WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Argus Media Limited v. Phosol Limited

Case No. D2020-3412

1. The Parties

1.1 The Complainant is Argus Media Limited, United Kingdom (“United Kingdom” or “UK”), represented by Demys Limited, United Kingdom.

1.2 The Respondent is Phosol Limited, United Kingdom, acting in person by its director Dr. Mounir Halim.

2. The Domain Names and Registrar

2.1 The disputed domain names <argusafricafertilizer.com>, <arguscoalmarkets.com>, and <argusoilmarkets.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 16, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Names.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Response was filed with the Center on January 9, 2021.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on January 18, 2021. 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

4.1 The Complainant is a company incorporated in England and Wales. The Complainant is an independent media organization with more than 1,000 staff. It is headquartered in London, United Kingdom, and has 25 offices in the world’s principal commodity trading and production centres. It produces price assessments and analysis of international energy and other commodity markets and offers bespoke consulting services and conferences. Although incorporated in June 1982, the business that the Complainant operates was founded in 1970.

4.2 The Complainant operates a website promoting its activities and business from the domain name <angusmedia.com>. It also owns various trade marks that comprise or incorporate the term “Argus”. These include United Kingdom registered trade mark no 2502908, for ARGUS as a word mark with a filing date of November 21, 2008, and proceeding to registration in classes 9, 16, 35, 36, 38, 41, and 42.

4.3 The Respondent is a company incorporated in England and Wales on April 8, 2013. At the time of its incorporation, Dr. Mounir Halim was the Respondent’s sole director and shareholder. However, on November 2, 2020, papers were filed at UK Companies House asserting that Dr. Halim ceased to be a person with significant control over the company.

4.4 Dr. Halim was previously employed by the Complainant as a business development manager. His responsibilities included marketing the Complainant’s fertiliser price reporting products in Africa. The Respondent resigned from the Complainant’s business and his last date of employment was August 31, 2018. The Complaint and the Respondent were subsequently engaged in litigation, but this was concluded in January 2019 and was unrelated to the Domain Names.

4.5 The Domain Names were all registered on March 26, 2020. Since registration the Domain Names have all displayed pay-per-click pages, with links in the cases of <arguscoalmarkets.com> and <argusoilmarkets.com> in part related to energy, and in the case of <argusafricafertilizer.com> in part related to food and farming. As at the date of this decision these pay-per-click links no longer appear and instead display a page which contains the text “Ads are blocked”.

5. Parties’ Contentions

A. Complainant

5.1 In its Complaint, the Complainant refers to it business and marks. So far as the business is concerned, it provides evidence that its energy and other commodity markets related services extend to information regarding fertilisers (including for example provision of a “Africa Fertilizer Map”) as well as oil market and coal market services. The Complainant also describes Dr. Halim’s previous employment by the Complaint and the use made of the Domain Names since registration. It contends that the Respondent and Dr. Halim can for the purposes of these proceedings be treated as the same entity.

5.2 The Complainant contends that the Domain Names are confusingly similar to the Complainant’s registered marks in that they both include the terms “Angus”, in combination with the descriptive phrases “africa fertilizer", "coal markets", and "oil markets”.

5.3 The Complainant also asserts that there is no evidence of the Respondent having a right or legitimate interest in any of the Domain Names and that there is no conceivable use to which the Domain Names could be put now, or in the future, that would confer any legitimate interest upon the Respondent. It also relies upon section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in support of a contention that the pay-per-click use made of each of the Domain Names does not provide a right or legitimate interest and claims that the Respondent is also responsible for those links, even if they were automatically generated by some third party.

5.4 The Complainant also claims that given, inter alia, Dr. Halim’s previous connection with the Complainant it is “inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the Domain Names”. It further maintains that this fact, the nature of the Domain Names and the use made of the Domain Names since registration demonstrate bad faith registration and use falling within the scope of paragraphs 4(b)(ii), (iii) and (iv) of the Policy

B. Respondent

5.5 The “Response” is deficient in that it fails to include a statement of truth as required by paragraph 5(c)(viii) of the Rules, or the declaration required by the Supplemental Rules, paragraph 15. These are not merely technical or trivial failures. They would entitle the Panel to disregard the contents of the Response in its entirety, or at the very least to approach any assertion of fact set out in that document with a high degree of scepticism and caution (see, for example, Audiotech Systems Ltd. v. Videotech Systems Ltd. WIPO Case No. D2008-0431).

