Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group
Claim Number: FA1804001784135
Complainant is Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, Great Britain. Respondent is Shareef Ghumra / United Foods Group (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bidvest-3663.com>, registered with Tucows Domains Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On April 30, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <bidvest-3663.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 May 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2018 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-3663.com. Also on May 4, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
[i] South African trademark 1995/03811 dated 28 March 1995 for the word mark & device BIDVEST in class 42 and South African trademark 2004/10553 dated 28 June 2004 for the word mark BIDVEST in class 16. The Complainant also holds registrations and applications for the BIDVEST trademark in numerous countries, including Angola, Australia, Botswana, Congo (DRC), European Union (CTM), Hong Kong, Lesotho, Macau, Madagascar, Malawi, Mauritius, Mozambique, Namibia, New Zealand, China, Saudi Arabia, Seychelles, Singapore, South Africa, Swaziland, Taiwan, Zambia, Zimbabwe, United Kingdom and USA.;
[ii] European trademark 00132552 dated 28 September 1999 for the figurative mark “3663”
in classes 29, 30, 31, 39 and 42.;
[iii] European trademark 00936552 dated 9 September 2010 for the figurative mark “3663” in classes 3,5-8 ,11,16,21,24,29-35, 39 and 43.;
[iv] WIPO International trademark 1139164 dated 20 March 2012 for the figurative mark “3663” in classes 3,5-8 ,11,16,21,24 and 29-35.;
[v] European trademark 012416673 dated 11 December 2013 for the figurative mark “BIDVEST 3663 MAKING YOUR LIFE EASIER” in classes 3,5-8 ,11,16,21,24,29-35, 39 and 43.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
Factual background:
(i) Complainant
1. Bid Industrial Holdings (Proprietary) Limited (“BIH”) and BFS Group Limited (BFS”) are subsidiaries of The Bidvest Group Limited (“Group”) which is an international services, trading and distribution company listed on the Johannesburg Stock Exchange (JSE), South Africa (collectively referred to herein as the Complainant).
2. BFS has over the years gone through a series of re-branding exercises with the result that in February 2014 the business was re-branded as BIDVEST 3663 and subsequently in 2015 changed its trading name to Bidvest Foodservice branded to align with Bidvest Logistics, Bidvest Catering Equipment and Bidvest Fresh, keeping BIDVEST as the distinctive brand identifier. The company provides a choice of tailored supply chain services including the purchasing, warehousing and nationwide distribution of ambient, chilled and frozen food as well as non-foods and small wares.
3. BIH licenses its BIDVEST trademarks to the Group and its member companies and/or divisions (collectively referred to herein as the Complainant), including but not limited to BFS who is also recorded as the owner of certain 3663 trademarks. The Complainant’s head office is situated in Johannesburg, South Africa.
4. The Complainant’s business was established more than 20 years ago and has since diversified its operation to become one of the world’s largest and most influential companies with more than 106 000 employees worldwide.
5. The Complainant’s decentralized business operations extend to four continents, operating in a variety of sectors within the retail, distribution and service industries. The activities of a few of the Complainants’ operational divisions are listed below.
i. Bidvest Services
ii. Bidvest Freight
iii. Bidvest Office and Print
iv. Bidvest Automotive
v. Bidvest Financial Services
vi. Bidvest Commercial Products
vii. Bidvest Electrical
Additional information can be found on the Complainant’s website <www.bidvest.com>.
6. The Complainant, through its subsidiaries and parent companies has made a concerted effort to register the BIDVEST trademark in all the countries in which it operates or conducts business with the result that it has filed the BIDVEST word mark and stylized mark in the following countries: Angola, Australia, Botswana, Congo (DRC), European Union (CTM), Hong Kong, Lesotho, Macau, Madagascar, Malaysia, Malawi, Mauritius, Mozambique, Namibia, New Zealand, China, Saudi Arabia, Seychelles, Singapore, South Africa, Swaziland, Taiwan, Zambia, Zimbabwe, United Kingdom, USA, Japan, Egypt, Indonesia, Philippine and Israeli and the 3663 trademark in USA and European Union.
