The Complainant is Imara Trade Marks BVI Limited, Gaborone, Botswana, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Direct Privacy ID 1078D, Domain Name Proxy Service, Inc. of Los Angeles, the United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2012. On November 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2012, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 13, 2012. 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.
The identity of the Respondent specified in the Complaint differed to the current registrant of the Disputed Domain Name as notified by the Registrar, and on December 21, 2012, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant to rectify this error by December 28, 2012. The Panel invited supplemental submissions in response from the Respondent on or before January 4, 2013. The Center received the amended Complaint on December 28, 2012. The Respondent failed to submit further submissions in response before the deadline. 4. Factual Background
The Complainant is an investment banking company based in Botswana. While it primarily operates in Africa, the Complainant has set up offices in the United Kingdom of Great Britain and Northern Ireland. The annual turnover for the Complainant in 2010 and 2011 was US D11.7 million and US D15.5 million respectively. The Complainant is the proprietor of numerous trade marks in Africain corporating IMARA. The Complainant first operated under the name IMARA in 2002 and registered the domain name in 2003.
The Disputed Domain Name has been registered using a privacy service and the Registrar has not revealed the identity of the underlying registrant. The Disputed Domain Name was first registered in June 17, 1998 and historical WhoIs searches reveal that the Disputed Domain Name was registered by the Respondent in October 2012 (although the registrant may have registered the Disputed Domain Name before this using a different privacy service identification number).
Prior to the date of this decision, the Disputed Domain Name resolved to a website displaying numerous links which largely relate to banks and financial services including banks and services in Africa which are in direct competition with the Complainant (the “Website”). As at the date of this decision, the links contained in the Website relate to business and financial services in general. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(i) the Complainant first adopted the IMARA trade mark in 2002 and it has acquired extensive reputation and goodwill in this trade mark;
(ii) the Complainant is the proprietor of a number of trade marks for or incorporating IMARA in several countries, including Angola, Botswana, Kenya, Mauritius and South Africa;
(iii) the Complainant has operated the “www.” website since 2003 which receives on average 5 million visitors per year;
(iv) the Complainant has made extensive use of its IMARA trade mark across the African continent and internationally. It currently operates in South Africa, Botswana, Zimbabwe, Angola, United Kingdom, Mauritius, Namibia, Malawi and Zambia;
(v) the Complainant has made extensive use of its IMARA trade mark in various advertising and social responsibility campaigns;
(vi) the Disputed Domain Name incorporates the IMARA trade mark in its entirety; and
(vii) the addition of the top level domain “.com” does not negate the confusing similarity between the IMARA trade mark and the Disputed Domain Name.
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
(i) the use of the Disputed Domain Name is not bona fide as the Complainant has not authorised the Respondent's use of the IMARA trade mark and the Respondent is not associated with the Complainant;
(ii) while the Disputed Domain Name was registered in June 17, 1998, the Respondent has only been the registrant of the Disputed Domain Name since February 2011. (The Panel notes that according to historical WhoIs records, the Respondent registered the Disputed Domain Name in October 2012. It is possible that the current registrant registered the Disputed Domain Name earlier using a different privacy identification number);
(iii) the Complainant is not aware of the Respondent having used the IMARA trade mark in the course of trade as a source identifier; and
(iv) the Respondent does not have rights or legitimate interests in the IMARA trade mark as it is using the Website to host sponsored pay per click (“PPC”) links to third party websites offering services in direct competition to the Complainant (through which the Respondent presumably receives some form of compensation).
(c) The Disputed Domain Name was registered and is being used in bad faith:
(i) the Respondent was undoubtedly aware of the existence of the Complainant’s IMARA trade mark when it registered the Disputed Domain Name;
(ii) the word “imara” is not in common use as a trade or service mark in relation to banking or finance services;
(iii) the word “imara” means “strong” in Swahili and would be considered an invented word without any particular meaning by the majority of members of the public outside of eastern Africa;
(iv) the Respondent has intentionally attempted to attract Internet users to the Website for commercial gain by creating a likelihood of confusion with the Complainant's IMARA trade mark;
(v) the Respondent has registered the Disputed Domain Name for the purposes of selling it for an amount in excess of its out of pocket expenses. The Complainant enquired about the sale of the Disputed Domain Name and received a response indicating that only offers of US D2,000 or higher would be considered; and
(vi) The use of a privacy service in conjunction with the intention to sell the Disputed Domain Name for an exorbitant price and the placement of PPC links on the Website suggests bad faith on the part of the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii) the 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the IMARA trade mark on the basis of trade mark no. BW/M/2002/00684 registered in Botswana in 2002, as well as its various other registrations for or incorporating IMARA throughout Africa. The Panel notes that the Complainant has also used the term "imara" in connection with its business since 2002.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should typically be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Disputed Domain Name is identical to the IMARA trade mark. The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the IMARA trade mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1 of the WIPO Overview 2.0 states the consensus view among UDRP panels that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of production to demonstrate it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its IMARA trade mark. Further, the Complainant submits that the Respondent is not commonly known by the “Imara” name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of demonstrating that it does possess such rights or legitimate interests. As no response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant's evidence.
