The Complainant is Bid Industrial Holdings, Bidvest House of Johannesburg, Gauteng, Republic of South Africa (“South Africa”), represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Craig Smith of Townsview, Gauteng, South Africa.
The disputed Domain Name, <bidvestholdings.com>, is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration & Mediation Center (“the Center”) on December 2, 2009. On December 2, 2009 the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 9, 2009 GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2009. From December 11, 2009 a series of e-mails were exchanged between the Center and the Respondent. No request or application was made by the Respondent for an extension of time within which to file a Response, and after expiry of the time period the Center advised the Respondent by e-mail dated January 4, 2010 that, since the due date had passed, the Center would regard the e-mails of 12, 15 and December 16, 2009 from the Respondent as the Response and would proceed to appoint the Panel. There is nothing on file to suggest that either party disagreed with the stance taken by the Center.
The Center appointed Archibald Findlay as the sole panelist in this matter on January 22, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7.
On June 25, 2009 the Complainant's representative wrote to the Respondent recording an objection to the disputed Domain Name on the basis that the Respondent did not have any rights or legitimate interests in the disputed Domain Name as the Complainant enjoyed such rights (Exhibit “N” to the Complaint).
In his Response of July 6, 2009 the Respondent contended that he had been asked to register the disputed Domain Name on behalf of clients for whom he hosted the disputed Domain name and he furnished details of a company, BidVest Holdings Ltd, registered in the British Virgin Islands and with a registered office in Hong Kong. In his e-mail of December 12, 2009 to the Center the Respondent acknowledged notification of the Complaint and informed the Center that the company to which he referred in his earlier e-mail, Exhibit “O”, was indeed the Domain name owner.
In his further e-mail of December 15, 2009 to the Center and in the course of complaining about the matter the Respondent reiterated that the disputed Domain Name was legally owned by his client. In his further e-mail of December 16, 2009 to the Center he remitted a copy of the Certificate of Company Incorporation in the Companies Register of the British Virgin Islands in respect of his client, BidVest Holdings Ltd. (To avoid confusion with the Complainant I shall refer to the latter as “the Hong Kong Company”).
To the extent that the contentions of the Respondent suggest that the actual owner and therefore the true Respondent is the Hong Kong Company, this contention raises the issue of whether the Respondent is in fact the holder and registrant of the disputed Domain Name Registration. The Complainant employed investigators in Hong Kong to visit the company in question and it transpired that its address was not at No 1301 Bank of America Tower, 12 Harcourt Road, Hong Kong, as was said by the Respondent. Since no company by that name was located at that address, further investigations suggested that this company might be at No 3705 of those premises and not No 1301. This arose from a written quotation for supply of cement apparently emanating from the Hong Kong Company and referred by the would-be customer to the Complainant. (See Exhibits “P1”, “P2” and “P3” to the Complaint). An independent business registry search and company search to confirm whether the Hong Kong Company was registered in Hong Kong was carried out by the Complainant's Hong Kong lawyers, Messrs Robertsons, but no such registration was established, as appears from Exhibits “T1” to “T4” to the Complaint. Thereafter investigations were conducted at the address, i.e. No 3705 of the premises, but there appeared to be no such company there. The further investigations took place during the period of November 2007 to January 2008 and were triggered by information suggesting that there might be such a company situated at No 3705.
Against this factual background the issue arises as to who is in fact the Respondent.
Paragraph 1 of the Rules defines the “Respondent” as the “holder of the Domain Name Registration against which a complaint is initiated”. There is nothing in the WHOIS search carried out both by the Complainant and the Center to suggest that the present Respondent was a nominee, or that there was an underlying person or entity other than the named registrant, or that any person or entity other than the named registrant, may in fact be a beneficial owner of the disputed Domain Name. Indeed the Complainant avers that the company referred to by the Respondent does not exist and is simply being used by the Respondent to conceal his personal involvement and in all likelihood to obtain a price from the Complainant for the transfer of the disputed Domain Name in excess of out-of-pocket expenses directly related to the disputed Domain Name.
