WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Airports Company South Africa SOC Limited v. Domains By Proxy, LLC / Dill Martine
Case No. D2020-2716
1. The Parties
The Complainant is Airports Company South Africa SOC Limited, South Africa, represented by KapdiTwala Inc. t/a Dentons South Africa, South Africa.
The Respondent is Domains By Proxy, LLC, United States of America / Dill Martine, South Africa.
2. The Domain Name and Registrar
The disputed domain name <airport-s.org> (the “Domain Name”) 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 October 16, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 20, 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 amendment to the Complaint on October 20, 2020.
The Center verified that the Complaint, together with the amendment to 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2020.
The Center appointed Jeremy Speres as the sole panelist in this matter on November 20, 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 uncontested facts are as follows. The Complainant is Airports Company South Africa SOC Limited, a company owned by the South African government and established by statute, responsible for owning and managing all nine of South Africa’s major airports, including its three main international airports.
The Complainant has used and promoted its AIRPORTS COMPANY SOUTH AFRICA trade mark extensively in South Africa since 1993 and has operated its website, “www.airports.co.za”, since 1996.
The Complainant owns numerous South African trade mark registrations for its AIRPORTS COMPANY SOUTH AFRICA trade mark, the earliest and most relevant of which is registration no. 2010/04131 in class 39 covering “airport services”, amongst others, which proceeded to registration on April 2, 2012.
The Domain Name was registered on July 22, 2019, and did not resolve to an active website as at the drafting of this decision. However, the Complainant has provided evidence of the use of the Domain Name as part of a fraudulent scheme through a tender document reproducing the AIRPORTS COMPANY SOUTH AFRICA trade mark in its entirety and providing an email address “[…]@airport-s.org”.
5. Parties’ Contentions
The Complainant contends as follows. The Domain Name is confusingly similar to its well-known trade mark because the Domain Name incorporates the dominant element of the trade mark, “airport”, together with “s” which the Complainant argues is a reference to “South Africa”.
The Respondent lacks rights or legitimate interests given that the Domain Name is not authorised by the Complainant and the Domain Name has been used for fraud impersonating the Complainant.
The Domain Name was registered and used in bad faith because the Respondent has taken advantage of the Complainant’s well-known trade mark by using the Domain Name to perpetuate fraud.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
A comparison of the Complainant’s trade mark, AIRPORTS COMPANY SOUTH AFRICA, and the Domain Name, <airport-s.org>, is, at first glance, not favourable to the Complainant. The Complainant’s mark is not immediately recognisable, as it is only partially reproduced within the Domain Name, which consists of the word “airport” and the suffix “-s”. Nevertheless, the Panel considers the Domain Name confusingly similar to the Complainant’s trade mark for the following reasons.
Firstly, it is well accepted that the first element has a low threshold for it merely serves as a standing requirement under the Policy (PEC Intellectual Property Management B.V. v. Siberia International Productions Co., Ltd, WIPO Case No. D2013-1320).
Secondly, in cases where a dominant feature of the mark is recognisable in the domain name, they will normally be considered confusingly similar (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”). AIRPORTS is the first word and could be considered as the dominant element of the Complainant’s mark, and the Domain Name consists almost entirely of it, adding only a single interposed hyphen which does little to distinguish it.
Thirdly, UDRP panelists may take judicial notice of the repute of a trade mark within their personal knowledge where it cannot reasonably be contested (see section 4.8 of the WIPO Overview 3.0; Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016‑1300). The Panel, having been a resident of South Africa for many years prior to registration of the Domain Name, is acutely familiar with the Complainant, as any regular air passenger in South Africa is likely to be. Being the owner and operator of all of South Africa’s major airports, the term “airports” is to a large extent associated with the Complainant in the minds of the public in South Africa. This is supported by the Complainant’s own long standing use of a domain name that consists exclusively of “airports” plus the domains “.co.za” (i.e. <airports.co.za>).
Fourthly, in specific limited instances, where a panel would benefit from affirmation as to confusing similarity, the broader case context may be considered (see section 1.7 of the WIPO Overview 3.0). As detailed below, the Domain Name has been used to perpetuate fraud impersonating the Complainant, and the Domain Name was clearly chosen by the Respondent to take advantage of the intended confusing similarity with the Complainant’s trade mark.
