WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vodacom (Pty) Ltd, Vodafone Group PLC v. Whois Privacy, Whois Privacy (enumDNS dba) / Aleksandar Donkanic
Case No. D2019-1490
1. The Parties
Complainant is Vodacom (Pty) Ltd, South Africa and Vodafone Group PLC, United Kingdom, represented by D.M. Kisch Inc., South Africa.
Respondent is Whois Privacy, Whois Privacy (enumDNS dba), Luxembourg / Aleksandar Donkanic, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <videoplay.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 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 Complainant on July 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 5, 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. On July 11 and 17, 2019, the Center received email communications from Respondent. The Response was filed with the Center on July 23, 2019.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 12, 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
Complainant is the owner of two registrations for the service mark VODACOM VIDEO PLAY on the Register of Trade Marks of the Trade Marks Office of the Republic of South Africa, registration number 2014/31671, with effect from November 20, 2014, in international class (IC) 38, covering, inter alia, telecommunication, mobile and fixed telecommunication and telephone, communication and telecommunications services via the Internet, and broadcasting, and; registration number 2014/31672, with effect from November 20, 2014, in IC 41, covering, inter alia, entertainment, sporting, musical and cultural events and activities, entertainment and provision of games provided by means of any communications network.1 Each of these registrations is qualified by the Registrar of Trade Marks as follows: “Registration of this mark shall give no right to the exclusive use of the words ‘VIDEO’ and ‘PLAY’, each separately and apart from the mark”.
Complainant also makes reference to two applications in South Africa for registration of the service mark VIDEO PLAY, applications numbers 2019/09086 and 2019/09087, each submitted on April 1, 2019.2
Complainant Vodafone Group PLC is a large multinational provider of telecommunications and related services, and Complainant Vodacom (Proprietary) Limited is an affiliated entity operating in the Republic of South Africa. These two entities are referred to collectively herein as “Complainant”.
Complainant launched a video on-demand service using the names Vodacom Video Play and Video Play in February 2015 and relaunched an updated service under those names in July 2018. While Complainant and Respondent dispute the extent of customer adoption and use of this on-demand platform, Complainant asserts that its initial launch garnered 156,956 subscribers, and that its current registered user base is 3,486,328 subscribers.3 Complainant states that it has spent more than USD 500,000 in advertising and promoting its on-demand service. Complainant makes available a “Video Play” app on the Apple App Store and in Android, with the provider listed as “Vodacom Video Play”.4
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on December 29, 2001.
As of the initiation of this proceeding, the disputed domain name was directed to a website showing the terms “Coming Soon, We are Still Working on it, Copyright © 2018 videoplay”. The terms appeared on a blue background. Respondent indicates that he has spent a great deal of time and effort purchasing and registering domain names incorporating the term “videoplay” as the second-level domain, and using various top-level domains (e.g., “org”, “.services”, “.casino”, and “.technology”). Respondent indicates that he has been designing “a very unique and powerful search engine”, although he has not provided information regarding specific plans for use of his various “videoplay” domain names. Respondent has referred to a number of third-party websites using the term “videoplay” as a second-level domain.
Complainant has provided a screenshot from the wayback machine archive showing a search parking page from 2003. That parking page screenshot shows results for Netflix, a videographer, sports equipment and so forth. Complainant points to one listing which it has identified as a provider of unauthorized video downloads. This is one link among many in what appears to be a typical search parking page. Respondent indicates the page was automatically provided by the initial registrar of the disputed domain name, GoDaddy.com.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, such as the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it owns common law rights in the trade mark VIDEO PLAY based on use in commerce in South Africa. Complainant refers to its South Africa registration of the trade mark VODACOM VIDEO PLAY, and its pending applications for registration of the term VIDEO PLAY in South Africa as evidence of its rights in what it refers to as the “VIDEO PLAY Trade Marks”.
