WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited

Case No. D2018-1776

1. The Parties

The Complainant is Majid Al Futtaim Properties LLC of Dubai, United Arab Emirates, represented by Talal Abu Ghazaleh Legal, Egypt.

The Respondent is Scitecs of Alexandria, Egypt and Arabian Centres Company Limited of Riyadh, Kingdom of Saudi Arabia (“Saudi Arabia”), represented by Clyde & Co., United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <mallofsaudi.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2018. The Response was filed with the Center on September 12, 2018.

The Center appointed Ian Lowe as the sole panelist in this matter on September 20, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 23 and 24, 2018, the Complainant filed an unsolicited Supplemental Filing replying to submissions in the Response that the named Respondent, Scitecs, was a marketing agency that had registered the Domain Name on behalf of a third party and that the third party had rights and legitimate interests in respect of the Domain Name that were such as to rebut the Complaint. So far as the Panel could determine, there was no basis on which the Complainant could have anticipated these submissions at the time of filing the Complaint. In the circumstances, the Panel reached the provisional view that the Supplemental Filing should be admitted, but issued Procedural Order 1 on September 27, 2018 giving the Respondent the opportunity to file a reply to the Complainant’s Supplemental Filing by October 4, 2018. The Respondent’s Supplemental Filing was filed with the Center on October 4, 2018.

On October 9, 2018, the Complainant sent a further unsolicited Supplemental Filing to the Center, apparently in response to the Respondent’s October 4, 2018 filing. As the Procedural Order of September 27, 2018 made clear, the Panel considered that fairness called for the Complainant to be given the opportunity to respond to the unforeseeable submissions in the original Response as it did in its Supplemental Filing of September 23, 2018 and September 24, 2018. The Complainant has not advanced any compelling reason why the further submission should be admitted. The Panel does not accept that there is any justification for further filings and will not admit the October 9, 2018 filing by the Complainant.

4. Factual Background

The Complainant is a company registered in Dubai, United Arab Emirates (“UAE”), on February 5, 1994 and is a subsidiary of Majid Al Futtaim Holding LLC. The Majid Al Futtaim group was established in 1992 and owns and operates shopping malls, retail and leisure establishments in the Middle East, Africa and Asia, with operations in 15 countries, including UAE, Egypt and Saudi Arabia as well as Oman, Bahrain, Qatar, Pakistan and Kenya. The group employs more than 40,000 people.

The Complainant is a developer of shopping malls, hotels and mixed-use community projects in the Middle East and North Africa. It owns and operates 21 shopping malls, 12 hotels and three mixed-use communities, with further developments underway in the region. The shopping malls portfolio includes Mall of the Emirates in Dubai and Mall of Egypt in Cairo.

The Complainant is the registered proprietor of Saudi Arabia trademarks MALL OF SAUDI (in Latin and Arabic letters) number 143312736 and MALL OF SAUDI ARABIA (in Latin and Arabic letters) number 143312738, both registered with protection from October 9, 2012. It is also the registered proprietor of a number of other “Mall of…” trademarks in other territories, including MALL OF EGYPT number 196979, registered on February 27, 2007, and MALL OF THE EMIRATES, registered on September 30, 2014.

The Complainant commenced its use of the “Mall of…” brand when its “Mall of the Emirates” shopping resort opened its doors in Dubai, UAE in 2005. It receives more than 42 million visitors annually, with more than 630 international stores. “Mall of Egypt” opened in Cairo, Egypt in 2017, comprising some 165,000 square metres, combining retailers and a comprehensive leisure offering. The Complainant is set to open “Mall of Oman” by 2020 and “Mall of Saudi” by 2022.

The Complainant registered <majidalfuttaim.com> on February 9, 2002 and <malloftheemirates.com> on July 6, 2003. It uses its website at “www.majidalfuttaim.com” to promote its various activities including webpages devoted to its “Mall of the Emirates” and “Mall of Egypt” shopping malls. Its website at “www.maullofemtheemirates.com” specifically promotes the “Mall of the Emirates” shopping mall.

