The Complainant is Truworths Ltd, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is saichao dong, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2020, 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 May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on June 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 large fashion and related accessories retailer headquartered in South Africa. The Complainant has 767 TRUWORTHS branded stores in South Africa, and 39 stores elsewhere in Africa, including in Kenya, Zambia, Zimbabwe, Namibia, Botswana, Lesotho, Eswatini, and Mauritius. The Complainant either directly or through a wholly owned subsidiary owns various registered trademarks for TRUWORTHS. The first of these marks was filed in 1945, in South Africa – trademark No. 1945/00031. These trademarks are collectively referred to as the “TRUWORTHS trademark” in this decision. The Complainant registered The Disputed Domain Name was registered on December 19, 2019. The filed evidence shows it has been linked to a website (the “Respondent’s Website”) which is in Chinese and which offers betting and gambling facilities. On April 21, 2020 the Complaint’s representatives sent a message of complaint to the Respondent via the then registrar’s online contact form. No reply was received. On the same date the Complainant’s representatives sent an email of complaint to the then registrar of the Disputed Domain Name, based in China. On April 22, 2020 the registrar responded stating: “Thank you for your information. We have suspended this domain because of betting. While when we visit the domain, there is no obvious infringed content related to your trademark or brand. If you deem the domain components are infringed or create confusion to yours, please consult with Arbitration center for help and we will finally comply with UDRP and final decision.” Shortly after this the registration of the Disputed Domain Name was transferred to another registrar outside China and the Respondent’s website remained active thereafter. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows. The Disputed Domain Name is confusingly similar to the TRUWORTHS trademark. The Respondent has no rights or legitimate interests in the term “truworths” or “trueworths”. In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Respondent is engaged in typosquatting and attracting customers for financial gain. Further points the Complainant raises in support of its case are discussed in more detail below. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Matters The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the TRUWORTHS trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It involves the addition of the letter “e” into what is in substance the Complainant’s trademark. It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is 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. For reasons discussed in more detail below in relation to bad faith it seems to the Panel that the Respondent is using the Disputed Domain Name for the offering of gambling services which has nothing to do with the Complainant or the Complainant’s trademark and the fact that the Disputed Domain Name is in substance a typographical variant of the Complainant’s trademark is merely coincidental. The Complainant says the Respondent’s activities are illegal in China and illegal activities cannot confer a legitimate interest. Whilst the Respondent’s website is clearly written in Chinese logograms the Panel does not know whether it is based in or targeted specifically at China as opposed to readers of Chinese wherever they may be. In any case in view of the Panel’s findings with regard to bad faith (below) the Panel does not need to reach a conclusion on this issue. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. The Panel considers the present circumstances do not raise a straightforward case of any of the above applying. There is no evidence before the Panel which suggests the Respondent has offered the Disputed Domain Name for sale, whether to the Complainant or generally. There is no evidence that the Respondent has offered any of the very large portfolio of domain names he holds (see below) for sale. And while the Disputed Domain Name could be considered to be typographical variant of the Complainant’s trademark, it also combines two ordinary words (albeit the latter word being a grammatically incorrect plural of sorts). Normally when the domain name is a typographical variant of a mark there is corresponding content, and it is possible to infer that a respondent was deliberately targeting the trademark in question and a case of bad faith can readily be established generally under (i) above. However for reasons discussed in more detail below the Panel is not satisfied this is the case here – it seems to the Panel that the fact that the Disputed Domain Name is a typographical variation of the Complainant’s trademark may be entirely coincidental and there is no intent to divert customers from the Complainant to the Respondent – see discussion below. The Panel accepts that the Disputed Domain Name could well be mis-entered or conceivably mis-remembered by persons seeking the Complainant’s website. It could even