WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phumelela Gaming & Leisure Limited v. Lucky Themba Mabuza
Case No. D2020-0012
1. The Parties
The Complainant is Phumelela Gaming & Leisure Limited, South Africa, represented by Moore Attorneys Incorporated, South Africa.
The Respondent is Lucky Themba Mabuza, South Africa.
2. The Domain Name and Registrar
The disputed domain name <phumelelagroup.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 8, 2020, 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 10, 2020.
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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on February 13, 2020. 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 a horseracing and tote betting operator in seven of South Africa’s nine provinces and was listed on the Johannesburg Stock Exchange in June 2002. It is based at Turffontein Racecourse in Johannesburg, operates four racecourses, five training centers, over 200 tote outlets comprising nearly 150 branches and about 60 agencies, a telephone-betting center and online tote betting sites. It also manages two racecourses, training centers, tote outlets and a telephone betting-center in the Western Cape.
The Complainant’s wholly owned subsidiary Betting World, a corporate fixed-odds operator, has nearly 70 retail outlets and an online betting site and telephone betting center where selected live racing from a host of countries, including the Australia, Hong Kong, China, France, Mauritius, Singapore, United Arab Emirates, United Kingdom, and United States of America, is imported daily allowing its patrons to watch and bet on horseracing from around the globe. South African racing is simultaneously exported to some 40 international jurisdictions by it.
The Complainant also operates tote betting on sport such as rugby and soccer.
The Complainant is the registered trademark proprietor of 16 trademarks in South Africa, all containing the word mark PHUMELELA, in classes 9, 16, 38, 41 and 42. The earliest trademarks, No. 1998/12462, registered on June 10, 2002, and Nos. 1998/12463, 1998/12464 and 1998/12465, registered on June 18, 2004. All the trademarks are currently valid and enforceable.
The Complainant is also the registrant of two domain names,<phumelela.com> and <phumelela.co.za>, both registered in November 1998.
The Complainant became aware of the disputed domain name in March 2019 and caused its attorneys to write a cease and desist letter on March 12, 2019 to which there has been no response.
The disputed domain name was registered on March 26, 2014 and it resolves to a website that is currently being developed.
5. Parties’ Contentions
The Complainant contends that by incorporating the PHUMELELA trademark the disputed domain name is identical or confusingly similar to the Complainant's trademarks and domain names.
It avers that a Google search conducted by it in respect of the disputed domain name resolved to a parked website and the fact that it may be used to divert searchers fraudulently inducing them to believe it is associated with the Complainant.
The Complainant further confirms that the Respondent has no relationship with it or any authorization to use the disputed domain name and, accordingly, contends that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant further contends that the registration and use of its trademark is clearly in bad faith in the light of the above and that it would mislead people into believing that they would be dealing, directly or indirectly, with the Complainant.
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 Complainants must prove each of the following:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed 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 a domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three 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).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the requirement of the Rules (Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
From this the Panel considers that it may be accepted 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 Innovative Corporation v. Shopintimates USA, supra; VKR Holdings A/s v. Above.com Domain Privacy/Host Master, Transure Enterprises 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; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holdings A/S v. Above.com Domain Privacy/Host Master, Transure Enterprises Ltd., supra; Group Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The fact that the word mark PHUMELELA has been incorporated entirely into the disputed domain name is sufficient in this case to establish that the disputed domain name is confusingly similar to the Complainant’s registered marks (Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking /Neo net Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The Panel also holds the view that the addition of the word “group” after the trademark PHUMELELA is merely a description and does not prevent a finding of confusing similarity (Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans, WIPO Case No. 2002-0367; Fry’s Electronics, Inc. v. WhoIs ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050; Statoil ASA (“Statoil”) v. Anoop Chetty, Telas, WIPO Case No. D2017-1884; Bristows LLP v. Protection of Private Person / Marilyn Steele, WIPO Case No. D2018-0685).
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 disputed 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 disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert customers or to target 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, supra).
Having defaulted, the Respondent has placed himself in a position that he 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. The mere bald statement in the correspondence without more or supporting evidence, does not take the Respondent’s position further.
The Complainant contends that it is the owner of the trademark PHUMELELA, and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark or domain name of the Complainant. It follows, therefore, that the Respondent has no rights to the use of that trademark as part of a domain name for purposes of the Policy. (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain 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). Nor did the Respondent suggest otherwise when this assertion was made in the cease and desist letter.
Likewise, 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, express, implied 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; Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In view of the unchallenged facts and circumstances put up on this ground by the Complainant, 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 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 on-line 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 registration of the disputed domain name, which is confusingly similar to the Complainant’s trademark and domain names, with the addition of the word “group” is indicative of the Respondent’s intent to trade on the value established by the Complainant in its trademark, to attract users and thereby deriving economic benefit from either those users attracted to the Respondent’s website as and when it may become operative and by receiving compensation from others if these would-be customers are routed away from the Complainant and to the Respondent. Such a practice also would constitute bad faith (Yahoo! Inc. and Geo Cities v. Data Art Corp., Data Art Enterprises, Inc., Stonybrook Investments, Globalnet 2000, Inc., Powerclick, Inc., and Yahoo Search Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is identical or confusingly similar to the Complainant’s trademark and domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
The selection of a name which is confusingly similar to that of the Complainant without the Respondent having any association or connection with the Complainant is not legitimate and, in these circumstances, evidence of bad faith. (Encyclopaedia Britannica, Inc. v. LaPorte Holdings, supra).
The fact that the disputed domain name is not connected with a bona fide offering of goods and services but resolves to a site to be developed is, in the view of the Panel, in bad faith under the current circumstances. See WIPO Overview 3.0, section 3.3.
The Panel is therefore satisfied that the Complainant has established the third element 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 <phumelelagroup.com> be transferred to the Complainant.
Archibald Findlay SC
Date: February 17, 2020