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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bestway Holdings Ltd v. Bkarato, AK Bkarato

Case No. D2012-2485

1. The Parties

Complainant is Bestway Holdings Ltd of London, United Kingdom of Great Britain and Northern Ireland, represented by Graham Ringrose, United Kingdom of Great Britain and Northern Ireland.

Respondent is Bkarato, AK Bkarato of Central, Singapore.

2. The Domain Name and Registrar

The disputed domain name <bestwaygroup.com> is registered with United Domain Registry, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 18, 2012. On December 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2013.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on January 22, 2013. 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.

4. Factual Background

Complainant Bestway Holdings Ltd has several trademark registrations across twelve classes and various countries for the BESTWAY mark. These registrations date back to 1992. Complainant also has registered at least 24 domain names incorporating the BESTWAY mark, including <bestwaygroup.co.uk>. Respondent registered the disputed domain name on September 27, 2012. Respondent has participated in at least three other UDRP proceedings as a respondent (the disputed domain name was transferred to the complainant in each case). Respondent’s e-mail address is associated with over 1,000 domain registrations.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is the United Kingdom’s (“UK”) second largest cash and carry operator, the second largest cement producer in Pakistan, and a joint owner of Pakistan’s third largest bank. Complainant asserts that the disputed domain name is identical to a trademark or service mark in which Complainant has rights. Complainant asserts that Complainant was the registrant of the disputed domain name until September 2012, when Complainant’s agent allegedly failed to renew the registration. Complainant asserts its belief that there is no evidence supporting any rights or legitimate interests on the part of Respondent under paragraph 4(c) of the Policy. Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name shortly after Complainant’s registration lapsed, because Respondent has no commercial interest in Complainant’s trademark, and because Respondent has been the Respondent in at least two previous UDRP proceedings in which the Complainants prevailed and in which it was found that Respondent sought compensation in excess of Respondent’s out-of-pocket expenses. Complainant asserts that this demonstrates a pattern of conduct in which Respondent intends to prevent trademark owners from reflecting their marks in a corresponding domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s trademark registrations demonstrate that Complainant has rights in the BESTWAY mark. Complainant also attached a website printout to the Complaint depicting the website “www.bestwaygroup.co.uk”, which is an active website that has been registered to Complainant since June 10, 2005.

The disputed domain name consists of the BESTWAY mark with the generic word “group” appended to the end, followed by the “.com” gTLD. The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (“Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”); Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Indeed, in a previous UDRP decision involving an entity that appears to be an alter ego of the Respondent in this dispute, it was held that the addition of the generic word “group” to a trademark was “insufficient to distinguish Respondent’s domain name from Complainant’s mark.” WRc plc v. W&R Corp., WIPO Case No. D2007-1284. Nor does the addition of the “.com” gTLD detract from confusing similarity. Id. (“The addition of the generic top-level domain ’com’ is insufficient to distinguish the domain name from Complainant’s mark.”); Amedia Limited v. Bkarato, WIPO Case No. D2008-0567 (“The addition of the gTLD in the domain name can be disregarded for these purposes”); Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003. As was held in a previous UDRP decision involving Respondent, “[t]he addition of a gTLD and a generic term[] that has an obvious relation to Complainant’s business is insufficient to overcome the confusing similarity that results from using Complainant’s [] mark in the circumstances here presented.” STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO, NAF Claim No. FA1254574.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [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.”

Policy, paragraph 4(c).

There is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. Respondent registered the disputed domain name shortly after Complainant failed to renew it. Respondent’s history of registering third-party domains and seeking compensation in excess of out-of-pocket costs, as detailed below, suggest that Respondent is not pursuing its own rights or legitimate interests. Cf.STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO,supra.; Amedia Limited v. Bkarato,supra.; and WRc plc v. W&R Corp.,supra.. Respondent has not disputed these allegations.

Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [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; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The evidence indicates that Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and that Respondent has engaged in a pattern of such conduct. As noted above, Respondent has been involved in at least three other UDRP proceedings in which Respondent was found to have registered domain names identical or confusingly similar to the trademark of another, with no rights or legitimate interests, in bad faith. STMicroelectronics, Inc. v. BKARATO a/k/a AK BKARATO, supra.; Amedia Limited v. Bkarato,supra; and WRc plc v. W&R Corp.,supra. Moreover, as noted in some of those decisions, Respondent’s e-mail address which is publicly available in the WHOIS record for the disputed domain name –[REDACTED]@nifty.com – is the listed registrant e-mail address for thousands of domain names using many different registrant names. A number of those domain names include well-known trademarks followed by the word “group” or other generic words, in the “.com” gTLD. See, e.g., publicly-available WhoIs records for <theyankeegroup.com>, <oracleservices.com>, <oracletech.com>, <gesolutions.com>, and <getechnologies.com>. This is evidence of bad faith under paragraph 4(b)(ii) of the Policy. Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798 (“Respondent appears to have registered the following domain names: <appl-e.com>, <aple.com>, <newyorktime.us>, <wwwworldcupsoccer.com> and <omega-watches.com>). Moreover, previous panels found at least two other domain names registered by Respondent to be identical or confusingly similar to another entity's trademark: Nike, Inc. v. Online Marketing Realty c/o Young Jin, NAF Claim No. 0713839 (transfer of <nikestore.com>) and Movado LLC v. Online Marketing Realty, WIPO Case No. D2008-0757 (transfer of <movadowatch.com> and <movadowatches.com>). This pattern of conduct clearly demonstrates bad faith on the part of Respondent.”).

The fact that the disputed domain name does not resolve to an active website is not a barrier to a finding of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration”). Indeed, paragraph 4(b) of the Policy explicitly states that registration of a domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, when combined with a pattern of such conduct, “shall be evidence of the registration and use of a domain name in bad faith”. Moreover, a number of the circumstances in which other panels have found bad faith registration and use with passive holding of a domain name are present in this case, such as no evidence of actual or contemplated good faith use, efforts by the Respondent to conceal its identity, use of contact details that appear to be false, Telstra, supra, and “passive holding … combined with the multiple registration of domain names based on third parties’ marks.” Truworths Limited, Truworths Intellectual Property Limited and WSM Operations v. AVA Associates, WIPO Case No. D2001-0818.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <bestwaygroup.com>, be transferred to the Complainant.

Bradley A. Slutsky
Sole Panelist
Date: February 6, 2013

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