The Complainant is Transnet SOC Ltd of Midrand, Johannesburg, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is SoftLayer Domains, Softlayer Domain Privacy, of Dallas, Texas, United States of America (“United States”) / Castilo Walker, Trans Chain, of Sandton, Gauteng, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Everyones Internet, Ltd. dba SoftLayer (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2018, the Complainant filed an amended Complaint. On November 15, 2018, 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 November 20, 2018, 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 November 21, 2018.
The Center verified that the Complaint, together with the amended Complaints, 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 November 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2018.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on December 28, 2018. 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 a large South African rail, port and pipeline company that has been trading under the TRANSNET brand continuously and extensively since 1990. The majority of the Complainant’s stock is owned by the South African government. The Complainant is responsible for the majority of South Africa’s national rail, ports and pipelines infrastructure and is thus well known to most South African’s businesses. The Complainant has related business units, all of which use the Complainant’s TRANSNET mark (i.e., TRANSNET South African Trade Mark Reg. No. 1469/2000, registered on October 6, 2000) to render their particular services.
The Complainant acquired the domain name and has continuously maintained an active website advertising its goods and services at that domain name since at least as early as November 2003. Screenshots of the Complainant’s current website at “www.” have also been provided.
As set out in survey conducted in 2017 by the Reputation Institute, namely the National Pulse South Africa 2017 Report, the Complainant, under its TRANSNET brand, is listed as one of the most visible companies in South Africa. Transnet is ranked as No. 46 in the report’s reputation rankings for South Africa.
According to the WhoIs report, the disputed domain name was registered on June 23, 2018, and updated on October 25, 2018. 5. Parties’ Contentions A. Complainant
The Complainant has put up evidence showing that since as early as 2000 it has registered over 50 trade marks in South Africa all with the word “transnet”, either alone or in combination with a device. All the marks referred to are still valid and have not expired.
In addition, the Complainant put up further evidence that it has registered its TRANSNET trade mark, in plain word form and logo form, in numerous jurisdictions in which it does business, including South Africa, Zimbabwe, the United Kingdom, Germany and Benelux. Full details for the Complainant’s trade mark registrations have been provided as annexes. Registration and renewal certificates, or official register pages drawn from the relevant trade mark registry’s publicly accessible electronic databases, are provided as well. Some of these records list Transnet Ltd as the proprietor. The Complainant underwent a name change from that name to Transnet SOC Latin 2012 and is in the process of recording the change at all relevant trade mark registries.
The Complainant contends that, despite a comprehensive and diligent search, it has been unable to find any evidence whatsoever that the registrant for the disputed domain name has any rights or legitimate interests in respect of the disputed domain name, including any falling within the grounds listed in paragraph 4(c) of the Policy. It avers that the registrant has used the disputed domain name for unlawful purposes, namely to take advantage of the Complainant’s reputation in the market place. It also annexes recent screenshots of the website to which the disputed domain name has resolved contending that this website is a blatant clone of the current website featured at the Complainant’s own domain name . If a comparison is made between the screenshots of the websites, the Complainant points out that the Respondent’s website is very obviously copied from its own.
The Complainant contends further that the Respondent has no rights or legitimate interests in respect of the disputed domain name in that no legitimate use is taking place in the light of the soliciting of custom in the name of Transnet which is clearly for commercial gain and misleading consumers, and so the Respondent cannot be bona fide. The Respondent is acting mala fide.
The Complainant further avers that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name and that in any event, it cannot be bona fide, more particularly in that it does not have any business interest in the Complainant’s registered trade marks nor has it obtained permission from the Complainant to make use thereof.
The Complainant contends that it is apparent that the disputed domain name has been registered and is being used in bad faith intentionally to attract commercial gain from Internet users as well as disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 and 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 Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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 and use 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 a 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 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, a.k.a. Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
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 requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942).
From this the Panel considers that it may be accepted that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited 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 Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. A Domain Privacy/Host Master, Transure Enterprises 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 Limited v. Global Net 2000 Inc., supra; RX America LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. A Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group 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 fact that the word mark TRANSNET has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is 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 and Adam-12 Dot Com,WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking /Neo net Ltd,WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016).
The Panel also holds the view that the addition of the letter “s” after the trade mark TRANSNET is not sufficient to exclude the confusing similarity (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans,WIPO Case No. D2002-0367; Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar,WIPO Case No. D2006-0240; and Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero,WIPO Case No. D2009-1050; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas,WIPO Case No. D2017-1884; Bristows LLP v. Protection of Private Person / Marilyn Steele,WIPO Case No. D2018-0685).
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 trade mark 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 target the trade mark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights 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 of evidence 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, supra; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, supra).
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 mere bald statement in the correspondence without more or supporting evidence, does not take the Respondent’s position further.
The Complainant contends that it is the owner of the trade mark TRANSNET, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trade mark of the Complainant. It follows, therefore, that the Respondent has no rights to the use of that mark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055; Caesars World, Inc. and 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. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).
Likewise, 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, express, implied or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase, Inc. v. Analytical Systems, supra; Oki Data Americas, Inc. v. ASD Inc.,WIPO Case No. D2001-0903; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd,WIPO Case No. D2010-0551).
In view of the facts and circumstances put up on this ground by the Complainant 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. Registered and Used 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 trade mark 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 trade mark 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.”
The registration of the disputed domain name, which is confusingly similar to the Complainant’s trade mark and domain name, with the addition of the letter “s” is indicative of the Respondent’s intent to trade on the value established by the Complainant in its mark, to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed away from the Complainant and to the Respondent. Such a practice also would constitute bad faith (Yahoo! Inc. and 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 identical or confusingly similar to the Complainant’s trade mark and domain name, 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 Complainants and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC,WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings,WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc.,WIPO Case No. D2012-1213).
Bad faith in the registration and use of the disputed domain name is further demonstrated by the fact that that the disputed domain name resolves to a website which is a clone of the Complainant’s official website.
The Panel is therefore satisfied that the Complainant has established the third element under 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: January 23, 2019
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