The Complainant is World Outdoor Fitness SA of Roodeport, South Africa, represented by Matkowsky Law, United States of America ("US").
The Respondent is Benjamin Shavit, World Outdoor Fitness Ltd. of Bazra, Israel. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The same day, 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" 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 March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. On March 18, 2015, the Complainant submitted an unsolicited supplementary filing. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 26, 2015.
The Center appointed John Swinson as the sole panelist in this matter on April 1, 2015. 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
The Complainant is World Outdoor Fitness SA, a South African company that provides outdoor fitness equipment.
The Complainant submits that it is has common law trade mark rights in WOF (the "WOF Mark"). It also holds a Provisional Registration Certificate (Registration No. 0971501) for WOF (in the Benelux Office for Intellectual Property). This certificate was issued on March 11, 2015.
The Respondent is Benjamin Shavit of Bazra, Israel. The registrant organisation is World Outdoor Fitness Ltd located in Israel. The Respondent and the owner of the Complainant are siblings. As the Respondent did not file a Response, little additional information is known about the Respondent.
The Respondent registered the Disputed Domain Name on January 14, 2015. The website at the Disputed Domain Name is currently inactive. In the past, the website at the Disputed Domain Name has closely resembled the Complainant's main website (at ""). 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows. Identical or Confusingly Similar
The Complainant has common law trade mark rights in the WOF Mark. The Disputed Domain Name incorporates the entirety of the WOF Mark. The addition of a hyphen and the generic word "global" is insufficient to negate a finding of confusing similarity. Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use the WOF Mark. The website at the Disputed Domain Name has been used to fraudulently represent that the Complainant has an Israeli branch. In the past, the website at the Disputed Domain Name closely copied the content of the Complainant's main website (at ""). The Respondent did this to disrupt the Complainant's business and to confuse Internet users. Registered and Used in Bad Faith
The Respondent sought to capitalize on the WOF Mark and the Complainant's domain name () when he registered the Disputed Domain Name. The Respondent has fraudulently represented that he is the CEO of the Complainant, and that the Complainant has an Israeli branch. Further, "World Outdoor Fitness Ltd." is a false organisation. It has not been registered in Israel. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues Supplementary submission
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the Panel is to conduct proceedings "with due expedition" and gives the Panel the power to "determine the admissibility, relevance, materiality and weight of the evidence." Generally, panels will only accept supplementary filings in "exceptional" circumstances.
The Complainant provided a supplementary submission on March 18, 2015, relating to a provisional trade mark registration. As the provisional trade mark was issued on March 11, 2015, this information was not available at the time the Complaint was filed (on March 5, 2015). Accordingly, the Panel accepts this supplementary submission as part of the record in this proceeding. No Response
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g.Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant submits that it has been using the WOF Mark since 2011 and has common law trade mark rights in the WOF Mark. In order to successfully assert common law or unregistered trade mark rights the Complainant must show that the WOF Mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e. that the WOF Mark has acquired a "secondary meaning").
The Complainant has provided comprehensive evidence to support its claim of common law trade mark rights in the WOF Mark, including evidence of use and recognition by customers. The Panel is satisfied that that the Complainant has acquired the requisite common law or unregistered trade mark rights for the purpose of the Policy.
As of March 11, 2015, the Complainant also holds a provisional trade mark registration for WOF in the Benelux Office for Intellectual Property.
For the purposes of testing confusing similarity, it is well established that the generic Top-Level Domain, ".com", can be ignored (see, e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
The Disputed Domain Name is confusingly similar to the WOF Mark. Previous UDRP panels have found that where a distinctive trade mark is wholly incorporated in a domain name, adding a descriptive or generic term (i.e. "global") will generally not distinguish the domain name from the trade mark (see e.g. Google Inc. v. Google Adwords Service at HCMC, Vietnam,WIPO Case No. D2013-0298 and Nike, Inc. v. No Owner / Ashkan Mohammadi,WIPO Case No. D2013-1297). Here, the Panel finds that the distinctive element of the Disputed Domain Name is the WOF Mark. The descriptive term "global" simply suggests that the Complainant's products may be purchased globally.
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Complainant has not given the Respondent permission to use the WOF Mark.
- The Respondent is not commonly known by the Disputed Domain Name. It appears that the Respondent has created a "fake" company name (i.e. World Outdoor Fitness Ltd in Israel). This is not conclusive evidence that the Respondent has been commonly known by the Disputed Domain Name (see e.g. JT International v. Daniel Smith,WIPO Case No. D2014-1306).
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is currently no active website at the Disputed Domain Name. In the past, the website at the Disputed Domain Name almost identically reproduced the Complainant's main website (at ""). The Complainant has submitted that it did not authorize this use and the Panel cannot think of any circumstances in which this reproduction could be legitimate (see e.g. DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh,WIPO Case No. D2014-1823).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
It is clear that the Respondent was aware of the Complainant, its business and the WOF Mark when the Respondent registered the Disputed Domain Name. This knowledge can be inferred from (a) the familial relationship between the Respondent and the Complainant's owner and (b) the previous content on the website at the Disputed Domain Name, which almost identically copied the content of the Complainant's main website.
The Respondent's registration of a domain name that wholly incorporates the WOF Mark indicates that the Respondent registered the Disputed Domain Name to mislead Internet users into thinking that its website is in some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent's activities are approved or endorsed by the Complainant. Presumably, the Respondent has done this for commercial gain (see paragraph 4(b)(iv) of the Policy).
It also appears that the Respondent is attempting to disrupt the Complainant's business activities (see paragraph 4(b)(iii) of the Policy).
The Respondent made fraudulent representations on the website at the Disputed Domain Name and in emails to the Complainant's customers. Further, according to the Complainant, the Respondent's company is "fake" and has not been registered. These false representations are further evidence of bad faith.
The Respondent had the opportunity to make submissions to rebut the Complainant's allegations but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name.
It is not a pleasant matter to conclude that a family member has acted in bad faith in relation to another family member, but the Panel finds based on the evidence before it that this is the case here for the purposes of the Policy.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 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.
John Swinson
Sole Panelist
Date: April 9, 2015
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