WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chemfit (Pty) Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Arban Mas
Case No. D2018-2563
1. The Parties
The Complainant is Chemfit (Pty) Ltd. of Sandton, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Arban Mas of Kampal, Uganda.
2. The Domain Name and Registrar
The disputed domain name <chemfitza.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2018. On November 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2018, 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 November 14, 2018 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 November 15, 2018.
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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2018.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on December 26, 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 summary sets out the uncontested factual submissions made by the Complainant:
The Complainant is a leading supplier of chemical products and related services in the South African market. The Complainant is a subsidiary of AECI Limited, which was registered as a company in 1924 and has a presence in Africa, Europe, South East Asia, the Americas and Australia.
The Complainant owns several South African trademarks for CHEMFIT, inter alia:
- Trademark Registration Nos. 2012/12807 CHEMFIT (registered on April 30, 2014) and 2012/13486 (registered on March 25, 2015) in class 1;
(hereinafter collectively referred to as the “CHEMFIT Mark”).
Chemical Services Limited, a company within the AECI Limited group of companies and the holding company of the Complainant is the Registrant for the domain name <chemfit.co.za>, which it registered in 1996, 22 years prior to the registration of the disputed domain name.
The disputed domain name was registered in 2018. The disputed domain name currently resolves to a website that appears to be a clone of the Complainant’s website and makes use of the “CHEMFIT” Mark.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced copies of the relevant registration records available online.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, which it says is highly distinctive. It submits that the CHEMFIT Mark is recognizable and is the distinctive part of the disputed domain name. The Complainant further contends that the additional word “za” in the dispute domain name is likely to be understood as a reference to South Africa, as it is the country code for South African domain names, and heightens the likelihood of confusion as an Internet user may mistype the Complainant’s domain name <chemfit.co.za> as <chemfitza.com>, or may see the latter and assume it is the Complainant’s domain name. Furthermore, the Complainant contends that the generic Top-Level Domain (“gTLD”), in this case “.com”, should be disregarded in the determination of confusing similarity to the trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has not authorized or otherwise permitted the Respondent to use its trademark or to clone its website, including copyrighted material in the form of original literary and artistic works. The Complainant submits that the use of the disputed domain name cannot be considered bona fide or legitimate and that no rights or legitimate interest can be derived from the cloning of a website at a domain name incorporating the Complainant’s mark.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. It contends that it is inconceivable that the Respondent was previously unaware of the CHEMFIT marks when the disputed domain name was registered. The Complainant points to the fact that the Respondent’s website is a clone of the Complainant’s website and the disputed domain name could only have been adopted by the Respondent with the Complainant in mind and with the intention of cloning the Complainant’s entire business.
The Complainant says that the Respondent's registration of the disputed domain name is for the primary purpose of disrupting the business of the Complainant and to attract Internet users for commercial gain by confusing them into thinking that the disputed domain name relates to the Complainant. According to the Complainant, the Respondent’s use of the disputed domain name is alleged to affect the reputation generated in the CHEMFIT brand and that the use of the Respondent who has no proprietary right in the CHEMFIT Mark is in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the CHEMFIT Mark. The CHEMFIT Mark is not only registered by the Complainant in South Africa but it has also been used extensively by the Complainant directly or indirectly on a worldwide basis.
The Panel is guided by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under section 1.8 of the WIPO Overview 3.0, it states that:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The disputed domain name comprises the CHEMFIT Mark in its entirety followed by the term “za”. The Panel agrees with the Complainant that the “za” element is likely to be understood to refer to South Africa, as it is the country code of that country, and is thus descriptive for the purposes of similarity. The distinctive feature of the disputed domain name thus remains the CHEMFIT Mark and the additional descriptive word does not serve to distinguish the disputed domain name from the CHEMFIT Mark. The Complainant referred this Panel to the case of DHL Operations B.V. v DHL Packers, WIPO Case No. D2008-1694 which held that where the distinctive component of a complainant’s mark is reproduced, the addition of a suffix such as “packers” was not sufficient to distinguish the disputed domain name from the complainant’s trademark in that case. We are in agreement with said decision and draw a parallel to our the case at hand with respect to the added suffix “za”.
As such, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant’s CHEMFIT Mark in which the Complainant has established rights. The Panel is, therefore, satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.
The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response, the attempt to cloak its identity and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety and period of use of the Complainant’s CHEMFIT Mark and the distinctiveness of the trademark itself would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.
Further, there is also no evidence to indicate that the Respondent is known by the name “Chem”, “Fit”, “Za” or any combinations thereof.
In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
This Panel accepts the Complainant’s submission that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant referred this Panel to the decision of Vestey Group Limited v George Collins, WIPO Case No. D2008-1308, where the website in that case had been cloned with the apparent aim of furthering some fraud or deception on the public and that panel found it to be an obvious example of bad faith. This Panel has compared the Complainant’s holding company’s website <chemfit.co.za> with the disputed domain and is satisfied that there had been a deliberate aim to clone the Complainant’s website and/or business. As such, the Panel agrees with the Complainant and the case above and finds that, by cloning the Complainant’s holding company’s website, the disputed domain name had been registered and used in bad faith.
Furthermore, as the Panel has determined that the disputed domain name is identical or confusingly similar with the Complainant’s CHEMFIT Mark, the Panel agrees with the Complainant’s contention that the disputed domain name was registered for the purpose of disrupting the business of the Complainant and to confuse Internet users into thinking the Complainant and the Respondent were connected. The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s CHEMFIT Mark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name, which was several years after the Complainant applied for the CHEMFIT Mark and was more than two decades later than the date the Complainant’s holding company registered the <chemfit.co.za> domain name.
The Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the CHEMFIT Mark when it sought to register the disputed domain name and that it intended to use and indeed used the disputed domain name in order to misrepresent a connection with the Complainant when in fact no such connection existed.
In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and the Panel is, therefore, satisfied that the third element of paragraph 4(a) of the Policy has been proven by the Complainant.
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 <chemfitza.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: January 8, 2019