WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Multichoice (Pty) Ltd, Multichoice Africa Holdings B.V. v. Mohamed Adam
Case No. D2018-2886
1. The Parties
The Complainants are Multichoice (Pty) Ltd of Randburg, South Africa and Multichoice Africa Holdings B.V. of Hoofddorp, Netherlands, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Mohamed Adam of Pretoria, South Africa.
2. The Domain Name and Registrar
The disputed domain name <dstv.watch> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 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 December 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 30, 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.
4. Factual Background
The Complainants are part of the MultiChoice Group (“MultiChoice”), which is the largest television service in Africa and broadcasts digital satellite television (“DSTV”) to 50 countries in Sub-Saharan Africa.
MultiChoice Africa Holdings B.V. owns and uses the DSTV trademark (assigned on November 22, 2018, by MIH Intelprop Holdings Ltd, a company within the MultiChoice Group) in Africa, except South Africa. This Complainant has produced a list running to some 21 pages of trademarks for DSTV variously either alone or in combination and with or without a design, registered or in stages of application, of which the following is representative:
DSTV, Kenya, registered January 11, 2012, registration number 70965, classes 9, 16, 35, 38, 41, 42.
MultiChoice (Pty) Ltd owns and uses the DSTV trademark (assigned on December 11, 2018, by MIH Holdings (Pty) Ltd, a company within the MultiChoice Group) in South Africa. This Complainant has produced a list running to some 77 trademarks for DSTV variously either alone or in combination and with or without a design, registered or in stages of application, of which the following is representative:
DSTV, South Africa, registered January 14, 2013, registration number 2011/07251, class 38.
The Complainants also own 135 domain names incorporating “dstv”, for example <dstv.com> and <dstv.africa>.
No background information is available about the Respondent except for such contact details as were submitted to the Registrar when the disputed domain name was registered on March 27, 2018. The disputed domain name is parked and offered for possible sale.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical to a trademark or service mark in which the Complainants have rights. The DSTV services provided by the Complainants are well known in 50 countries of Sub-Saharan Africa, including South Africa and Nigeria. The Complainants have received extensive favourable coverage in the media including the Sunday Times, Brand Africa’s list of the 100 top brands in Africa, and World Branding Awards. On Facebook the Complainants’ DSTV service has scored almost 3 million “likes”. The Complainants’ domain name <dstv.com> has been registered for 18 years and in terms of traffic has been ranked ninth of all websites in South Africa.
The Complainants further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Research by the Complainants has found no evidence of any such rights including the examples contemplated under paragraph 4(c) of the Policy. A cease, desist and transfer letter sent by the Complainants to the Respondent at the contact address provided has not been replied to. The disputed domain name is parked and not in use in connection with any offering of goods or services but is marked for possible sale.
The Complainants also contend that the disputed domain name was registered and is being used in bad faith.
The Complainants say that the Respondent has twice previously been the subject of adverse findings, and had not responded, in disputes in respect of the domain names <etravelpro.com> and <absamustfall.co.za>. Furthermore, by means of the DomainTools reverse WhoIs search service, the Complainants have found that the Respondent has registered almost eight thousand domain names, many of which contain well-known South African and foreign trademarks, such as <anc.world>, <itvnews.watch> and <fnbmustfall.co.za>. The Complainants submit that a pattern of bad faith conduct has been established through the registration by the Respondent of well-known trademarks as domain names within the meaning of paragraph 4(b)(ii) of the Policy.
The Complainants say the generic Top-Level Domain (gTLD) “.watch” adopted for the disputed domain name is descriptive of the Complainants’ business in satellite television. This suggests the Respondent’s intention is to block the Complainants’ registration of the disputed domain name, or to sell it to the Complainants, or to use it for commercial gain. The website to which the disputed domain name has resolved has a “Learn More” button that leads to an indication that a purchase offer of ZAR 1,119.99 may be made, being in excess of initial registration costs that are currently ZAR 575.40.
The Complainants say that according to criteria they have submitted, the disputed domain name may be deemed to be passively held in circumstances amounting to use in bad faith.
The Complainants have cited a number of previous decisions under the UDRP that they consider to support their position.
