The Complainant is National Brands Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Private Registration, NameBrightPrivacy.com, United States of America / muiton sae, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2021 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 amendment to the Complaint on July 19, 2021. The Center verified that the Complaint, together with the amendment to 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 July 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2021. The Complainant is a South African consumer goods company incorporated in 1948. The Complainant is particularly known for its biscuits branded with ZOO and ICED ZOO trademarks for more than 70 years. The Complainant invested significant amounts of money in promotion and advertising of its ZOO and ICED ZOO biscuits. The Complainant owns a number of ZOO trademark registrations in various jurisdictions, including for instance South African trademark registration No. 2002/17942, registered on September 26, 2007. The Complainant also owns a number of domain names featuring its ZOO trademark, for instance The disputed domain name The Complainant sent a cease and desist letter to the Respondent and the Complainant has not received a response. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant's ZOO trademark and respective part of its ICED ZOO trademark. The inclusion of the word “biscuit” does not distinguish the disputed domain name from the Complainant's trademark, but contributes to the likelihood of confusion, since the Complainant uses its trademark for biscuits. The words “life is” are also not sufficient to distinguish the disputed domain name from the Complainant's trademark but are merely dictionary words. The domain name extension “.com” shall be ignored for the confusion similarity test. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized usage of its trademark by the Respondent as a part of the disputed domain name or otherwise. There is no relationship or association between the Complainant and the Respondent, whether by license or otherwise. The Complainant's trademark registrations predate registration of the disputed domain name. The disputed domain name does not resolve to an active webpage. The Complainant sent a demand letter to the Respondent, however received no response. The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant's trademark when registering the disputed domain name specifically referring to the Complainant's ZOO biscuits. The registration and use of the disputed domain name so obviously connected with the Complainant's well-known product suggests opportunistic bad faith. The Respondent while registering the disputed domain name had an intention to take unfair advantage of the substantial reputation and goodwill if the Complainant's trademarks and to capitalize from users intending to access the Complainant's website. Registration of the disputed domain name is detrimental to the distinctive character and reputation of the Complainant's well-known trademarks. The Respondent is preventing the Complainant from exercising its rights and disrupts the Complainant's business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), the applicable generic Top-Level Domain (the “gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant's ZOO trademark. According to section 1.8 of the WIPO Overview 3.0, 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. The Panel finds that the Complainant's trademark is recognizable within the disputed domain name, and the addition of words or letters “life”, “is”, “a”, and “biscuit” referring to the Complainant’s respective product, do not prevent confusing similarity. Considering the above, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875). The Respondent has no right or legitimate interests in the disputed domain name, which used to resolve to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). Further switch of the disputed domain name to a lottery service website as a reaction to the Complaint does not confirm the rights or legitimate interests of the Respondent; rather, the use is likely to derive commercial gain for the Respondent, further supporting a finding that the Respondent lacks rights or legitimate interests. Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0, noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific, and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. When considering the Complainant’s 70 year history of marketing it’s ZOO biscuits, as well as its registration and use of the domain names According to section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, which has been replicated in its entirety in the disputed domain name, with the descriptive term “biscuits” directly appended to it reinforcing the connection to the Complainant, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, and (iv) the Respondent’s concealing its identity while registering the disputed domain name. Further switch of the disputed domain name to a lottery service website as a reaction to the Complaint supports a finding of use in bad faith. According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that switch of the disputed domain name to a lottery service website after receiving the Complaint confirms that at least the fourth of the above scenarios apply to the present case allowing to prove the Respondent’s bad faith. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 Taras Kyslyy
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 26, 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
Sole Panelist
Date: September 6, 2021
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