Bidvest Industrial Holdings (Proprietary) Limited v. Bruce Anderson
Claim Number: FA2208002010010
Complainant is Bidvest Industrial Holdings (Proprietary) Limited (“Complainant”), represented by Robert White of Lexsynergy Limited, United Kingdom. Respondent is Bruce Anderson (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bidvestgroup.xyz> and <bidvestholdings.xyz> (“Domain Names”), registered with Sav.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on August 29, 2022; Forum received payment on August 29, 2022.
On August 29, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <bidvestgroup.xyz> and <bidvestholdings.xyz> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 August 30, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2022 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@bidvestgroup.xyz, postmaster@bidvestholdings.xyz. Also on August 30, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a subsidiary of The Bidvest Group Limited, a South-African based international conglomerate established in 1988. The Bidvest Group Limited’s operations are global and extend across financial services, commercial and branded products and freight. Complainant registered the BIDVEST Mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,868,684, registered December 20, 2007). Respondent’s <<bidvestgroup.xyz> and <bidvestholdings.xyz> domain names are identical or confusingly similar to the BIDVEST Mark as they contain the BIDVEST Mark in its entirety and merely add a generic term and the generic top-level domain (“gTLD”) “.xyz”.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, as there is no evidence in the record and Respondent’s identity is masked by a privacy service in the WHOIS information. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the BIDVEST mark in any domain name or for any other purpose. Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent offers the Domain Names for sale on the websites located at the Domain Names and also has made an offer via email to sell the domain name to Complainant.
Respondent registered and uses the Domain Names in bad faith because Respondent offers the Domain Names for sale to the public. Furthermore, Respondent had actual knowledge of Complainant’s rights in the BIDVEST mark based on the global fame of the mark and its offer of the Domain Names for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BIDVEST mark. The Domain Names are confusingly similar to Complainant’s BIDVEST mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bidvestgroup.xyz> and <bidvestholdings.xyz> domain names and that Respondent registered and uses the Domain Names 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 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the BIDVEST mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,868,684, registered December 20, 2007). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <bidvestgroup.xyz> and <bidvestholdings.xyz> domain names are confusingly similar to Complainant’s BIDVEST mark because each incorporates Complainant’s mark in its entirety, adding only the descriptive term “group” or “holdings” and the gTLD “.xyz”. Addition of generic or descriptive words and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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 holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BIDVEST mark. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Bruce Anderson” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names presently resolve to webpages which advertise that the Domain Names are for sale for a sum well in excess of any likely out-of-pocket costs incurred by Respondent. Absent any other explanation, this indicates that the Domain Names were registered for the purpose of selling it to a third party, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent. Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Names, March 1, 2022, Respondent had actual knowledge of Complainant’s BIDVEST mark which had in use since 1988. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register two domain names that wholly incorporate the BIDVEST mark and words descriptive of a corporate entity operating under the BIDVEST name and redirect them to websites offering those domain names for sale other than to take advantage of Complainant’s reputation in the BIDVEST Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative explanation (or other active use), acquired two domain names that are confusingly similar to the BIDVEST mark and offered them for sale to the public. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). In the present case, given the nature of the Domain Names, the manner in which they have been used (not at all, on the evidence before the Panel), and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Names in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied 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 <bidvestgroup.xyz> and <bidvestholdings.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 29, 2022
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