Insider, Inc. v. Admin Administrator / VUWA AFRICA
Claim Number: FA2009001911132
Complainant is Insider, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Admin Administrator / VUWA AFRICA (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <businessinsider.africa>, registered with DNS Africa Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2020; the Forum received payment on September 3, 2020.
On September 10, 2020, DNS Africa Ltd confirmed by e-mail to the Forum that the <businessinsider.africa> domain name is registered with DNS Africa Ltd and that Respondent is the current registrant of the name. DNS Africa Ltd has verified that Respondent is bound by the DNS Africa Ltd 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 September 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2020 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@businessinsider.africa. Also on September 16, 2020, 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.
A timely Response was received and determined to be complete on October 1, 2020.
On October 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an online media company known for publishing BusinessInsider.com and other news and media websites. Complainant has rights in the BUSINESS INSIDER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,411,611, registered Oct. 1, 2013). Complainant states that Respondent’s <businessinsider.africa> domain name is identical to Complainant’s BUSINESS INSIDER mark. Respondent incorporates the mark in its entirety and then adds the “.Africa” generic top-level domain (“gTLD”).
As per Complainant’s contentions, Respondent lacks rights or legitimate interests in the <businessinsider.africa> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the BUSINESS INSIDER mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name fails to resolve to an active webpage.
In Complainant’s opinion, Respondent registered and used the <businessinsider.africa> domain name in bad faith as Respondent attempts to sell the disputed beyond reasonable out-of-pocket costs. Respondent also fails to resolve to an active webpage. Respondent also holds domain names that incorporate third party marks which is evidence of a pattern of bad faith. Respondent had actual knowledge of Complainant’s rights in the BUSINESS INSIDER mark due to the long standing use of the mark in commerce.
B. Respondent
Respondent is a business advisory company which operates in the areas of business strategy and transactional advisory services and has done business in South Africa since 2017. Respondent is using the <businessinsider.africa> domain name in an effort to improve its online presence.
Complainant, Insider Inc., originally Business Insider Inc., is an American online media company known for publishing BusinessInsider.com and other news and media websites. In April 2018, Business Insider Inc. changed their name to Insider Inc. The company relaunched its brand and website on February 11th, 2009, and currently is widely represented in a social media as well. BUSINESS INSIDER is ranked first in a Google.com and Google.co.za searches.
Insider Inc. launched Business Insider in Sub Saharan Africa in 2017 with a release in South Africa in 2018Following its launch at the end of February 2018, Business Insider South Africa had become the third largest financial website and one of the top 25 websites in the country. In March, the site, www.businessinsider.co.za, had 1.4 million unique visitors and generated more than 4.2 million page views, according to Effective Measure
The disputed domain name <businessinsider.africa> was registered on October 28, 2019.
The earliest BUSINESS INSIDER Complainant's mark was registered on October 1st, 2013 (US Reg. No. 4,411,611), and, according to the Complainant, its first use is dated back 2009.
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.
Complainant claims to have rights in the BUSINESS INSIDER mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the mark (e.g. Reg. No. 4,411,611, registered Oct. 1, 2013). Therefore, the Panel finds that Complainant has rights in the BUSINESS INSIDER mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <businessinsider.africa> domain name is identical to Complainant’s BUSINESS INSIDER mark. Registration of a domain name that contains a mark in its entirety with only an added gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”), see Micron Technology, Inc. v. N Rahmany, 1758827 (Forum Nov. 29, 2017), see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶ 4(a)(i).”).
Here, Complainant argues that Respondent incorporates the mark in its entirety and then adds the “.Africa” gTLD.
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that 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 does have 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 argues Respondent lacks rights or legitimate interest in the <businessinsider.africa> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the BUSINESS INSIDER mark or register domain names using Complainant’s mark. Lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Vuwa Africa” and there is no other evidence to suggest that Respondent was authorized to use the BUSINESS INSIDER mark or was commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name fails to resolve to an active webpage. Failure to resolve to an active domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided the Panel with a screenshot of Respondent’s <businessinsider.africa> domain name’s resolving webpage that shows a webpage with no content. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Thus, the Panel has established that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
Complainant argues that Respondent registered and used the <businessinsider.africa> domain name in bad faith as Respondent attempts to sell the disputed beyond reasonable out-of-pocket costs. Offering to sell a disputed domain name beyond out-of-pocket costs may be evidence of bad faith registration and use per Policy ¶ 4(b)(i). See Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Forum June 26, 2014) (finding that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i) because it countered Complainant’s offer to buy the disputed domain name with an offer to sell the disputed domain name of $100,000, See Alacrita LLP v. Alex Blass, FA 1517471 (Forum Oct. 22, 2013) finding that Respondent offered to sell the disputed domain <alacrita.com> to Complainant for £20,000, an amount in excess of filing and reasonable development fees to a Complainant is evidence that supports findings of bad faith registration and use under a Policy ¶ 4(b)(i).
Here, Complainant provides emails that show its offer to buy the disputed domain and where Respondent counter offered for $1.25 million USD.
Complainant argues that Respondent also holds domain names that incorporate third party marks which is evidence of a pattern of bad faith. Registration of domain names that contain well-known trademarks may be evidence of a pattern of bad faith per Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii). Here, Complainant has provided the Panel with WHOIS information where Respondent is the register that contains domain names with third-party marks.
Complainant argues that Respondent also fails to resolve to an active webpage. Failure to resolve to an active webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <businessinsider.africa> domain name’s webpage that fails to load any content.
Complainant argues that Respondent had knowledge of Complainant’s rights in the BUSINESS INSIDER mark at the time of registering the <businessinsider.africa> domain name. Actual knowledge of a complainant’s rights in a mark may evidence bad faith under Policy ¶ 4(a)(iii), but constructive knowledge is insufficient. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the notoriety of the BUSINESS INSIDER marks and Respondent’s use of the mark in its entirety, see Nourison Industries, Inc. v. Shalyn Gates, FA 1899623 (Forum July 14, 2020) where the Panel found that the Respondent had actual knowledge of Complainant’s rights. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
In view of the above, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to 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 <businessinsider.africa> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: October 12, 2020
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