It is open to a respondent to show that he or it is a mere nominee or agent and not the owner of a domain name, with the result that the latter may be brought into any proceeding. In the light of the evidence from the Complainant, not gainsaid by the Respondent who furnishes no supporting evidence for his contention as to ownership, the Panel concludes that the Respondent is correctly before it (see British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683). These facts and contentions also have a bearing upon the later enquiry into bad faith.
A registrant who provides incomplete details, and who fails to identify and furnish relevant details of the real party in interest when a trademark infringement is asserted and when a UDLP proceeding is initiated, cannot avoid the responsibility of being the registrant, whether or not any legal notice or process was actually forwarded to the party that requested and used the disputed Domain Name. This derives from the fact that the service named in the registration details is the registered name holder and bears the legal responsibility for the registration and use of the Domain Name in contravention of the Policy, unless it “promptly discloses” the identity of its licensee. This much appears from the ICANN Register Accreditation Agreement (“RAA”), Section 3.7.7.3 (May 17, 2001) as amended and as available on line at “www.icann.org/registrars/ra-agreement-17May01htm).”: “Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record and is responsible for providing its full contact information and for providing and up-dating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the Registered Name. A Registered Name Holder licensing use of a Registered Name according to this provision shall accept liability for harm caused by wrongful use of the Registered Name, unless it promptly discloses the identity of the licensee to a party providing the Registered Name Holder reasonable evidence of actionable harm.” (Pernod Ricard v. Tucows.com Co, WIPO Case No. D2008-0789).
In this case the details provided of the identity of the so-called true owner have proved, on the evidence put up by the Complainant, not to be correct, albeit that the company in question appears to have been registered in the British Virgin Islands. In the circumstances the Panel is satisfied that this form of proxy registration constitutes a failure to identify sufficiently any legally responsible party other than the Respondent. The fact that the Complainant has not been able to find such legal entity, website or any published agreement using the name, coupled with the fact that the so-called client of the service allegedly provided by the Respondent and said to be the real party in interest has communicated with either the Complainant or the Center when its so-called agent or proxy, the Respondent, is aware of the proceedings, it would be expected, at very lowest, to invite its client to communicate with either the Complainant or the Center. Moreover, the fact that the Respondent offers to sell the name certainly gives rise to the inference that, even if there was such a real party other than the Respondent, that party must have had notice and then authorised the Respondent to solicit an offer on its behalf. (See e.g. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696). The Panel, however, is not to be taken, in the circumstances, as having made any finding that there is indeed a party who is represented by the Respondent as its proxy or agent in the circumstances.
This being the case, the Respondent as registrant must bear the full force and effect of the Policy by virtue of his having become a holder of a Domain Name Registration (Pernod Richard case supra).
On this issue, therefore, and in the absence of any other evidence to gainsay the WHOIS searches by the Complainant and the Center, and the further evidence put up by the Complainant dealing with its Hong Kong investigations, the Panel is of the view that the Respondent, as registrant of the disputed Domain Name, is properly before it as a party for the purpose of these proceedings. (See e.g. Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699).
The Complainant is a subsidiary of Bidvest Group Ltd, a public company listed on the Johannesburg Stock Exchange in South Africa, and which is a leading international services, trading and distribution company (hereinafter referred to as “the Bidvest Group”). The Complainant conducts business, inter alia, as the holder of intellectual property utilised by the Bidvest Group and is extensively involved in the services, trading and distribution industries in South Africa and world-wide. In this regard it grants licences to the Bidvest Group in respect of the intellectual property which it owns and supervises and controls the use of such intellectual property.
Since its establishment in 1988, the Bidvest Group has grown and increased the diversity of its range of operations, becoming one of the world's largest and most influential group of companies. Financially the achievements of the Bidvest Group are considerable, with a revenue of R110,5 billion (approximately USD15 billion) for the year ended June 2008. In 2008 the Bidvest Group's total assets exceeded R41 billion (approximately USD 5,6 billion) and it employed more than 106 000 employees world-wide.
The Bidvest Group enjoys a wide global presence, spanning four continents, and operating in a variety of fields within the retail, distribution and service industries. It has ten operational divisions, each of which provides a wide diversity of products and services.
