademark “as it incorporates such mark in its entirety.”

 

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “[t]here is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the Disputed Domain Name”; Complainant “has never authorized nor licensed the Respondent to use its brand ‘Mall of’, trademark ‘Mall of Oman’, nor to seek the registration of any disputed domain name incorporating the said trademark”; “the pertinent WhoIs information identifies the Registrant Organization as ‘LuLu Group International’, which does not resemble the disputed domain name in any manner”; Respondent “is using the disputed domain name ‘Mallofoman.com’ to redirect internet users to its own website https://www.omanavenuesmall.om/…. [which] does not confer rights or legitimate interests in the disputed domain name nor considered a bona fide offering of goods and services”; “Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is generating traffic to its website for its own commercial gain by taking unfair advantage of the confusion arising out of the similarity between the disputed domain name and the ‘Mall of Oman’ mark”; the panel in the previous proceeding regarding the Disputed Domain Name “did not examine this element relying in its decision on its finding in the bad faith element; which in the complainant’s opinion amount to a breach of natural justice, as all UDRP elements should have been adequately examined by the panel and if it was properly examined the Complainant would not have been in this current position which is refilling the complaint.”

 

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, “it is implausible that the Respondent was unaware of the Complainant’s brand ‘Mall of’; when the Respondent registered the Disputed Domain Name; because the [C]omplainant has been operating the ‘Mall of’ brand since 2005; established its company since 1994; and registered its domain name ‘MalloftheEmirates.com’ since July 6th, 2003”; the panel in the previous proceeding regarding the Disputed Domain Name “failed when it disregarded that the Respondent’s knowledge of the Complainant’s ‘Mall of the Emirates’ shopping mall and ‘malloftheemirates.com’ domain name amounts to the Respondent’s bad faith in registering the disputed domain name incorporating the complainant’s ‘Mall of’ element”; Complainant’s “agent” failed to follow Complainant’s instructions of January 26, 2007, to file a trademark application for the MALL OF OMAN Trademark, which was not filed until February 10, 2007 (and, had Complainant’s agent followed Complainant’s instructions, the trademark application would have been filed prior to registration of the Disputed Domain Name on January 29, 2007); “a technical error in the archiving system” prevented Complainant from providing this instruction letter in the previous proceeding; “Respondent would never have registered this disputed domain name was it not for the fact that the Respondent knew that it was in use or about to be used as trademark by the Complainant”; “given that Respondent registered and has used the disputed domain name to redirect web traffic to its own website at “www.omanavenuesmall.om” that promotes the services of Respondent’s company, it appears more likely than not that Respondent registered the disputed domain name for Respondent’s profit”; and Complainant has obtained the transfer of the domain name <mallofsaudi.com> in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, WIPO Case No. D2018-1776.

 

B. Respondent

Respondent failed to submit a Response in this proceeding. However, in its emails to the Forum (as stated above), a representative for Respondent stated on June 30, 2021: “since the issue was earlier raised to WIPO by the same complainant, disposed of by WIPO and closed way back in 2018, please refrain from such allegations and attempts to tarnish our image quoting a baseless complaint by another entity, till it is proven.” And on July 8, 2021: “We would appreciate your understanding and looking forward to your earliest confirmation of our request of one month for filing the response being our right as the domain was registered by us much prior to the complainant using our domain name in Oman for TM registration etc. This was also ruled out by WIPO during the year 2018 against the same complainant.”

FINDINGS

Complainant provides property management services and develops, owns, and manages shopping malls, hotels, residential, leisure, and entertainment facilities. Complainant is the owner of at least two trademark registrations in Oman (Reg. Nos. 43575 and 43576) for the MALL OF OMAN Trademark, which were issued on December 3, 2007.

 

The Disputed Domain Name was created on January 29, 2007, and is redirecting visitors to the website at https://www.omanavenuesmall.om/ , which states, “Oman Avenues Mall is the largest mall in the Sultanate of Oman, boasting an impressive lineup of prestigious retailing brands, fine dining options, fun and entertainment experiences to the discerning shopper.”

DISCUSSION

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

As the Complainant admits, this proceeding relates to “a refiled complaint,” citing Majid Al Futtaim Properties LLC v. Raja Abdulkader, EMKE Group, WIPO Case No. D2018-1670. Although a refiled complaint typically involves the same domain name and the same parties as in a previous proceeding under the Policy, the Panel here notes that the previous proceeding involved a different respondent (Raja Abdulkader, EMKE Group) than the instant proceeding (LuLu Group / LuLu Group International). However, as Complainant itself has observed, “LuLu Group /LuLu Group International” is an “affiliate entity” of “EMKE Group,” and Respondent stated in its Response that “EMKE” is a “Respondent company.” Given this relationship, as well as Complainant’s own acknowledgement that this proceeding represents a refiled complaint, and in light of the principles regarding the propriety of refiled complaints (as discussed below), the Panel here treats this as a refiled case.

