Complainant is Naspers Limited, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
Respondent is M. Bishoen, C&C Participaties B.V., Surinam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2019. Also, in accordance with paragraph 5 of the Rules, the due date for Response was October 23, 2019. The Center received various emails from Respondent on October 9, and 10, 2019, including a request for an extension of the Response due date. An automatic extension of the Response due date was granted until October 27, 2019, under paragraph 5(b) of the Rules. The Response was received on October 26, 2019. The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 12, 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 Complainant is a multinational company headquartered in South Africa, offering services in more than 130 countries. Its principal operations are in media, internet communication, entertainment, gaming and ecommerce. It was founded in 1915 in South Africa under the name De Nasionale Pers Beperkt, and officially changed its name to NASPERS in 1998. Since then, Complainant has used the NASPERS Mark (or “the Mark”) extensively throughout the globe. Complainant also does business through its website at “www.naspers.com”. Media24, wholly-owned by Complainant, is Africa’s largest publisher, printer, and distributor of magazines and related media products, as well as Africa’s largest newspaper publisher. As of April 2019, Forbes ranked Complainant Naspers as number 531 on its list of the world’s largest companies, number 224 on its list of the world’s best employers, and number 82 on its list of the world’s top digital companies. Complainant owns registrations for the NASPERS Mark around the world including Chinese trade mark registration No. 5838054 (registered January 10, 2007) (NASPERS) and U.S. registration No. 3,791,745 (registered May 25, 2010) (NASPERS and design). Complainant’s registrations cover various goods and services including media. Respondent is a company whose business is in the adult entertainment industry. It was started in 2010, and began doing business on the Internet in 2018. Respondent registered the Domain Name on June 4, 2019. The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant’s business and that of many of its subsidiaries extensively involves media, and Complainant’s NASPERS brand enjoys a strong association with and reputation in relation to media. Media24 has a sizeable digital publishing arm. Naspers is known globally as the largest shareholder in one of China’s most valuable companies, Tencent, a well-known streaming and social media business. In the record as Annex 13 are three news articles from Forbes, CNBC Africa, and Moneyweb, all predating registration of the Domain Name, which describe Complainant, under its NASPERS brand, as a “media giant”. Respondent is almost certainly based in the Netherlands, where Complainant has a large physical presence and is well known for its media activities under the NASPERS Mark, all predating registration of the Domain Name. This is evidenced by a Google News search, limited to websites with a connection to the Netherlands. Complainant recently incorporated a new entity, Prosus N.V. (“Prosus”), and transferred most of its Internet businesses to that new entity. Complainant owns and controls Prosus under its NASPERS Mark. Prosus is a global consumer Internet group and one of the largest technology investors in the world focused on all forms of media. Naspers recently listed Prosus on the Euronext Amsterdam stock exchange, which was highly publicized in the international media prior to registration of the Domain Name. The Domain Name consists exclusively of Complainant’s well-known NASPERS Mark combined with the generic Top-Level Domain (gTLD) “.media”. The Domain Name is also identical and/or confusingly similar to Complainant’s registered NASPERS Mark given that NASPERS is the dominant and most distinctive part of Complainant’s registrations, or indeed the only part of same. As per a WhoIs search dated June 11, 2019, Respondent’s country was initially listed as “NL” (Netherlands) when registering the Domain Name. According to a WhoIs search dated September 12, 2019, Respondent changed its country in the WHOIS record to Surinam. This change occurred on August 13, 2019, just over a week after Complainant sent its initial email containing notice of its Complaint to Respondent. Around August 5, 2019, through September 3, 2019, the Parties were corresponding regarding the issues in dispute. Using email headers for Respondent’s email of September 3, 2019, the sender’s country was the Netherlands. And Respondent is using a Netherlands-based ISP as its hosting provider. As confirmed by WhoIs reports Respondent’s organization is listed in the WhoIs as C&C Participaties B.V. The Complainant has submitted evidence of an extract from the official Netherlands business register showing that this company is registered in the Netherlands, with a registered address in the town of Haren, Netherlands. In the correspondence with Complainant’s