The Complainant is the registered owner of Bidvest trademarks in various classes in South Africa, as well as being the proprietor of various registered and pending trademarks in foreign countries spread throughout the globe. In addition, the Complainant's website is located at “www.bidvest.co.za” or “www.bidvest.com.” Included in its portfolio of intellectual property are several domain names incorporating the names “Bidvestholdings”, “Bidvest” and “Bidvestgroup”. The Complainant's Bidvestholdings Domain Names are:
<Bidvestholdings.net>
<Bidvestholdings.org>
<Bidvestholdings.info>
<Bidvestholdings.biz>
<Bidvestholdings.tel>
<Bidvestholdings.asia>
<Bidvestholdings.mobi>
<Bidvestholdings.cn>
<Bidvestholdings.co.nz>
<Bidvestholdings.eu>
As is apparent from the evidence put forward in the Complaint, the Complainant is a well-established and significant organisation with an extensive international presence. Since the Respondent did not submit a formal or detailed Response, little appears on record as to his activities and profile in the market place, save that the Complainant puts forward evidence which he contends demonstrates that he is a trafficker in Domain Names, which latter aspect will be dealt with hereinafter.
The Complainant contends that the evidence relied upon by it proves that it is a well-established and significant organisation with an extensive international presence. Furthermore and due to the varied nature of its vast operations and its substantial and consistent use of its BIDVEST trademarks, the Complainant contends it has developed enormous goodwill and renown in such trademarks in relation to many different spheres of business, with the resulting common law rights arising from its repute and the goodwill derived from its user.
The Complainant contends that the Bidvest trademarks have become well-known at a global level and are distinctive identifiers of it and of the Bidvest Group generally, with the result that a consumer would automatically assume that any product or service of any description which is being sold or offered under the trademark BIDVEST is associated in some way with, endorsed by, or used under licence or authority from, the Complainant.
The Complainant further contends that by adopting the Complainant's BIDVEST trademarks in their entirety the disputed Domain Name clearly increases the likelihood of confusion and that the disputed Domain Name is identical or at least confusingly similar to the Complainant's trademark.
Although the Respondent or the business conducted by him is not known to the Complainant, it contends that he registered and is using the disputed Domain Name to trade off the goodwill and reputation of the Complainant's BIDVEST trademark. Particular reference is made by the Complainant to the fact that the disputed Domain Name points to a site offering products such as cathodes, cement and leather pelts, and on that site it is stated that “Bidvest Holding has very strong established connections world-wide and through its many suppliers is able to offer its clients large quantities at very competitive prices for the following valuable commodities, including but not limited to: . . . We have trade links with the importers, exporters, distributors, traders and wholesalers all around the world and it is most likely that we can supply any product or commodity provided it is a substantial and on-going business.” (See Exhibit “L” to the Complaint).
The Complainant further avers that, upon becoming aware of the disputed Domain Name, it instructed Lexsynergy, a specialist domain name management company in London, to render inactive the site to which the disputed Domain Name pointed. This was done on 19 June 2009, when Lexsynergy notified the host thereof, Web Africa, that the website was “a scam with the intention of attracting Internet users searching for the Complainant's website, possibly to commit some fraud and potentially exposing the Complainant to serious risks. ” Lexsynergy has apparently ensured that the site remains inactive and the current landing page of the site indicates that it is “down for maintenance”. This is apparent from Exhibit “M” to the Complaint.
The Complainant also contends that it has discharged the burden of establishing that the Respondent lacks rights or any legitimate interests in the disputed Domain Name and that the registration was clearly in bad faith. The facts and circumstances, it contends, demonstrate that there is no plausible reason for the Respondent's selection of the disputed Domain Name and that the inference must be that it is a deliberate attempt to profit from confusion with the Complainant's BIDVEST trademarks which would inevitably result. Not only does it contend that there would be notional confusion but it relies on three incidents which have occurred where would be customers made enquiries as to whether the Hong Kong company was a division of the Bidvest Group, one of which emanated from South Africa and another from Saudi Arabia. These three are relied on as evidence of actual confusion in the market place, the third in particular, as appears from Exhibits “P1”, “P2” and “P3” to the Complaint (already referred to above).
