The Complainant is KAP Industrial Holdings Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Angela Pliler, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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 October 12, 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 amended Complaint on October 14, 2021.
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 October 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 12, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on November 19, 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.
The Respondent sent an email to the Center on November 22, 2021.
4. Factual BackgroundThe Complainant and its group of companies have operated a range of industrial, chemical, and logistics businesses under the name “KAP” since about 2003. The logistics division provides specialised logistics and passenger transport services.
The Complainant operates in South Africa and 11 other African countries.
The Complainant registered the domain name
The Complainant owns a number of registered trade marks for KAP including South African trade mark No. 2017/33428, filed on November 16, 2017, registered on July 27, 2019, in class 35.
The disputed domain name was registered on October 31, 2012.
There is no evidence that the disputed domain name has ever been used for an active website.
The Complainant sent a legal letter to the Respondent on April 21, 2021. There was no response.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
Through its extensive trading activities, the Complainant has acquired a substantial reputation and goodwill in the name “KAP” within the logistics industry and has thereby acquired common law rights therein.
The disputed domain name is confusingly similar to the Complainant’s trade mark, which is the dominant feature of the disputed domain name. The addition of the word “logistics” in insufficient to prevent confusion. On the contrary, it increases the likelihood of confusion as the Complainant operates within the logistics industry.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant did not give the Respondent permission to register the disputed domain name or to use the Complainant’s trade marks.
The disputed domain name is dormant and has not been used for a bona fide offering of goods and services.
The Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
The Complainant registered its own domain name
The Respondent registered the disputed domain name to confuse members of the public into thinking that it was connected with the Complainant. The disputed domain name constitutes bad faith because it can be developed to take unfair advantage of, and be detrimental to, the Complainant’s goodwill and reputation.
The Respondent registered the disputed domain name to prevent the Complainant from reflecting the mark in a corresponding domain name and/or to disrupt the Complainant’s business.
The mere registration of a domain name that is identical or confusingly similar to a famous or widely known trade mark by an unaffiliated entity can of itself create a presumption of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. The Respondent simply sent an email to the Center on November 22, 2021, stating: “I have had this domain since around 2012. It belongs to me. I will be contacting domainsbyproxy tomorrow to sort out my end of it.”
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the mark KAP by virtue of its registered trade marks for that term as well as unregistered trade mark rights deriving from its extensive and longstanding use.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element. Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “logistics” does not prevent a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the Complainant has therefore established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithIn the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels 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 case, the Panel considers that the following cumulative circumstances are indicative of bad faith:
(i) the distinctiveness and fame of the Complainant’s mark,
(ii) the fact that the disputed domain name consists of the Complainant’s mark plus the word “logistics” which reflects the Complainant’s business, indicating that the Respondent selected the disputed domain name with the Complainant in mind,
(iii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and
(iv) the implausibility of any good faith use to which the disputed domain name may be put.
The Complainant has therefore established the third element of paragraph 4(a) of the Policy.
7. DecisionFor 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,
Adam Taylor
Sole Panelist
Date: December 3, 2021