The Complainant is Kansai Plascon (PTY) Limited of Kurgersdorp, Gauteng, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is C/O Private Ranger Limited, Registrant of of Auckland, New Zealand / Mike Goden, of Umhlanga Rocks, KwaZulu-Natal, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2017, 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 an email communication to the Complainant on October 3, 2017, 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 October 6, 2017
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2017.
The Center appointed Archibald Findlay as the sole panelist in this matter on November 10, 2017. 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 leading South African paint, coating and related products company which, in addition to producing these products, carries on further research and development in regard thereto. It also provides advisory design services, consultation and information services through its showrooms and a magazine entitled “Spaces”. It was founded in 1891 when Herbert Evans established a paint manufacturing business in Johannesburg and thereafter a merger occurred between his business and Chrome Chemicals, in 1949, leading to the formation of “Plascon”. In 2011, the business was acquired by the Japanese company Kansai Paints Co., Limited and this led to the name change to “Kansai Plascon”.
The Complainant has put up a considerable body of documentation by way of annexures demonstrating the nature of its business and what is available publically.
It also is the proprietor in South Africa, as well as other countries, of several registered trademarks incorporating the marks PLASCON and KANSAI. In 1941, it registered a series of marks in respect of the word “Plascon” in various classes and, in 1961, a further PLASCON trademark was registered expanding its coverage of areas of business into class 16.
In 2011, it further expanded its stable of trademarks by registering a logo, in class 35, bearing the word “Plascon” and thereafter registered the first KANSAI PAINT mark which was followed shortly afterwards in 2012 by two further trademarks of KANSAI PLASCON, being trademark numbers 2012/24567 and 2012/24569. This was also followed by a logo mark bearing the words “Kansai Plascon”, namely trademark number 2012/24570. All these marks are valid and presently in force and proof has been put up among the annexures.
In addition, it has registered several domain names both with the words “Plascon” and “KansaiPlascon”, registered as a single word. Again, these registrations occurred from 1998 up to 2012 and proof of those registrations is also included among the annexures.
The disputed domain name was registered on August 9, 2017, and does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Apart from the registration and use of the PLASCON trademark since at least 1949, the Complainant has also made use of the KANSAI PLASCON trademark, at least since 2012. The Complainant has put up a considerable body of evidence in the annexures and the Complaint describing the extensive user of the trademarks and the marketing of all its products bearing the trademarks in a variety of different forms such as through its websites, at exhibitions, display at the premises of various retailers and distributors who sell the products. It has received several awards for its products and carries on extensive advertising campaigns in the forms of brochures, newspaper and magazine advertisements in well-known publications.
The Complainant therefore contends that by such consistent and extensive use of the trademarks, they have acquired a higher degree of public recognition and distinctiveness as symbol of the source of high quality goods and services offered by it and the trademarks embody the valuable reputation and goodwill belonging exclusively to the Complainant.
On discovering the disputed domain name, the Complainant draws particular attention to the fact that the trade names “Kansai” and “Plascon” have been adopted and wholly incorporated in the disputed domain name with the result that it is identical and obviously confusingly similar to the trademarks of the Complainant.
The Complainant avers that the Respondent has no rights nor legitimate interests in respect of the disputed domain name in that the exclusive rights vest in the Complainant.
It points out that it is inconceivable that the Respondent has been commonly known by the domain name and also that, despite registration on August 9, 2017, there is currently no website associated with it. Nor is the Respondent making legitimate noncommercial or fair use of the domain name.
