Bid Industrial Holdings Proprietary Limited v. Brian Motele
Claim Number: FA1501001598556
Complainant is Bid Industrial Holdings Proprietary Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Brian Motele (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, <bidvestbksa.info>, registered with 1&1 Internet Ag.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2015; the National Arbitration Forum received payment on January 7, 2015.
On January 12, 2015, 1&1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, <bidvestbksa.info> domain names are registered with 1&1 Internet Ag and that Respondent is the current registrant of the names. 1&1 Internet Ag has verified that Respondent is bound by the 1&1 Internet Ag 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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2015 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@bidvestbksa.com, postmaster@bidvestbksa.co, postmaster@bidvestbksa.net, postmaster@bidvestbksa.org, as well as postmaster@bidvestbksa.info. Also on January 13, 2015, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown Q as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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
Complainant made the following contentions.
Complainant owns the BIDVEST mark through valid trademark registrations. See Compl., at Attached Ex. 1. Notably, Complainant holds the South African trademark for BIDVEST (e.g., Reg. No. 1995/03811, registered April 30, 1998; filed March 28, 1995). Id. Complainant uses BIDVEST to identify its offerings in the foodservice, broad services, trading and distribution industries. Complainant also uses the mark for banking and financial services. The <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, and <bidvestbksa.info> domain names are confusingly similar to the BIDVEST mark as they add the abbreviations “bk” and “sa” plus a non-distinctive top-level domain. The added “bk” stands for “bank,” and “sa” stands for “South Africa.” As Complainant provides banking services in South Africa, the added abbreviations do nothing to detract from the marked presence of BIDVEST.
Respondent has no rights or legitimate interests in the disputed domain names. Complainant is not associated with Respondent and has never authorized Respondent’s use of the BIDVEST mark in any fashion. There is no evidence that Respondent is commonly known by the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. At least one of the domain names resolves to a pay-per-click website featuring links to various South African businesses. See Compl., at Attached Ex. 12, p. 9.
Respondent registered and is using the domain names in bad faith. Respondent is using the disputed domain names to create a likelihood of confusing in the minds of the public as to Complainant’s affiliation with the disputed domain name. Respondent is out for commercial gain by means of affiliate links and advertising. The disputed domain names would be used to perpetrate a phishing scheme. Further, it is inconceivable that Respondent registered the domain names without knowledge of Complainant. Respondent resides in the same country where Complainant operates and holds valid, long-standing trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Consent to Transfer
Complainant has provided e-mail correspondence between the parties wherein Respondent expresses a desire to transfer the disputed domain names, apologizing for using the domain names and requesting that Complainant refrain from contacting him. See Compl., at Attached Ex. 12, p. 11-12. However, when Complainant’s representative explained what Respondent would need to do in order to assist in the transfer of domain names, Respondent replied, “I will not be in a position to help,” and stopped responding to Complainant’s queries. See Compl., at Attached Ex. 12, p. 13-14.
The question therefore arises whether the Panel should conclude that this correspondence constitutes Respondent’s consent to transfer and, if so, whether the Panel should forego the traditional UDRP analysis and order an immediate transfer of the disputed domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names”.
The difficulty in reaching that conclusion in the present case is that Respondent has not unequivocally consented to the transfer of the disputed domain names and seems to have become hesitant about doing so when Complainant advised him on the steps he would have to take to effect a transfer. Accordingly the Panel has to draw the conclusion that either Respondent changed his mind, was always hesitant about consenting to the transfer or did not understand the full ramifications of the issue.
In the circumstances, the Panel is of the view that it should examine the evidence and make findings in accordance with the Policy.
1. Complainant is a South African company engaged in the foodservice, broad services, trading and distribution industries and in the provision of banking and financial services.
2. Complainant owns the BIDVEST mark through valid trademark, notably, the South African trademark for BIDVEST (e.g., Reg. No. 1995/03811, registered April 30, 1998; filed March 28, 1995).
3. The disputed domain names were registered on May 5, 2013. At least one of the domain names resolves to a pay-per-click website featuring links to various South African businesses and the others do not resolve to websites.
