The Complainant is Retailability (Pty) Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Contact Privacy Inc. Customer 0159598389, Contact Privacy Inc. Customer 0159598389 / Elegant Digital Goods and Accessories Retails Store (Pty) Limited / Ephrem Adugna, Flamingo / Kabelo Zulu, Fury Autos and parts, South Africa. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 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 December 4, 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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent sent an email to the Center on December 4, 2020, however an official response was not submitted. Accordingly, the Center notified the Commencement of Panel Appointment on December 29, 2020. The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 6, 2021. 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 retailer in South Africa and its surrounding countries that operates the EDGARS retail chain. The EDGARS retail chain was founded and has been trading under the EDGARS trademark since 1929. The Complainant is well-known in Southern Africa and owns extensive registered trademark and related common law rights in EDGARS. The Complainant’s EDGARS trademarks have been registered in Angola, Botswana, China, Ghana, Jordan, Kenya, Lebanon, Lesotho, Malawi, Mozambique, Namibia, Nigeria, South Africa, Swaziland, and Zambia. As an example, registration no. 1975/06111 EDGARS in class 25 in South Africa. The Complainant owns many domain names consisting of or including the Complainant’s trademark, for example The Domain Name Even if the Domain Names are registered to nominally distinct underlying registrants, the Complainant requests consolidation into a single Complaint. The Complainant asserts that it only learnt of the existence of the Domain Names through correspondence with the third Respondent relating to the infringement of its EDGARS trademark. The representative of this Respondent purported ownership of the two Domain Names. The same representative is connected to all listed Respondents. This representative clearly controls both Domain Names. The Complainant provides evidence of trademark registrations, and argues that the Domain Names incorporate the Complainant’s trademark, together with the descriptive term “shopping”, correctly spelled or misspelled without the genitive “s”. This addition is not sufficient to avoid confusion between the Domain Names and the trademark. The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Names. The Respondent cannot establish rights in the Domain Names as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has already unlawfully used the Complainant’s trademark, in the form of a reproduced version of the Complainant’s device mark on the Google Play Store. The Complainant believes the Respondent was aware of the Complainant’s activity and trademark. The Respondent's knowledge of the Complainant and its trademarks is inferable from the fact that the Respondent is situated in South Africa and the Respondent has already misused the Complainant’s device trademark on the Google Play Store. The Complainant argues that the Respondent has intentionally attempted to attract Internet users to its online locations, for commercial gain, by creating confusion with the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complaint, but sent an email to the Center December 4, 2020, in which the Respondent inter alia claimed it is a member “of the South African group who represent customers who are running the business in Ethiopia, for whom we registered the domain”. The Respondent also argued that there is no trademark infringement as the alleged business is in Ethiopia and in e-commerce where the Complainant is not active. The Respondent’s claims were not supported by any evidence. 6. Discussion and Findings A. Complaint consolidated against multiple respondents The Panel has reviewed the Complainant’s arguments. All arguments put together, in particular the disclosure by the Respondent of ownership of the Domain Names, convinces the Panel that the Domain Names, on the balance of probabilities, are subject to common control and that consolidation would be fair and equitable to all parties. Moreover, the Respondent has not rebutted the Complainant’s contentions as to the control over the Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. B. Identical or Confusingly Similar The Complainant has established that it has rights in the trademark EDGARS. The test for confusing similarity involves the comparison between the trademark and the Domain Names. The Domain Names incorporate the Complainant’s trademark, either correctly spelled or misspelled without the “s” at the end, with the descriptive term “shopping” added at the end. The misspelling or the addition do not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top‑Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11. The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names as it has not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering. The Respondent’s previous use of a reproduction of the Complainant’s device trademark, is clearly not bona fide, and indicates that the Respondent has no rights or legitimate interests in the Domain Names. The Respondent’s email explanation that it is effectively a competitor in Ethiopia is not supported by any documentation or evidence and does little to convince the Panel. Be that as it may, this is not a trademark dispute, but domain name dispute under the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Panel agrees with the Complainant that the Respondent must have been aware of the Complainant when the Respondent registered the Domain Names. It is evident from the Respondent’s illegitimate use of the Complainant’s device mark and the fact that the Respondent is situated in South Africa. Based on the case file, the Panel finds it likely that the Respondent has registered and used the Domain Names to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning 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 Domain Names Mathias Lilleengen
Sole Panelist
Date: January 19, 2020
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