Finally, the Complainant puts up evidence to show that the name registered as the Respondent is false because of correspondence between members of the public and one “Ndlovu” or one “Ndlovu Mluleki” who appears to be the real Respondent using a false name and who is luring members of the public to communicate with him on the misrepresentation that he is the human relations officer of the Complainant and able to offer them employment. It also refers to certain correspondence which it has obtained showing that the Respondent is also falsely representing that job opportunities exists with the Complainant and that payment of a sum of money to him will secure such employment. In essence the Complainant contends that the Respondent is trading on the Complainant’s good name and thereby causing it damage, quite apart from his financial and criminal gain which is obtained by the fraud perpetrated. Thus it must follow that the disputed domain name was registered and is being used in bad faith. B. Respondent
In the absence of any response, reaction or communication from the Respondent, nothing is before the Panel reflecting any views, comments or likely defenses from the Respondent. 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 nonexclusive.
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 favor 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 duly notified the Respondent of the Complaint, by email, to the address ascertained by the Center in accordance with paragraph 2(a) of the Rules. The Panel is accordingly satisfied that the Center has discharged its responsibility of employing reasonable means calculated to achieve notice of the proceeding on the Respondent.
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 fact that the words may have been set out in a different order (i.e., “Plascon” before “Kansai”) in no way alters the position. It is obvious to the panel that the disputed domain name is identical and confusingly similar with the Complainant’s trademark.
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 prove 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 trademarks PLASCON, KANSAI and KANSAI PLASCON where the Respondent operates in South Africa, and that the Respondent in registering or using any domain name adopting, or similar to, the trademark of the Complainant is a violation of its rights. It has no right to the use of that mark as part of the disputed domain name 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).
Moreover, 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 illegally for the purpose of defrauding unsuspecting persons who react thereto while 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, despite the reversal of the order of the words “Plascon” and “Kansai”, is an intentional adoption of the Complainant’s registered trademark.
The Complainant points out that although the disputed domain name does not resolve to a website it clearly creates the impression that it is operated or associated with the Complainant.
The Complainant first learned of the registration and use of the disputed domain name when it was notified by members of the South African public that a third party, either “Mr. Ndlovu Mluleki” of “Mr. Ndlovu” had made various misrepresentations to them purporting to be the human resources manager of the Complainant and offering employment. Further investigation revealed that Mr. Ndlovu had placed false advertisements for vacancies with the Complainant and examples of some of these advertisements were put up among the annexures and the email address listed thereon was “[redacted]@” which is associated with the disputed domain name. Some of the members of the public who applied for these false positions advertised were advised that they were unsuccessful and a letter so stating was put up among the annexures and it became apparent from the conduct of the Respondent in this regard that it was using the disputed domain name in order to attract Internet users by these false representations.
The Complainant also established that members of the public, who may have been unsuccessful initially in their applications were again contacted by Mr. Ndlovu and advised to pay money to him in order to secure a position with the Complainant. Again documentation by one such applicant is put up in confirmation as well as proof of payment of the amount of ZAR 3,000 to Mr. Ndlovu. These members of the public were advised they had been successful and were apparently sent documents purporting to be contracts of employment between them and the Complainant. Copies of the latter have also been put up.
In the light of the fraudulent email scheme being perpetrated by the person known as Mr. Ndlovu, the Complainant alleges that he is the real and beneficial owner of the disputed domain name and that the name “Mike Goden” would appear to be a false name shielded by the entity described as “Private Ranger Limited” in order to perpetrate fraud upon unsuspecting members of the public and not reveal the perpetrator’s true identity.
The evidence put up demonstrating that such a fraud had been perpetrated and had led to financial loss on the part of at least one member of the public, coupled with the use of the false name is clear and uncontroverted.
The use of a false name and contact details is, of itself, further evidence of bad faith. (Roche Products Inc. v. TT,WIPO Case No. D2008-0668; Retecasa Spa v. Admin, Domain,WIPO Case No. D2007-0125; Aldrich Rockefeller Designs LLC v. JR Rockefeller of Project Youth,WIPO Case No. D2015-0560.) In the absence of any response to the assertions of the Complainant concerning the use of the false name (or an alias), the making of misrepresentations and the supporting documentation, the Panel has no difficulty in finding that the domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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.
Archibald Findlay
Sole Panelist
Date: 16 November 2017
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