WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
24.com Online Studio (Pty) Limited, Media24 (Pty) Limited, Media24 Beperk, and Media24 Intelprop Holdings Limited v. Tom Osato
Case No. D2011-2250
1. The Parties
The Complainants are 24.com Online Studio (Pty) Limited of Cape Town, Western Cape, South Africa; Media24 (Pty) Limited of Cape Town, Western Cape, South Africa; Media24 Beperk of Cape Town, Western Cape, South Africa; and Media24 Intelprop Holdings Limited of Ebene, Maurtiu, represented by Coulson Harney Advocates, Kenya.
The Respondent is Tom Osato of Benin city, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <kenyanews24.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 21, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 21, 2011, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 28, 2011, the Center invited by email the Complainants, copying the Respondent, to submit a request for consolidation indicating the relevant criteria for bringing a single consolidated complaint by multiple Complainants have been met. On January 3, 2012, the Complainants filed an amendment to the Complainant.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.
The Center appointed Francine Tan as the sole panelist in this matter on January 30, 2012. 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 Complainants are a group of affiliated companies within the Naspers Group, a South-Africa based multinational media company with principal operations in electronic media and print media. They own registrations for the NEWS24, NEWS24 and device, NEWS24.COM and device, and NEWS24/NUUS24.COM trade marks (“the Complainants’ marks”) in a number of countries including South Africa, Nigeria, China and the European Community, covering goods and services in Classes 9, 16, 35, 38, 41 and 42 of the Nice Classification. One of the Complainants’ primary services relate to the reporting of news and current affairs over the Internet.
The Complainants state that they have actively used the Complainants’ marks in Kenya and around the world and have built goodwill and reputation around these trade marks. The first Complainant 24.com Online Studio (Pty) Limited operates the website at “www.news24.com” which reports on events and news in both Kenya and Nigeria.
The disputed domain name was registered on November 28, 2011.
5. Parties’ Contentions
The Complainants assert that:
(1) The disputed domain name is identical or confusingly similar to the Complainants’ marks in which they have rights. In this regard, the disputed domain name has, as its significant element, the word and numeral combination “news24”. The disputed domain name incorporates in its entirety and in identical fashion the dominant elements of the Complainants’ marks. The only difference between the Complainants’ marks and the disputed domain name is the incorporation of the word “Kenya” which is generic or descriptive in nature. The Complainants submit that the word “Kenya” does not therefore serve to sufficiently distinguish or differentiate the disputed domain name from the Complainants’ marks.
The Complainants assert that the danger of association and likelihood of confusion are exacerbated by the fact that the first Complainant is launching a Kenyan version of its website under the domain name <kenya.news24.com> which is a derivative of its existing domain name registration and in line with the Complainants’ existing trade mark registrations. The first Complainant owns the domain name <24.com> which was registered on August 28, 1988, long before the disputed domain name was registered.
The Complainants contend that the Respondent’s website infringes the Complainants’ trade mark rights as it displays the Complainants’ well-known NEWS24 trade mark, and the content of the website relates to goods and services which are identical or similar to those provided on the first Complainant’s website. There is therefore a high likelihood that consumers would be confused into thinking that the Respondent’s website to which the disputed domain name resolves is that of the Complainants.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The bases for these contentions include the following:
(a) The Complainants have not licensed or otherwise permitted the Respondent to use their 24.COM or NEWS24 trade marks or variations thereof.
(b) The disputed domain name was registered by the Respondent on November 28, 2011 which is 13 years after the Complainants registered its <24.com> domain name. Moreover, the Complainants’ earliest trade mark registrations for the 24.COM trade mark date from 1999.
(c) The disputed domain name is connected with the Complainants that its very use by the Respondent who has no connection to the Complainants suggests opportunistic bad faith.
(d) The disputed domain name resembles the Complainants’ marks that there would be no doubt in the mind of an objective person that the disputed domain name is calculated to deceive and confuse consumers in Kenya and elsewhere into thinking that the Respondent’s website and the content thereof originate from, are associated with, and/or endorsed by the Complainants.
(e) The fact that the Respondent’s website contains content which is similar or identical to that available on the websites operated by the Complainants indicates bad faith use by the Respondent. Reference was made to paragraph 4(b)(iv) of the Policy.
(f) Given the fame of the Complainants’ marks, there is no conceivable explanation for the Respondent’s registration and use of the disputed domain name other than for reasons of bad faith.
The Complainants request the Panel to order the disputed domain name be transferred to the first Complainant or in the alternative cancelled.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Preliminary Procedural Issues: Consolidation
This Panel notes that the Complaint has been brought by four Complainants. This Panel is satisfied that the Complainants have demonstrated that they have a common grievance against the Respondent sufficient to justify consolidation of their claims in a single proceeding. The Panel thus finds that it would be equitable and procedurally efficient to permit the consolidation.
As required by paragraph 4(a) of the Policy, the Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have established that they have registered and common law rights to the trade mark NEWS24 and NEWS24.COM.
The next issue to be considered is whether the additional word “Kenya” in the disputed domain name serves to distinguish the disputed domain name from the Complainants’ NEWS24 and NEWS24.COM marks. A significant number of previous panel decisions under the Policy has established the principle that the addition of a descriptive or generic word to a trade mark does little to avoid confusion. The Panel agrees that with the wholesale incorporation of the NEWS 24/ NEWS24.COM mark in the disputed domain name, and the fact that the Complainants are a well-known group of companies in Africa, the addition of the word “Kenya” does not serve to remove the confusing similarity with the Complainants’ NEWS 24 and NEWS24.COM marks.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how one may demonstrate one’s rights and legitimate interests in a domain name. Notwithstanding the Respondent’s failure to file a Response, the Complainants are still required to establish their case. In view of the difficulty complainants would generally have in proving a negative, in this case the lack of rights or legitimate interests on the part of the respondent in respect a domain name, panelists have taken a pragmatic approach to this issue and proceeded by requiring that complainants establish at least a prima facie case that the respondent lacks rights or legitimate interests. Thereafter, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. If it fails to do so, a complainant would be deemed to have satisfied paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Question, “WIPO Overview 2.0”).
The Panel is of the view that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests. There is no evidence that the disputed domain name has, prior to this proceeding, been used by the Respondent in connection with a bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. In the absence of a Response and contrary evidence by the Respondent, the Panel is unable to make a finding other than that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In the circumstances, the Panel finds that the second requirement under paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is of the view that the disputed domain name has been registered and is being used in bad faith. The circumstances presented in this case by the Complainants fit within the fourth limb of paragraph 4(b) of the Policy. The choice of the disputed domain name by the Respondent and his manner of its use on his website are indicative of the Respondent’s hope to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. The Panel is unable to conceive of any other plausible explanation which would justify the Respondent’s registration and use of the disputed domain name.
In the circumstances, the Panel finds that the third requirement under paragraph 4(a) of the Policy has been satisfied.
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 <kenyanews24.com> be transferred to the first Complainant, 24.com Online Studio (Pty) Limited.
Dated: February 9, 2012