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has adduced credible evidence that the Domain Name has been used in the course of fraudulently soliciting procurement tenders. Specifically, the Complainant has adduced evidence showing that an “Invitation to Bid and Instructions to Bidders” has been circulated in which the Complainant is impersonated through use of its exact trade mark, logo, and other uniquely identifying elements. Bidders are requested to direct queries to an email address using the Domain Name. Bidders are also directed to make payment of a “tender fee” to a bank account not associated with the Complainant.
There is a further, clear indicator that the Domain Name was registered and has been used with fraudulent intent. UDRP Panels may undertake limited factual research into matters of public record (see section 4.8 of the WIPO Overview 3.0). Although the Complainant did not raise it, the Panel has independently established that the registrant’s physical address for the Domain Name, per the WhoIs details, matches the Complainant’s own address. This is an obvious indicator that the Respondent intended to impersonate the Complainant.
Panels have categorically held that use of a domain name for illegal activity (e.g., impersonation or other types of fraud) can never confer rights or legitimate interests (see section 2.13.1 of the WIPO Overview 3.0).
There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Domain Name did not resolve to an active website at the time the Complainant was made aware of it and at the filing of the Complaint, which is the position at the time of drafting of this decision. The Panel has searched the Internet Archive, which contains no evidence of use of the Domain Name. The registrant’s name, per the WhoIs, does not correspond to the Domain Name for the purposes of paragraph 4(c)(ii) of the Policy, and noting the Respondent’s use of the Domain Name to impersonate the Complainant, the Panel finds that the Respondent has not been commonly known by the Domain Name.
The Domain Name almost entirely consists of a dictionary word, “airport”, and it has long been recognised that registering and using domain names comprising a dictionary word can constitute a legitimate interest under the Policy when there is, at least, a demonstrable intention to genuinely use it in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see section 2.10 of the WIPO Overview 3.0). However, on the facts, it is clear that the Domain Name was registered with the Complainant’s mark in mind and not for its semantic value.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is well accepted that use of a domain name to perpetuate fraud constitutes bad faith (see section 3.4 of the WIPO Overview 3.0). That fraud was the intention of the Respondent upon registration of the Domain Name, and that the Domain Name has been used for fraud, is clear from the evidence discussed above.
The Respondent is, per the WhoIs, based in South Africa, and the Complainant’s trade mark is well-known in South Africa. When considered along with the totality of the circumstances, this indicates that it is highly likely that the Respondent was aware of the Complainant’s mark and the Domain Name was registered with the Complainant’s mark in mind. This is further supported by the fact that the Domain Name differs from the Complainant’s own domain name by only the interposition of a hyphen, indicating an intention to deceive.
Although not raised by the Complainant, the Panel has independently established the following two additional indicia of bad faith. Firstly, on October 23, 2018, an advertisement 1 was posted online for the sale of a pair of parrots in Cape Town, South Africa. The advertiser is listed as “Mr. Dalii” with the very same email address of the Respondent in this matter. The advertiser’s name is entirely different to the name used in the WhoIs for the Domain Name, which indicates that the same individual has used a false name to conceal its identity. This is consistent with the use of a false address in the WhoIs discussed above and is an indicator of bad faith (see section 3.3 of the WIPO Overview 3.0). This advertisement also supports the conclusion that the Respondent is based in the Complainant’s home territory where its mark is well-known.
Secondly, the Domain Name System (“DNS”) records for the Domain Name show that it has live MX or “mail exchange” records, indicating that it is configured to receive emails. This is consistent with the evidence addressed above showing that the Domain Name has been used to perpetuate procurement tender fraud to the extent that the Domain Name is used for an email address to which victims can submit queries.
In addition, under Rule 14(b), the Panel may draw inferences from the Respondent’s default where a particular conclusion is prima facie obvious, where an explanation is called for but is not forthcoming, or where no other plausible conclusion is apparent (see section 4.3 of the WIPO Overview 3.0).
The Complainant has satisfied 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 Domain Name <airport-s.org> be transferred to the Complainant.
Date: November 24, 2020