WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sun International (South Africa) Limited v. Ahmed Abdelmaksoud, Rahal United
Case No. D2021-0363
1. The Parties
The Complainant is Sun International (South Africa) Limited, South Africa, represented by Adams & Adams, South Africa.
The Respondent is Ahmed Abdelmaksoud, Rahal United, South Africa.
2. The Domain Name and Registrar
The disputed domain name <suncity.tours> (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 February 5, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 8, 2021, 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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on March 30, 2021. 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 a South African resort hotel and casino chain and one of the leading casino operators in the southern hemisphere. The Complainant has a market capitalisation of approximately USD 1.4 billion and enjoys a 42.5 per cent share of the South African casino market.
The Complainant has, since 1979, operated a casino and resort in South Africa’s North West province under the brand SUN CITY which has become a major tourist attraction. The Complainant owns many trade mark registrations for SUN CITY in South Africa and numerous international territories, the most relevant of which are South African registration numbers 1978/05182-84 SUN CITY registered on December 14, 1979 in classes 39, 41, and 42 respectively, covering “transportation”, “entertainment”, and “accommodation” services amongst others.
The Domain Name was registered on June 26, 2020 by the Respondent, and, as at the filing of the Complaint and the drafting of this decision, resolved to a parked website featuring click-through advertisements concerning, amongst others, accommodation at the Complainant’s SUN CITY resort and competing accommodation in the Pilansberg area neighbouring the Complainant’s SUN CITY resort.
5. Parties’ Contentions
The Complainant contends that the Domain Name stands to be transferred to it under the Policy because: the registration of the Domain Name bars the Complainant from registering and using the Domain Name in a generic Top-Level Domain (“gTLD”) naturally associated with the Complainant’s business; and the Domain Name is being used to capitalise on the repute of the Complainant’s SUN CITY mark for commercial gain by creating confusion as to an association between the Complainant and the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is identical to the Complainant’s registered SUN CITY mark. It is well established that minor omissions of punctuation do not sufficiently alter a trade mark to negate a finding of identity (Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). This includes the omission of a space between two words comprising a trade mark, as in this case (Brands Environment Establishment v. Pawel Matwiejczuk, WIPO Case No. D2009-0238).
The Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
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 (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Here, there is a prima facie case which the Respondent has failed to rebut.
The Complainant has adduced evidence showing that its SUN CITY mark is well-known both in South Africa and in the many other territories in which its foreign guests reside.1
The Domain Name is identical to the Complainant’s well-known, registered mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain. The Respondent’s name, per the WhoIs data revealed by the Registrar, bears no resemblance to the Complainant’s mark for the purposes of paragraph 4(c)(ii) of the Policy. Without the benefit of a Response, the Panel is not aware of any trade marks in the name of the Respondent, and therefore assumes there are none or else the Respondent would have put those forward.
The only evidence of use of the Domain Name is for a parked page comprising pay-per-click (“PPC”) advertisements linked to the Complainant’s SUN CITY resort, as well as competing services. UDRP panels have found that 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 capitalise on the complainant’s mark (WIPO Overview 3.0 at section 2.9).
The Panel has independently searched the Internet Archive, which contains no historical evidence of use of the Domain Name that might otherwise confer rights or legitimate interests upon the Respondent.
Here, the gTLD “.tours” is clearly relevant to the Complainant’s business under the SUN CITY mark given that the Complainant offers safari tours in and around its resort. Per the WIPO Overview 3.0 at section 2.14, where the top-level domain (“TLD”) relates to goods or services associated with the complainant, the respondent’s selection of such TLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.
The Domain Name is identical to the Complainant’s well-known, registered trade mark, which was in use and well-known long in advance of registration of the Domain Name. Considered together with the Respondent’s choice of a TLD that corresponds to the Complainant’s area of business activity, this is a further indicator of targeting and bad faith (WIPO Overview 3.0 at section 3.2.1).
The Domain Name is used to advertise competitors of the Complainant, as well as the Complainant’s resort itself, with PPC advertisements for the commercial benefit of the Respondent. The intention was clearly to attract Internet users to the site, for profit, based on their confusing the Respondent’s Domain Name and/or website with the Complainant and/or its website. It is well established that this is an indicator of bad faith under paragraph 4(b)(iv) of the Policy (Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753). Although the PPC advertisements in this case appear to be served programmatically by the Registrar, the Respondent cannot disclaim responsibility for them (see WIPO Overview 3.0 at section 3.5).
Under the Rules, paragraph 14(b), a 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 (section 4.3 of the WIPO Overview 3.0; see also Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171).
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, <suncity.tours>, be transferred to the Complainant.
Date: April 13, 2021
1 Additionally, 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, takes judicial notice of the repute of the Complainant’s SUN CITY mark and finds it to be well-known in South Africa. Although not included in the Complaint, the Panel has also independently established that the international repute of the Complainant’s SUN CITY mark has already been recognised in an earlier UDRP decision in Sun International (Zambia) Limited v. Privacy Protection Service Inc d/b/a PrivacyProtect.org / Hamilton Mandizvidza, Hamand Ent, WIPO Case No. D2016-0105. UDRP panels may undertake limited factual research into matters of public record. See WIPO Overview 3.0 at section 4.8.