WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION PICK ‘N PAY Retailers (Proprietary) Limited v. Menno H and Partyvrienden Case No. D2008-1985 1. The Parties
The Complainant is PICK ‘N PAY Retailers (Proprietary) Limited of Cape Town, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondents are Menno H of Utrecht and Partyvrienden of Bilthoven, the Netherlands. 2. The Domain Names and Registrars
The disputed domain names , are registered with eNom, Inc. and the disputed domain names and are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2008. On December 24, 2008, the Center transmitted by email to each eNom, Inc. and Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On December 24, 2008, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. On December 29, 2008, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on January 6, 2009, providing the registrant and contact information disclosed by eNom, Inc, and inviting the Complainant to submit an Amendment to the Complaint. The Complainant filed an Amended Complaint on January 8, 2009.1
The Center verified that the Amended Complaint2 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 January 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2009. Respondent did not submit any formal response but prior to this date did submit four email messages to the Center. On December 27, 2008, apparently in response to his receipt of the Complaint, Respondent stated:
“Dear,
First of all the screenshots u made are not our store(s) becouse our server was hacked and now try to reinstall the whole shop (www.)
Second you send me a whole book of papers.. 90% i don't understand.. you are a international company then reply to me in DUTCH my englisch is basic.
Third, when there is a problem u can send me a email or call me and explain me simply what the problem is! becouse i don't see any problem!
Hearing from you soon,
Greetings,”
The Center replied to this email on January 7, 2009, acknowledging receipt and advising Respondent that paragraph 11 of the Rules provided that in the absence of agreement between the parties or contrary specification in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, which in this case was English.
On January 22, 2009, one day after of the Center's formal notification of proceedings, Respondent stated:
“Dear,
By this mail i resend the information that all domains are mine (Menno Hubregtse) I also want to answer/reply on this objection and going to protest.”
The Center acknowledged receipt of this email on the same day.
The Center notified the Respondent's default on February 11, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 23, 2009. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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
Each of the following facts is supported by Complainant's evidence.
Complainant is a large retail supplier of food, clothing, and general merchandise. Based in South Africa, Complainant has operated under the name PICK ‘N PAY since 1967 and today has annual sales in excess of SAR 45 billion. Complainant owns more than 200 registered trademarks for PICK ‘N PAY in South Africa and other African countries. Complainant has done a substantial online business at since 1997 and on since 2007.
Respondent is an individual residing in the Netherlands. He registered the disputed domain names on various dates in 2008. Prior to commencement of this proceeding, each of the disputed domain names diverted Internet users to one of the disputed domain names, . When the Panel sought to access the disputed domain names each attempt resulted in “This page cannot be displayed” however at one time the content of one of the disputed domain names, , included an exact copy of Complainant's trademark (including images and color) and several other elements similar to those maintained by Complainant on its own web pages.3 5. Parties' Contentions A. Complainant
Complainant contends as follows:
Complainant has rights in its PICK ‘N PAY marks by reason of their registration and Complainant's continuous use of them for sales of goods. All the disputed domain names are confusingly similar to Complainant's mark because the phrase Picknpay is their dominant feature. Adding a descriptive term such as “China” or “Business” does not obviate confusion under paragraph 4(a)(i) of the Policy.
Complainant has never authorized Respondent to use its name or marks. Respondent's prior use of the disputed domain names was commercial and competitive with Complainant, a clear attempt at making use of the goodwill attached to Complainant's marks for commercial purposes. The only indication that Respondent has been known by the phrase PICK ‘N PAY is a November 2008 registration of a company named PICK ‘N PAY Ltd. Complainant learned of this company from content on Respondent's website. The timing of this registration indicates that it was a further attempt to take advantage of the reputation and goodwill of Complainant's mark, and clearly a pretext. This identification, which postdates Complainant's trademark rights, does not establish that Respondent has been commonly known by the disputed domain names for purposes of paragraph 4(c)(ii) of the Policy.