The Complainant formally announced its plan to build “Mall of Saudi” in Riyadh, Saudi Arabia in a press release on February 8, 2016. The mall of some 300,000 square metres would comprise shops, restaurants, offices, hotels and residential units and Saudi Arabia’s first indoor ski slope. Work would start in mid-2017 with the first phase of the mall completed by 2022.

The Domain Name was registered on March 2, 2012 by Ahmed Mourady of Scitecs, Alexandria, Egypt. It resolves to a holding page stating: “website coming soon! Please check back soon to see if the site is available.” It appears never to have resolved to an active website.

On March 26, 2012 an article appeared on the Arab Emirates based website “The National” with the headline “Majid Al Futtaim scouts location for Abu Dhabi mega mall”. In the middle of the article it also stated: “The developer is also considering land in Riyadh, Saudi Arabia to build a mall.”

Dr. Mourady is the owner and Managing Director of Scitecs, a marketing agency established in 2010. From February 4, 2012 to December 20, 2015, Dr. Mourady was also employed by Arabian Centres Company Limited (“Arabian Centres”) of Riyadh, Saudi Arabia, initially as E-Commerce Manager and later as Head of Marketing.

Arabian Centres is a subsidiary of Fawaz Abdulaziz AlHokair & Co of Riyadh. It is a leading real estate owner, developer and property-management company and operates 19 shopping malls in nine cities across Saudi Arabia. These include “Mall of Dahran” that opened in Dammam in 2005 and “Mall of Arabia” that opened in Jeddah in 2008. The other 17 shopping malls have names in the format “[Name] Mall”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to its MALL OF SAUDI trademark and confusingly similar to its well-established “MALL OF…” names in which it has unregistered trade mark rights by virtue of its substantial and long-standing use of such names. It also claims a relevant reputation in “Mall of Saudi” through its promotion of its proposed new mall since 2016.

The Complainant submits that there is a strong prima facie case that the Respondent, a marketing agency in Egypt, could have no rights or legitimate interests in respect of the Domain Name, which has never been used for an active website. Accordingly, the Complainant argues that in light of the renown and reputation of its “Mall of Saudi” mark and “Mall of…” brand the Respondent must have known of the Complainant and its rights when it registered the Domain Name, and accordingly did so in bad faith, and that its passive holding of the Domain Name is also in bad faith within the meaning of paragraph 4(b)(iv) of the Policy on the basis of the principles set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

The Respondent’s answer is that Arabian Centres instructed Dr. Mourady of Scitecs to register the Domain Name and other similar or related domain names, on its behalf, on March 2, 2012. Whilst accepting that the Domain Name is identical to the Complainant’s MALL OF SAUDI trademark, it disputes the contention that the Complainant has established a substantial reputation in the “Mall of…” brand. The Respondent states that Arabian Centres intends to use the Domain Name for a virtual mall comprising an online shopping platform for the benefit of all its tenants of its 19 current shopping malls and seven proposed malls. The Respondent seeks to show that Arabian Centres has made demonstrable preparations to use the Domain Name for this purpose by relying on an application (albeit unsuccessful) made by its holding company on June 12, 2008 to register MALL OF SAUDIA as a trademark in Saudi Arabia. It also claims to have registered four additional relevant domain names on October 2, 2016 (sic), namely: <mallofsaudi.info>, <mallofsaudi.net>, <mallofsaudis.co.uk>, and <mallofsaudia.com>.

Accordingly, the Respondent contends that it has rights and legitimate interests in respect of the Domain Name and that it neither registered nor is it using the Domain Name in bad faith.

C. Supplemental Filings

The Complainant does not accept that it is permissible to rely on any rights or legitimate interests on the part of Arabian Centres to rebut the Complaint since it is not the registrant of the Domain Name. In any event it considers that the evidence put forward as to the instructions given by Arabian Centres to Scitecs to register the Domain Name on its behalf is neither sufficient nor persuasive. In addition, it disputes that there is any real evidence that Arabian Centres has a genuine intention to use the Domain Name for a virtual mall for the benefit of the tenants of its shopping malls and suggests that if it were going to do so then you would expect it to seek to use the domain name <mallsofsaudi.com> since the Respondent has a number of malls in Saudi Arabia, not just one.

