The Complainant is MiWay Insurance Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Jatinder Sahi, United Kingdom, self-represented.
The disputed domain name <miway.online> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2019. On August 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2019, 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 the Complainant on August 16, 2019 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 August 20, 2019.
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”), which applies to “.online” as to other “new” generic Top-Level Domain names (“gTLDs”), 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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Response was filed with the Center on September 11, 2019. The Respondent also sent an email on August 21, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 24, 2019. 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 Complainant is a licensed insurer and financial services provider organized as a South African public company and headquartered in Kosmosdal, near Centurion, South Africa. Controlled by the publicly listed Sanlam financial services group, the Complainant was launched in 2008 as the first South African direct insurance company to sell short-term insurance policies online (motor, household, homeowners, business, and liability cover products), at “www.miway.co.za” (the “Complainant’s website”). The Complainant subsequently registered additional domain names incorporating the name “MiWay”: <miwaylife.co.za>, <miwayinsurance.co.za>, <miway.insurance>, and <miway.life>.
The Complainant holds several registered South African trademarks for MIWAY as a standard character trademark, including Registration Numbers 27309 and 27310 (both registered November 2, 2010). The Complainant states that its business is largely conducted online and that its mark is advertised extensively on radio, television, and various social media platforms, so that it is “known to a substantial number of people in South Africa”.
According to the Registrar, the Domain Name was created on June 2, 2018 and registered in the name of the Respondent domain privacy service, which has expressed no interest in the Domain Name in this proceeding. After receiving notice of this dispute, the Registrar identified the registrant as the individual Jatinder Sahi of Brighton, United Kingdom, with no listed organization, who is referred to hereafter as the “Respondent”.
The Domain Name evidently has not been used to date for a website developed by the Respondent or for email accounts. Instead, it resolves to a parking page hosted by the Registrar, headed by the Registrar’s logo and the statement that this web page “is parked for FREE” courtesy of the Registrar. The page does not include pay-per-click (“PPC”) advertising. The parking page displays a link for the owner of the Domain Name to click if the owner would like to turn the Domain Name into a website (an automated service provided by the Registrar), and another link for other site visitors to click if they are interested in buying the Domain Name (the link takes the user to a page where the Registrar essentially proposes to communicate offers and broker a purchase). There are two other links on the page advertising the Registrar’s domain name offerings. In short, the “free parking” page promotes only the Registrar’s services.
The Complainant became aware of the Domain Name and had its counsel send an email with a cease-and-desist demand and request for transfer of the Domain Name to the “Registrant”, care of the Registrar, on May 13, 2019. The Respondent says the Registrar did not forward this email to him. This proceeding followed.
The Complainant asserts that the Domain Name is “an exact replication” of its MIWAY trademark. The Complainant argues that the Respondent has no permission or other legitimate interest in the Domain Name and has not used it in connection with any bona fide commercial offering. Rather, “[t]he Respondent’s domain name remains largely inactive and there can thus be no doubt that the domain name was registered merely to interfere with the business of the Complainant and to confuse members of the public into believing that the domain name belongs to the Complainant, when it does not”.
The Complainant concludes that the Respondent registered the Domain Name in bad faith, “in order to prevent the Complainant from reflecting the mark in a corresponding domain name”, “to interfere with the business of the Complainant”, and to misdirect Internet users “for commercial gain”.
The Respondent, who is not represented by counsel, denies prior knowledge of the Complainant and challenges the likelihood of confusion: “No one in the UK where I am based has heard of them, I certainly hadn’t”. He points out that “miway” is a name used by others, including a Canadian public transit agency (which has a website at “www.miway.ca”), a bonded United States trucking company, and a South American pop singer.
The Respondent explains his intentions for the Domain Name as follows:
“I have left the website inactive as I am raising funds to launch an online life coaching business. want setup a high quality website as a 1st impression is important. It has taken longer than i had hoped but it is happening and my investors like the name. I have not put in redirects to other insurance companies or anything like that.”
