WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ActionAid v. Jobs Zetu
Case No. D2016-1936
1. The Parties
The Complainant is ActionAid of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by DLA Piper France LLP, France.
The Respondent is Jobs Zetu of Nairobi, Kenya.
2. The Domain Name and Registrar
The disputed domain name <urgentactionaid.org> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2016. On September 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2016.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on October 31, 2016. 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 Complainant is the registered owner of several trademark registrations inter alia International Registration no. 1260215 for the word-mark ACTIONAID registered for goods and services in classes 9, 16, 35, 36 and 41, designated in China, Kenya, Lesotho, Mozambique, Sierra Leone and Zambia, application date April 15, 2015 and European Union Trademark Registration no. 4283917 for the word-mark ACTIONAID, registered for goods and services in classes 9, 35, 36 and 41, application date February 11, 2005.
The disputed domain name was registered August 28, 2015. The disputed domain name resolves to a pay-per-click website.
5. Parties' Contentions
The Complainant mainly alleges the following.
The Complainant, ActionAid, was founded in 1972 in the United Kingdom by Cecil Jackson-Cole as a child sponsorship charity that helped communities. By 1990, ActionAid was working in over 30 countries, helping people get healthcare, education, water and livelihoods. Today, the organization is active in more than 45 countries - including Kenya, where the Respondent is located - and it enjoys "Special Consultative Status" to the United Nations since 1991.
The disputed domain name is confusingly similar to the Complainant's trademarks for ACTIONAID. The disputed domain name consists of the Complainant's trademark taken in its entirety and the added word "urgent". The signs are therefore highly similar. According to numerous UDRP panel decisions, the incorporation of the trademark in its entirety is sufficient to establish that the disputed domain name is identical or at least confusingly similar to Complainants' registered mark. The addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. In this case, the addition of the word "urgent" will in the mind of the public, refer to the humanitarian activities of the Complainant and the "urgent" need to help fighting poverty, lack of education and injustice. The signs are visually, phonetically and conceptually similar and there is a risk of confusion between the disputed domain name and the Complainant's trademarks.
The Respondent does not have any rights or legitimate interests to the disputed domain name because of the following reasons:
- The Complainant has not licensed or authorized the Respondent in any way to use the trademarks ACTIONAID;
- The Complainant has never allowed the Respondent to register or to use the disputed domain name;
- The Respondent is not currently and has never been known under the name "UrgentActionAid" and has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute;
- The Respondent has not adduced any evidence of legitimate use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
- The Respondent does not own any trademark or other rights on UrgentActionAid.
The disputed domain name was registered and is being used in bad faith. The Respondent was, according to the Complainant, aware of the existence of the Complainant's trademarks at the time of registration. The Respondent has no legitimate interest in the disputed domain name. The domain name <urgentactionaid.org> is inactive as it only displays commercial hypertext links. ACTIONAID is a well-known mark in Kenya and neighboring countries. Several other panel decisions clearly stated that the incorporation of a well-known trademark in a domain name by a third party who has no link with the owner of the mark is an evidence of the domain name's registrant's bad faith. It is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration and subsequent renewals. The Respondent clearly registered/acquired the disputed domain name without any specific intention to use them and propose any serious content online since no real and active website is being operated under the disputed domain name. The sole page of the corresponding website displays several hypertext links which seem to direct to humanitarian activities in Africa, but in reality redirect to commercial endeavors whose activities are in direct competition with the Complainant. The Respondent was also obviously aware of the Complainant's trademarks and website since it even displays a link to the Complainant's official website ("www.actionaid.org") on the website at the disputed domain name. Consequently, the Respondent is taking commercial advantage of the Internet traffic coming to its website thanks to the disputed domain name. Finally, when registering the disputed domain name, the Respondent has declared an incomplete postal address, and the email address does not relate to its name. Thus, one may conclude that the Respondent tries to hide its identity while damaging the Complainant's reputation.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant's trademark in its entirety. As concerns the initial part of the disputed domain name which consists of the word "urgent" the Panel agrees with the Complainant and considers that "urgent" is a descriptive term in relation to some of the activities, i.e. charity and aid related activities, for which the trademark ACTIONAID is registered and currently used. It is further well-established among UDRP panels that the gTLD ".com" is not distinguishing. The Panel consequently finds that assessed as a whole the disputed domain name is confusingly similar to the Complainant's trademark ACTIONAID and the first element of the Policy is therefore fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proven otherwise. The Panel therefore finds the requirements of the second element of the Policy fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name was registered after registration of the Complainant's trademark. The Complainant's trademark ACTIONAID is extensively used and is currently being used in Kenya where the Respondent is domiciled. The Panel finds that it is very unlikely that the Respondent registered the disputed domain name without knowledge of the Complainant's trademark. As regards use the only content on the website are a few hyperlinks. Based on the evidence in Annex J to the Complaint, the hyperlinks seem in most cases to lead to different employment ads. According to the Panel, the activity on the website in this case indicates use in bad faith. In the Panel's opinion the disputed domain name seems to be used in bad faith to direct traffic to the linked websites for profit. The Panel therefore finds that the third element of the Policy is fulfilled.
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, <urgentactionaid.org> be transferred to the Complainant.
Date: November 14, 2016