In an exchange of e-mails with the Center, the Respondent sought to avoid these proceedings and any other litigation with the consequent costs which may thereby be incurred by offering to sell the disputed Domain Name, which offer has been declined by the Complainant.
There is a dearth of information before the Panel due to the Respondent not having delivered any detailed or formal Response. As already pointed out, the Respondent appears to have raised the fact that he was acting as a mere nominee for the true owner (which has already been dealt with above). His remaining contention is that the Hong Kong company trades in Hong Kong and was registered in the British Virgin Islands and therefore legally has rights in and to the name, without any further elaboration or evidence in support thereof.
Finally the Respondent offered to sell the disputed Domain Name, as indicated earlier, which offer has been declined by the Complainant.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant put up a detailed list of its marks, both registered or pending, in South Africa and other countries, as Exhibits “G” and “H” to the Complaint, and in its letter to the Respondent, Exhibit “N” to the Complaint, it made reference to and attached a similar schedule which set out more detail for the information of the Respondent as to the various classes in which each mark was registered, or the registration was pending. A good many of the marks so identified pre-date the registration of the disputed domain name. The Respondent in no way challenges either their existence or validity, nor the accuracy of their respective descriptions, in the Complainant's Exhibits “G” and “H”, or the schedule to Exhibit “N”. Even if some trademarks were not registered at the time, those rights are still protectable as common law trademark rights (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050). The fact that the wordmark has been incorporated entirely into the disputed Domain Name by the Respondent is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Société des Produits Nestlé SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
Indeed the addition of the word “Holdings” to the word “Bidvest” in the name does not distinguish it from the Complainant's Bidvest trademarks (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367). If anything, the dominant portion of the domain name is “Bidvest”, being the first part of the domain name, and of course being the entire wordmark of many of the registered and pending trademarks of the Complainant, also reinforces the similarity and the fact of confusion (Intuit Inc. v. Nett Corp., WIPO Case No. D2005-1206).
The addition of a specific top-level domain is not an element of distinctiveness but can be taken into consideration when evaluating the identity and similarity of the Complainant's trademark and the disputed Domain Name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2001-0429; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; Intuit, Inc. case (supra). To the extent that the Domain Names relied upon by the Complainant are identical, save for the fact that its ten names are different to the top-level Domain Name “.com”, this does not serve to distinguish the offending Domain Name so as to move any confusion (Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503).
On this basis alone the Panel finds that the Complainant has proved the first element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name or in connection with the bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate and non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed Domain Name, once the Complainant establishes a prima facie case that none of these three circumstances establishing the rights or legitimate interests apply, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements in paragraph 4(a). (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Universal City Studios Inc case, supra). Apart from the fact of the registration of the disputed Domain Name by the Respondent and its assertion that the company alleged to be trading at the abovementioned address in Hong Kong has legal rights to the name, which cannot now be removed or interfered with, nothing further has been put before the Panel, certainly in respect of any one or more of the three elements of the Policy referred to.
Viewing the evidence before the Panel, therefore, there is no suggestion that the Respondent or, for that matter, the Hong Kong company, holds a licence or any other authority from the Complainant, or that either received any permission or consent to use the trademarks either as they stood or in any combination. There is no other evidence of use or demonstrable preparations on the part of either to use the name in connection with a bona fide offering of goods or services. Save for the three instances put forward by the Complainant as proof of actual confusion, thus demonstrating that would-be customers have in fact become aware of the disputed Domain Name and have visited the Respondent's website or been referred to the Hong Kong company, the Panel has nothing else to suggest any legitimate activity on the part of the Respondent or the Hong Kong company.
Neither the Respondent nor the Hong Kong company has sought to rely on any attempt to register a trademark with the name, or that the name is a trade name used by the Respondent or the Hong Kong company as such, and indeed was so prior to the registration of the Domain Name. (Media 24 Ltd case, supra).
In any event, in the view of this Panel, this would not have availed the Respondent or the Hong Kong company whilst the Complainant was the proprietor of registered trademarks in this regard, because neither the Respondent nor the Hong Kong company would have been able to claim ownership of any such mark in the circumstances (Samsung Electronics (Pty) Ltd v. Sean Elseworth, SAIIPL Case No ZA2008-0022).
