WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gold Fields Limited v. Vivek Narayan
Case No. D2018-2920
1. The Parties
The Complainant is Gold Fields Limited of Gauteng, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Vivek Narayan of Kanpur, India.
2. The Domain Name and Registrar
The disputed domain name <goldfields.org> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 January 4, 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 January 8, 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”), 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 January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on February 5, 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 Complainant operates in the gold mining sector and is one of the world’s largest producers of precious metals employing approximately 18,500 people in its global operations. It first commenced business in South Africa under the GOLD FIELDS name and mark in 1887 and is a publicly listed company on several exchanges and has corporate offices and operational sites in South Africa, Australia, West Africa, and South America and now also has operations in the Netherlands and the Philippines.
The Complainant owns numerous trade mark registrations for the trade mark GOLD FIELDS, including South African word mark registration no. 95/04083 with registration dating from 1995, and Canadian registration no. TMA611648, registered June 1, 2004. The Complainant operates websites from the domain name <goldfields.co.za> which it registered in 1997 and <goldfields.com> which it registered in 2005.
The disputed domain name was registered on October 11, 2016 and currently resolves to a website featuring a header that advertises the disputed domain name as being for sale through Afternic.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights in its GOLD FIELDS trade mark as noted above and that it owns common law rights in the mark based on substantial use over many years. It says that the disputed domain name wholly incorporates its GOLD FIELDS name and mark in its entirety and is therefore identical or confusingly similar to the Complainant’s registered trade mark. It also says that “.org” is a generic Top-Level Domain (“gTLD”) and is an abbreviation for the word “organization” which only contributes to the level of public confusion.
It says further that the fact that the disputed domain name appears to have been held passively since its registration in October 2016 and that the site to which it resolves advertises it for sale through Afternic, is indicative of the Respondent having no bona fide or legitimate business use for the disputed domain name and making no legitimate or noncommercial or fair use of it. The Complainant notes that it sent a cease‑and‑desist letter to the Respondent through the Registrar, together with a follow-up reminder and although the Registrar confirmed that the letter had been sent to the Respondent, the Complainant received no response from it. The Complainant confirms that it has not authorised the Respondent to use the GOLD FIELDS mark and that there is no relationship or association between the Parties and that it has not licensed use of the disputed domain name to the Respondent.
The Complainant says that the Respondent must have been aware of the Complainant’s rights in the GOLD FIELDS mark at the date of registration of the disputed domain name because the latter wholly incorporates and is identical to the mark. In essence, the Complainant submits that this amounts to the Respondent opportunistically seeking to register the disputed domain name in bad faith in order to take advantage of the significant degree of repute attaching to the well-known GOLD FIELDS mark.
It further submits in terms of paragraph 4(b) of the Policy that the Respondent’s registration of the disputed domain name prevents the Complainant from registering or using an identical domain name and therefore amounts to the unfair disruption of the Complainant’s business. It says further that the Respondent’s use of the disputed domain name will cause people to believe that the disputed domain name is operated or authorised by, or otherwise connected to the Complainant and that it is somehow connected or associated with the Respondent which causes confusion and amounts to bad faith. Finally, it says that the Respondent is in effect capitalizing on the degree of renown and goodwill attaching to the disputed domain name because of the well-known status of the GOLD FIELDS trade mark and that the Respondent means to capitalize from users intending to visit the Complainant’s website as a means to advertise the disputed domain name for sale. This use, says the Complainant, is intended to take unfair advantage of or be detrimental to the distinctive character or repute of the Complainant’s well-known GOLD FIELDS trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns numerous trade mark registrations for its GOLD FIELDS mark, including a South African word mark registration dating from 1995. The disputed domain name wholly incorporates the GOLD FIELDS mark with no additional element before the gTLD “.org” and is therefore identical or confusingly similar to the Complainant’s trade mark registration. As a result, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant confirms that it has not authorised the Respondent to use the GOLD FIELDS mark, that there is no relationship or association between the Parties and that it has not licensed use of the disputed domain name to the Respondent. The Respondent appears to have held the disputed domain name since its registration in October 2016 in a manner that has made no use of it except to resolve to a site that advertises the disputed domain name as being for sale through Afternic. The Respondent did not choose to respond to the Complainant’s pre-action cease-and-desist letter in order to explain its right to use the disputed domain name and there is no evidence that the Respondent has made a bona fide or legitimate business use of the disputed domain name, or that it has made a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has failed to rebut the Complainant’s case. Accordingly, the Panel finds that the Complaint also succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s business has operated for many years under the GOLD FIELDS mark and by 2016 consisted of a substantial and international business comprising one of the largest precious metals-based mining and production businesses in the world. In addition, the Complainant has provided evidence that its activities have been widely publicised in the media including in global news channels.
The Respondent registered the disputed domain name in October 2016 many years after the Complainant first obtained registration of its GOLD FIELDS mark in 1995 and long after the Respondent’s first use of the mark. It is also notable that the disputed domain name wholly incorporates and is identical to the Complainant’s mark with no other element included before the gTLD “.org”. All of these circumstances lead the Panel to infer that it is more likely than not that the Respondent was well aware of the Complainant and its GOLD FIELDS mark and when it registered the disputed domain name in 2016.
In essence, the Complainant submits that the Respondent has opportunistically sought to register the disputed domain name in bad faith in order to take advantage of the significant degree of repute attaching to the well-known GOLD FIELDS mark. It is clear, based on the evidence on the record that the Respondent has never used the disputed domain name to resolve to a website for a bona fide business and neither has it used it in a context that could be described as a descriptive or fair use in relation to the English phrase “gold fields”. Further, had this been the case the Respondent could reasonably be expected to have explained its use of the disputed domain name, whether by response to the Complainant’s cease-and-desist letter, or in a response to these proceedings, but it has failed to do so.
It appears that since registration the disputed domain name has consistently resolved to a series of holding or parking pages on which there is a notice that it is for sale through Afternic and which provides contact details for that organization. The Panel infers from all the circumstances that the Respondent registered the disputed domain name in late 2016 with knowledge of the Complainant’s mark and business (as described earlier) and has used it ever since to confuse and re-direct Internet users seeking the Complainant’s home page to the Respondent’s holding page. Once at the Respondent’s holding page it is apparent to Internet users that they are not at the Complainant’s home page but rather have the opportunity to acquire the disputed domain name.
By the date of registration of the disputed domain name October 2016, the Complainant’s mark and global business had developed a considerable degree of renown in the precious minerals mining industry and the Complainant operated its own website at <goldfields.com> and at <goldfields.co.za>. In the absence of any explanation from the Respondent, the Panel infers that it is more likely than not that the Respondent’s rationale for registering the disputed domain name was indeed opportunistic, in that it considered that the Complainant, as a publicly listed company with considerable assets, or possibly one of its competitors, would likely wish to acquire the disputed domain name and at a price in excess of the Respondent’s out-of-pocket costs. This amounts to evidence of registration and use in bad faith under paragraph 4(b)(i) of the Policy.
Accordingly, the Panel finds that the Complaint also succeeds under 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 <goldfields.org> be transferred to the Complainant.
Date: February 9, 2019