Finally, the Complainant considers that any rights Arabian Centres may have in respect of “Mall of…” marks by virtue of its operation of Mall of Dahran and Mall of Arabia are trumped by the Complainant’s registered trademark MALL OF SAUDI. Furthermore, it will not be permissible for Arabian Centres to operate a virtual mall using the Domain Name because that would infringe the Complainant’s trademark rights.

In response, the Respondent puts forward for the first time evidence that Dr. Mourady of Scitecs was employed by Arabian Centres from February 2012 to December 2015 and suggests that the Domain Name was registered by Dr. Mourady and not by Scitecs and that Dr. Mourady continues to hold the Domain Name as nominee for Arabian Centres. It therefore maintains that it is permissible for the Response to the Complaint to rely on Arabian Centre’s legitimate rights and interests in the Domain Name.

Not only does the Respondent not accept that the Complainant’s use of the “Mall of…” brand has been sufficient to establish a worldwide reputation in “Mall of…”, it also states that since the Complainant’s application to register MALL OF SAUDI as a trademark was only published on October 19, 2015 that was the earliest date on which the Respondent could have become aware of the Complainant’s intention to use that mark. The Respondent also argues that in any event the Complainant’s trademark registrations of MALL OF SAUDI and MALL OF SAUDIA ARABIA are liable to be held invalid on the same grounds that the application by Arabian Centre’s holding company to register MALL OF SAUDIA in Saudi Arabia was refused – namely because the word SAUDI/SAUDIA belongs to the Kingdom of Saudi Arabia.

The Respondent also relies on its registration of a number of other “mallof…” domain names to support its legitimate interest in the Domain Name.

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identity of the Respondent

However, the first issue for the Panel to decide is the correct identity of the Respondent for the purposes of the Complaint. In Paragraph 1 of the Rules “Respondent” is defined as “…the holder of a domain-name registration against which a complaint is initiated.” The WhoIs record returned as part of the Center’s verification process specifies only:

“Registrant Organization: Scitecs

whereas a WhoIs search through the Registrar’s website records:

Registrant Name: Ahmed Mourady
Registrant Organization: Scitecs”

In the response submissions, it has been argued that Dr. Mourady registered the Domain Name in a quasi-personal capacity, as nominee for Arabian Centres, simply using the Scitecs account with the Registrar. The Panel considers, however, that where a WhoIs record specifies both a “Registrant Name” and a “Registrant Organization”, there is no doubt that the holder of the domain name registration is only the specified “Registrant Organization”. In the Panel’s view, there is no scope for arguing that in such a case the “Registrant Name” has any rights in respect of the domain name. If it did, then that could open up all manner of dispute as to whether the individual and the organization had joint rights or whether the rights of one trumped the other. In many organizations, the person registering a domain name will enter their name (or, for example, “Domain Name Manager”) in such a way that results in this being recorded against “Registrant Name”, when it is quite clear that it is only the organization that is intended to be the holder of the domain name.

For the reasons given above, the Panel considers that Scitecs is the holder of the Domain Name and not Dr Mourady.

However, leaving to one side for the moment the personal position of Dr. Mourady, the response submissions claim that the Domain Name was registered on behalf of Arabian Centres and that its rights and/or legitimate interests in respect of the Domain Name should be taken into account in determining the Complaint. The Complainant submits that the Panel should not do so, but simply approach the Complaint on the basis that Scitecs alone is the Respondent. Neither the Policy, nor the Rules make specific provision for a case where the holder of a domain name claims to be holding it on behalf of a third party.

However, many panels have had to deal with cases where the domain name is registered in the name of a privacy or proxy registration service or the beneficial holder of the domain name, and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) sets out at Section 4 how the respondent identity is to be assessed in such cases. Section 4.4.5 states that the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the circumstances, the panel may find it appropriate to record only the underlying registrant as the named respondent or, if there is some indication that the privacy or proxy provider is somehow related to the underlying registrant, then to record both the privacy or proxy service and underlying registrant as the named respondent.