The Panel is therefore satisfied in the circumstances that the Complainant has established the second element in terms of paragraph 4(a)(ii) of the Policy.
Apart from relying upon the background facts and circumstances already referred to, the Complainant contends that the registration and user is indeed in bad faith by reason of:
(a) in the current circumstances, where the Respondent has registered a Domain Name identical to the Complainant's well-known BIDVEST trademarks;
(b) it is quite possible that web users and potential visitors to the Complainant's website, who come upon the disputed Domain Name and that they may be discouraged from further searching for the Complainant's website;
(c) the Respondent is a professional “domainer” in that he regularly registers domain names and offers them for sale;
(d) the alleged owner of the website, namely the Hong Kong company, cannot be located at the address furnished by the Complainant, nor at the other address in the same premises;
(e) in all the circumstances, the position of the Respondent in this regard may be summarised as:
(i) having acquired the disputed Domain Name primarily to transfer the registration to the Complainant for a valuable consideration;
(ii) to prevent the Complainant from reflecting its trademark, BIDVEST, in the corresponding Domain Name;
(iii) the conduct of the Respondent has had the effect of disrupting the business of the Complainant;
(iv) any use which the Respondent might make of the disputed Domain Name can only be a deliberate attempt to attract, for commercial gain, Internet users to the Respondent's website, which constitutes the likelihood of confusion with the Complainant's BIDVEST trademarks.
All these factors, it is submitted by the Complaint, are sufficient to establish evidence of bad faith on the part of the Respondent.
In the above summary of the Complainant's contentions, it is clear that the Complainant is seeking to bring itself within the provisions of paragraph 4(b) of the Policy which provides:
“Evidence of Registration & Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Addressing the first contention relative to the offer to sell the disputed Domain Name, this came about in response to the Complainant's cease and desist letter, Exhibit “N” to the Complaint, vide Exhibit “O” thereto. It was repeated in the exchange of e-mails which the Center has deemed to constitute the Respondent's response. No details were put forward other than the fact of an offer to sell.
The mere offering of a domain name for sale to any party does not, per se, constitute rights or legitimate interests in that domain name and the offering for sale of a domain name to the trademark holder or its competitor for a price in excess of out-of-pocket costs is certainly considered as one avenue available to a complainant seeking to establish a bad faith registration. If the mere offering for sale was sufficient to constitute a right or legitimate interest, this would mean that the finding of bad faith registration and use as referred to in paragraph 4(b)(i) of the Policy would virtually preclude a finding of lack of right or interest under paragraph 4(a)(ii). (See in this regard Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044).
Although no consideration has been suggested in the offer and therefore the Panel cannot consider the fact of making the offer to be in bad faith in that the price sought exceeds reasonable out-of-pocket expenses of the registration and use of the name, the Complainant also puts forward the proposition, supported by Exhibits “Y1”, Y2” and “Y3” to the Complaint, that the Respondent has engaged in a pattern of registering or dealing in domain names and that it is a fair inference that this has been done in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.
In Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, the following was said:
“Paragraph 4(b)(ii) of the Policy requires a showing that the Respondent has engaged in a ‘pattern' of registering domain names ‘in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name'. UDRP panels have reached differing conclusions on this point with respect to this Respondent and its affiliates. The panel in Mobile Communication Service Inc v. WebReg. RN, WIPO Case No. D2005-1304, for example, concluded that:
‘Where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name's value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.
‘On the record of this case, the Panel believes it a fair inference that Respondent's conduct falls into the latter category. Respondent has been a respondent in a number of UDRP proceedings; in the majority of those cases, the domain names have been transferred. Moreover, the Domain Name in this case, MOBILCOM, is not a dictionary word, and even a cursory search on such engines like Yahoo1 and Google would have shown that MOBILCOM is a trademark. The Panel thus concludes that Respondent has registered this Domain Name to prevent Complainant from reflecting its mark in the corresponding .com Domain Name, and that Respondent is engaged in a pattern of such conduct.'”