The Respondent denies bad faith:
“I haven’t put up anything on the site until the high quality build is ready.
I have not redirected people anywhere.
I do not put up any information relating to Miway Insurance or any other insurance company.
I do not put up any signs such as ‘If you want to buy this domain’ i.e as I have no intention to sell. …
I did make an offer to MiWay Insurance to settle this on the basis that they would cover me for my losses based on having to re‐film investor video pitches, other marketing collateral and redevelop the UX for the mobile portal I intended to launch on the site but they made no response to me …”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Domain Name incorporates the Complainant’s MIWAY mark in its entirety. As in most cases, the gTLD “.online” is disregarded (id., section 1.7).
The Panel finds, therefore, that the Complainant has established the first element of the Complaint.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant made a prima facie case by establishing trademark rights, confusing similarity, a lack of permissive use, and the absence of a name corresponding to the Respondent’s or use in connection with a bona fide commercial offering or other fair use. The Respondent has only parked the Domain Name so far and has not produced evidence of demonstrable preparations to use it for a legitimate purpose such as he describes (see WIPO Overview 3.0, section 2.2).
The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 web site 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 web site or location or of a product or service on your web site or location.”
The Complaint does not expressly cite these paragraphs of the Policy, although it repeats language from these three illustrations. They do not squarely fit the facts of this case: there is no evidence of a “pattern” of cybersquatting by the Respondent, who is also not a “competitor” of the Complainant, and it does not appear that the Domain Name has been used, so far, to direct users to anything other than a parking site that advertises the Registrar’s services (the Respondent’s intent is discussed further below). The Complaint does not cite any cases on bad faith or the WIPO Overview 3.0. Instead, it makes this summary conclusion concerning bad faith:
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or well‐known trade mark by an unaffiliated entity can by itself create a presumption of bad faith. In this case, the Respondent’s domain name is identical to the Complainant’s MIWAY trademark, which is well‐known to a substantial number of people, particularly those within the insurance and financial services industry. The Respondent is not affiliated with the Complainant in any way and therefore the presumption that the disputed domain name was registered in bad faith must stand.”
But this presumes that the Respondent was aware of the Complainant’s trademark and reasonably stood to gain from attacking it. There is no reason to doubt the Complainant’s claims that its mark is advertised extensively and is well known in South Africa. The problem for the Complainant is establishing the likelihood that the Respondent is prevaricating when he says that he never heard of the Complainant before this dispute. The Complainant’s mark looks and sounds like the English phrase “my way”, which others clearly use, and the Respondent seems to have a plausible reason for planning to use the Domain Name in connection with a life-coaching website, although the Panel notes that no relevant evidence has been provided in this regard. Apart from the examples mentioned by the Respondent, the string “miway” is already registered by others in other Top-Level Domains such as <miway.com>, <miway.net>, and <miway.eu>. The Complainant’s business is evidently limited to South Africa, which is natural as it is a licensed insurance business, and it has not put forward any evidence that it has advertised to consumers or businesses located in the United Kingdom. The Complaint, in any event, does not include evidence of the Complainant targeting advertising or offering service to residents of the United Kingdom or, indeed, anywhere other than South Africa. The Complainant has no “.com” or “.uk” domain names, and the Complaint mentions trademark registrations only in South Africa.
While the nature of the Domain Name could lead to an inference of bad faith because it is identical in its Second-Level to the Complainant’s trademark, there is good reason to believe that the Respondent selected the Domain Name because it suggests the English phrase “my way” rather than the Complainant’s trademark. It simply does not seem likely, as the Complainant urges, that the Respondent would be aware of the Complainant and choose the Domain Name in order to disrupt the Complainant’s business, deprive the Complainant of yet another domain name, and misdirect consumers and businesses looking for insurance quotes to a free parking site or some future website advertising life-coaching services.
The Panel concludes that the third element of the Complaint, bad faith, has not been established on this record.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: October 4, 2019