Complainant contends that the disputed domain name is identical to its common law VIDEO PLAY trade mark and is confusingly similar to its VODACOM VIDEO PLAY trade mark. Complainant argues that the term VIDEO PLAY is the “dominant and most memorable element” of its registered VODACOM VIDEO PLAY trade mark. Complainant asserts that a domain name is confusingly similar to a trademark when the domain name includes the trademark or a confusingly similar approximation regardless of the other terms in the domain name.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated or associated with Complainant and is using its trade mark without authorization; (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is directed to a “coming soon” page and has not been used in any other manner since at least 2014; (3) Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services for a substantial period of time; (4) Complainant refers to a link identified in a 2003 snapshot of a search page that was directed to a website from which unauthorized video downloads could be obtained, and; (5) having made its prima facie case, the burden has shifted to Respondent to establish rights or legitimate interests.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) active use of a disputed domain name is not required for a finding of bad faith; (2) Respondent’s intent in registering the disputed domain name was to profit in some fashion from the unlawful activities of various third parties to which links appeared based on the 2003 screenshot; (3) there is no evidence of any legitimate commercial or noncommercial business activity on Respondent’s website that post-dates Complainant’s VIDEO PLAY Trade Marks, or of preparations to use the disputed domain name; (4) Respondent has not attempted to sell the disputed domain name to Complainant; (5) Respondent’s use of a privacy shield is evidence of bad faith, and; (6) Complainant has a strong reputation in its trade mark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that he has spent a great deal of money securing the disputed domain name and various other domain names with the second-level “videoplay” name.
Respondent refers to a number of websites operating under second-level “videoplay” domain names.
Respondent indicates that “video” and “play” are two of the most popular words in the world, and refers to a variety of domain names with the second-level term “video” offered for sale at high prices. Respondent argues that a person may not obtain trademark protection for generic terms or expressions that relate to their own industry, and that “videoplay” is what people will do on his website.
Respondent contends that the quality of Complainant’s on-demand product is very poor, and that according to Alexa.com it is ranked 2,224,554th in global Internet engagement as of July 17, 2019, with users spending an average 43 seconds per day on the website.
Respondent contends that there are a variety of apps on Android using Video Play as a title, the same for the Apple App Store where, as of July 20, 2019, there was not a single review.
Respondent states that the landing page to which Complainant has referred was provided automatically by the initial registrar and that he did not profit in any way from that landing page.
Respondent indicates that there is no deadline for making active use of a domain name.
Respondent states that he uses a privacy shield to avoid spam, direct marketing, identity thieves, etc. Respondent contends that Complainant uses privacy shields for its domain names.
Respondent contends that he checked and determined that there was no trademark conflict when he registered the disputed domain name.
Respondent states that he has not misused the disputed domain name in any way.
Respondent alleges that Complainant is misusing the UDRP system in an attempt to misappropriate the disputed domain name.
Respondent requests the Panel to reject Complainant’s request for transfer.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Respondent filed a timely Response. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
The Panel rejects Complainant’s complaint because of its failure to satisfy the element of bad faith registration and use of the disputed domain name by Respondent. As a matter of administrative panel efficiency, the Panel consolidates the findings necessary to resolve the dispute.
Complainant has provided evidence of two registrations, with effect dated from November 20, 2014, for the term VODACOM VIDEO PLAY on the Register of Trade Marks of South Africa (see Factual Background supra). For both registrations, Complainant did not receive exclusive rights in the terms “VIDEO” and “PLAY” each separately and apart from the mark. Complainant subsequently submitted two applications for the term VIDEO PLAY, and those applications are pending.
Complainant also relies on its alleged common law rights in the trademark VIDEO PLAY in South Africa. The Parties are in dispute regarding the facts and legal basis underlying Complainant’s claim to common law rights in VIDEO PLAY. It is unnecessary for the Panel to make a factual and legal assessment regarding Complainant’s alleged common law rights in VIDEO PLAY because, assuming the facts and law most favorable to Complainant, those common law rights would not have developed before the end of 2014 or early 2015 when, according to Complainant, it began to use those terms in commerce. The Panel notes that these dates are largely aligned with the dates on which Complainant’s registration of VODACOM VIDEO PLAY became effective in South Africa (see Factual Background supra).
With that foundation, the Panel observes that it is not necessary for purposes of this decision to determine whether Complainant holds common law rights in the trademark VIDEO PLAY in the Republic of South Africa, or whether there is a material difference from a confusing similarity assessment standpoint if only VODACOM VIDEO PLAY can be relied upon. The Panel may assume for the sake of argument in assessing bad faith registration and use – without making a determination – that Complainant holds common law rights in the VIDEO PLAY trademark in addition to rights evidenced by registration of VODACOM VIDEO PLAY,
and that the disputed domain name is identical from the standpoint of the Policy to VIDEO PLAY.