In cases involving an assertion by a registrant that a third party is in fact the beneficial owner of the domain name, panels have been prepared to accept that the third party should be regarded as the respondent to the complaint provided there is appropriate evidence that this is the case. They have been wary, on the other hand, of allowing such an assertion to permit a registrant to abdicate responsibility for the circumstances surrounding the registration and use of the domain name.

In this case, given the nature of Scitecs’ business, the evidence as to Dr Mourady’s employment by Arabian Centres, and the nature and actions of Arabian Centres, the Panel considers that, in light of the response submissions, it is appropriate to record both Scitecs and Arabian Centres as the named Respondent.

B. Identical or Confusingly Similar

The Complainant is the registered proprietor of Saudi Arabia trademark MALL OF SAUDI and accordingly has rights in that mark. The Respondent argues that the trademark is liable to cancellation because it ought never to have been registered, on the ground that the word SAUDI belongs to the Kingdom of Saudi Arabia. However, in the Panel’s view there is no scope for any such argument in determining a complaint under the Policy. Provided the Complainant has relevant rights in a trademark as at the date of filing the complaint, that is sufficient for this purpose. See WIPO Overview 3.0, section 1.2.

Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name is identical to the Complainant’s MALL OF SAUDI mark. Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances that may demonstrate that a Respondent has rights or legitimate interests in respect of a domain name. Here, there has been no use of the Domain Name, and there is no suggestion that the Respondent has been commonly known by the Domain Name. The Respondent relies on its having made preparations to use the Domain Name in connection with a bona fide offering of goods or services, before any notice to it of the dispute.

The Respondent claims that Arabian Centres instructed Dr. Mourady of Scitecs to register the Domain Name on its behalf in March 2012 and that it intends to use the Domain Name for a virtual mall for the benefit of all the tenants of its 19 current and seven proposed shopping malls in Saudi Arabia.

The Complainant points to its prior use over a number of years of what it claims to be its “Mall of…” brand, as well as its trademark registration for MALL OF SAUDI, to submit that the Respondent could have no rights or legitimate interests in respect of the Domain Name since any use of the Domain Name would, first, confuse Internet users into believing that the Domain Name was connected with or authorized by the Complainant; and, second, that any use for a virtual mall as suggested by the Respondent would infringe its registered trademark rights.

So far as the Panel can see, there is no evidence whatsoever advanced by the Respondent to show that it does in fact intend to use the Domain Name for such a virtual mall despite its two opportunities to do so in its original Response and in its Supplemental Filing. According to the Response:

“Arabian Centres intends to use the Disputed Domain Name to host a website for a “virtual mall’ which comprises on online shopping platform for the tenants of Arabian Centres’ 26 malls (ie its current 19 malls plus the 7 new malls). To explain further, consumers will be able to browse through the products offered by the tenants of Arabian Centres’ multiple malls via the “virtual mall’ and buy products online from multiple sellers located in various different malls, all through one online platform which will be hosted on the Disputed Doman Name.”

The “instructions” to Dr. Mourady to file the application to register the Domain Name and other domain names were allegedly given in an email from Salman AlHokair of Arabian Centres dated March 2, 2012. The copy of the email annexed to the Response, in its entirety, is as follows:

**********************************************************************
“From: Salmanalhokair <salmanalhokair@[....]
Date: 2 March 2012 at 22:00:25 EET
To: Ahmed Mourady <ahmed@[...]>

[formal greeting in Arabic script]
Riyadh mall / mall of Riyadh / riyad mall [“riyadh mall” in Arabic script]
Mall of Saudi”
**********************************************************************

Salman AlHokair was at that time a director of Arabian Centre’s holding company Fawaz Abdulaziz AlHokair & Co, and is now the President of the company.

