Complainant is Trustees for The Time Being of The Bison Trust, IT no. 1493/93 (T), South Africa, represented by Moore Attorneys Incorporated, South Africa.
Respondent is Mahendra Singh, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2020, 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 March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2020. The Center appointed Jordan S. Weinstein as the sole panelist in this matter on April 29, 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 Complainant operates in the field of wood‑based panel products. Complainant is the owner of registrations for the trademarks BISON and PG BISON in countries throughout the African continent, including South Africa, Angola, Kenya, Lesotho, Malawi, Namibia, Nigeria, the United Republic of Tanzania, Uganda, and Zanzibar. The earliest of these registrations is in South Africa for BISON (registration No. 1975/03047) in International Class 19, registered on September 29, 1976. The Disputed Domain Name was registered in August 2019, after all of Complainant’s asserted trademark registrations were issued. The Disputed Domain Name resolves to a parked page comprising pay‑per‑click (“PPC”) links. 5. Parties’ Contentions A. Complainant Complainant asserts that its business was established in 1897 in the Western Cape as a glass merchant and timber distributor and that it has a history of more than 100 years as an industry leader in South Africa in wood-based panel products. Complainant asserts it is a leading industrial business in southern Africa and has progressed from a small-cap to a mid-cap listed company on the Johannesburg Stock Exchange. Complainant asserts that its success lies in the drive and dedication of its 1,370 employees who share the common vision of building a business that is regarded as one of South Africa’s most esteemed industrial companies. Complainant asserts that it operates a webpage at Complainant asserts that the Disputed Domain Name is virtually identical to Complainant’s PG BISON trademark, as it wholly incorporates Complainant’s trademark; and the addition of the generic Top-Level Domain (“gTLD") “.com” creates a false impression that the Disputed Domain Name is connected and/or associated with Complainant, which is not the case. Complainant asserts that the Disputed Domain Name creates an impression that the services of the Disputed Domain Name are linked to that of Complainant’s online platform. Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Shortly after the Disputed Domain Name was registered, Complainant addressed a demand letter to Respondent regarding registration of the Disputed Domain Name, to which Respondent never responded. Complainant asserts that Respondent does not operate a genuine business under the Disputed Domain Name and that the Disputed Domain Name is not connected with a bona fide offering of goods or services. Rather, the Disputed Domain Name links to a parked website, and Complainant asserts that there can be no doubt that the Disputed Domain Name was registered merely to interfere with the business of Complainant and to confuse members of the public into believing that the Disputed Domain Name belongs to Complainant, when it does not. Further, Complainant asserts that Respondent is not commonly known by the Disputed Domain Name, and that it has never provided Respondent with permission to register the Disputed Domain Name or to use Complainant’s trademarks. Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because the purpose of registering the Disputed Domain Name was to confuse members of the public by making them believe that the Disputed Domain Name belongs to Complainant. Complainant asserts that Respondent’s registration of the Disputed Domain Name cannot amount to a bona fide use of goods or services, as the Disputed Domain Name can be developed to take unfair advantage of and be detrimental to the distinctive character and reputation of Complainant’s acquired goodwill and reputation. Because Complainant registered the domain name Complainant further asserts that Respondent has registered the Disputed Domain Name in bad faith in order to interfere with the business of Complainant as well as its online presence. Complainant asserts that registration of the Disputed Domain Name may lead to confusion in that people may believe that Respondent’s domain name is that of Complainant when it is not, and unfairly disrupt the business of Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) [respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location. These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation: “(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 customers or to tarnish the trademark or service mark at issue.” Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Findings A. Identical or Confusingly Similar The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s BISON and PG BISON registered trademarks. The Panel notes that the Disputed Domain Name reproduces the PG BISON trademark in its entirety, adding only the letter “s” and the gTLD “.com”. The addition of the letter “s” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), sections 1.7 and 1.9. The gTLD (“.com”) should be disregarded as it is a technical requirement of registration of the Disputed Domain Name and does not serve to distinguish the Disputed Domain Name from other domain names, or from Complainant’s trademarks. See e.g., G4S Plc v. Noman Burki,WIPO Case No. D2016-1383. The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent has no trademark or unregistered rights to BISON or PG BISON, no license from Complainant to use the BISON or PG BISON trademark, and that Respondent has never been known by, commonly referred to, or made any bona fide offering of goods or services using BISON or PG BISON or the Disputed Domain Name. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name, either in response to the Complaint or in response to Complainant’s demand letter. Under the circumstances, the Panel may make an inference that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000‑1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In this case, the totality of Respondent’s acts consist of registering a domain name confusingly similar to Complainant’s well-known marks, which resolves to a parking page. The Panel finds it likely that Respondent registered and is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its parked page containing unrelated PPC links, by creating a likelihood of confusion with Complainant’s mark. Respondent has not provided any evidence or claims to the contrary. The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, based on the following: (i) Complainant’s marks are well-known, distinctive, and arbitrary, and the Disputed Domain Name reproduces the marks in their entireties, adding only the non-distinguishing letter “s” and the gTLD “.com”; (ii) the registration and use of Complainant’s marks long predate the registration of the Disputed Domain Name; (iii) Respondent has failed to submit a Response, or to provide a good-faith basis for the registration of the Disputed Domain Name in response to Complainant’s demand letter; (iv) the Disputed Domain Name resolves to a parked page comprising PPC links; and (v) given that Complainant’s marks are wholly incorporated in the Disputed Domain Name it is implausible that Respondent could put the Disputed Domain Name to any good faith use that is not authorized by Complainant. The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(iii) 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 Jordan S. Weinstein
Sole Panelist
Date: May 13, 2020
Full & Egal Universal Law Academy