representative, all of the text automatically generated by Respondent’s email client software is in Dutch. On September 3, 2019, Complainant wrote to Respondent pointing out that the designation of its country in the WHOIS changed after it received Complainant’s initial complaint, and that Respondent’s organization as per the WhoIs is in fact registered as a business in the Netherlands. Complainant’s representative asked Respondent to clarify why it maintains that it is based in Surinam in the face of these facts. Respondent failed to provide any reasons. The fact that Respondent has attempted to obscure its true location is clearly indicative of its bad faith and the absence of any rights or legitimate interests in the Domain Name. On August 9, 2019, four days after Complainant’s representative sent its initial complaint email to Respondent, they noticed that the Domain Name had begun redirecting to the following website: “www.stormydaniels.sex/nasper.html”. Before that, and after registration of the Domain Name, the Domain Name had not been used. As shown by screenshots, a computer generated / animated woman is featured on the redirected website entitled “Nasper” and “Nasty Persons media”. Once this was detected by Complainant, it immediately contacted the hosting provider for the Domain Name, indicating that the Domain Name was being used for purposes that infringe Complainant’s trade mark rights, requesting that the infringing site be taken down. The Domain Name was blocked and the hosting provider removed the redirect so the Domain Name no longer resolved to the offending site. Complainant investigated whether an entertainer under the name “Nasty Person” exists and found no evidence of the existence of the claimed adult entertainer. Complainant also conducted extensive searches of all of the most well-known adult adult entertainment / pornography websites, including well-known industry listings — again, no evidence of the existence of the claimed adult entertainer was found. Complainant asked Respondent to provide support of its claims that Nasty Person is an actual adult entertainer but it refused to do so in its September 4, 2019, response. Respondent claims, in its email of September 3, 2019, that Nasper / Naspers are common names. Complainant ran Google searches for both “Nasper” and “Naspers” and all of the results relate to Complainant. Searches were also conducted of various personal names databases, but no results were found for either “Nasper” or “Naspers”. Given the immense repute of Complainant’s NASPERS Mark, in particular in Respondent’s country of the Netherlands, it is quite unlikely that Respondent could have any rights or legitimate interests in the Domain Name. This is particularly so if one considers that the relevant gTLD, “.media”, is entirely generic and is likely to be interpreted as the online presence for Complainant’s media interests. Complainant conducted a comprehensive Google search limited specifically to Complainant has prepared a reverse-WhoIs list of all domain names where C&C Participaties B.V. is specified. Respondent owns or has owned 466 domain names, many of which obviously consist of well-known trademarks (e.g., <10cent.games> and <10cent.pictures>, The NASPERS Mark is well-known in the Netherlands. It is inconceivable that Respondent, being Netherlands based, and with its history of registering well-known trademarks as domain names, was not aware of Complainant’s NASPERS Mark when registering the Domain Name. At the very least, Respondent should have known of the Mark. That Respondent could easily have established Complainant’s prior trade mark rights is clear from the registrant’s email of September 3, 2019, in which he performed an Internet search and accessed Complainant’s web presence. Further, due to its “.media” gTLD, the Domain Name is likely to be interpreted as the web presence for Complainant’s media interests. Accordingly, there is a direct connection between Complainant, its media business interests and the gTLD in question: “.media”. Mere registration of a domain name identical to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. B. Respondent Respondent company, C&C Participaties B.V., was started in 2010 with the intention of stopping unsecure prostitution of women on the street of Surinam, in clubs and shabby film studio’s and to give them a safer working space – the Internet. It began doing business on the Internet in 2018 because of changes within the adult industry. Respondent decided to let its adult workers participate in its company by giving them their own website on which they sell the adult workers media/work and they pursued domain names fitting their profile and the search criteria of clients and potential clients. As domain names are offered once, “The early bird catches the worm” – this is the reason why Respondent has bought a major number of domain names not knowing if they all will serve a purpose. The adult artists can pick their own domain names, most of the time, related to their “stage name”. “For Nasty Person’s