7. The Complainant has also registered numerous domain names that are identical or incorporate its “BIDVEST” and “3663” trademark, such as:
|
Domain Name |
Type |
Registration Date |
|
bidvest.com |
Generic |
17 February 1998 |
|
bidvest.co.za |
South Africa |
2 February 1998 |
|
3663.co.uk |
United Kingdom |
9 August 1999 |
|
bidvest-uk.com |
Generic |
2 June 2000 |
|
bidvest.biz |
Generic |
3 April 2008 |
|
bidvest.mobi |
Generic |
1 December 2008 |
|
bidvest.co.uk |
United Kingdom |
17 November 2009 |
|
bidvest.info |
Generic |
17 February 2010 |
|
3663direct.co.uk |
United Kingdom |
12 March 2010 |
|
bidvest3663.net |
Generic |
20 December 2013 |
|
bidvest3663.org |
Generic |
20 December 2013 |
|
bidvest3663.co.uk |
United Kingdom |
20 December 2013 |
|
bidvest3663.com |
Generic |
20 December 2013 |
8. The Complainant launched its website www.bidvest.co.uk on 24 May 2013 and www.bidvest.com on 11 April 2000. See extracts of the archived website and confirmation date of the archive from Internet Archive Wayback Machine (a digital data archive service).
9. The Complainant’s main website site www.bidvest.com generates a large number of visits per year from numerous countries around the world. The total number of visits at the homepage of www.bidvest.com between 15 August 2009 and 31 December 2016 was 653,080.
10. The total revenue for 2013-2017 amounts to approximatively R615.5 billion (approximately $49.6 billion).
11. The Complainant has spent a considerable amount on marketing, which has included:
i. sponsorship and ownership of a major soccer club in Africa (Bidvest Wits), which is based in Johannesburg South Africa (see www.bidvestwits.co.za for more information);
ii. sponsoring the Nedbank Golf Challenge, one of the world’s richest golf tournaments;
iii. Bidvest Academy, which covers leadership (including re-engineering leadership DNA to generate higher levels of energy and performance), business strategy, services (customer service, customer orientation and marketing) and finance;
iv. sponsoring the Foundation for Youth Development in New Zealand;
v. a major corporate social investment initiative in The Rally to Read programme, which delivers reading material to rural schools throughout South Africa. The Rally partners to READ a literacy organization;
vi. Sponsorship of Ellis Park Stadium- one of the homes of South African rugby, horse racing, and the Bidvest Wanders Stadium- synonymous with cricket in South Africa; and
vii. Sponsorship of premiership football club New Sunderland AFC;
12. The Complainant’s website <www.bidvest.com> is ranked as the top unsponsored results on the search engine Google.com for the search term and BIDVEST.
13. The Complainant has generated extensive press coverage.
14. The Complainant regularly issues press releases.
15. The Complainant was listed on the Forbes Global 2000, a list of 2000 of the world’s largest and most powerful companies in terms of US dollars based on composite ranking involving an assessment of sales, market value, assets and profits.
(ii) Respondent
16. The Domain was registered on 12 February 2014 using a Whois privacy service. A domain privacy service allows a domain name registrant to conceal its identity on the Whois by using third-party information.
17. The Complainant first became aware of the Domain Name on or around the 14 February 2014.
18. On or about 14 February 2014, the Domain Name forwarded to the Complainant’s website <www.3663.co.uk>.
19. On 7 May 2014, the Complainant’s representative wrote to the host requesting that they remove the forwarding and suspend the Domain Name.
20. On 8 May 2014, the host responded confirming receipt of the abuse report and asked for permission to forward the report onto their customer, the Complainant’s representative responded the same day giving their permission.
21. On 9 May 2014, the host responded advising that they had not heard back from their client, so they will proceed to remove the forwarding.