be located by search algorithms and the like when searches are performed which relate to the Complainant. The Panel is however far from convinced that this is part of a deliberate strategy developed by the Respondent. It seems unlikely that persons seeking a South African based fashion retailer would have any interest in a Chinese gambling site they mistakenly arrived at. Why would the Respondent be deliberately seeking to attract such persons? It seems quite clear that a visitor to the Respondent’s Website needs to be able to read the Chinese language logograms the site is written in, in order to interact with the website. Clearly persons seeking the Complainant are not likely to be able to do so. The Panel agrees with the Complainant when it says “The use of TRUEWORTHS as the Domain Name (minus the TLD) appears to be entirely incongruous and makes no sense in the context of the websites used at the Domain Name for betting services. Those websites do not reference TRUEWORTHS anywhere and that mark has no apparent meaning or relation to the content of the websites”. The Panel does not however agree with the Complainant when it goes on to say “This points clearly to the registrant having intended to use the Complainant’s well-known trade mark for the Domain Name for purposes of typosquatting, i.e. to catch users that mistype the Complainant’s trade mark into their browsers and to redirect their traffic to betting sites, or to bolster its search engine rankings which are widely known to take the popularity of domain name keywords into account”. While the Complainant makes a sweeping claim about search engines, this is not supported by evidence specific to the case at hand, and absent such showing, the Panel is not prepared to base its finding on this allegation. See in notable contrast, a case where a panel accepted a domain name had been deliberately formed in a manner intended to influence search engine behaviour Philipp Plein v. Kimberly Webb,WIPO Case No. D2014‑0778 (the complaint in that case did not however succeed given the panel’s finding on lack of similarity). In order to try to understand the Respondent’s likely motives better the Panel has looked at the evidence filed by the Complainant and has carried out limited searches of its own (see section 4.8 of WIPO Overview 3.0 in this regard) by visiting websites linked to some of the domain names in evidence. The Complainant claims in the Complaint that “the Respondent is currently the registrant for almost 3000 domain names, many of which incorporate well-known third party trade marks”. The Complainant evidence produces the results of a reverse WhoIs search listing about 2,300 domain names the Respondent has registered. It seems to the Panel that these are all domain names comprising five or more characters and/or numbers from the roman alphabet/numbering system and the vast majority of these comprise almost entirely character strings which do not have any readily apparent obvious linguistic meaning or significance – thus for example, to take the first ten entries commencing with the letter “t” these are as follows: Whilst the vast majority of the domain names the Respondent owns appear to be character strings which do not correspond to ordinary words (whether in English or any other language so far as the Panel can see) there are however some cases where this is not the case and the domain name in question does result in a combination of ordinary English words – for example The Complainant identifies four domain names owned by the Respondent which it says each incorporates a well-known third party trademark as follows – The Complainant says “The use of WWW in the second-level portion of the two relevant domains above is a clear indicator that typosquatting was the intention for those two domains. It is quite clear that the Respondent has engaged in a pattern of registering well-known trade marks as domain names with a view to taking unfair advantage of the trade mark owners’ rights. There can be no other explanation for registering multiple well-known trade marks as domain names”. Again the supposition that the Respondent would derive any benefit by attracting customers interested in any of these trademarks to a Chinese language gambling site is speculation on the Complainant’s part unsupported by evidence. The Panel assumes the Complainant has searched through the 2,200 plus domain names owned by the Respondent to find these examples. The Panel is not convinced that four examples out of over 2,200 domain names establishes a pattern in this regard. Taking the evidence as a whole it seems to the Panel that it is more likely than not that the Respondent is engaged in simply acquiring domain names that happen to be available, whether or not the character string makes any sense as a matter of English language, and then linking those domain names to Chinese language gambling sites. The Panel cannot discern the business methodology that is involved here. It has no evidence before it and no knowledge of how Chinese language gambling sites operate, or why (if at all) it makes business sense to link large numbers of apparently meaningless domain names to such sites. There is no evidence that the Respondent is a dealer in