Trademark owners should be aware of the importance of such rights in domain name disputes and the potential for domain names to create confusion in the digital marketplace. Sarmad Hasan Manto shares how the conclusion of a WIPO panel helped one brand owner in the United Arab Emirates. 

Property Finder is a household name in the booming real estate market in the United Arab Emirates. The “Property Finder” trademark is well-known in the UAE and the Middle East as most property buyers and sellers, as well as lessors and lessees, use the Property Finder website and application to list and search for properties. There is no doubt that fame comes at a cost, which in terms of trademarks is usually infringement. Infringers are always on the lookout for famous trademarks to capitalize on their goodwill and to make easy profits. Same is the case with Property Finder IP Holding Limited, which our firm represented in a recent domain infringement case. 

Property Finder IP Holding became aware of the infringing domain name propertyfindersuae.com, registered and used by a third party without consent. After some research and gathering evidence, Property Finder filed a complaint before the WIPO Arbitration and Mediation Center, which was registered under Case No. D2024-4706. An Administrative Panel was appointed. 

In the case of we argued that the disputed domain name infringed upon Property Finder’s registered trademark and intellectual property rights; the Respondent claimed that her domain name was valid, asserting it was unrelated to the complainant’s business activities. 

Factual background 

Property Finder IP Holding, the complainant, is an online real estate advertising platform operating throughout the Middle East region. The complainant’s real estate listings are accessible throughout the world to search for property in the Middle East, including the United Arab Emirates. The domain name propertyfinder.com was launched in 1995 and was later acquired by the complainant. The complainant’s domain name is currently used by thousands of real estate agents and individuals under the complainant’s representation to offer a vast range of properties for sale and/or rent. The complainant’s website is accessed by a significant number of unique visitors every month, which serves as evidence of the well-known status of the PROPERTY FINDER / PROPERTYFINDER formative trademarks and the goodwill the complainant holds in the trademark.  

For several years, the complainant has held a prominent position in the Middle East region and maintains a substantial client portfolio consisting of brokerages, real estate agents and developers. This is confirmed by media coverage by distinguished broadcasters and several renowned publications over the years. 

In order to protect their valuable trademark from infringement and passing off, the complainant has obtained registration of their various trademarks in a number of countries around the world. The complainant owns several trademark registrations for the PROPERTY FINDER formative marks, and a number of domain names including NULLwww.propertyfinder.com, www.propertyfinderuae.com and NULLwww.propertyfinder.ae. 

The disputed domain name, propertyfindersuae.com, was registered in 2012 and redirected to a website listing homes for sale and rent. 

Complainant’s claims 

Our firm, on behalf of the complainant, argued that the disputed domain name is confusingly similar to the complainant’s registered trademarks, as it incorporates the PROPERTY FINDER trademark with the addition of the letter “s” and the suffix “uae.” We asserted that the respondent does not have any rights or legitimate interests in the domain name, as the respondent was not authorized by our client to use the trademark. Furthermore, the domain name was being used in bad faith to deceive internet users and disrupt the complainant’s business. 

Respondent’s defence 

The respondent argued that the domain name propertyfindersuae.com was registered in 2012 for a real estate business that has been operational for over 12 years. The respondent asserted that the domain name was selected based on its alignment with the business’s activities and was not intended to infringe on the complainant’s rights. The respondent claimed that she began using the impugned domain name in 2017, which indicates that the complainant was aware of the respondent’s domain name but did not raise objections until much later. The respondent also argued that her business, Property Finders Real Estate, is distinct from the complainant’s online portal, and that she has legitimate rights to use the domain name because it reflects her business name. 

Findings 

The Panel’s findings based upon the submissions made by both the parties were as follows: 

Identical or confusingly similar. The first element under the UDRP (Uniform Domain Name Dispute Resolution Policy) is whether the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights. The panel found that the disputed domain name is confusingly similar to the complainant’s trademark. Although the domain name adds “s” and “uae” to the complainant’s trademark, these additions do not prevent a finding of confusing similarity. The complainant’s trademark is clearly recognizable within the disputed domain name, and such modifications are unlikely to prevent confusion. 

Rights or legitimate interests. The second element requires the respondent to demonstrate rights or legitimate interests in the disputed domain name. In this case, the complainant successfully established a prima facie case that the respondent lacked such rights or interests. The respondent’s argument that the domain name reflects her business name Property Finders Real Estate was rejected by the panel. The respondent failed to include the full business name in the domain name (i.e., “Real Estate” was omitted), and the inclusion of “uae” was most likely designed to capitalize on the complainant’s trademark and place of business. Furthermore, while the respondent operated a legitimate real estate business, her use of the domain name was deemed likely to confuse users into believing it was affiliated with the complainant. 

Registered and used in bad faith. The third element examines whether the domain name was registered and is being used in bad faith. The respondent claimed that when she registered the domain name in 2012, she was unaware of the complainant’s business. However, the panel found it difficult to accept this claim, given the complainant’s well-established presence in the UAE real estate market at that time. Internet archive records show that the complainant’s domain names were in use well before the respondent’s registration of propertyfindersuae.com. 

Moreover, the panel noted that the respondent’s website used a logo similar to the complainant’s, and the presentation of “Property Finder” on the site mirrored the complainant’s branding. The respondent’s attempt to attract users by creating a likelihood of confusion with the Complainant’s trademark supported a finding of bad faith. 

Decision 

In light of the above findings, the panel concluded that the respondent’s registration and use of the disputed domain name constituted bad faith under the UDRP. Consequently, the panel ordered that the disputed domain name propertyfindersuae.com be transferred to the complainant. 

Conclusion 

This case highlights the importance of trademark rights in domain name disputes and the potential for domain names to create confusion in the digital marketplace. The panel’s decision to transfer the domain name underscores the need for businesses to respect intellectual property rights and avoid using domain names that may mislead consumers or capitalize on the reputation of established brands.