WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TBWA Hunt Lascaris Johannesburg Proprietary Limited v. Johan Watson, Furnways
Case No. D2018-1165
1. The Parties
The Complainant is TBWA Hunt Lascaris Johannesburg Proprietary Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Johan Watson, Furnways of Garsfontein, South Africa, self-represented.
2. The Domain Name and Registrar
The disputed domain name <huntlascaris.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2018. On May 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2018, 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 June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018.
The Center received an email communication from the Respondent on June 14, 2018.
On June 22, 2018, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on June 29, 2018. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of a formal response rebutting them, can be accepted as background facts to the extent reasonable.
Although the Complainant’s applications for registration of its trademarks are recent (i.e., the South African trademark HUNT LASCARIS in Class 35, filed on April 11, 2018, and the same mark also in Class 35 filed in the United States of America on April 5, 2018), the Complainant’s business under the name “Hunt Lascaris” dates back to the year 1983 when John Hunt and Reg Lascaris co-founded what went on to become one of the premier advertising agencies in South Africa and, later, in the world.
The trade name “Hunt Lascaris” dates back to 1983 and was created by taking the surnames of its two founders.
From inception, the business carried on under that trade name, the business continued to grow and, in 1989, TBWA Worldwide, one of the world’s largest advertising agencies at the time, purchased a stake in the Hunt Lascaris business, which was considered at the time to be a household name in the industry.
The Complainant has been involved in a number of advertising campaigns over the years, some of the significant ones being:
(a) assisting Nashua, then one of South Africa’s top performing companies at the time, to launch the first ever telefax machine in South Africa;
(b) in 1990, the Complainant gained notoriety for the advertisement “Beating the Bends” for BMW in response to an advertisement by Mercedes Benz which created national interest before it was temporarily banned;
(c) in January, 1992, with the transition of South Africa from apartheid to a democracy, the Complainant launched the peace campaign and its peace logo went on to become widely known by South Africans;
(d) in January, 1993, it was engaged by the ruling party, the African National Congress, to handle the first democratic election and assisted in the development and communication of its new Constitution at the time;
(e) the Complainant was also involved in other well-known advertising campaigns, namely:
(i) the Arrive Alive campaign to decrease death toll on the road;
(ii) the CANSA campaign to create breast cancer awareness;
(iii) the Nissan campaign to take the dealership into Africa; and
(iv) the BMW Mouse campaign, voted the best advertisement of all time by Ad Focus, 2007.
The Complainant has put up evidence in support of its extensive promotions under its “Hunt Lascaris” trade name and can be located under that name on a Google search.
The Complainant also put up evidence of international accolades received by it, notably a Cannes Film Festival award, one from the International Film & TV Festival of New York, and was the first advertising agency in the southern hemisphere to win the International Agency of the Year Award in 1994. It also put up evidence featuring its history, its business, and interviews with its founders which are to be found on the Internet.
More recently, the Complainant’s co-founders were appointed to high positions in TBWA Worldwide in that Reg Lascaris became the Regional President for Africa/Middle East and John Hunt holds the position of Creative Chairman of TBWA Worldwide.
In 2009, both co-founders received a Lifetime Achievement Award for their work from a national South African financial publication, the Financial Mail.
The Complainant has expended a considerable amount of time, money and effort building the Hunt Lascaris brand.
The disputed domain name was registered on August 31, 2017. The disputed domain name previously resolved to a website featuring the words “website coming soon”. At the time of this decision, the disputed domain name redirects to “www.officestock.co.za”, where office furniture and other office supplies are offered for sale.
5. Parties’ Contentions
The Complainant, as already outlined above, put up extensive evidence showing the use of what it describes as its trademark since 1983 and, although the two trademarks were applied for recently being some months after the registration of the disputed domain name, it relies on extensive evidence of use and reputation, trade name as also appears from the factual background.
The Complainant contends that it has also established common law rights therein and that its rights in the Hunt Lascaris trade name and HUNT LASCARIS trademark (albeit unregistered) pre-date the Respondent’s registration of the disputed domain name. It contends further that HUNT LASCARIS is, as demonstrated by its evidence, a well-known trademark internationally and is, therefore, afforded protection under the provisions of the Paris Convention.
The Complainant asserts that the Respondent, by adopting the whole of the Complainant’s name in the disputed domain name has, therefore, infringed the Complainant’s rights and the Respondent has no proprietary right or entitlement thereto.
The Complainant puts up evidence of an exchange of correspondence before commencement of this proceeding, in the course of which the attorneys acting for the Complainant called upon the Respondent to cease and desist.
Notwithstanding a failure on the part of the Respondent to reply initially thereto in writing, the Respondent contacted the Complainant’s attorney, confirmed receipt of the letters and advised that he would not adhere to the Complainant’s cease and desist letter, threatening also to put the disputed domain name up for sale.