Respondent's copying of Complainant's mark and the look and feel of Complainant's websites reveals that Respondent knew of Complainant and its mark when it registered the disputed domain names in 2008. Respondent's use of the disputed domain names was commercial, competitive with Complainant, and a blatant attempt to attract consumers for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. B. Respondent
Respondent did not reply to Complainant's contentions.4 6. Discussion and Findings A. Effect of Respondent's Default
Failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter or result in the Policy equivalent of a default judgment. WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 4.6, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. Even in a default case “The Policy requires the Complainant to prove each of the three [Policy] elements.” Western Research 3000, Inc. v. NEP Products, Inc.,WIPO Case No. D2004-0755 (emphasis in original). B. Language of the Proceedings
Though not required to do so the Panel will take into account the contents of Respondent's two email messages to the Center.5 The first of these raises the issue of the appropriate language of the proceedings. As the Center advised Respondent, the Rules expressly address this issue by providing (paragraph 11(a)): “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Panel sees no reason not to follow this Rule's default procedure. There are registrars that require or permit registration in Dutch, yet Respondent selected two registrars whose agreements are in English. All four of the disputed domain names, moreover, use English words. The Center's first communication to Respondent was made at the beginning of the twenty-day period allowed for a Response. That gave Respondent ample time to seek assistance with a language with which he said he was unfamiliar. C. The Center's Response to Respondent's Communications
Respondent may also be said in his first email to have objected to the fairness of these proceedings, or to have asked the Center for advice in the procedures under the Policy and the Rules. The Panel may swiftly dispense with the first of these issues, as the Policy and its attendant Rules and procedures are matters Respondent expressly agreed to when it registered the disputed domain names. The Policy has been in force almost a decade, and inclusion of an agreement to submit to Policy proceedings in registration agreements is well-known among those who register swaths of domain names. Respondent has registered at least four of these, with two different registrars, not for personal use but as part of his business. He will not be heard to complain of the Panel's enforcing a clear Policy provision.
This Panel is aware that the Center's personnel replies to reasonable inquiries about “the procedural aspects of the Policy and Rules and Supplemental Rules”. See WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), paragraph H. As is obvious from its website, the Center invests a substantial amount in making available information and resources for the benefit of complainants and respondents alike, considering this a service that is part of its function as a provider. The Center's actions in this proceeding are consistent with this approach. Respondent is entitled to no more than that. The Center should not (as it did not) advise Respondent on the merits of a case in which Respondent is a party, and Respondent is responsible for reviewing and understanding the Policy, Rules, and Supplemental Rules. D. Identical or Confusingly Similar
Complainant has shown rights in its PICK ‘N PAY marks by reason of its numerous registered trademarks for that phrase. The dominant feature of each of the disputed domain names is Picknpay, which differs only in a lack of spaces between words and deletion of the apostrophe. Confusing similarity is obvious. Complainant has established both elements of paragraph 4(a)(i). E. Rights or Legitimate Interests
The only issue here is whether Respondent's registration of a business named PICK ‘N PAY Ltd. entitles him to claim refuge under paragraph 4(c)(ii) of the Policy. This clause provides a defense to a respondent who “(as an individual, business, or other organization) [has] been commonly known by the domain name, even if [he has] acquired no trademark or service mark rights”. As with any other Policy element this must be proven with credible evidence, and as an affirmative defense (to borrow a phrase from United States civil procedure) Respondent bears the burden of proving it. See WIPO Overview, paragraph 2.1.
Mere registration of a company name does not show that Respondent has been “commonly known” by that name. In many jurisdictions, including it appears the United Kingdom, an individual may register a company name simply by making a filing with the appropriate governmental authority; no showing of entitlement, use for actual business, or other justification is required. More than this is needed for a paragraph 4(c)(ii) defense, and the record contains nothing more. As noted by Complainant, the date of Respondent's registration of this business name is suspiciously close to commencement of this dispute, and in any event the registration standing alone yields no proof of common recognition of Respondent by that name.
On this record the Panel finds that Respondent lacks rights or a legitimate interest in the disputed domain names. F. Registered and Used in Bad Faith
Complainant has demonstrated recognition of its marks only in various countries in Africa; Respondent is based in Europe and its one operating website includes the word China. The content of Respondent's website indicates beyond doubt his awareness of Complainant and its marks. Imitation is not only the sincerest form of flattery, here Respondent's copying from Complainant's websites, including the name, color, and style of the PICK ‘N PAY mark, demonstrates full awareness of Complainant, Complainant's marks, and the goods and services sold by Complainant. It further illustrates that Respondent targeted Complainant when it registered and used Complainant's mark in his domain names. Complainant has in the circumstances established that Respondent registered and used the disputed domain names in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , and be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: February 27, 2009
1 The registration information for the disputed domain names indicates that different persons or entities own some of them. Complainant argues that all are owned by the same person, and Respondent's second email (quoted in the text below) confirms that this is in fact the case. There is no need for the Panel to proceed with an analysis of this issue, given Respondent's admission.
2 All references to the Complaint in this Decision are to the Amended Complaint.
3 Copies of these pages are included as Exhibit 17 to the Complaint.
4 Given Respondent's two email communications to the Center there is no question that he was duly and timely notified of this proceeding.
5 The Panel does so to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Rules, paragraph 10(b).
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