media, we are working day and night to collect all the material and get it digitalized to the right streaming format. This will take some time, as we are a small company.” Nasty Person (not her actual name) is an adult entertainer who joined Respondent a long time ago. She is well known within and outside Surinam. For Nasty Person, work is all about pictures, webcams, video’s, and streams so the gTLD “.media” fits. Nasty Person, has used this name for almost 12 years. Last month, Complainant reorganized itself under different names because NASPERS had bad publicity. As Complainant was preparing an IPO it brought all NASPERS Internet activities under a new name – PROSUS N.V. All media activities were brought under MEDIA24. Thus, NASPERS is an empty shell in activities, besides being the biggest shareholder of both companies. The brand NASPERS is not related to “media” rather Complainant uses the names “Inlocomedia” and “Media24”. The remaining 50 companies are “Internet” companies. NASPERS changed its website, when Respondent confronted them with this fact. The NASPERS brand has been associated with apartheid, corruption, and fraud. C&C Participaties B.V. within the Netherlands does not work in the adult industry. Respondents uses a VPN (“Virtual Private Network”) server, which allows it to be active in every country it finds the fastest connection (server). Doing so prevents downtime of the Internet sites. Within Surinam there are only 2 providers for Internet and those are instable and expensive. Thus, Respondent chose an Internet provider in Germany. Respondent is not located within the Netherlands. Surinam was a colony of the Netherlands until November 25, 1975. The official language of Surinam is Dutch. Respondent uses a VPN-service. The VPN picks during the day the fastest servers around the world, meaning we are sometimes working from Spain and sometimes from Brazil, and so on. Thus, stalkers of our adult entertainers do not know where the adult entertainers are working. Respondent is based in Paramaribo, Surinam. This is shown in the registry of the Registrar and Respondent received the written complaint in this case to Respondent’s Surinam address on October 8, 2019. Complainant was/is never interested in buying the Domain Name. The new gTLD “.media” was introduced in April 11, 2014. The Domain Name was for sale for more than five years. Complainant bought all kind of new gTLD’s straight when they were introduced. The fact that NASPERS did not buy the Domain Name is telling, Complainant itself does not exploit any media activities but their company Media24 does. Many related domain names are still available for buying: (e.g., After Respondent registered the Domain Name, Complainant received a notification from the Trademark Clearinghouse, informing Complainant that the Domain Name had been registered. The Complainant did nothing with this information. Complainant applied for the new gTLD: “.naspers”. on February 12, 2015, showing that it knew of the existence of all of the new gTLD program and therefore also of the new gTLD “.media”. After Complainant had applied for the new gTLD the discussion about Complainant’s role in apartheid was in the media. Naspers offered its apologies, on June 27, 2015, for its role in apartheid and terminated the “Naspers” name in 2016. This resulted in the termination of the application for the new gTLD “.naspers”. If Complainant was sincere about exploiting media activities it would have had the time to buy it, starting May 2016 until the date the Respondent registered the Domain Name. Respondent thus has legitimate rights and interests in the Domain Name and Complainant does not. Respondent uses the Domain Name for a bona fide offering, namely selling media of the adult entertainer: Nasty Person. The development of the website at the Domain Name has been stopped, but Respondent continues to collect the media of Nasty Person transforming it to a streaming format, that fits the speed and bandwidth of its server. Respondent has a sincere interest in the Domain Name as it represents our adult worker. Respondent is also making a fair use of the Domain Name without intent for commercial gain to mislead and divert Internet users. Complainant does not operate in Respondent’s field of business, nor does it have a trade mark registration in Surinam, which makes sense as Complainant is not offering any goods or services there. It is very likely that in future the NASPERS Mark will disappear as Complainant does not deliver any goods of services anymore and they have applied for the trademark PROSUS. Complainant points out that Respondent owns other domain names (e.g., <10cent.pictures> and <10cent.games>), incorporating the trademarks of others. Respondent buys these domain names, as in early days, adult pictures where sold for 10 cents. Nowadays “10 cents” is a synonym for nude/sex pictures, without having to say the word: “sex”, “porn” or “nude” in Surinam. Same goes for 10 cent games, meaning having sex with a “prostitute”. Thus, there is not a pattern of bad faith