22. On 11 May 2014, the Complainant’s representative wrote to the host, as the forwarding still seemed to function.
23. On 14 May 2014, the host responded confirming that the forwarding had been removed.
24. On 19 May 2014, the Complainant’s representative wrote to the host asking them to remove the privacy service.
25. On 20 May 2014, during an exchange of emails between the host and the Complainant’s representative, the host responded advising that they were unable to disclose the details behind the privacy service, without a court order, due to data protection laws.
26. Due to the lack of cooperation from the host, the Complainant decided to monitor the Domain Name on monthly basis.
27. On 21 July 2016, during the monthly monitoring, the Complainant’s representative noticed that a website had reappeared consisting of affiliate links.
28. On 1 May 2018, after submitting the Complaint to the National Arbitration Forum, the privacy service was removed. The Complainant was requested to amend the Complaint to the party hiding behind the privacy service, as we have done herein.
[a.] The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i).
(i) Rights
29. The Complainant relies on its registered trademarks.
30. The Complainant also relies on common law rights. By virtue of its extensive trading and marketing activities, the Complainant has acquired a substantial reputation and goodwill in the marks BIDVEST, 3663 and BIDVEST 3663, such that the public recognizes any use as distinctive of the Complainant’s many different spheres of business, including but not limited to its food services. Due to the scope of the Complainant’s commercial activities, a consumer would assume that any product or service, of any description, which is being sold or offered under the trademarks BIDVEST or BIDVEST 3663, is associated in some way with or endorsed by or are used under license or authority from the Complainant.
31. The Complainant also relies on the fact that, as explained below, the Respondent clearly set out to attract business intended for the Complainant. Such activity by the Respondent presupposes that the Complainant’s business was known and identified by the name and marks BIDVEST, 3663 and BIDVEST 3663.
32. The Complainant’s trademark rights in BIDVEST have previously been established in the six UDRP cases listed below:
i. Bid Industrial Holdings v Craig Smith, D2009-1627 (1 February 2010);
ii. Bid Industrial Holdings Proprietary Limited v WordWorks Corporation c/o Brian Naidoo. 1326620 (6 July 2010);
iii. Bid Industrial Holdings Proprietary Limited v Johnson, 1486845 (1 April 2013);
iv. Bid Industrial Holdings Proprietary Limited v Brian Motele, 1598556 (10 February 2015);
v. Bid Industrial Holdings Proprietary Limited v XL Liu. 1698526 (28 November 2016); and
vi. Bid Industrial Holdings Proprietary Limited v ZhangPeng / Zhang Peng (15 September 2017)
(ii) Identical or Confusing Similarity
33. The Domain Name is confusingly similar to the Complainant’s BIDVEST and 3663 trademarks.
34. The Domain Name incorporates the Complainant’s trademarks in its entirety separated by a hyphen. The only difference between the Domain Name and the Complainant’s trademarks is the mere addition of “.com” and placement of a hyphen between the elements of the BIDVEST and 3663 marks. Hyphens are often used in domain names to signify a space between words. See Cherno Communications Inc. v Jonathan Dennis Kimball, D2000-0119 (WIPO May 18, 2000) “The majority of prior Panel decisions, which are consistent with United States Court decisions dealing with trademarks, have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.“ The trademark BIDVEST is the dominant part of the mark as it fits inline with the Complainant’s naming convention where BIDVEST is regarded as the identifying prefix followed by a descriptor and/or secondary name follows. Examples are listed below:
i. https://www.bidvestcarrental.co.za/ - Bidvest Car Rental
ii. http://www.bidvestbt.co.za/home - Bidvest Business Technologies
iii. http://www.bidvestlounge.co.za/ - Bidvest Premier Lounge
iv. http://www.bidvestlaundrygroup.co.za/ - Bidvest Laundry Group
[b.] The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy 4(a)(ii).
