Complainant is Mix Telematics Limited, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
Respondent is 蒋黎 (leed johnny), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on May 20, 2021. On May 19, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 20, 2021, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 17, 2021. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 22, 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 Complainant, a South African public company, is a global provider of fleet and mobile asset management solutions delivered as Software as a Service (“SaaS”), and enables customers to manage, optimize and protect their investments in commercial fleets, mobile assets or personal vehicles. Complainant has subscribers located in over 120 countries across six continents for whom it collectively tracked and managed over 818,000 subscribers as of March 31, 2020. Complainant has offices in South Africa, the United Kingdom (“UK”), the United States of America (“United States”), Uganda, Brazil, Mexico, Australia, Romania, Thailand and the United Arab Emirates as well as a network of more than 130 fleet partners worldwide. Complainant owns numerous registered trademarks, for its MIX TELEMATICS mark, including, for example, in the United States, the European Union, UK, Brazil, Kenya, South Africa and Algeria. Complainant has provided evidence that all such registrations predate the registration of the Domain Name. Complainant has also operated numerous domain names and websites with the MIX TELEMATICS mark, with most of the domain names and websites having been registered and started operations in 2008/2009. Examples include: - United States: www.mixtelematics.com Respondent registered the Domain Name on December 22, 2020. On March 25, 2021, Complainant’s representative visited the Domain Name and noted that the Domain Name resolved to a parked page or website with affiliated advertising links to other websites promoting, among others, services that compete with Complainant’s services. These advertisements related to “telematics” and “vehicle telematics systems”. Complainant’s representative subsequently lodged a suspension request with the provider of Respondent’s website, citing infringement of Complainant’s trademark rights. The provider of the parking service responded on the same day by confirming that services to the Domain Name had been suspended. On the same day, Complainant’s representative used the Registrar’s registrant contact form to send messages to Respondent in Chinese and English, raising concerns regarding the Domain Name. No response was received. Subsequently, the Domain Name began resolving to a new parked page, featuring advertising links, but this time without referencing “telematics”. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the MIX TELEMATICS marks and owns domain names incorporating the MIX TELEMATICS marks. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known MIX TELEMATICS products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submits in its email communication to the Center on May 20, 2021 and in the Complaint and the amended Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is in Chinese. Complainant contends that the Domain Name resolves to a website with links to other websites with advertisements in English, including terms such as “Related Links”, “Related Searches” and “Privacy Policy”, which indicates Respondent’s ability to understand and use English. Complainant also contends that the Domain Name is comprised exclusively of Latin characters. In addition, Complainant has provided evidence that Respondent has been the respondent in twelve previous UDRP cases, and was found to understand English in each of these cases, and each of those cases was conducted in English. Complainant also contends that it would involve unfairly high costs and delay for Complainant to translate and conduct the proceedings in Chinese. Complainant notes that it is unable to communicate in Chinese, and is not in a position to conduct the proceeding in Chinese without an additional large expense and delay due to the need for translation. In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using Latin characters. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MIX TELEMATICS marks, which have been registered since at least as early as 2009, well before Respondent registered the Domain Name on December 22, 2020 as noted above. Complainant has also submitted evidence, which supports that the MIX TELEMATICS marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the MIX TELEMATICS marks. With Complainant’s rights in the MIX TELEMATICS mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s MIX TELEMATICS marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The incorporation of the MIX TELEMATICS mark with the absence of the second “e”, between “l” and “m”, in the Domain Name Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the MIX TELEMATICS marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MIX TELEMATICS trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the MIX TELEMATICS marks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a parked page or website with affiliated advertising links to other websites. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(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 The Panel finds that Complainant provided ample evidence to show that registration and use of the MIX TELEMATICS marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s MIX TELEMATICS marks and related services are widely known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was likely aware of the MIX TELEMATICS marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007. Further, the Domain Name not only incorporates Complainant’s MIX TELEMATICS mark, with a minor misspelling, in particular, the absence of the second “e” between “l” and “m”, in the Domain Name, Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under 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 Domain Name Kimberley Chen Nobles
- South Africa: www.mixtelematics.co.za
- Rest of Africa: www.mixtelematics-africa.com
- Australasia: www.mixtelematics.com.au
- Brazil: www.mixtelematics.com.br
- Europe: www.mixtelematics.co.uk
- Middle East: www.mixtelematics.ae
- Italy: www.mixtelematics.it
- Germany: www.mixtelematics.de
- France: www.mixtelematics.fr
- Spain: www.mixtelematics.es
- Poland: www.mixtelematics.pl
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Sole Panelist
Date: July 5, 2021
Full & Egal Universal Law Academy