5.6 Nevertheless, the Panel has considered and notes the following contentions of the Respondent:

(i) Although, the Complainant operates a website using the domain name <argusmedia.com>, the Complainant does not own the domain name <argus.com>, which is used for a website operated by a separate business. The Respondent further contends that other third parties are the owners of trade mark rights in the term “Argus”. Reference is made in particular to various UK registered marks for “Argus” including, inter alia, in respect of security related equipment in class 9.

(ii) Although the Complainant owns various trade marks that incorporate the term Angus and/or are energy or fertiliser related, the Complainant does not own any trade mark for the precise terms used in the Domain Names. This is said to demonstrate, inter alia, that the “[C]omplainant does see the argus oil markets, argus coal markets and argus Africa fertilizer as trademarks worthy”. The Panel suspects that this sentence is missing a crucial “not” and should in fact read: “The [C]omplainant does not see the argus oil markets, argus coal markets and argus Africa fertilizer as trade marks worthy”.

(iii) The pay-per-click pages displayed form the Domain Names were not generated by the Respondent.

(iv) The terms “Argus Oil Markets”, “Argus Coal Markets”, and “Argus Africa Fertilizer” are each “available and allowed to be formed [as the names for companies] in the United Kingdom”. The Respondent’s contention in this respect is supported with printouts from UK Companies House and a third party company formation agent.

(v) Following the litigation between the Respondent and the Complainant, Dr. Halim was free to set up a competing business to that of the Complainant. In this respect, the Response goes on to contend as follows:

“Dr. Mounir Halim is planning to join a business on coal and oil and is currently supporting the recruiting of an oil and coal analyst for this new business. The business is intended to split over different companies. For example, Argus Oil Markets is a company currently being formed in the United Kingdom. I refer to [an Exhibit to the Response] where we show that the company names: Argus Oil Markets, Argus Coal Markets and Argus Africa Fertilizer are available and allowed to be formed in the United Kingdom further eliminating any conflict and bolstering the interest of purchasing the Domain Names.”

6. Discussion and Findings

6.1 It is for the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and

(iii) the Domain Names have been registered and is being used in bad faith (paragraph 4(a)(iii)).

A. Identical or Confusingly Similar

6.2 The Complainant has demonstrated that it is the owner of registered trade mark rights for ARGUS. There is no suggestion (notwithstanding the classical allusions inherent in the term “Argus” referred to later on in this decision) that this mark is somehow generic or descriptive, or for some reason invalid. This mark is also recognisable in each of the Domain Names. Indeed, the only sensible reading of each of these Domain Names is as the term “Argus” in combination with the words “Africa fertilizer", "coal markets", or "oil markets” and the “.com” generic top level domain (“gTLD”).

6.3 In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name”; as to which see section 1.7 of the WIPO Overview 3.0.

6.4 The Complainant has, therefore, satisfied the Panel that each of the Domain Names are confusingly similar to the Complainant’s registered trade marks and has thereby made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registered in Bad Faith

6.5 As is addressed in greater detail in this decision in connection with the question of bad faith, the Panel is prepared to take at face value the Respondent’s contentions that the Domain Names were registered with the intent to use them for businesses to be set up with corresponding names. However, the Panel has concluded that the choice of such names for such businesses was because of their association with, and to take advantage of, the reputation of the Complaint business and marks.