The Complainant then refers to an email sent by the Respondent challenging the rights of the Complainant. The Complainant complains further that on investigating the Respondent’s claim to use the disputed name discovered that the disputed domain name leads to a website “www.huntlascaris.com” which at the time was initially unavailable and thereafter contained the message that it had been reserved for that domain name.
The Complainant further avers that it has prior user rights dating back to 1983, long before the disputed domain name was registered.
The Complainant further points out that there is no evidence that the Respondent has any business rights or other rights in and to any name, which includes the name “Hunt Lascaris”, or that he has acquired any trademark rights in any mark including that name despite search therefor by the Complainant.
The Complainant further avers that there has never been authority afforded by it to the Respondent to register the disputed domain name nor does the Respondent have any rights or legitimate interests in the disputed domain name or its registration and use.
The Complainant asserts that, having regard to the exchange in the correspondence and the discussion with the Complainant’s attorney when the Respondent threatened to put up the disputed domain name for sale, this is demonstrative of bad faith. Moreover, since there is nothing to show that the Respondent has any legitimate business basis for use of the disputed domain name, it can only be to disrupt the business of the Complainant or to enable the Respondent to sell the disputed domain name for an amount in excess of what would be his out-of-pocket cost or to attract commercial gain from Internet users who might be confused in that the Respondent is considered to have some affiliation or link with the Complainant.
As previously stated, some correspondence between the Respondent and the Complainant’s attorney predate the initiation of this proceeding during which the latter noted that the Respondent said that he would not give up the disputed domain name which was “awarded” to him but would “sell it”.
On June 1, 2018, the Center notified the Respondent of the Complaint and the commencement of the administrative proceeding and advised that the Respondent could access the Model Response and Guidelines on the Center’s website. The Respondent was also informed that the deadline for filing a response was June 21, 2018, and of the consequences were he to default.
On June 14, 2018, the Respondent replied to this correspondence from the Center by way of the following email:
Hope you are doing well. The domain name Huntlascaris.com I have from 2010/2011. It was first on my other profile with Hetzner. I moved it over to my new profile last year. I disagree with the claims of the company TBWA. First of all this company is a South African company. They have trade years back as Huntlascaris and then have had a company name change. I got this information from one of their staff members this week. I could understand if the domain name was a .co.za domain. Huntlascaris.com is an .com domain name. So I cannot see why they want to claim after nearly 7 years this domain from me. If the can do this I can also then go and claim all the, .com, .uk, .nz etc for my business officestock.co.za. I am not prepared to just give a domain name away because of a company who thinks that they can bully me around. The domain name Huntlascaris.com I got in a legal way years back and as said I will not give it away. If this case goes on I will then get legal advise an appoint a lawyer to defend my case.
Please pull all the records since this domain started and you will see how long it belongs to me.
The Center replied on June 18, 2018 asking whether the above was the Respondent’s complete response as the due date was June 21, 2018, and warned that if no further communication was received the email of June 14, 2018, would be treated as his response.
The Respondent did not deliver any further communication to the Center.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, [the] Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Status of Response of June 14, 2018
Notwithstanding delivery by the Center of the Complaint and its annexures on June 1, 2018, by email and telefax, and written notice of the proceeding having been sent by courier, the Respondent has also failed to put forward any response save that of his informal email of June 14, 2018. That the Respondent was clearly in receipt of these documents can be inferred from his statement in the aforesaid email, stating that “[he] disagree[s] with the claims of the company TBWA”.
Since the Respondent did not submit a formal response (despite being invited by the Center to do so) the Panel has before it no more than allegations which are unsupported by any evidence and do not address the averments and evidence of the Complaint and its annexures.
It follows that it is open to the Panel to draw certain inferences from the Complainant’s evidence. In addition, the Panel may accept all reasonable and supported allegations and inferences from the Complaint as true (Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).
C. Identical or Confusingly Similar
The Complainant has been using the “Hunt Lascaris” trade name long before the registration of the disputed domain name. The Complainant put up details of its use of its trade name.
Moreover, by means of its ownership or continuous and exclusive use in South Africa and elsewhere in the world of its tradename, the Complainant has similarly acquired the right of protection.
At the outset therefore the Panel deals with the rights claimed by the Complainant in respect of its trade name and unregistered trademarks.
It is possible to obtain trademark rights to a trade name sufficient to satisfy the requirements of paragraph 4(a)(i) of the policy (Phillip Morris USA Inc. v. Doug Nedwin/SRSPlus Private Registration, WIPO Case No. D2014-0339 and the UDRP cases referred to therein).
