The Complainant is Impala Platinum Holdings Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domain Admin, Domain Registries Foundation, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2020. The Center appointed Jane Seager as the sole panelist in this matter on October 14, 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 publicly-listed South African company, engaged in the production of platinum group metals. The Complainant employs some 50,000 people across its operations, and markets and sells its products in China, the European Union, Japan, South Africa, and the United States of America. For use in connection with its metal-production operations, the Complainant has acquired trademark registrations for IMPALA, IMPALA PLATINUM, and IMPLATS, including: - South African Trademark Registration No. 1998/08322, IMPALA, registered on April 4, 2002; - South African Trademark Registration No. 2008/28896, IMPALA PLATINUM, registered on April 6, 2011; and - South African Trademark Registration No. 1998/08317, IMPLATS, registered on December 3, 2001. The Complainant is also the registrant of the domain name The disputed domain name was registered on February 3, 2011. The disputed domain name resolves to a parking page displaying Pay-Per-Click (“PPC”) links to third-party goods and services. On July 2, 2020, the Complainant sent a cease-and-desist letter to the Respondent via the email address then listed in the publicly-available WhoIs record. On July 27, 2020, the Complainant re-sent the same cease-and-desist letter to the contact email address of the Respondent as disclosed by the Registrar. The Respondent did not reply to the Complainant’s cease-and-desist letter. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the IMPALA, IMPALA PLATINUM and IMPLATS trademarks. The Complainant submits that the disputed domain name is confusingly similar to its IMPALA trademark, as it wholly incorporates the Complainant’s IMPALA trademark, together with the term “platinum”, referring to the primary product offered by the Complainant. The Complainant further submits that the disputed domain name is identical to its IMPALA PLATINUM trademark, and that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not serve to distinguish the disputed domain name from the Complainant’s trademark. The Complainant asserts that the Respondent is not associated with the Complainant in any way. The Complainant submits that the Respondent’s use of the disputed domain name to resolve to a parking page displaying PPC links is an attempt to capitalize on the advertising value of the Complainant’s well-known trademarks. The Complainant refers to a number of prior UDRP decisions involving well-known, third-party trademarks, in which the Respondent was found to have engaged in such behaviour. The Complainant submits that it has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent was undoubtedly aware of the Complainant’s trademark rights when it registered the disputed domain name, given that the disputed domain name comprises the Complainant’s IMPALA trademark together with the term “platinum”, which relates to the Complainant’s primary product as well as the Complainant’s name, Impala Platinum Holdings Limited. The Complainant asserts that its trademarks have acquired substantial reputation, which could be damaged by another party wrongly representing that it is, or is associated with, the Complainant. The Complainant submits that the registration of a domain name which is so obviously connected to a well-known product by someone with no connection to the product suggests opportunistic bad faith. The Complainant asserts that there cannot be a legitimate or reasonable explanation for the Respondent’s registration of the disputed domain name. The Complainant further submits that the Respondent has engaged in a pattern of a pattern of registering domain names that are identical or confusingly similar to registered trademarks in which the Respondent has no rights or legitimate interests, in bad faith pursuant to paragraph 4(b)(ii) of the Policy. Finally, the Complainant submits that by using the disputed domain name, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source of the Respondent’s website using the PPC cash-generating system, in bad faith. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail, it must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (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; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established trademark rights in IMPALA and IMPALA PLATINUM, the registration details of which are provided in the factual background section above. The disputed domain name comprises the Complainant’s IMPALA trademark as its leading element, together with the descriptive term “platinum”. Prior UDRP panels have consistently found that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name also reproduces the Complainant’s IMPALA PLATINUM trademark, simply omitting the space between the two words making up the mark, a space being incapable of representation per se in a domain name. It is well established that the gTLD may be disregarded for purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s IMPALA and IMPALA PLATINUM trademarks. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests As noted in WIPO Overview 3.0, section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” There appears to be no relationship between the Parties. The Complainant has not authorized the Respondent to make use of its trademarks in a domain name or otherwise. The disputed domain name resolves to a parking page displaying PPC links to third-party goods and services. Prior UDRP panels have held that the use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s trademark; see WIPO Overview 3.0, section 2.9. While the disputed domain name is composed of dictionary words, i.e., “impala” the animal, and “platinum” the metal, the PPC links appearing at the web page to which the disputed domain name resolves appear to have no relation to the meaning of those words. Rather, the Panel infers from the close resemblance between the disputed domain name, the Complainant’s trademarks, and the Complainant’s company name, that the Respondent is attempting to capitalize on the reputation and goodwill of the Complainant’s trademark. In the circumstances, the Panel does not consider that the Respondent is making use of the disputed domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent is listed as “Domain Admin, Domain Registries Foundation”, which bears no resemblance to the disputed domain name whatsoever. The Respondent has not come forward to produce any evidence of having any registered rights for the name “Impala Platinum”, or any variation thereof. The Panel finds that the Respondent is not commonly known by the disputed domain name in terms of paragraph 4(c)(ii) of the Policy. Nor is there any evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed a Response and has therefore failed to produce any evidence to rebut the Complainant’s prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant states that its primary operating unit and wholly-owned subsidiary “Impala Platinum Limited” has been operating under that name since 1968. The Complainant’s trademark registrations for IMPALA pre-date the registration of the disputed domain name by several years. All of the top Google results for a search on “impala platinum” refer to the Complainant. The Complainant has provided evidence of its online presence across social-media platforms and in relevant industry publications. Despite being composed of two dictionary terms, when read together the words “impala” and “platinum” appear to have no other meaning other than as reference to the Complainant. Prior UDRP panels have held that domainers undertaking bulk purchases or automated registrations have an affirmative duty to avoid the registration of trademark-abusive domain names; see WIPO Overview 3.0, section 3.2.3. Even a cursory Internet search for the term “impala platinum” would have returned a substantial number of results relating to the Complainant. The Panel further notes that the Respondent has been named in several prior UDRP decisions as having registered domain names corresponding to well-known, third-party trademarks. In the absence of any evidence to the contrary, the Panel finds it more likely than not that the Respondent registered the disputed domain name with the Complainant’s trademarks in mind, having no authorization to do so, in bad faith. As noted above, the Respondent does not appear to have made any substantive use of the disputed domain name since its registration in February 2011, other than in connection with a parking page displaying PPC links. In light of the high degree of similarity between the disputed domain name, the Complainant’s trademarks, and corporate name, it is likely that Internet users seeking the Complainant may arrive at the parking page to which the disputed domain name resolves. Indeed, the corresponding string under the South African country code Top-Level Domain extension “.co.za” redirects to the Complainant’s website at “www.implats.co.za”. By using the disputed domain name in such a manner, the Panel finds that the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the products and services advertised on the web page to which the disputed domain name resolves, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel further finds the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and failure to file a Response in the present proceeding to be further evidence of the Respondent’s bad faith. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 Jane Seager
Sole Panelist
Date: October 28, 2020
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