6.6 There is no evidence before the Panel that the Respondent has actually used or made preparations to use the Domain Names for such a purpose as contemplated by paragraph 4(c)(i) of the Policy. However, even had such preparations could have been demonstrated, this would not assist the Respondent since the adoption of a name and such use which took advantage of the marks of the Complaint would not involve a bona fide offering of goods or services (see for example, Financial Industry Regulatory Authority, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Edward Banis, WIPO Case No. D2016-0434). Further, if a domain name is being held for such a purpose this is positive evidence that the respondent has no right or legitimate interest for the purposes of the Policy (see for example Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A. WIPO Case No. D2010-2111). The Respondent has also not advanced any other basis for claiming a right or legitimate interest in this case and it is inherently implausible that any such right or legitimate interest could be claimed.

6.7 The Panel is therefore satisfied that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

6.8 There appears to be no dispute that at least at all relevant times, the Respondent was controlled by Dr. Halim. The Panel accepts that at least so far as the registration as the Domain Names are concerned that the Respondent acted as Dr. Halim corporate alter ego and that the company and Dr. Halim can be treated as one and the same for the purposes of these proceedings.

6.9 It is clear that by reason of Dr. Halim’s previous employment by the Complainant, the Respondent was fully aware of the Complainant’s business and marks at the time that the Domain Names were registered. Further, the Panel accepts that the use of the term “Argus” in combination with the phrases “Africa fertilizer", "coal markets", or "oil markets” can only be sensibly understood as references to the Complainant’s business activities.

6.10 The Respondent refers to other entities that use the term “Argus”. Further, although neither party make submissions in this respect, the Panel is aware of the all-seeing many eyed giant of that name in ancient Greek mythology, and that a number of newspapers and other businesses have adopted Argus as part of that name by way of allusion to that creature’s watchfulness. However, the Panel accepts the Complainant’s evidence to the effect that it uses this term in connection to the provision of information as to fertilisers in Africa and the coal and oil markets and there is no evidence before the Panel that any other business does the same.

6.11 It follows that the only credible explanation of the registrations in this case are as involving a deliberately reference to the Complainant’s business and marks.

6.12 The Panel is prepared to accept at face value the Respondent’s contentions that it has registered and held the Domain Names with the intention of their being used by Dr. Halim in connection with businesses that he intends to set up in the United Kingdom with the corporate names “Argus Africa Fertilizer Limited” and/or “Argus Coal Markets Limited” and/or “Argus Oil Markets Limited”. However, this does not assist the Respondent. If these claims are true, it follows that names with their deliberate reference to and association with the Complaint, can only have been chosen so as to take advantage for the reputation of the Complainant’s mark for the benefit of those businesses. Any such use would fall within the example of circumstances indicating bad faith falling within the scope of paragraph 4(b)(iv) of the Policy. The fact that this has not actually occurred yet does not matter. The registration and holding of the Domain Names for such an intended purpose constitutes registration and use in bad faith and.

6.13 The Respondent is also misguided if it believes that the fact that the Complainant does not have trade marks that are identical to the Domains Names (with or without the “.com” gTLD) or that it would be possible to register a company with that name at Companies House or that, changes the analysis. It is not necessary for a domain name to be identical to a trade mark for the registration and use of that domain name to be in bad faith. Further, the fact that some other businesses may have independently adopted the term Argus in respect of their business (perhaps because of its classical associations) also makes no difference. The Respondent does not contend that this is why the Domain Names were chosen in this case and, given the content of the Domain Names and Dr. Halim past employment by the Complainant, any such assertion would be inherently implausible.

6.14 The Panel would add that even if the Respondent’s assertions as to the intended use of the Domain Names in respect of businesses with that name are untrue, it is unlikely to make any difference. The nature of the Domain Names and Dr. Halim past employment by the Complainant is sufficient to satisfy the Panel that whatever the actual purpose of those registrations, the Respondent’s intent is and was to take unfair advantage of the Domain Names association with the Complainant’s business and marks. This alone is sufficient for a finding of bad faith registration and use (see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230).

6.15 In the circumstances, the Complainant has demonstrated to the satisfaction of the Panel that the Domain Names have been registered and used in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <argusafricafertilizer.com>, <arguscoalmarkets.com> and <argusoilmarkets.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: January 19, 2021