As is apparent, there is in fact no express instruction in the email to register <mallofsaudi.com> or any other domain name; and no indication as to why Mr. AlHokair wished to register any such domain names or what his company intended to do with them. There is nothing else to show the context in which the email was sent. It appears to have been sent at 10:00 pm Eastern European Time (GMT+2) (11:00 pm Saudi Arabia time – GMT+3), from a personal email account of Mr. AlHokair. There is no evidence as to how Dr. Mourady reacted to this email or how it was that he interpreted the email as an instruction to register domain names or which gTLD he should use. According to WhoIs records, Scitecs registered the domain names <mallofsaudi.com>, <mallofriyadh.com>, and <riyadmall.com> on March 2, 2012, all at 20:12:59 in the time zone of the Registrar, presumably in Arizona, namely Mountain Standard Time (GMT-7) and, therefore, 05:12:59 on March 3, 2012 Eastern European Time:

The Panel notes that <riyadhmall.com> had previously been registered by an unknown third party on December 12, 2001.

The circumstances on which the Respondent seeks to rely as demonstrating rights or legitimate interests in the Domain Name, as specified in paragraph 4(c) of the Policy, are “demonstrable preparations to use” the Domain Name. But all that the Respondent puts forward is its bare assertion, quoted above, that it intends to use the Domain Name for a virtual mall. Dr. Mourady was employed by Arabian Centres from February 2012 to December 2015, initially as E-Commerce Manager and later as Marketing Manager, yet there is no evidence put forward as to any proposals by him for such a virtual mall, and no evidence from anyone else at Arabian Centres either as to such a proposal or as to any steps that have in fact been taken to set up such a virtual mall. There is no evidence as to when an intention to set up a virtual mall was formed, or by whom, or why, or when or why it was decided to use <mallofsaudi.com> for such a website.

The Respondent also relies on its holding company’s earlier unsuccessful application to register MALLOFSAUDIA as a Saudi Arabia trademark on June 12, 2008 as evidence of its intention to use MALLOFSAUDI for a bona fide offering of goods or services. However, there is no evidence as to why it made the application or how it intended to use that mark if the application had been successful. The Panel notes that it appears (at least from a search using Google) that SAUDIA is used exclusively to refer to the Saudi Arabia state airline.

Finally, the Respondent points to a number of registrations of related “mallof…” domain names prior to March 2012. These comprise, first, <mall-of-arabia.com> and <mymallofarabia.com>. These were registered on September 23, 2010 and are both in the name of Arabian Centres which has operated Mall of Arabia in Jeddah, Saudi Arabia since 2008.

Further registrations are <mallofsaudia.com>, <mallofalexandria.com>, and <mallofcairo.com>, but these are all registered in the name of Domains by Proxy and not Scitecs or Arabian Centres, and there is no evidence that they are held on behalf of the Respondent or, if they are, when they were first held on behalf of the Respondent.

In addition, the Respondent states in its original Response that the “Mall of Saudi” domain names <mallofsaudi.info> and <mallofsaudi.net> were registered on its behalf on October 2, 2016. According to the WhoIs records exhibited by the Respondent, these are both in the name of Arabian Centres but were in fact registered on February 10, 2016.

<mallofsaudis.co.uk> was also registered on February 10, 2016, but the name of the registrant is not disclosed by the WhoIs record.

<mallofsaudia.com> was in fact registered on October 10, 2010 but is in the name of Domains by Proxy, a privacy shield.

In the Panel’s view, the Respondent has put forward no evidence that it has made any demonstrable preparations to use the Domain Name for a bona fide offering of goods or services. If it had had any such intention to use the Domain Name for a virtual mall for any significant period, then the Panel considers that there would undoubtedly have been a fund of readily available material as to such preparations that it could have put forward either in the original Response or in the Respondent’s Supplemental Filing. The Panel also considers that none of the other matters put forward by the Respondent give rise to any relevant rights or legitimate interests. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Section 3.8.1 of the WIPO Overview 3.0 indicates that where 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. Section 3.8.2 goes on to set out examples of limited circumstances amounting to exceptions to this proposition.

In this case, the Complainant’s trademark MALL OF SAUDI was applied for on October 9, 2012 and registered on January 20, 2016. According to the Respondent the trademark application was published on October 19, 2015 and the Respondent states in the Response that:

“Accordingly, the earliest date on which the Respondent may have become aware of the Complainant’s intention to operate a mall in Saudi Arabia under the MALL OF SAUDI mark was 19 October 2015 ie over three years after the Respondent registered the Disputed Domain Name.”

and

“There is … nothing to suggest that at the time of registration of the Disputed Domain Name the Respondent or Arabian Centres were or might have been aware of the Complainant’s future plans to use or register the MALL OF SAUDI mark.”

