The Complainant is Naspers Ltd, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Timothy Bryan, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 9, 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 October 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2019. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 26, 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 media, Internet communication, entertainment, gaming and e-commerce. It was founded in 1915 in South Africa under the name “De Nasionale Pers Beperkt”, and officially changed its name to the current “Naspers” in 1998. The Complainant is the holder of a number of trademark registrations across various jurisdictions throughout the world, including the United States, where the Respondent is located, which it uses in connection with its services. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations: - United States trademark registered on May 25, 2010 under No. 3791745 in classes 9, 16, 35, 38, 41 and 42; - European Union trademark registered on June 21, 2005 under No. 003711991 in classes 9, 16, 35, 38, 41 and 42. The Disputed Domain Name On August 12, 2019, the Respondent contacted a subsidiary of the Complainant using an email address connected to the Disputed Domain Name The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights. The Complainant further claims that the Respondent used the Disputed Domain Name to perpetrate an unlawful phishing scheme in terms of which the Complainant’s group CEO is fraudulently impersonated. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the 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. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: (i) The Disputed Domain Name is identical or confusingly similar to a trademark 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 Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks including the textual component NASPERS in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s services. The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. This test typically involves a side‑by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the Disputed Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Disputed Domain Name incorporates the textual and dominant component of the Complainant’s trademark in its entirety, combined with a hyphen and the term “ltd”, which is a widely recognised abbreviation for the limited company designation. In accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark generally does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002). As far as the Disputed Domain Name is concerned, the term “ltd” is a common abbreviation in the English language. Therefore, the term “ltd” does not avoid a finding of confusing similarity to the Complainant’s trademark (see section 1.8 of the WIPO Overview 3.0). Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant's NASPERS trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0 and Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exist. Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. While the Disputed Domain Name currently does not resolve to an active webpage, the Respondent has actively used an email address connected to the Disputed Domain Name with an intent to mislead the Complainant’s subsidiary for its own illegitimate commercial gain. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name. UDRP panels have held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0). The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a reply from the Respondent, the prima facie case established by the Complainant (including serious and well-supported allegations of fraud by the Respondent) has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Complainant provides a copy of several emails sent from an address connected to the Disputed Domain Name. The signature of the emails contains the Complainant’s NASPERS trademark, including both the textual element and the figurative part. The Respondent specifically impersonated the Complainant’s group CEO in these emails. Considering the distinctive character of the Complainant’s NASPERS trademark, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). In the present case, the Panel is of the opinion that the Complainant’s trademark has a strong reputation, including in the United States where the Respondent is residing. This makes it difficult to conceive any plausible legitimate use of the Disputed Domain Name by the Respondent. Further, the Respondent has used an email address connected to the Disputed Domain Name to mislead a subsidiary of the Complainant into paying funds. The use of an email address associated with the Disputed Domain Name to send deceptive emails to solicit payment further constitutes bad faith (see section 3.4 of the WIPO Overview 3.0). Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 Flip Jan Claude Petillion
Sole Panelist
Date: December 10, 2019
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