The Complainant is Transnet SOC Ltd, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Perfect Privacy, LLC, United States / Ferda Ernawan, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 26, 2020, 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 February 28, 2020. 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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2020. The Center appointed Adam Taylor as the Sole Panelist in this matter on April 9, 2020. 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 rail, port, and pipeline company that has been trading under the name “Transnet” since 1990. It is majority-owned by the South African government and is responsible for most of South Africa’s national rail, port, and pipeline infrastructure. One of the Complainant’s divisions is called “Transnet National Ports Authority”, formed in 2007. The Complainant owns many registered trade marks for TRANSNET including South African trade mark No. 1992012210, filed on October 23, 1987, registered on August 3, 1992, in class 12. The Complainant’s main website is located at “www.transnet.net”. The Complainant registered the disputed domain name in 2007 and used it until 2019, when by mistake it was allowed to expire. The Respondent acquired the disputed domain name in auction on or about October 9, 2019. As of February 7, 2020, the disputed domain name was used for a gambling website which included the term “transnet national ports authority” in the header. The Complainant sent a cease and desist letter to the Respondent by email on February 7, 2020. No response was received. 5. Parties’ Contentions A. Complainant A summary of the Complainant’s contentions is as follows. The Complainant is well known to most South Africans and to businesses operating in South Africa. The Complainant’s reputation in its “Transnet” and “Transnet National Ports Authority” marks were established prior to September 2019, when the Complainant lost control of the disputed domain name. The Complainant owns common law rights in the marks in addition to its registered trade marks. The disputed domain name is identical or confusingly similar to the Complainant’s marks. The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not connected with the Complainant. The Respondent’s use of the disputed domain name, which is descriptive of a national ports authority, for a gambling website is not a bona fide offering of services. The Respondent’s failure to respond to the Complainant’s letter is further evidence of its lack of legitimate interests, as is the lack of street address in the WhoIs and the Respondent’s use of a privacy service. The disputed domain name was registered and is being used in bad faith. The Respondent has registered numerous domain names that incorporate third party trade marks, constituting a pattern of bad faith conduct under the Policy. The Respondent’s use of the disputed domain name for gambling, antithetical to the Complainant’s values, constitutes tarnishment of the Complainant’s mark and this is a further indicator of bad faith. The Respondent has registered and used the disputed domain name to create a likelihood of confusion with, and benefit from, traffic generated by the Complainant’s well-known trade mark including persons seeking information about the Complainant’s activities. The activities of the Respondent have harmed the Complainant in that they have generated negative publicity relating to the Complainant. Mere registration of the disputed domain name corresponding to a famous trade mark of itself creates a presumption of bad faith, as does the use of a privacy services in the circumstances of this case. The disputed domain name relates only to the Complainant and it makes no sense when used for any other undertaking. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, the Complainant is required to prove on the balance of probabilities that: - the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the mark TRANSNET by virtue of its registered trade marks as well as unregistered trade mark rights in the mark TRANSNET NATIONAL PORTS AUTHORITY deriving from its extensive use of that name. The disputed domain name is identical to the Complainant’s unregistered trade mark TRANSNET NATIONAL PORTS AUTHORITY, and confusingly similar to the Complainant’s registered trade mark TRANSNET, which is readily recognisable within the disputed domain name. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests As explained insection 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element. Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name. As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse, and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel has little difficulty in concluding that the Respondent registered and used the disputed domain name in bad faith. It is obvious that the Respondent registered the disputed domain name with the Complainant in mind. Indeed, the disputed domain name is uniquely associated with the Complainant’s distinctive name and trade mark. It is impossible to conceive that the Respondent had any legitimate purpose in registering and using the disputed domain name and the Respondent has not appeared in this proceeding to offer any explanation. In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s unique and distinctive trade mark, in connection with a gambling website, including use of the Complainant’s name in the header of the site, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. The likelihood of confusion is not diminished by the probability that at some point users arriving at the Respondent’s site will realize that the site is not connected with the Complainant because it is entirely unrelated to the Complainant’s industry. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the disputed domain name creates an implied risk of affiliation with the Complainant, and the Respondent profits from at least some of the traffic intended for the Complainant. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 Adam Taylor
Sole Panelist
Date: April 23, 2020
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