Company goes after a generic domain registered two decades ago, and the Complainant’s lawyers have a connection to a UDRP forum.
A three-member World Intellectual Property Organization panel has found (pdf) that Majid Al Futtaim Properties Llc attempted to reverse domain name hijack the domain name CityCentre.com.
The Complainant runs shopping centers in the Middle East using the brands [city name] City Centres, e.g., Beirut City Centre. It has figurative trademarks for the shopping centers that include the city names. It does not appear to have any registered trademarks specifically for “City Centre,” likely because that’s a generic term referring to the center of a city.
Paul Goldstone’s company Domain-It acquired the domain name in 2001 along with iGoldRush, a long-running site about domain names.
The real estate company filed the cybersquatting dispute two decades after the domain was acquired. And it probably knew it was going to lose; it lost a case against BeirutCityCenter.com in 2018. In that case, the panel wrote, “The expression ‘city centre’ is plainly a descriptive term which can have an extremely wide range of references that have nothing to do with the Complainant.”
How the Complainant thought it could win a UDRP for CityCentre.com after losing the case for BeirutCityCenter.com is a bit of a mystery. (And that domain must not have been too important to it; the domain expired and is available for registration.)
Adding to the intrigue is that the Complainant’s counsel in both cases was Talal Abu Ghazaleh Legal in Egypt. The firm’s founder is the chair of two non-profit organizations that formed The Arab Center for Dispute Resolution (ACDR), an ICANN-accredited UDRP forum.
Attorney John Berryhill represented the domain name owner.