 

At the outset, the Panel notes that because “the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint”; accordingly, “refiled complaints are exceptional.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18, adding that:

 

Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.

 

Respondent appears to be well-aware of these narrow circumstances, having provided the following reasons why the Panel should accept this refiled case (as previously described above): (1) Respondent is now redirecting the Disputed Domain Name to its own website, which was not the case at the time of the previous proceeding (as further discussed below); (2) Complainant has now provided an “instruction letter” to its agent regarding filing of an application for the MALL OF OMAN Trademark that “was reasonably unavailable to the complainant during the original case” (as further discussed below); (3) Complainant has now received a favorable decision for the domain name <mallofsaudi.com> in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, WIPO Case No. D2018-1776 (as further discussed below); (4) a document submitted by Respondent in the previous proceeding “falsely convince[d] the panel of its legitimate rights” and “is considered a serious misconduct”; and (5) “failing to examine the second UDRP element and lack of good examination of the bad faith element by the panel in the original case… amounts to breach of natural justice.”

 

However, none of these circumstances is applicable here.

 

First, it is important to note that in the previous decision regarding the Disputed Domain Name, the Panel found that “the Complainant has failed to establish that the disputed domain name was registered in bad faith,” largely because the Disputed Domain Name was registered before Complainant filed its applications for the MALL OF OMAN Trademark. But the new development cited by Complainant (redirection of the Disputed Domain Name to another website) relates only to how the Disputed Domain Name is now being used – almost 14 years after registration of the Disputed Domain Name.. In the Panel’s view, this new development does not relate to the issue on which the previous panel decided the dispute (that the Disputed Domain Name was not registered in bad faith) and, therefore, cannot be relied upon as the basis for refiling. (Had the previous panel found that the Disputed Domain Name was not being used in bad faith – as opposed to not having been registered in bad faith – then the Panel here might find the change in use cited by Complainant to be relevant.)

 

Second, the “instruction letter” on which Complainant relies does not qualify as “new material evidence that was reasonably unavailable to the complainant during the original case.” Not only was this letter apparently something created by (and therefore presumably within the knowledge and control of) the Complainant itself, but had Complainant considered it relevant but not immediately available, then Complainant could have simply delayed filing its original complaint until it had located the letter.

 

Third, although the decision in Complainant’s favor for the domain name <mallofsaudi.com> in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, WIPO Case No. D2018-1776 was dated subsequent to the decision in the original case for the Disputed Domain Name, the <mallofsaudi.com> decision is not “legally relevant” to the instant proceeding. Admittedly in each case, the disputed domain name was indeed registered prior to the relevant trademark registration, but there is no indication that the decision for <mallofsaudi.com> established new legal precedent. In fact, WIPO Overview 3.0, section 3.8.1 (which was published the year before either of the two referenced decisions was reached), states: “[W]here a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent…. Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith.” In other words, the issue applicable to both cases is one that panels have previously discussed and debated, so the differences in the two decisions are not without explanation, especially because the two decisions involved different domains, different trademarks, and different circumstances.

 

Fourth, with respect to the document submitted by Respondent in the previous proceeding that Complainant says “falsely convince[d] the panel of its legitimate rights” and “is considered a serious misconduct”: Complainant has provided no convincing explanation for this assertion – and certainly no evidence of perjury.

 

Fifth, the previous panel’s failure to examine rights or legitimate interests under paragraph 4(a)(ii) of the Policy and bad faith use (not registration) under paragraph 4(b)(iii) is certainly not “a breach of natural justice or of due process,” as numerous panels have taken the same approach, that is, declined to address substantive elements of the Policy that are inapplicable as a result of a conclusion on another element that a panel has decided in favor of a respondent. See, e.g., Mobius Payments Corporation v. David Gobaud, WIPO Case No. D2018-1580 (“[g]iven the Panel’s finding with respect to paragraph 4(a)(ii) of the Policy…, the Panel declines to make a finding with respect to paragraph 4(a)(iii), as doing so is unnecessary to the Panel’s decision”).

 

As a result of the foregoing, the Panel declines to consider (because doing so is unnecessary to the outcome of this proceeding) the substantive issues raised by Complainant under paragraph 4(a) of the Policy.

 

Despite the foregoing, the Panel is mindful of the limitations of the Policy, including the absence of an appellate process and a fact-finding mechanism. As the previous panel wrote in his decision denying a transfer of the Disputed Domain Name, “it is not the task of a Panel under the UDRP to resolve a potential trademark dispute between the Parties and the Panel may only have regard to the terms of the Policy. Such a dispute may be rather suited for resolution in an appropriate court which may be able to resolve issues of fact and law which are outside the purview of this Panel.”

DECISION

For the reasons set forth above, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <mallofoman.com> domain name REMAIN WITH Respondent.

 

 

Douglas M. Isenberg (chair), Adam Taylor and Katalin Szamosi, Panelists

Dated: July 20, 2021

 

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