WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydney Fish Market Pty Ltd v. Salvan Niamki
Case No. D2019-2436
1. The Parties
The Complainant is Sydney Fish Market Pty Ltd, Australia, represented by K&L Gates, Australia.
The Respondent is Salvan Niamki, India.
2. The Domain Name and Registrar
The disputed domain name <sydneyseafoodmarket.com> is registered with Domainshype.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2019, 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 October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on December 2, 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 owns and operates “Sydney Fish Market”, a seafood market in Sydney, Australia, which was established in 1945. Over 13,500 tons of seafood are traded annually at the market.
The Complainant operates a website at “www.sydneyfishmarket.com.au” as well as social media sites including a Facebook page with some 50,000 followers.
The Complainant owns Australian trade mark No. 1584146 for SYDNEY FISH MARKET, filed on October 3, 2013, and registered on October 12, 2016, in classes 9, 16, 21, 24, 25, 29, 30, 35, 42, and 43.
The disputed domain name was registered on September 13, 2019.
As of September 26, 2019, the disputed domain name was used for a website which was a virtually identical copy of the Complainant’s own website including use of the Complainant’s logo. The operator of the website was stated to be “Sydney Seafood Market Pty Ltd”.
On various dates in September 2019, the disputed domain name was used as an email address in connection with fake offers of employment with the Complainant.
The Complainant sent a legal letter to the Respondent on September 30, 2019. No response was received.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant’s market is the largest seafood market of its kind in the southern hemisphere and has become an icon of Australia’s seafood industry. The Complainant has developed substantial reputation and goodwill in the trade mark as a result of its extensive promotion and use, including on signage, in advertisements, on social media and on the Complainant’s own website.
The disputed domain name is confusingly similar to the Complainant’s trade mark. The only difference is the replacement of “fish” with “seafood”, which is conceptually identical.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, an individual based in India, does not appear to have any connection with Sydney, Australia. The Respondent is not known by the disputed domain name. Nor does he possess any registered Australian trade marks or business names incorporating the name reflected in the disputed domain name.
There is no evidence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial use of the disputed domain name.
The Respondent registered the disputed domain name to misleadingly divert Internet users from the Complainant’s website and scam them into providing personal information, and possibly making payments, to the Respondent.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered primarily to disrupt the Complainant’s business and/or to intentionally confuse people into thinking that the Respondent was associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark SYDNEY FISH MARKET by virtue of its registered trade mark as well as unregistered trade mark rights deriving from its extensive use of that name.
The disputed domain name is confusingly similar to the Complainant’s trade mark. It differs from the Complainant’s trade mark only by replacing the term “fish” with the conceptually similar descriptive term “seafood”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to impersonate the Complainant in a fraudulent manner. Plainly, such use of the disputed domain name could not be said to be bona fide.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has produced evidence that the disputed domain name has been used for a website impersonating the Complainant including display of the Complainant’s logo and use of a bogus corporate name, similar to that of the Complainant. The disputed domain name has also been used for email addresses from which emails were sent to third parties impersonating the Complainant, most likely for phishing purposes. The fact of impersonation shows that the Respondent knew of the Complainant’s trade mark when registering the disputed domain name.
Given the evidence of use of the disputed domain name for a fraudulent purpose, the Panel readily concludes that it was registered and is being used in bad faith by the Respondent.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 <sydneyseafoodmarket.com> be transferred to the Complainant.
Date: December 16, 2019