WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Impala Platinum Holdings Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd
Case No. D2020-2268
1. The Parties
The Complainant is Impala Platinum Holdings Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama.
2. The Domain Name and Registrar
The disputed domain name <implats.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2020. On August 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 2020, 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 September 10, 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 September 11, 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 September 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on November 2, 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 South African company which produces platinum group metals. The Complainant employs almost 50,000 people and sells its products in South Africa, Japan, China, the United States of America, and Europe. Since April 1968, the name of the Complainant’s main operating subsidiary has been Impala Platinum Limited, this name being frequently shortened to “Implats”. The Complainant uses IMPLATS as one of its trading styles, in addition to IMPALA and IMPALA PLATINUM.
The Complainant has registered many trade marks to protect its IMPLATS, IMPALA and IMPALA PLATINUM brands. In the case of IMPLATS these include, by way of example only, South African trade mark, registration number 1998/08317, for IMPLATS in class 1, applied for on May 15, 1998 and registered on December 3, 2001. The Complainant also owns many domain names which comprise or include its IMPLATS trade mark. These include <implats.co.za>, which was first registered by the Complainant in 1994 and resolves to its principal website, as well as <implats.co.com> and <implats.net>.
The disputed domain name was registered on February 12, 2000. It resolves to a website containing pay-per-click (“PPC”) links, some of which relate to precious metals, such as “Gold Bullion Suppliers” and “White Gold Lockets”. Screenshots of the Respondent’s webpage taken in 2018 and 2019 show PPC pages with links which include “Platinum Mining” and tags which include “Mining Company” and “Metal Products”. Other links, such as “Job Search” and “Job Applications”, have no apparent association with the Complainant. In 2018 and 2019, the Respondent’s directory page also featured a notice that “The domain implats.com maybe for sale. Click here for more information”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or similar to a trade mark in which it has rights. It draws attention to its many registered trade marks for IMPLATS, full details of one of these marks having been set out above, and asserts that it has been using the IMPLATS, IMPALA, and IMPALA PLATINUM trading styles, since 1963. It says that the domain name extension, “.com”, does not serve adequately to distinguish the disputed domain name from its IMPLATS mark and that the disputed domain name is identical to its mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s rights in its trade mark pre-date the registration of the disputed domain name. The Complainant has not authorized the Respondent to use its IMPLATS mark, whether as part of a domain name or otherwise. There is no relationship or association between the Complainant and the Respondent, which accordingly has no right to use the Complainant’s mark. There is no evidence that the Respondent has been or is commonly known by the disputed domain name, whether in South Africa or elsewhere, or that the Respondent has acquired any trade mark or service mark rights in this mark.
The disputed domain name resolves to a website containing PPC links. This does not comprise use of the disputed domain name in connection with a bona fide offering of goods and services and would not do so even if the links were unrelated to the Complainant’s business, because the Respondent is taking unfair advantage of the Complainant’s reputation and goodwill. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent is making an illegitimate and unfair use of it, for the purpose of commercial gain, by misleadingly seeking to divert customers of the Complainant.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent was undoubtedly aware of the Complainant’s rights in its IMPLATS trade mark when the disputed domain name was registered because it is incorporated in its entirety within the disputed domain name. The fact that the Respondent does not have any association or connection with the Complainant creates the inference that the Respondent has no real legitimate interest in the disputed domain name and has acted in bad faith; see, for example Encyclopaedia Britannica, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0866. The registration of the disputed domain name also prevents the Complainant from registering or using the identical domain name. In addition, use by the Respondent of the disputed domain name leads people and/or businesses to believe that it is registered to, operated or authorized by or otherwise connected with the Complainant. The Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s reputation in its IMPLATS mark and has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
The Complainant has provided details of the many registered trade marks it owns for IMPLATS, which establish its rights in this mark.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.com” in this case, is typically disregarded for the purpose of assessing identicality and similarity. Having regard to this practice, the disputed domain name is identical to the Complainant’s IMPLATS trade mark. The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
So far as the first circumstance is concerned, whether the use of a domain name to resolve to a PPC landing page might amount to a bona fide offering of goods and service is considered at section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This explains that the use of a domain name to host a page containing PPC links can be consistent with a respondent having rights or legitimate interests “where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”.
That is not the position here in that the Complainant’s trade mark, IMPLATS, is not a dictionary term. Moreover, at least some of the PPC links which have featured on the Respondent’s web page, perhaps most notably “Platinum Mining”, have had at least some direct or indirect connection with the Complainant’s activities. As section 2.9 of the WIPO Overview 3.0 explains: “[a]pplying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The fact that some of the links which have featured on the Respondent’s webpage have no obvious connection with the Complainant is insufficient for the Respondent’s activities to comprise a bona fide offering of goods and services because the Respondent has been using the repute of the Complainant’s mark to attract Internet users to its webpage, and thereby derive a commercial benefit from it, without the Complainant’s consent.
Moreover, offering the disputed domain name for sale, as earlier iterations of the Respondent’s landing page have done, does not comprise a bona fide offering of goods and services. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow,WIPOCase No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale, does not support a respondent’s legitimate interest under the Policy.
The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character. Moreover, section 2.5.1 of the WIPO Overview 3.0 explains that: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Before considering the third element, it should be noted that a substantial period of time has elapsed between the registration of the disputed domain name and the institution of these proceedings. However, the general view taken by UDRP panels in applying the Policy (see the WIPO Overview 3.0, section 4.17) is not to apply doctrines such as laches. In certain circumstances, it may be that a respondent can point to some specific disadvantage which it has suffered as a result of a delay by a complainant in bringing proceedings, which may be material to the panel’s determination. However, no such circumstances are evident from the factual background set out in the Complaint.
In determining whether or not the disputed domain name was registered in bad faith, it is necessary to consider whether the Respondent chose to register a domain name including the Complainant’s IMPLATS mark by chance and without any knowledge of the Complainant. The Complaint does not contain a great deal of information as to the extent of the Complainant’s repute as at the date of registration of the disputed domain name in February 2000, but the Complainant’s South African trade mark, registration number 1998/08317 had been applied for in May 1998 and the domain name <implats.co.za>, had been registered by the Complainant in 1994. Moreover, the Respondent has not sought to challenge the Complainant’s assertions that it has been using IMPLATS as a trading style since 1963. It is therefore reasonable to infer that the Complainant had acquired unregistered trade mark rights in IMPLATS as at the date of registration of the disputed domain name in February 2000.
It is accordingly likely that the Respondent registered the disputed domain name with knowledge of the Complainant’s mark and with the intention to take advantage of it in some way. As explained at section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Such a presumption applies on these facts and, as the Respondent has not attempted to rebut it, the Panel finds that the disputed domain name was registered in bad faith.
Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The circumstances of the Respondent’s use of the disputed domain name are similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website. Finally, the fact that the Respondent has sought to protect its identity by use of a privacy service is, on the facts of this case, a further indicator of bad faith on the part of the Respondent.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <implats.com> be transferred to the Complainant.
Date: November 13, 2020