registration. Because Complainant is being untruthful in its responses, this indicates reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar Respondent appears to question whether Complainant has rights in the NASPERS Mark in Surinam, where it claims to do business including with its employee “Nasty Person.” The Panel concludes that Complainant has rights in the NASPERS Mark based on its registrations for the NASPERS Mark. See section 1.1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.” Accordingly, it is inconsequential that Complainant does not have a registration for the NASPERS Mark in Surinam specifically or anywhere else in South America. The Domain Name incorporates in its entirety Complainant's NASPERS Mark. Where a domain name incorporates a complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105. The applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. According to section 1.11.2 of the WIPO Overview 3.0, the practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”). For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. If Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name, the burden shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the Domain Names for purposes of [p]aragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Complainant has not licensed or otherwise permitted Respondent to use the NASPERS Mark for any purpose including in the Domain Name. Complainant’s further allegations include: (1) it investigated whether an entertainer under the name “Nasty Person” exists and found no evidence of such an adult entertainer; (2) it searched the most well-known adult entertainment / pornography websites, including wel-known industry listings but did not find the existence of an adult entertainer named “Nasty Person” (3) it asked Respondent to provide support of its claims that Nasty Person is an actual adult entertainer but it refused to do so in its September 4, 2019 response; and (4) it ran Google searches for the terms “Nasper” and “Naspers” and all of the results relate to Complainant. Searches were also conducted of various personal names databases, including that of the U.S. Government’s Social Security Administration’s database. No results were found for either NASPER or NASPERS so it is unlikely a common name. Respondent alleges in response: (1) It gives its adult workers their own website on which they sell their “media” (e.g., videos). The adult artist can pick their own domain names, most of the time related to their “stage name”; (2) Nasty Person (not her actual name), has had that name for almost 12 years now; before NASPERS claimed its trademark on April 9, 2019; (3) for Nasty Person’s media, the material is being collected to get it digitized to the right streaming format; (4) Nasper is a common nickname; (5) Complainant applied for the new gTLD “. naspers”. on February 12, 2015, showing that it knew of the existence of all of the new gTLD’s and in this case the new gTLD “.media”. Respondent thus has legitimate rights and interests in the Domain Name and Complainant does not; (6) Respondent uses the Domain Name for a bona fide offering, namely selling media of the adult entertainer: Nasty Person. Respondent has a sincere interest in the Domain Name as it represents our adult worker: Who is commonly known as “Nasty Person” with a reputation for the past 12 years within Surinam; and (7) Respondent is also making a fair use of the Domain Name without intent for commercial gain to misleading or diverting Internet users. Complainant set forth a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name, which Respondent has failed to rebut. With its filing, Respondent provided the Panel with 33 annexes, however not one of them relates to, let alone supports, its core assertions – someone by the name of Nasty Person exists and has used, or been commonly known by, the name Nasty Person, for the past 12 years in Surinam (or anywhere else). Further, Respondent has not provided any evidence that even if such a person exists, there is the alleged business relationship between Nasty Person and Respondent. And Respondent has not shown how Respondent can claim rights or legitimate interests in the NASPERS Mark when its alleged employee’s alleged name is “Nasty Person”. Pursuant to the Policy, Respondent has failed to show “before any notice to [it] of the dispute, Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name” in connection with any offering of goods or service, let alone a “bona fide offering of goods or services” – one that is not infringing. Similarly, Respondent has not shown that it “(as an individual, business, or other organization) has been commonly known by the domain name, even if [it] ha[s] acquired no trademark or service mark rights. Respondent maintains in a conclusory statement – without any proof – it is making a fair use of the Domain Name, but it is unclear how it could be making a fair use of Complainant’s distinctive NASPERS Mark. Respondent has not shown how it could be making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the