35. The Complainant asserts that, for the reasons stated below, it has made a prima facie case that the Respondent should be considered as having no rights or legitimate interests in the Domain Name and that the burden now shifts to the Respondent. See G.D. Searle v. Martin Mktg., 118277 (Forum, Oct. 23, 2002) (where complainant has asserted that Respondent has no rights or legitimate interests it was incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”).
36. Dealing with each of the subparagraphs of paragraph 4 (c) of the ICANN policy in turn:
(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or
37. The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks.
38. The Respondent has clearly used the Domain Name and the Complainant’s trademark to attract, confuse and profit from Internet users seeking the Complainant – see the submissions in relation to bad faith below.” Such use of the Domain Name could not be said to be “bona fide”.
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or
39. There is no evidence that the Respondent has been commonly known by the names comprised in the Domain Name.
(iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
40. It is clear that the Respondent was out for commercial gain and its use was unfair. See the Complainants’ submissions below in relation to 4b (iv) of the Policy.
[c] The domain name should be considered as having been registered and being used in bad faith; ICANN Policy 4(b)(i).
(iv) Whether by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
41. The website at the Domain Name is essentially a scheme adopted by the Respondent to confuse, attract and profit from internet users who are searching for the Complainant’s business in search engines, web browsers and otherwise on the internet.
42. It is clear from the following that the Respondent had the Complainant and its business in mind when registering and using the Domain Name:
i. as the Complainant had previously registered bidvest3663.com on 20 December 2013 and the Respondent registered the hyphenated version two months later forwarding the Domain Name to the Complainant’s website. This act is not accidental and may be part of a scam targeting the Complainant. This clearly shows a bad faith registration targeting the Complainant and its business; and
ii. the Complainant is a world-renowned business, which has developed a goodwill and reputation in a variety of brands around the world. It would be difficult to imagine that the Respondent would not have been aware of the Complainant’s trademark rights taking into account its international presence and reputation; and
iii. furthermore, the trademarks “BIDVEST” and “3663” are recognized by the public as distinctive because the former is an invented word and the latter are numbers “3663” that spell “food” on a telephone keypad. It is highly unlikely that the Respondent independently created the name Bidvest-3663.
43. The use of the Domain Name is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant.
44. Furthermore, the Complainant’s trademarks “BIDVEST” and “3663” appear prominently on the top left of the home page at the Domain Name, thereby adding to likely confusion on the part of Internet users.
45. The Respondent has taken deliberate steps to ensure that its true identity could not be determined through the use of a Whois privacy service, which is evidence of bad faith on the part of the Respondent. The Privacy service was only removed by the Registrar after receiving notice of this Complaint.
46. The Respondent conducts business in the same field as the Complainant, namely the food services industry. Five months after the registration of the Domain, during July 2014, the Respondent registered a Limited company and a Public limited company in England and Wales, namely “UNITED FOODS (REAL) LIMITED” and “UNITED FOODS GRP PLC”, which appeared to do business in the same field as the Complainant. These two companies were later dissolved, and the Respondent is currently the CEO of three different companies within the food industry, namely, UNITED FOOD GROUP LIMITED, UNITED FOODS GRP LIMITED and PERFECT PASTRY LIMITED. It is therefore inconceivable that the Respondent would not be aware of the Complainant or its activities and trademark rights.
47. The Respondent has also registered in excess of 30 generic domains relating to the food/catering industry. Therefore, it is apparent that the Respondent is familiar with the food/catering industry and would therefore undoubtedly have heard or would be aware of the Complainant bearing in mind that the Complainant also operates its business in the UK, with five depots across that country.
48. It is clear that the Respondent was out for commercial gain by means of affiliate / sponsored links and advertising. Indeed, it is difficult to conceive that the Respondent would engage in a scheme such as this for a non-commercial purpose. It is well known that many directory websites generate revenue by directing traffic to other websites (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc. Case No. D2002-0787 (WIPO, 8 October 2002) in relation to <bmwdealer.com>)). Clearly, at least one of the Respondent’s purposes was to attract and profit from internet users seeking the Complainant’s website.