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(e), 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 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant uses BIDVEST to identify its offerings in the foodservice, broad services, trading and distribution industries. Complainant also uses the mark for banking and financial services. Complainant submits that it owns the BIDVEST mark through valid trademark registrations. See Compl., at Attached Ex. 1. Notably, Complainant urges that it holds the South African trademark for BIDVEST (e.g., Reg. No. 1995/03811, registered April 30, 1998; filed March 28, 1995). Id. The Panel determines that Complainant’s valid registration of BIDVEST with the trademark authority in South Africa, where Respondent resides, sufficiently demonstrates Complainant’s rights in the BIDVEST mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BIDVEST mark. Complainant argues that the <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, and <bidvestbksa.info> domain names are confusingly similar to the BIDVEST mark as they add the abbreviations “bk” and “sa” plus non-distinctive top-level domains. Complainant alleges that the added “bk” stands for “bank,” while “sa” stands for “South Africa.” As Complainant provides banking services in South Africa, Complainant argues that the added abbreviations do nothing to detract from the marked presence of BIDVEST. Prior panels have determined that the addition of descriptive and geographic abbreviations serve to increase confusing similarity when paired with the at-issue mark. See Shuaa Capital psc v. Andre Ganyo, FA 1580226 (Nat. Arb. Forum Oct. 23, 2014) (“The Panel agrees that the abbreviations ‘psc’ and ‘ae’ enhance confusing similarity as the SHUAA CAPITAL mark is used in connection with Complainant’s UAE-based public stock company.”). Further, panels have determined that the addition of top-level domains, whether gTLDs or ccTLDs, are inconsequential to the confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel finds that the <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, and <bidvestbksa.info> domain names are confusingly similar to the BIDVEST mark pursuant to Policy ¶ 4(a)(i) as the abbreviations “bk” and “sa” do not distinguish the domain names from the BIDVEST mark, which is used to identify Complainant’s banking enterprise in South Africa.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BIDVEST mark, adding
only the abbreviations referred to above;
(b) At least one of the disputed domain names resolves to a pay-per-click website featuring links to various South African businesses;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that it is not associated with Respondent and has never authorized Respondent’s use of the BIDVEST mark in any fashion. In determining whether the respondent is “commonly known” by the disputed name pursuant to Policy ¶ 4(c)(ii), prior panels have considered whether the complainant has authorized respondent’s use of the mark and whether the available record, including the WHOIS information, provides sufficient nexus between the respondent and the name in dispute. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). At present, the Panel notes that the WHOIS information for the disputed domain names lists “Brian Motele” as registrant. In light of the available evidence, the Panel concludes there is no basis to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii);
(e)Complainant further claims that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant provides evidence that at least one of the domain names resolves to a pay-per-click website featuring links to various South African businesses. See Compl., at Attached Ex. 12, p. 9. The Panel notes that the <bidvestbksa.net> domain name resolves to promote links such as “Job Mail – South Africa,” “Jobs in South Africa,” and “Samsung Galaxy Phones.” See id. Prior panels have found that the use of a confusingly similar domain name in connection with a pay-per-click website amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Accordingly, the Panel determines that Respondent’s use of the domain names for a pay-per-click website evinces no rights or legitimate interests in the disputed domain names.
The Panel notes that Respondent has provided a screenshot of only one of the five landing pages in dispute, namely the website resolving from the <bidvestbksa.net> domain name. The Panel has attempted to examine the websites to which the other domain name resolve but finds that they do not lead to websites or perform any other function on the internet. The Panel concludes that none of the disputed domain names is used for a bona fide or legitimate function and that Respondent no rights or legitimate interest in any of the disputed domain names.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is using the disputed domain names to create a likelihood of confusing in the minds of the public as to Complainant’s affiliation with the disputed domain names. Complainant adds that Respondent is out for commercial gain by means of affiliate links and advertising. The Panel recalls that the <bidvestbksa.net> domain name resolves to promote links such as “Job Mail – South Africa,” “Jobs in South Africa,” and “Samsung Galaxy Phones.” See id. The Panel agrees that such a use is suggestive of a Policy ¶ 4(b)(iv) intent to profit from the likelihood of Internet user confusion as to the source or origin of the links that appear on the resolving website. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Secondly, Complainant argues that it is inconceivable that Respondent registered the domain names without knowledge of Complainant. Complainant notes that Respondent resides in the same country where Complainant operates and holds valid, long-standing trademark registrations. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). As the Panel infers Respondent had actual knowledge of Complainant and its BIDVEST mark at the time of domain registration, the Panel finds evidence of Policy ¶ 4(a)(iii) bad faith.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BIDVEST mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bidvestbksa.com>, <bidvestbksa.co>, <bidvestbksa.net>, <bidvestbksa.org>, <bidvestbksa.info> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 10, 2015
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