NASPER Mark when it claims that it is in the process of compiling adult entertainment media that Nasty Person made so it can sell it on the website associated with the Domain Name. Respondent candidly asserts that it is impossible to come up with a unique company name, let alone that you find an available, fitting domain name. It notes that here there is a conflict between a person’s interest (Nasty Person) and a company interest (Complainant’s) and it maintains “we have to follow the law.” Respondent rhetorically asks whether Complainant has rights in the NASPERS Mark in Surinam and answers “no”. Under the Policy, however – following the law – that is not relevant. Complainant has shown an ownership right in the NASPERS Mark which is sufficient in these proceedings. Respondent also asks rhetorically if “Nasty Person” has rights in her name and states she has been working in the adult entertainment industry for almost 12 years, and that “Nasty Person” is her trade mark. As discussed above, there is no evidence in this record to support such an allegation, though even if it existed, such evidence would not be dispositive here. For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Parties contest Respondent’s ties to the Netherlands where Complainant maintains it has a large physical presence and is well known for its media activities under the NASPERS Mark – all pre-dating Respondent’s registration of the Domain Name. It is unnecessary, however, for the Panel to make a finding regarding that issue to decide this element of the Policy. Complainant has provided ample evidence of its global footprint in conjunction with the NASPERS Mark from before Respondent registered the Domain Name, as well as its extensive media holdings (e.g., Media24, Prosus N.V., Tencent). Indeed, even Respondent has established in its many annexes that Complainant has been in the international news over the years for many reasons. Thus, it is inconceivable that Respondent, with a history of registering well-known trademarks as domain names, was not aware of Complainant’s NASPERS Mark when registering the Domain Name. Respondent claims that it is using the NASPERS Mark because it has some business association with someone named “Nasty Person,” however there is no evidence that such a person exists, that Respondent has the alleged association with her, or that she is involved in the adult entertainment industry and is selling her “media” on the Internet. Furthermore, it is unclear why if Respondent or Nasty Person is maintaining a website to sell media based on Nasty Person’s alleged reputation as “Nasty Person”, Respondent would register a Domain Name that does not use her well-known name. Based on all of the evidence of record and the lack of supporting evidence by Respondent the Panel concludes that Respondent registered the Domain Name in bad faith. Respondent maintains that it and Complainant are not competitors so the Domain Name was not registered primarily to disrupt Complainant’s business. It also argues that it did not establish a site similar to Complainant’s website nor provide similar services or mislead the public – the public does not make any connection between the Domain Name and Complainant. Respondent also maintains that it did not offer the Domain Name for money to Complainant. Respondent maintains that it absolutely did not use the Mark because it was unaware of its existence but, now that Respondent knows Complainant owns the NASPERS Mark it defends its actions on the grounds that Complainant’s rights are only for Europe and, in South America and especially Surinam, Complainant does not have a trademark as they are not offering any services or goods to this continent. Similarly, Respondent appears to believe that it may use the Domain Name because “Complainant does not operate in our field of work [adult entertainment]. It further believes it “is very likely that in future the NASPERS Mark will disappear as Complainant does not deliver any goods of services anymore and they have applied for the Trademark: PROSUS.” These assertions are made on an incomplete understanding of the facts, applicable law, and the Policy. Respondent has established that it has no rights or legitimate interests in the Domain Name. Moreover, Respondent has registered a domain name that is confusingly similar to Complainant’s well-known NASPERS Mark (it would be identical but for the addition of the term media) for commercial purposes -- admittedly to promote its adult entertainment business. When Complainant called to Respondent’s attention its infringing use of the Mark, Respondent did not cease its activities, did not provide relevant information, and proceeded to defend itself in this proceeding without any evidence to support its assertions. For all these reasons, the Panel concludes that Respondent is using the NASPERS Mark in bad faith. For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Domain Name Harrie R. Samaras
Sole Panelist
Date: November 28, 2019
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