Bid Industrial Holdings (Proprietary) Limited v. WordWorks Corporation c/o Brian Naidoo
Claim Number: FA1005001326620
Complainant is Bid Industrial Holdings (Proprietary) Limited (“Complainant”), represented by Daniel
Greenberg of Lexsynergy Limited,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bidvest.mobi> and <bidvoice.com>, registered with Name.com LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 26, 2010.
On May 26, 2010, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <bidvest.mobi> and <bidvoice.com> domain names are registered with Name.com LLC and that Respondent is the current registrant of the names. Name.com LLC verified that Respondent is bound by the Name.com LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2010, 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@bidvest.mobi and postmaster@bidvoice.com by e-mail. Also on May 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bidvest.mobi> domain name is identical to Complainant’s BIDVEST mark.
Respondent’s <bidvoice.com> domain name is identical to Complainant’s BIDVOICE mark.
2. Respondent has no rights to or legitimate interests in the <bidvest.mobi> and <bidvoice.com> domain names.
3. Respondent registered and used the <bidvest.mobi> and <bidvoice.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Bid Industrial Holdings (Proprietary) Limited,
was established in 1988 and comprises a diversified operation with more than
106,000 employees worldwide.
Complainant’s BIDVEST mark is used to market and produce many products
ranging from equipment in the food service and catering business to appliances
and office furniture. Complainant uses
its BIDVOICE mark to publish and distribute a quarterly magazine of the same
title to its employees as a current events and news broadcast of its business
operations. Complainant owns worldwide
trademark registrations for its BIDVEST mark, including a registration with the
South African Companies and Intellectual Property
Registration Office (“CIPRO”) (Reg. No. 1995/03811 issued Aug. 4, 1998), and
the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2371451
issued Aug. 12, 2005). Complainant also
owns a trademark registration with the CIPRO for its BIDVOICE mark (Reg. No.
2004/12653 issued July 27, 2004).
Respondent registered the <bidvest.mobi> domain name December 1, 2008; and registered the <bidvoice.com> domain name November 21, 2008. Respondent’s disputed domain names resolve to websites that offer a directory of third-party links to both unrelated and competing businesses of Complainant.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant submitted evidence that it owns numerous trademark registrations worldwide for its protect marks. The Panel finds that Complainant established rights in its BIDVEST mark (CIPRO Reg. No. 1995/03811 issued Aug. 4, 1998) and (UKIPO Reg. No. 2371451 issued Aug. 12, 2005) and BIDVOICE mark (CIPRO Reg. No. 2004/12653 issued July 27, 2004) under Policy ¶ 4(a)(i) through the above noted registrations. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also The Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
Complainant first argues that Respondent’s <bidvest.mobi> domain name is identical to its BIDVEST mark because the disputed domain name contains Complainant’s mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.mobi.” See Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”). The Panel finds that Respondent’s use of Complainant’s entire mark with the addition of the gTLD “.mobi” does not create a domain name that is distinguished from Complainant’s protected mark under Policy ¶ 4(a)(i).
Complainant also urges that Respondent’s <bidvoice.com> domain name is identical to its BIDVOICE mark, because the addition of the gTLD “.com” is not sufficient to render the disputed domain name distinct from Complainant’s mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that both disputed domain names are identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights and/or legitimate interests in the <bidvest.mobi> and <bidvoice.com> domain names. Complainant is required to make a prima facie case to support its allegations. Once Complainant makes a prima facie case to support its allegations, the burden of proof on the case shifts to Respondent to show that it does have such rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant satisfied the requirement to make a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent has no rights to or legitimate interests in the <bidvest.mobi> and <bidvoice.com> domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). This Panel reviews the evidence on record before making a determination as to whether or not Respondent possesses rights or legitimate interests in the <bidvest.mobi> and <bidvoice.com> domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known
by the disputed domain name and that Complainant has no association with or license
from Complainant to use Complainant’s trademarks in any way. The WHOIS information for both disputed
domain names identifies “Brian Naidoo c/o WordWorks Corporation” as the
registrant of the domain names.
Respondent produced no evidence indicating that it is commonly known by
the disputed domain names. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
names under a Policy ¶ 4(c)(ii) analysis. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain names and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS
contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Complainant further urges that Respondent is not using the
disputed domain names in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use. Complainant offered evidence to
show that Respondent has been using the disputed domain names to resolve to
directory websites that display third-party links to websites that both seek to
compete with and are unrelated to Complainant.
The Panel finds that Respondent’s use of the disputed domain names to
redirect Internet users to both competitors and unrelated businesses is not a
use in connection with 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). See Constellation
Wines
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed
domain names to divert Internet users that are seeking Complainant’s products
to the products and services of Complainant’s competitors as well as unrelated
businesses. Complainant contends that
Respondent’s use results in a loss of Internet traffic to its official websites
and that such use is evidence of bad faith registration and use. The Panel finds that Respondent’s use of the
disputed domain names to redirect Internet users to the websites and businesses
of Complainant’s competitors is evidence of bad faith registration and use
under a Policy ¶ 4(b)(iii) analysis. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Complainant further alleges
that Respondent is collecting click-through and affiliate fees from the
businesses that are advertised and linked on Respondent’s website. Complainant alleges that Respondent is using
the identical disputed domain names to attract Internet users to its website
where Respondent receives click-through fees and that such use is further
evidence of bad faith registration and use.
The Panel finds that where Respondent is maintaining a web directory of
third-party links to competing and unrelated websites, presumably for Respondent’s
own financial gain, that Respondent has registered and used the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Respondent
registered and used the disputed domain names in bad faith; Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bidvest.mobi> and <bidvoice.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 6, 2010.
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