The Complainant is Naspers Limited of South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Zixuan yang of China. 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 April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2019.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 31, 2019. 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, Naspers Limited, is a broad-based multinational Internet and media group headquartered in South Africa, offering services in more than 130 countries. Its principal operations are in Internet communication, entertainment, gaming and ecommerce. It was founded in 1915 in South Africa under the name “De Nasionale Pers Beperkt” (National Press Ltd), and officially changed its name to the current Naspers in 1998.
The Complainant is the owner of numerous trademark registrations worldwide, including but not limited to the following:
- NASPERS (device) (Trademark No. 1997/06756) registered in South Africa on October 12, 2000;
- NASPERS (device) (Trademark No. 3967952) registered in China on January 7, 2007;
- 南思博 (Trademark No. 13973624) registered in China on April 14, 2015.
The disputed domain name was registered on January 13, 2017 and the disputed domain name presently resolves to an active website with active web links.
The Respondent appears to be an individual living in China. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark NASPERS as the disputed domain name contains the entirety of the Complainant’s mark, combined with the generic Top-Level Domain (“gTLD”) “.mobi”.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has not made any legitimate use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent has a history of registering well-known domain names and parking them in the same format as the disputed domain name by using the same mobile phone image with no offering of goods and services, thereby demonstrating bad faith. The Complainant also states that the non-use of the disputed domain name also does not prevent a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name integrates the Complainant’s NASPERS trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345).
The disputed domain name and the Complainant’s trademark differ in the addition of the gTLD “.mobi”. The addition of the gTLD “.mobi” to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc.WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v. Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877). Therefore, the gTLD “.mobi” iswithout significance in the present case since the use of a Top-Level Domain is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.)
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns various trademark registrations in South Africa and China long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark. (See LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.)
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name. (See WIPO Overview 3.0, section 2.3.).
The Complainant also showed that the Respondent has not made use of or demonstrated any preparation to use the disputed domain name in connection with a bona fide offering of goods or services. (See WIPO Overview 3.0, section 2.2.). The disputed domain name resolves to a parked page of a mobile phone image with no offering of goods or services.
Further, in the present case, the Respondent did not submit a response to the Complainant and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the NASPERS trademark since the year 2000. In view of the evidence filed by the Complainant, and the widespread use of the NASPERS trademark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name in full knowledge of the Complainant’s trademark and with the intention of taking advantage of the Complainant’s reputation and goodwill (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The disputed domain name resolves to an active website with active web links. On the website, there is an image of a mobile phone with the Complainant’s NASPERS trademark appearing at the top of the mobile phone as “Welcome to the naspers 3G website” with a welcome greeting in the Chinese language, and at the bottom of the website as “ 3G version”. Several other links also appear on the website, translated in English, namely, “introduction”, “mobi handphone domain name” and “contact us”. The Respondent’s name and mobile phone number also appear on the website and there are also links for WhatsApp, SMS, email and a QR code. Although there is no express offering of goods or services on the Respondent’s website, given the Complainant’s highly distinctive mark, which has been used for over 20 years, and currently invests heavily in Internet related technologies, the Panel is of the view that Internet users who are misled to the website may confuse the disputed domain name as the Complainant’s.
The Complainant has also submitted evidence (Annex Y to the Complaint) that the Respondent has a history of registering well-known third party trademarks as domain names with the same gTLD “.mobi” that resolve to active websites of the same appearance and format as the disputed domain name. This is further indication that the Respondent was targeting the Complainant’s trademark and of the Respondent’s bad faith of the Respondent numerous attempts to capitalize on other trademarks’ owners’ reputation and goodwill to redirect Internet users to its website.
The Complainant also submitted evidence of email correspondence sent to the Respondent in both English and Chinese language prior to the commencement of this proceeding (Annex V to the Complaint), requesting for a transfer of the disputed domain name to the Complainant. The Respondent neither responded to the email nor filed a response to this proceeding. The Respondent’s behavior is yet another indication of bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s trademarks, the confusing similarity between the disputed domain name and the Complainant’s trademarks, the Respondent’s use of the disputed domain name, the Respondent’s failure to present any credible rationale for registering the disputed domain name, and the fact that there is no plausible good faith use the Respondent can put the disputed domain name to, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith. 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.
Jonathan Agmon
Sole Panelist
Date: June 14, 2019
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