The Panel accepts that the Complainant has not licensed or otherwise authorised the Respondent to use the IMARA trade mark. The Panel also notes that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name and finds that the use of the Website as a “link farm” to host numerous sponsored links (for which the Respondent presumably receives revenue, on PPC or other basis) precludes any argument that the Disputed Domain Name is being used for noncommercial purposes. As such, the Respondent (at least if it wishes to bring itself within the express circumstances described in paragraph 4(c)(i) of the Policy) needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Panel notes that the use of websites to host various sponsored links can, in certain circumstances, constitute a bona fide offering of services capable of giving rise to rights or legitimate interests for the purposes of the Policy, provided that the disputed domain names are used in a descriptive (and not trade mark) sense, to describe the sponsored links hosted (see National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424 and paragraph 2.6 of the WIPO Overview 2.0), but finds that in the circumstances of the present case, no such rights or legitimate interests arise. While the Complainant's IMARA trade mark is a generic word in Swahili meaning “strength”, the PPC links previously contained on the Website were not logically associated with this generic meaning. Rather, the Panel finds that the PPC links hosted on the Website had been targeted by the Respondent to show services (many of which were offered by other banks in Africa) in direct competition with the Complainant. The Panel is of the view that there can be no possible explanation for links being generated for such financial services in Africa other than to specifically target the Complainant’s business. Evidence of deliberate and specific targeting by the Respondent can be seen in one particular link which directly refers to the Complainant, namely “Imara Business Loan in Botswana”, a reference to the Complainant’s IMARA trade mark, the services that it offers as well as the location of its main office.
Accordingly, the Panel finds that there is insufficient evidence that the Respondent can assert rights or legitimate interests in the Disputed Domain Name and therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Evidence of bad faith includes actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA94313). While the Complainant has failed to provide sufficient evidence to show that its IMARA trade mark was well known, the Panel accepts that the Respondent knew of the Complainant's IMARA trade mark based on the following:
(i) the Respondent registered the Disputed Domain Name in 2012, almost a decade after the Complainant had first registered the IMARA trade mark in Botswana; and
(ii) as discussed above, the PPC links contained in the Website were previously specifically targeted to offer services in direct competition with the Complainant and there is no plausible reason for linking the term "IMARA" with financial services in Africa except to draw on the goodwill of the Complainant's trade mark. This is sufficient for the Panel to conclude that at the time of registration of the Disputed Domain Name, the Respondent was aware of the Complainant and its IMARA trade mark (see Johnson & Johnson v. Ryan Rupke,WIPO Case No. D2011-1196, Altenloh, Brinck & Co. GmbH & Co. KG v. Steve Cree,WIPO Case No. D2005-0046, and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba,WIPO Case No. D2004-0941).
The Panel notes that the Website contains a link displayed in large font soliciting enquiries into the sale of the Disputed Domain Name. The Complainant's representatives enquired about the sale of the Disputed Domain Name through the above mentioned link and an automated response was received indicating that only offers above US D2, 000 would be considered. Based on the information above, the Panel finds that the Respondent was aware of the Complainant and its trade mark and registered the Disputed Domain Name for the purposes of making undue profits by selling the Disputed Domain Name to the Complainant or one of its competitors for a price in excess of the Respondent's out of pocket expenses, while in the meantime generating revenue in connection with PPC links (as discussed below). It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain names can be compelling evidence of bad faith registration and use (see The Board of Regents of the University of Nebraska v. Bill Saedlo,WIPO Case No. D2000-0154; and Adamovske Strojirny v. Tatu Rautiainen,WIPO Case No. D2000-1394).
The Disputed Domain Name previously resolved to a website which contained sponsored links to the Complainant's competitors, which is clear evidence of bath faith use (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753; S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394; and Volvo Trademark Holding AB v. Unasi Inc.,WIPO Case No. D2005-0556).
The Panel notes that the Respondent registered the Disputed Domain Name using a privacy service. While there are legitimate purposes for using a privacy service and such use is not, of itself, indicative of bad faith, the use of a privacy service to shield the Respondent's identity can further support an inference of bad faith where there is evidence of other improper behaviour on the part of the Repsondent (see Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC,WIPO Case No. D2008-1300 and Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696).
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name. 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, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: January 11, 2013
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