domain names offering them for sale. Overall it seems to the Panel more likely than not that he is promoting some form of gambling activity directed at a Chinese language market. The Panel does not think the evidence as whole establishes that the Respondent is attracting traffic because of any third party trademarks comprised within any of his domain names. Indeed in most cases the domain names do not make any sense as a matter of language – though in a few cases the characters comprising the domain name string do make up ordinary words – but looking at the evidence as a whole it may be this is a matter of coincidence rather than choice, and the Panel is unconvinced that such names have been chosen by the Respondent because of any similarity with any person’s trademark. The Panel does not know how the Respondent selects the domain names he registers – given that most of the domain names do not correspond to English (or so far as the Panel can see any other language) words it may be that some form of automated algorithm is involved. So far as the Panel can see the Complainant has identified only four cases out of over 2,200 domain names where a domain name includes a third party trademark (see above). In two of these cases the trademark concerned is a three letter acronym. Without knowing more about how and why the Respondent registered these domain names the Panel does not think it safe to derive any wider inference of bad faith from these four cases. Taking the evidence as a whole the Panel is not satisfied that it establishes the Disputed Domain Name was chosen because of its similarity to the Complainant’s trademark. It seems to the Panel more likely that it was chosen as result of whatever methodology the Respondent uses to select domain names, and its similarity to the Complainant’s trademark is entirely coincidental. If that is the case there is no basis for a finding of bad faith unless further factors suggest otherwise. In this regard the Complaint relies particularly upon two further factors. The first is so called “cyber flight” in that when the Complainant first complained to the relevant registrar about the Respondent’s Website the registration of the Disputed Domain Name was transferred to another registrar. The second is that the Respondent has provided false contact details – the relevant address is self evidently incorrect. The Panel accepts that both these circumstances can in appropriate situations support a finding of bad faith. The difficulty here however is that the Respondent’s activities may be illegal in China – the Complaint itself says: “The response from the Registrar was to be expected given that betting, a species of gambling, is widely known to be illegal in China, along with all forms of gambling”. It seems to the Panel that the Respondent’s actions in moving Registrar and in providing false contact details are more likely to be motivated by obscuring/avoiding his involvement in potentially unlawful activity in China rather than any bad faith intent against the Complainant. The reply from the registrar concerned (see above) made clear the Disputed Domain Name was likely to be suspended because of concerns about legality – so a change of registrar thereafter is not in the Panel’s view an indication of anything more than seeking to avoid that issue. The fact that the Respondent’s activities may be unlawful in a given country is not in itself sufficient to automatically establish bad faith registration vis-a-vis the Complainant. The Complainant also relies upon the Respondent’s failure to respond to correspondence making complaint. Whilst such failure can in appropriate circumstances support a finding of bad faith made for other reasons, the Panel does not consider it suffices on its own to establish bad faith, particularly if the Respondent’s activities are otherwise unobjectionable. So far as other factors are concerned the Panel notes that the Complainant has a registered trademark in China for TRUWORTHS. In this context the Complainant draws attention to sections 3.2.2 and 3.2.3 of WIPO Overview 3.0 and says that “high-volume registrants or domainers” come under particularly duties to avoid trademark infringement. As the Panel understands it these sections are directed at “domainers” i.e., dealers in domain names and, while the Panel could see some analogy in other “high volume” registrants to come under a similar duty the Panel does not have enough evidence to conclude that the Respondent was targeting the Complainant. In any event even assuming the Respondent did come under such a duty and hence was fixed with “an affirmative obligation to avoid the registration of trademark-abusive domain names” (as per WIPO Overview 3.0, section 3.2.3) it is not clear to the Panel that the Respondent’s activities would amount to bad faith noting the nature of the domain name registrations by the Respondent as analyzed in this decision. Accordingly, the Panel finds that the Complaint has failed to establish that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has not been fulfilled. 7. Decision For the foregoing reasons, the Complaint is denied. Nick J Gardner
Sole Panelist
Date: June 25, 2020
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