49. The Complainant contends that there can be no possible legitimate basis for the Respondent independently deriving at the Domain Name that is identical to the trademarks of an extremely large and reputable organization.
50. The Complainant’s trademarks rights pre-dates the Domain Name registration by at least twenty years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two (2) Complainants in this matter: Bid Industrial Holdings (Proprietary) Limited (“BIH”) and BFS Group Limited (BFS”). Both Complainants are subsidiaries of The Bidvest Group Limited (“Group”) which is an international services, trading and distribution company listed on the Johannesburg Stock Exchange (JSE). They are “sister” corporations.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other (such as common ownership). For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The evidence in the Complaint is sufficient to establish a sufficient nexus between the Complainants to treat them all as a single entity for the purposes of this proceeding.
Complainant claims rights in the BIDVEST (e.g. Reg. No. EU004010261, registered Nov. 16, 2005) and 3663 (e.g. Reg. No. EU001325521, registered Nov. 20, 2000) marks through its registration of the marks with the EUIPO. Registration with a governmental trademark agency, such as the EUIPO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (Registration with the UKIPO (or any other governmental authority) is sufficient to establish rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country.”). Complainant has established rights in the BIDVEST and 3663 marks for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <bidvest-3663.com> domain name is identical or confusingly similar to Complainant’s mark because it contains both of Complainant’s marks, separates them with a hyphen, and adds the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Similar changes in a domain name have failed to sufficiently distinguish it from a registered mark for the purposes of Policy ¶4(a)(i). See NSK LTD. v. Xu Yan / ChangZhou City Thinker Network Technology Co., Ltd., FA 1709111 (Forum Jan. 31, 2017) (“The disputed domain name combines both of Complainant’s RHP and NSK marks, with a hyphen added between them… creating confusing similarity.”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The <bidvest-3663.com> domain name is confusingly similar to Complainant’s BIDVEST and 3663 marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <bidvest-3663.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “Shareef Ghumra / United Foods Group” as the registrant. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. No evidence exists to show Respondent was ever legitimately known by the BIDVEST and/or 3663 marks. There is no obvious relationship between Respondent’s name and the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the marks in any manner. The Panel must conclude Respondent is not commonly known by the <bidvest-3663.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the disputed domain name to resolve to a dynamic parking page that contains a series of hyperlinks redirecting users to services directly competing with Complainant, presumably to commercially benefit Respondent from pay-per-click fees. Using a domain name to offer links to services directly competing with a complainant does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use per Policy ¶4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The resolving webpage displays “Sponsored Listings” such as “Food service equipment” and “Auction Food Processing”. Respondent uses the domain name to offer competing hyperlinks to Internet users looking for Complainant, which does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use per Policy ¶4(c)(iii).
Respondent registered the disputed domain name using a privacy service. Respondent has done nothing to publicly associate itself with the disputed domain name. This means Respondent has not acquired any rights by simply registering the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the <bidvest-3663.com> domain name in bad faith because Respondent has a propensity for registering generic domain names in the food/catering industry. This Panel is not convinced that violates Policy ¶4(b)(ii), which provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct…” Complainant owns <Bidvest.com>, which means Complainant has managed to register a domain name which reflects its trademark. Hence, there is no bad faith on this ground.
Complainant claims Respondent registered and uses the <bidvest-3663.com> domain name in bad faith by creating a likelihood of confusion about the source of the disputed domain name to commercially benefit by offering competing hyperlinks. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain constitutes bad faith registration and use under Policy ¶4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶4(b)(iv)”). The resolving webpage displays “Sponsored Listings” such as “Food service equipment” and “Auction Food Processing”, all of which relate to Complainant’s business. Respondent attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the BIDVEST and 3663 marks at the time of registering the <bidvest-3663.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name demonstrates bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent clearly had Complainant’s mark in mind when registering the domain name, given Complainant’s fame and international presence in this industry. Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. This Panel is comfortable finding bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <bidvest-3663.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 8, 2018
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