WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Price Group Limited v. Registration Private, Domains By Proxy, LLC / Mr Price
Case No. D2019-0878
1. The Parties
The Complainant is Mr. Price Group Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Mr Price, South Africa.
2. The Domain Name and Registrar
The disputed domain name <mrpricejobs.org> 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 April 17, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2019, 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 May 2, 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 May 6 and 7, 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 May 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2019.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on June 25, 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 is one of Southern Africa’s foremost retailers of clothing, footwear, fashion accessories, homeware and textiles. It trades not only in several African countries but also globally. It also operated 1,258 corporate-owned stores and 23 franchise stores.
The Complainant first used the trademark MR PRICE in 1985 and has since registered many trademarks throughout the world in at least 33 countries and the European Union on various continents, such as New Zealand trademark No. 239971 registered on December 1, 1997. It has put up a detailed schedule demonstrating that all the South African trademarks are current. All the trademarks, including the foreign registrations, incorporate the wordmark MR PRICE as the sole or dominant portion of the trademark.
The Complainant also owns the domain name <mrprice.co.za> which was registered in November 1997. The domain name resolves to the Complainant’s website “www.mrp.com”.
All these trademarks and the domain name <mrprice.co.za> predate the registration of the disputed domain name which, according to WhoIs, would have been on or after the creation date, namely, February 5, 2019.
5. Parties’ Contentions
The Complainant contends that, since 1985, it has built up a significant reputation and goodwill in its trademark and, as it has been registered in many countries throughout the world, it qualifies as a well-known trademark.
The Complainant further asserts that it has achieved international recognition of its mark which has been endorsed by it having been ranked as a finalist, on two occasions, in the World Retail Awards in the Emerging Market Retailer of the Year category.
The Complainant also refers to previous UDRP decisions in which panels have found that it did have rights.
The Complainant asserts further that, as the wordmark MR PRICE has been wholly incorporated into the disputed domain name, which not only introduces confusing similarity but exacerbates it to the extent of being identical.
Furthermore, it contends that the addition of a top-level domain does not negate the confusing similarity.
The Complainant alleges that the Respondent has not been authorized by it to use the MR PRICE trademark.
There is no evidence that the Respondent has acquired any rights in the name. Moreover, a search by the Complainant does not show any legitimate use by the Respondent of the name. It follows, so it is contended, that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant avers that the Respondent was using the disputed domain name on social media platforms, particularly Facebook, by way of an email address, “[...]@mrpricejobs.org”. Prospective job applicants were being induced to apply for jobs by the fictitious job advertisement. When informed that they had been selected, they were given detailed instructions on how to make payment of R200.00 (two hundred South African Rands amounting to approximately USD15) which was described as a “background check” fee.
The Complainant puts up documents, both from the would-be job seekers and responses from the Respondent or its accomplices, as evidence of its allegations.
The Complainant contends that the registration and use of the disputed domain name is solely to enable the Respondent to commit fraud.
The Complainant also points out, in any event, that the registration details of the Respondent are incomplete.
Thus, so the Complainant contends, the Respondent has registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
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 and 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.
(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 and use 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).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
Paragraph 14(b) of the Rules provides that, a panel shall draw such inference as it considers appropriate from the failure of a party, in the absence of exceptional circumstances, to comply with any provision or requirement under the Rules (Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
However, the Center has furnished proof that the Respondent received written notice of the Complaint. The Panel is satisfied that the Respondent was aware of the proceedings on receipt of the notification. The Panel notes for completeness that the Center has fully discharged with its obligations in accordance with Paragraph 2(a) of the UDRP Rules.
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000, Inc., supra; RX America LLC. v. Matthew Smith, WIPO Case No. D2005-0540; Allianz case, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd., supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Domain Name is Identical or Confusingly Similar
The Complainant put up an extensive list of its registered trademarks and the domain names which it owns in many countries.
The Complainant has cited several previous URDP decisions which it contends confirm that the MR PRICE trademark is world famous. As the Respondent was not party to any of these UDRP decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those UDRP decisions is not evidence in this matter or binding on the Panel (LEGO Juris A/S v. Administracion Dominios, WIPO Case No. D2013-0265; LEGO Juris A/S v. Michael Fainshtein, WIPO Case No. D2013-0464).
On the basis of its evidence and contentions in this matter, however, this Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, for the purposes of this proceeding the Complainant has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the “TRIPS Agreement”). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412). The Panel, accordingly, finds the Complainant has rights in the trademark MR PRICE (LEGO Juris A/S v. Administracion Dominios, supra).
The fact that the wordmark MR PRICE has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc. v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
The addition of the word “job” does not exclude the likelihood of confusion (Revlon Consumer Products Corporation v. Jean Michel Druart, WIPO Case No. D2011-1527). If anything, it may add to the confusion (Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Joshua Kimac, WIPO Case No. D2018-1641).
Likewise, the addition of the suffix “.org” is not an element of distinctiveness that would generally be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the 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 has no difficulty in concluding 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 consumers 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 or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence 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; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, WIPO Case No. D2017-1884).
Having defaulted, the Respondent has placed itself in a position that it 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 (Volvo Trademark Holding AB v. Glenn Karlsson-Springare, WIPO Case No. D2012-0003).
A search by the Complainant did not show that the Respondent had made any legitimate, noncommercial or fair use of the disputed domain name.
The Complainant contends that it is the proprietor of the trademark MR PRICE, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would most likely violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S.A. v. Peikang, WIPO Case No. D2000‑0055; Caesar’s World, Inc. and Park Place Entertainment 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. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, 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 which might fall within that purview (Sybase Inc. v. Analytical Systems, supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed 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. Registered and Used 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 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 trade mark 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 trade mark 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 trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028). Be that as it may, however, there is the far more serious issue of fraud.
Where a respondent uses a domain name to impersonate a complainant and perpetrate a fraud, it is expected that the complainant should put up sufficient evidence of such activity (Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861).
Here, the Complainant has done so by putting up documentary evidence in the form of emails exchanged between the would-be job seekers and the Respondent from which it is clear that the Respondent was soliciting payments from would-be job seekers into its own bank account. That such job seekers were misled into thinking they were applying to the Complainant for employment is obvious from the emails exchanged (BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. WHOIS Privacy Protection Service Inc. / Gabriel Herbert, WIPO Case No. D2014-1120).
Such evidence of fraudulent emails to solicit payment of money into the Respondent’s bank account is, unquestionably, bad faith in the view of the Panel, both as to registration of the disputed domain name and its use (Wiltons Holdings Limited v. Domain Administrator, See PrivacyGuardian.org / Joham Brolin, WIPO Case No. D2017-1161).
The Panel is, therefore, satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
The Complainant asks that the disputed domain name be transferred to it.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <mrpricejobs.org> be transferred to the Complainant.
Archibald Findlay SC
Date: July 9, 2019