The Panel need not, and does not, address the issue of rights or legitimate interests.
To prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), 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”. These include: “(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor, or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location.”
In a “best case” favoring Complainant, Complainant’s use in commerce of the term VIDEO PLAY began in late 2014 or early 2015. Assuming it established common law rights in that term, those rights arose sometime after late 2014 and, in any case, Complainant’s VODACOM VIDEO PLAY trademark registration and rights became effective more or less contemporaneously.
It is well established under the Policy, which Complainant appears to recognize, that absent exceptional circumstances, a domain name registrant does not register a domain name in bad faith if there is no trademark right held by the complaining party at the time of the registration. See WIPO Overview 3.0, section 126.96.36.199 Respondent registered the disputed domain name in 2001, a date at which Complainant’s trademark was not in use. Respondent simply could not have registered the disputed domain name in bad faith in relation to Complainant. Without registration in bad faith, there can be no “registration and use” in bad faith.
Complainant seeks to overcome this impediment to a finding of bad faith against Respondent by referring back to a single link in a standard form parking/landing page from 2003. Complainant seems to suggest that the disputed domain name association with one link (of many) to an alleged third-party bad actor somehow taints Respondent’s registration of the disputed domain name. Although the list of bad faith acts under paragraph 4(b) of the Policy is non-exhaustive, the Policy addresses bad faith use in the sense of taking advantage of the complaining trademark owner.6 Complainant makes no allegation that Respondent was attempting to take advantage of Complainant (which of course it could not do because Complainant had no trademark rights at that time).
Complainant also invokes bad faith “passive holding” or “non-use” of the disputed domain name in the sense that, according to Complainant, Respondent’s failure to actively use the disputed domain name means that Respondent is evidencing bad faith intent. Complainant seems to misapprehend the circumstances in which passive holding of a domain name may constitute bad faith. In general, if a domain name registrant has registered a well-known trademark without any plausible good faith use, a panel may draw the inference that the registrant intended to take advantage of the trademark owner. But passive holding doctrine does not suggest or imply that a domain name registrant is obligated to make active use of a domain name within some period of time to satisfy a party that has more recently (and in the case of VIDEO PLAY, hypothetically) acquired trademark rights.
The Panel understands that Complainant thinks it would be a good idea to own the disputed domain name since it presumably has a commercial value to Complainant. But the Policy is not designed to accord rights to parties that think they have better uses for domain names than existing domain name registrants. Before an enterprise launches a commercial venture, it would be wise to investigate whether a domain name is available, or how much it might cost to purchase from a prior registrant.
Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: August 24, 2019
1 The aforesaid registrations were "Signed and sealed at Pretoria this 26 day of July 2017". The Panel infers that signing and sealing constituted the official approval of the applications that relate back to a November 2014 date of application. Complainant refers to VODACOM VIDEO PLAY as "registered on 26 July 2017 (with effect from 20 November 2014"). The Panel notes that the ownerships of registration are in the name of Complainant Vodafone Group PLC.
2 Both applications referenced in the text are in the name of Complainant Vodacom (Proprietary) Limited.
3 A third-party news report regarding Complainant’s on-demand service dated May 13, 2019 states that there are 869,000 active users. See Jamie McKane, "Vodacom Video Play could be bigger than Netflix in South Africa", MyBroadband, May 13, 2019. Complainant appears to have been the source of the data used in this article. Complainant's evidence indicates that Complainant pays third parties to promote its products in the media, and most of the evidence provided by Complainant consists of internally generated presentations regarding its on-demand service. Respondent disputes much of this data based on his own Internet-based research. In light of the Panel's disposition of this case, it is not necessary for the Panel to sort through each of the competing claims.
4 iOS version confirmed by Panel visit to the Apple App Store of August 24, 2019.
6 Behavior of a domain name registrant vis-à-vis a party other than the complaining party may be relevant with respect to certain elements of bad faith, such as in establishing a pattern of conduct. But there must be an abuse in respect to the complaining party. Otherwise, a disinterested party could file a complaint alleging injury to a third party. This is not the design of the Policy.