The Complainant is Sun International (Zambia) Limited of Livingstone, Zambia, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Privacy Protection Service d/b/a PrivacyP of Queensland, Australia / Hamilton Mandizvidza, Hamand Ent of Gauteng, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent email communication to the Complainant on January 21, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 25, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 22, 2016.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on March 2, 2016. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of a Response, can be accepted as background.
The Complainant is a subsidiary company of Sun International Limited (a South African hospitality, entertainment, casino and gaming group in Southern Africa and elsewhere) and is a company incorporated under the laws of Zambia with a registered address in Zambia. The Complainant is the proprietor of several registered trademarks in Zambia of the trademark ZAMBEZI SUN particularly in classes 9, 16, 25, 29 and 30. It is also the proprietor of a registered trademark depicting ZAMBEZI SUN in the same classes as its other trademark registrations. The Complainant was established in 1997 to operate the Falls Resort and Convention Center which is situated in Mosi-Oa-Tunya National Wildlife Park. The resort and convention center incorporates the Zambezi Sun Hotel which is a five star hotel as well as the Royal Livingston Hotel.
Since opening for business on April 1, 2001, the Complainant's Zambezi Sun Hotel, has attracted large numbers of local and international tourists from all over the world and is considered particularly attractive because of its proximity to the Victoria Falls.
The Zambezi Sun Hotel has expanded its business since its inception as appears from the various annexures to the Complaint.
The Complainant has been using its ZAMBEZI SUN trademarks in respect of the hotel for over 14 years albeit that they relate to a variety of goods and products used in the hotel industry rather than specifically applicable to the hotel itself. It has also made use of the logo in respect of the hotel.
The disputed domain name was registered on October 7, 2011. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name incorporates the words "zambezi sun hotel" and therefore by reason of that incorporation, particularly of the whole of the Complainant's trademark ZAMBEZI SUN, causes at the very least confusion and is an infringement of its rights because the word "hotel" is purely descriptive of the services offered by the Complainant. It also points out that hyphenating the words in the disputed domain name does not detract from the confusion and likewise that the TopLevel Domain ".com" does not detract from this. It follows, so the Complainant contends, that the disputed domain name which incorporates the Complainant's trademark in full is virtually identical or at least confusingly similar to its trademark.
The Complainant contends that it could find no evidence that the Respondent had ever used the marks ZAMBEZI SUN or ZAMBEZI SUN HOTEL. The Complainant also found no evidence suggesting that the Respondent had made any legitimate use of these marks.
The Complainant avers that the Respondent had no legitimate link or association with the Complainant or that he had any permission or license entitling him to so act.
The Complainant further contends that the Respondent has not only registered but also used the disputed domain name in bad faith particularly for the purpose of offering the services of his tour company thus relying on the reputation of the Complainant. This, so the Complainant contends, is intended to mislead would-be customers and thus seeking to gain from the illegitimate diversion of customers to the detriment of the Complainant.
The Complainant also submits that there has been a prior UDRP dispute between it and Mr. Hamilton Mandizvidza who is the Respondent in the present proceeding involving the domain name which incorporated the Complainant's ROYAL LIVINGSTON HOTEL trademark. Sun International (Zambia) Limited v. Nigel Garner (NIGEL28911), Hamilton Mandizvidza / Hamand Ent / Privacyp,WIPO Case No. D2012-2242. The decision was in favor of the Complainant and the disputed domain name in the above-mentioned case was transferred to the Complainant. B. Respondent
Apart from an exchange of emails (which predate the filing of the Complaint) between an Associate of the Attorneys acting for the Complainant and a response from the Respondent's tour company Falcon Safaris, regarding information as to a potential booking, the Respondent is in default and has chosen not to furnish any response by any further correspondence or otherwise. The emails exchanged do not in any way, in the view of the Panel, detract from the Complainant's case or provide or support any defense or answer thereto. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:-
(i) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a) (ii) of the Policy. B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favour by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd.& Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
The Center sent notice of the Complaint, on February 1, 2016, by post, fax and email, to the various addresses ascertained by the Center. The Panel is nevertheless satisfied that the Respondent was aware of the proceeding.
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd. v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Ltd v. Global Net 2000 Inc., supra; RX America LLC v. Matthew Smith WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros S A v. John Michael, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. A Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc. WIPO Case No. D2012-1213). C. Identical or Confusingly Similar
The Complainant is the owner of the trademarks referred to above, all pre-dating the registration of the disputed domain name.
The fact that the word mark has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is identical or confusingly similar to the Complainant's registered marks (Quixtar Investments Inc. v. Dennis Hoffmann,WIPO Case No. D2000-0253; Universal City Studios Inc. v. David Burns & Adam-12 Dot Com,WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/NeoNet Ltd,WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016).
The Panel agrees with the Complainant's contention that the addition of hyphens between the words and the addition of the word "hotel" is not sufficient to exclude the confusing similarity (Fry's Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; v. R L International Ltd. v. Domaincar,WIPO Case No. D2006-0240; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandes Quintero,WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production on this factor shifts to the Respondent to rebut or displace the Complainant's evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4 (a) of the Policy. (Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com.,WIPO Case No. D2001-0784).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark ZAMBEZI SUN, including in Zambia where the Respondent operates his tour company, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang,WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. & Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement in the disputed domain name which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
The Complainant also contends that the Respondent is using the disputed domain name for the purpose of offering the services of his tour company thus relying on the reputation of the Complainant.
In view of the facts and circumstances which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
While bad faith can exist where a domain name contains in its entirety a complainant's trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name, almost in its entirety, is an intentional adoption of the Complainant's registered trademark.
The Complainant points out that the disputed domain name resolves to a website which clearly creates the impression that it is operated or associated with the Complainant although it becomes clear that it is being operated by Falcon Safari, being an entity which is used by Mr. Mandizvidza and trades as a tour company. Extracts from the website have been annexed to the Complainant and it is clear that the Complainant's ZAMBEZI SUN logo trademark appears there together with images, not only of the Complainant's Zambezi Sun Hotel but also of its internationally well-known Sun City Resort in South Africa. The email address provided on the site for reservations "[…]@" clearly routing requests for reservations to the Respondent. What is significant in the present case is paragraph 4(b)(iv) of the Policy quoted above. As already pointed out the Respondent has made misleading statements on his website and incorporated information and images of the Complainant's hotel as being his own and on his website he has provided for reservations through it. This clearly implies that the Respondent either has a relationship with the Complainant or does so with its approval or endorsement. In the view of the Panel, this of itself is clearly evidence of use in bad faith. (San Lameer (Pty) Limited & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that it is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd. & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra). This is, in the view of the Panel, further demonstrated by the exchange of emails between the Associate of Complainant's Attorneys and the Respondent's tour company, Falcon Safaris.
Moreover, by use of a domain name confusingly similar to the Complainant's trademark, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant's trademark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore he selected the disputed domain name in circumstances where he must have been well aware of the Complainant's reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, supra).
In this regard, the view of the Panel is strengthened by the fact evidence from the previous UDRP dispute (Sun International (Zambia) Limited. v. Nigel Garner (NIGEL28911), Hamilton Mandizvidza / Hamand Ent / Privacyp, supra) where the Respondent resorted to a similar approach to the Complainant's other two trademarks. This would negate any innocent or unintentional conduct on the part of the Respondent.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Date: March 14, 2016
Full & Egal Universal Law Academy