The Complainant relies, however, on the following:

(1) Its operation of its “Mall of the Emirates” shopping resort in Dubai, UAE from 2005 that comprises more than 630 international stores and more than 80 of the world’s most prestigious brands. The Mall of Emirates opened seven years before the Domain Name was registered and now has more than 42 million visitors annually. The Complainant had registered the <malloftheemirates.com> domain name in 2003.

(2) The fact that by March 26, 2012 it was public knowledge that the Complainant was considering land in Riyadh, Saudi Arabia to build a mall, as reported in an article published on The National website on that date which also discussed a number of the Complainant’s other plans including a possible development in Abu Dhabi, UAE.

The Complainant submits that it is most likely that by the time of registration of the Domain Name on March 2, 2012 the Respondent was not only well aware of the Complainant and its very successful operation of its “Mall of the Emirates” shopping mall, but also of its possible future development of a mall in Riyadh, Saudi Arabia.

The Panel considers that matters in this case are finely balanced. It recognizes that panels are slow to find registration in bad faith in cases where the Complainant only accrued its trademark rights after the domain name was registered. However, in this case the Respondent Arabian Centres was a very substantial operator of shopping malls in Saudi Arabia, presumably at least in one sense in competition to the Complainant. The Panel notes that there is no express denial in either the Response or the Respondent’s Supplemental Filing that at the time it registered the Domain Name it was aware of the Complainant and its operation over some seven years of its Mall of the Emirates shopping mall; and no express denial that it was at that time aware of a possible intention on the part of the Complainant to develop a similar mall in Riyadh, Saudi Arabia.

Just 24 days before the statement in The National article mentioning a possible mall in Riyadh, Saudi Arabia, a senior representative of Arabian Centres sent the email to Dr. Mourady including the words “Riyadh” and “Riyadh Mall” and “Mall of Saudi”, without any explanation, which Dr. Mourady apparently took to be an instruction immediately to register the <mallofsaudi.com> and <mallofriyadh.com> domain names. There is no evidence as to why Mr. AlHokair sent that email or the context in which he did so, or any explanation to the person who was now employed as Arabian Centre’s E-Commerce Manager.

What the Panel also finds telling is that on February 8, 2016, the Complainant issued a press release announcing in detail its plans to develop two new malls in Riyadh, including Mall of Saudi that was to be Saudi Arabia’s largest “fully integrated lifestyle destination”. Just two days later, on February 10, 2016 (and not October 2, 2016 as claimed in the Response), the Respondent registered three more “mallofsaudi” domain names, that is <mallofsaudi.net>, <mallofsaudi.info> and, it claims, <mallofsaudis.co.uk>. The Respondent has given no explanation for its registration of these further domain names or what it intends to use them for.

The Panel considers that in the view of its finding that the Respondent has failed to demonstrate any rights or legitimate interests in respect of the Domain Name, the Respondent’s conduct in registering the Domain Name in March 2012 and the additional “mallofsaudi” domain names in February 2016 constitutes a pattern of conduct preventing the Complainant from reflecting its MALL OF SAUDI mark in a domain name; alternatively, that the Respondent registered the Domain Name primarily to disrupt the business of a competitor.

In the circumstances, the Panel finds, on balance, that the Domain Name was registered in bad faith.

There has been no active use of the Domain Name, but as numerous panels have found, that does not prevent a finding of bad faith use under the doctrine of passive holding. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>. As the WIPO Overview 3.0 sets out at Section 3.3, panels will look at the totality of the circumstances in each case, but relevant factors include the failure of the respondent to provide any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put. The Respondent has not put forward any specific evidence of its intention to use the Domain Name for a virtual mall and in the circumstances the Panel finds it implausible that the Respondent intends to do so. Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <mallofsaudi.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: October 14, 2018