The Complainant is Anglo American PLC, United Kingdom, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP), United States of America (“United States”) / Karren Mayo, United States. 2. The Domain Name and Registrar
The disputed domain name (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 July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2019, 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 July 15, 2019, 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 July 18, 2019.
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 proceedings commenced on July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed John Swinson as the sole panelist in this matter on August 22, 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 is Anglo American PLC, a company incorporated in the United Kingdom. The Complainant is a multinational mining company with its head office in the United Kingdom. The Complainant was founded in South Africa in 1917 and is listed on the London and Johannesburg stock exchanges and mines copper, diamonds, iron ore, platinum, nickel, coal, and other products.
The Complainant is the owner of a number of registered trade marks for ANGLO AMERICAN, including European Union registered trade mark number 001152446 for registered on November 11, 2019 (the “Trade Mark”).
The Complainant is also the owner of a domain name which incorporates the Trade Mark, being .
The Respondent is Karren Mayo, an individual of the United States. No response was received from the Respondent and therefore little information is known about the Respondent. The Disputed Domain Name was registered on November 26, 2018. The Disputed Domain Name resolves to a parking page containing the words “Coming Soon”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant is a large, well-known and listed multinational mining company, headquartered in London and with offices and operations around the world. The Complainant was founded in South Africa in 1917 and has traded under the ANGLO AMERICAN brand extensively ever since.
The Complainant’s ANGLO AMERICAN brand is well-known throughout the world, including the United States. The Trade Mark is widely associated with the Complainant and the Complainant has goodwill and unregistered common law rights in the mark.
The Complainant has registered the Trade Mark throughout the world including in the United States, where the Respondent is based.
The Disputed Domain Name consists exclusively of the Trade Mark, combined with the generic Top Level Domain (“gTLD”) “.online”, which is to be disregarded. The Disputed Domain Name is identical, or alternatively confusingly similar, to the Trade Mark. Rights or Legitimate Interests
Despite conducting searches, the Complainant can find no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name.
The Respondent had the opportunity to present evidence of its rights or interests but failed to do so. The Respondent did not reply to the Complainant’s emails calling for a voluntary transfer of the Disputed Domain Name.
The Disputed Domain Name is parked with a basic “coming soon” landing page and no content. There is no evidence that the Respondent has used the Disputed Domain Name in connection with the offering of any goods or services or has developed any website.
Given the repute and registration of the Complainant’s Trade Mark, it is unlikely the Respondent could have any rights or interests in the Disputed Domain Name. The gTLD “.online” is entirely generic and is descriptive of the Complainant and/or its goods or services. This is likely to be interpreted as the web or online presence for the Complainant. This tends to support a finding that the Respondent obtained the Disputed Domain Name to take advantage of the Trade Mark. Registered and Used in Bad Faith
The Trade Mark is well-known globally and in the United States. It is inconceivable that the Respondent was unaware of the Trade Mark at the time of registering the Disputed Domain Name. At the very least, the Respondent should have known of the Trade Mark. A Google search for the Trade Mark reveals results overwhelmingly related to the Complainant and this indicates bad faith.
The Disputed Domain Name is likely to be interpreted as the Complainant’s web/online presence. A Google search for the Disputed Domain Name reveals results that overwhelmingly relate to the Complainant and this shows that users will assume the Disputed Domain Name is connected to the Complainant.
The widespread prior use and repute of the Trade Mark is suggestive of the Respondent’s bad faith. The Trade Mark was registered and became well-known globally long before the registration of the Disputed Domain Name.
The Disputed Domain Name consists of the Trade Mark in its entirety. In these circumstances, a likelihood of confusion is presumed.
The doctrine of passive holding should apply to this case. Non-use of a domain name does not prevent a finding of bad faith under this doctrine. The degree of distinctiveness or reputation of the Trade Mark, the failure of the Respondent to submit a response or provide any evidence of actual or good faith use and the implausibility of any good faith use all weigh heavily in the Complainant’s favour. 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 is on the Complainant even though the Respondent failed to submit a response. A. 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 the Trade Mark.
The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The gTLD “.online” is disregarded under this element (see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. 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 considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a parking page containing the words “Coming Soon”. There is no evidence that the website at the Disputed Domain Name has ever been used in connection with a bona fide offering of goods or services.
- The Complainant has not authorised or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name currently resolves to a parking page containing the words “Coming Soon”, and does not appear to have been active.
The Panel notes that “anglo-american” is a dictionary word for something involving the United Kingdom and the United States, including for example an American person of English ancestry. As stated at section 2.10 of WIPO Overview 3.0:
Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
The Disputed Domain Name resolves to a parking page and there is no evidence of the Respondent’s intentions to use the Disputed Domain Name in connection with the dictionary meaning of the Trade Mark. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. C. 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.
The Panel accepts the Complainant’s submissions that the Trade Mark and the Complainant are well-known internationally, having been in operation since 1917. The Complainant has developed a significant reputation in the Trade Mark and it is famous world-wide, including in the United States. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by almost 20 years. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0).
The Panel also considers it unlikely that the Respondent applied to register the “.online” gTLD without enquiring whether the same in “.com” or other gTLDs was available. Given that the Disputed Domain Name is almost identical to the Trade Mark and without the benefit of a response from the Respondent, the Panel can reasonably infer that the Respondent either knew or should have known that her registration would be identical or confusingly similar to the Complainant’s Trade Mark. The Panel finds that the Disputed Domain Name was registered in bad faith.
The Disputed Domain Name resolves to a parking page. The fact that the Disputed Domain Name is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that:
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The particular circumstances of this case which lead to a conclusion of bad faith use are:
- the Trade Mark has a strong reputation and is widely known throughout the world, as evidenced by numerous registrations worldwide and the Complainant’s evidence of its reputation and size;
- the Respondent has not submitted a response or provided any evidence of actual or contemplated good-faith use; and
- the Respondent has taken active steps to conceal its true identity through a privacy service (see section 3.6 of WIPO Overview 3.0).
The Respondent’s failure to respond to the Complainant’s demand letter is additional evidence of bad faith (see Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
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: September 2, 2019
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