Undoubtedly the Complainant’s use of its trade name extensively since 1983 and the evidence provided of its widespread recognition clearly demonstrates the acquisition of rights in an unregistered trademark. (Phillip Morris, supra).
In the circumstances, the Complainant’s claim to common law or unregistered rights in the HUNT LASCARIS trademark is well founded.
The fact that the HUNT LASCARIS name has been incorporated entirely into the disputed domain name is sufficient to establish that the trademark and disputed domain name are identical or confusingly similar (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016; Sanofi v. Domain King WIPO Case No. D2015-1799).
The addition of the generic Top-Level Domain (“gTLD”) “.com” is generally not an element of distinctiveness that ought to be taken into consideration when evaluating the identity and/or confusing similarity of a complainant’s trademark and the disputed domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).
In these circumstances the Panel concludes that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent 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 customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the complainant to prove that the respondent has no rights to or legitimate interests in the domain name, once the complainant establishes a prima facie case that the respondent has no rights or legitimate interests in the domain name, the burden of production on this factor shifts to the respondent to rebut or displace the complainant’s evidence in this regard, despite the overall burden of proof remaining upon the complainant to disprove each of the three elements of paragraph 4(a) of the Policy (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com., supra).
The Respondent has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established (Kansai Plascon (PTY) Limited v. C/O Private Ranger Limited, Registrant of plasconkansai.com / Mike Goden, WIPO CaseNo. D2017-1848).
Moreover, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement to the disputed domain name which might fall within that purview (Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360). Nor is there any suggestion of a link, descriptive or otherwise, of the Respondent or his business.
The Complainant also contends that the Respondent is using the disputed domain name illegally for the purpose of misleading unsuspecting persons while relying on the reputation of the Complainant. Noting that the website previously lacked content, and is now redirecting Internet users to a third-party website, the Respondent cannot be said to be using the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Insofar as the Respondent claims to have had the disputed domain name for nearly seven years and that it had been on his profile from 2010-2011 until moved over to his new profile in 2017, that statement cannot be reconciled with the WhoIs evidence put up by the Complainant. While there is reference to a client transfer, the creation date of the disputed domain name is given as August 2017, which was also confirmed by the Registrar. This is irreconcilable with the Respondent’s assertion in his email of June 14, 2018. In the absence of any evidence or explanation which would clarify this from the Respondent, the Panel cannot accept the Respondent’s bold assertion. Similarly, the Respondent did not challenge the WhoIs evidence showing the date of registration as August 31, 2017.
In view of the facts and circumstances which are unchallenged, the Panel is of the view that the Complainant succeeds on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 your documented out of pocket costs directly related to the domain name; or
(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 website 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 website or location or of a product or service on your website or location.”
Bad faith can exist where a domain name contains in its entirety a complainant’s domain name, trademark or service mark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Kansai Plascon (PTY), supra).
The implication arising from the disputed domain name, which is essentially identical to the Complainant’s trade name and trademark, in the mind of a would-be customer, is therefore clearly that the disputed domain name is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551;Sanofi v. Domain King, supra).
The Complainant contends that the Respondent has not been given any permission to register or use any domain name incorporating the trade name of the Complainant. It follows, therefore, that the Respondent has no right to the use the disputed domain name and that any unauthorized use for commercial purposes would most likely violate the Complainant’s rights (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc., supra; San Lameer, supra).
There is no authorization, relationship, or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or the disputed domain name (Sybase Inc., supra; Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188).
Moreover, the Respondent reserving a website suggests an intention to use the Complainant’s trade name in the disputed domain name in the future and thus the Respondent would be trading on the value established by the Complainant to attract users and thereby derive economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Globalnet 2000 Inc., Powerclick Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).
This follows in the view of the Panel as a reasonable inference from the reservation of the website.
Although an offer to sell for reimbursement of out-of-pocket expenses is not per se bad faith, the fact that the Respondent refuses to relinquish the disputed domain name and threatens to sell it also shows his motive to benefit commercially in the absence of any offer to the Complainant for payment only of out-of-pocket expenses as alleged by the latter.
This is in the view of the Panel an established instance of bad faith as complained of being an attempt to obtain financial gain by such sale.
In the absence of any challenge of the Complainant’s assertion, this would, in the view of the Panel, be a further example of bad faith (Square Enix Limited v. A Amir Abdulla, WIPO Case No. D2014-1483).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s marks and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore the Respondent selected the disputed domain name because it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213; Novartis AG v. Domains By Proxy, LLC/Manny Ghumman, WIPO Case No. D2014-0224).
The Panel is satisfied that, in the circumstances, the Complainant has established the third element of the Policy.
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 <huntlascaris.com> be transferred to the Complainant.
Archibald Findlay SC
Date: July 9, 2018