When this is coupled with the other evidence that investigations failed to establish that the Hong Kong company alleged to be the real owner was at the address in question or registered in Hong Kong and trading as such, that form of proxy registration amounts to a failure to identify any legally responsible party, other than the registrant himself, which, as a stand alone factor, can give rise to the inference of cybersquatting (Fifth Third Bancorp case supra).
The Panel is therefore of the view that the Respondent's assertion that the offer was being made to avoid resort to lawyers and resulting in his principal incurring costs that it could not afford rings hollow in light of the other circumstances. The Panel is therefore satisfied that this Complaint is well founded and that the offer to sell in these circumstances amounts to registration and use in bad faith.
Obviously the matter does not end here. The fact that the registration of the disputed Domain Name was to block legitimate registrations by the trademark owner, the Complainant, and interfere with its business and cause it loss, merits consideration. In British Telecommunications & Others v. One in a Million Ltd & Others [1998] 4 All E R 476 (CA) Aldous LJ held at 497 a-e:
“It is accepted that the name Marks & Spencer denotes Marks & Spencer plc and nobody else. Thus anybody seeing or hearing the name ealized that what is being referred to is the business of Marks & Spencer plc. It follows that registration by the appellants of a domain name including the name Marks & Spencer makes a false representation that they are associated or connected with Marks & Spencer plc. This can be demonstrated by considering the reaction of a person who taps into his computer the domain name marksandspencer.co.uk and presses a button to execute a ‘whois' search. He will be told that the registrant is One In A Million Ltd. A substantial number of persons will conclude that One In A Million Ltd must be connected or associated with Marks & Spencer plc. That amounts to a false representation which constitutes passing off.
“Mr Wilson submitted that mere registration did not amount to passing off. Further, Marks & Spencer plc had not established any damage or likelihood of damage. I cannot accept those submissions. The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In A Million Ltd and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer plc.”
That passage of the judgment was relied upon and applied by the Panel in Imperial College of Science, Technology and Medicine v. Zahid Khan (for Imperial College Management School Alumni Association - ICMSAA), WIPO Case No. D2000-1079.
In the present case the Respondent's assertion that the Hong Kong company has legal rights is refuted. Firstly, investigations have failed to confirm its presence in Hong Kong and trading, coupled with the evidence of actual confusion, namely Exhibits “R”, “S1”, “S2”, “U” and “V” to the Complaint. Secondly, this must be taken in conjunction with the information posted on the website to which the name pointed enquirers, Exhibit “L” to the Complaint. And the information derived therefrom (which has already been quoted above by the Panel in dealing with the contentions of the Complainant). This, in the view of the Panel, cumulatively suffices to establish that the Complainant has also demonstrated that the registration and use was in bad faith in that the Respondent must have appreciated that some Internet users would, when looking for sites associated with the Complainant, mistakenly come to the Respondent's website. This in turn leads to the conclusion that the Respondent must have intended that this would occur and that he was seeking to profit from the trademark value of the Complainant's trademarks, with the consequent interference with the Complainant's trade and also the disruption thereof. (See Pernod Ricard case supra).
The Panel feels that this inference can properly be drawn in as much as, had the Respondent as registrant of the disputed Domain Name not already known of the international repute of the Complainant, by the exercise of due diligence he would have discovered the Complainant's trademark and rights, and would have realized that the name at issue would then lead to a website at which services directly competitive to those of the Complainant were being offered. (Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921). This also would inevitably have prevented the Complainant from reflecting its trademark in the corresponding disputed Domain Name. What also supports this is the fact that the British Virgin Islands Certificate put up by the Respondent refers to “BidVest Holdings” (my underlining), whereas the quotation, Exhibit “P1” to the Complaint, in its heading refers to “Bidvest Holdings” (my underlining). The alteration to the letter “V” from upper to lower case to make it correspond with the style of the name of the Complainant clearly is significant in this regard.
In all the circumstances, these factors are sufficient to establish the registration and bad faith on the part of the Respondent, with the result that the Complainant also established this element.
For all the aforegoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <bidvestholdings.com> be transferred to the Complainant.
Archibald Findlay, S.C.
Sole Panelist
Dated: February 1, 2010