The Complainants request the transfer of the disputed domain name.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainants assert to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainants have made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Consolidation of Complainants
The Panel is satisfied that, as discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, “the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion”. In accordance with paragraph 10(e) of the Rules the Complainants are to be consolidated.
B. Identical or Confusingly Similar
The Complainants have produced evidence satisfactory to the Panel of their rights in the trademark DSTV. The disputed domain name is <dstv.watch>. Disregarding the gTLD, in this instance “.watch”, the remainder of the disputed domain name is identical to the Complainants’ trademark. The Panel finds for the Complainants under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants state they have conducted research that has failed to find any evidence that the Respondent may have rights or legitimate interests in respect of the disputed domain name. The Complainants having stated a prima facie case to that effect, under paragraph 4(c) of the Policy it is open to the Respondent to provide evidence of rights or legitimate interests in the disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. A letter was sent by the Complainants to the Respondent at the contact address provided, with no reply. In particular the disputed domain name has been parked and there is no evidence of its use in connection with any offering of goods or services or for any noncommercial or fair purpose. The Respondent is not evidently known by the disputed domain name. Accordingly the Panel finds for the Complainants under paragraph 4(a)(ii) of the Policy
D. Registered and Used in Bad Faith
The Complainants must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you 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”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
According to the screen capture made by the Complainants, the disputed domain name resolved on December 18, 2018 to a website bearing the logo “GoDaddy”, being that of the Registrar, and the statements “Welcome to dstv.watch” and “This Web page is parked for FREE, courtesy of GoDaddy.com”. Further boxed notices said “Is this your domain? Let’s turn it into a website!” and “Would you like to buy this domain?”.
The accompanying “Learn More” button led to a page displaying the sum of (ZAR) 1,119.99, plus commission, and “Add to Cart”. That is not necessarily the price per se, however, since the page is headed “Great! Let’s see if we can get dstv.watch for you” and states enigmatically that a representative of GoDaddy “will contact the current owner to see if he or she is willing to sell the domain name”.
Thus, on the evidence, it may reasonably be concluded that the disputed domain name is parked and passively held, is not in active use, and irrespective of the tentativeness projected on the selling page, has no identifiable purpose other than on-sale by bargaining, the likely market comprising predominantly the Complainants or competitors of the Complainants. The decision to register the disputed domain name in the “.watch” gTLD is further indicative that the Respondent did so in the knowledge of the Complainants’ business. A competitor in the context need not be identified as in direct competition with the Complainants (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “The natural meaning of the word ‘competitor’ is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor”).
It has long been widely accepted in the context of a well-known trademark embodied in a disputed domain name for which the Respondent has offered no plausible explanation, including circumstances such as the present dispute, that a lack of productive use of a disputed domain name need not preclude a finding of use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). On the balance of probabilities, the Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith for the purpose of sale within the terms of paragraph 4(b)(i) of the Policy.
A finding of bad faith under paragraph 4(b)(ii) of the Policy, as moved by the Complainants, could be further supported by “a pattern of such conduct”, namely blocking registrations. In Travelpro International, Inc. v. Mohamed Adam, WIPO Case No. D2015-0872, cited by the Complainants, that domain name was parked, but in the circumstances of evident pay-per-click links being provided, the finding of bad faith was made under paragraph 4(b)(iv) rather than paragraph 4(b)(ii) of the Policy. In Absa Group Limited v. Mohamed Adam, SAIIPL Decision ZA2018-0336, cited by the Complainants, the summary decision against the Respondent was without reasons. The Complainants have, however, produced a list of 7723 domain names allegedly owned by the Respondent, many of them inexplicably replicated (unless they possibly contained special characters not showing on the list). Most are of a political nature but the Complainants have drawn attention to trademarks appearing in the list including ANC (a South African political party), ITV (Independent Television, UK), FNB (a South African bank), and 702 (a South African radio station). On the totality of the evidence and on the balance of probabilities, the Panel finds registration and use of the disputed domain name by the Respondent in bad faith additionally under paragraph 4(b)(ii) of the Policy. Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) 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, <dstv.watch>, be transferred to the Complainants.
Dr. Clive N.A. Trotman
Date: February 8, 2019