WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
P-Net (Proprietary) Limited v. Nikolay Indahl, Bashundhara
Case No. D2021-1323
1. The Parties
The Complainant is P-Net (Proprietary) Limited, South Africa, represented by Spoor & Fisher Attorneys, South Africa.
The Respondent is Nikolay Indahl, Bashundhara, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <pnetza.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, 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 May 3, 2021 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 May 5, 2021.
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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 12, 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 Complainant is one of the first online recruitment portals in South Africa, established in 1997. It services include automating recruitment processes, marketing career opportunities to the public and assisting in optimizing internal mobility processes, amongst others. It offers these services to recruitment agencies, private companies and state employers. It has grown from an initial three employees to employing over 70 employees and servicing 1200 active clients.
It also has a network of 2,350,000 professional jobseekers on its databases. Further information about the Complainant is set out on its website, extracts of which are set out in Annexure E to the Amended Complaint. It is now the leading online recruitment provider in South Africa.
The corporate name “P-Net Proprietary Limited” was registered with the South African Companies and Intellectual Property Commission in 1999 and an extract from the companies register showing this is annexed as Annexure F.
The Complainant relies upon two South African registered trade marks details of which are annexed as Annexure G. These are;
No. 2000/03077; PNET registered on February 27, 2004 in Class 35.
No. 2000/03078; PNET registered on February 27, 2004 in Class 43.
These registrations predate registration of the disputed domain name on October 9, 2020.
The Complainant submits that has accrued substantial goodwill and reputation in the mark PNET as a result of its use in respect of the Complainant’s business and services.
The Complainant is also the owner of the domain names; <pnet.co.za> and <pnetsolutions.co.za>.
At Annexures K and L to the Amended Complaint the Complainant exhibits extracts from the Respondent’s website which show that the Respondent has copied legitimate job-listings from the Complainant’s website.
Provision is made to apply for these jobs by providing a link to the Complainant’s website. None of the jobs posted on the Respondent’s website are genuinely linked to any clients of the Respondent.
In the absence of a Response the Panel finds the above evidence as adduced by the Complainant to be true.
5. Parties’ Contentions
The Complainant submits;
i. The disputed domain name <pnetza.com> is confusingly similar to the trade marks PNETZA in which the Complainant has registered rights;
ii. On the evidence, the Respondent has no legitimate rights or interests in respect of the disputed domain name;
iii. On the evidence, the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has produced evidence, set out in section 4 above, that it owns registered rights in the mark PNET.
The Complainant points out that the disputed domain name wholly incorporates the Complainant’s trade mark PNET. The only differences between the Complainant’s trade mark PNET and the disputed domain name is the addition of the suffix “za” and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the abbreviation “za” denotes South Africa which is where the Complainant is based and primarily operates. In the Panel’s view the dominant part of the disputed domain name is “pnet” and the suffix “za” is a well known abbreviation for South Africa.
The Complainant also submits that it is well-established by previous UDRP decisions, including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that the mere addition of a gTLD to a disputed domain name does not avoid a finding of confusing similarity.
This Panel agrees with these submissions and accordingly finds that the disputed domain name is confusingly similar to the trade mark PNET in which the Complainant has registered rights within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits, upon established authority including Associated British Foods v. Domain Admin., WIPO Case No. D2005-0283, which it cites, to the effect that once a Complainant asserts that a Respondent has no rights or legitimate interests in the domain name the onus is then on the Respondent to establish that it has indeed such rights or legitimate interest.
The Complainant also relies upon paragraphs 4(c)(i) to (iii) of the Policy in requiring the Respondent, in order to show a legitimate interest in the disputed domain name, to show;
(i) it has been making use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) it has been commonly known by the domain name; or
(iii) it is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the name, trademark or service mark at issue.
The Complainant submits that the Respondent’s website “https:pnetza.com/” accessed by the disputed domain name evidences that the Respondent has copied in their entirety legitimate job listings from the Complainant’s website at <www.pnet.co.za>. These job listings are placed on the Respondent’s website and provision has been made to apply for these jobs by providing a link to the Complainant’s website. The Respondent is therefore not using the disputed domain name in the furtherance of its own commercial or bona fide interests or offering legitimate services linked to its own business interests.
The Complainant points out that the Respondent has in no way been authorized to use its trade mark PNET nor to copy and advertise its job listings on its website. There is no evidence the Respondent is commonly known by the disputed domain name.
The Complainant also submits that the Respondent is posing as the Complainant and passing off both itself and its website as that of the Complainant. The evidence contained in the screengrabs of the Respondent’s website exhibited at Annexure L to the Complaint shows that the Respondent refers to itself as “PNET South Africa” and then goes on to describe itself as “the number one recruit (sic) agency in South Africa”. In the Panel’s view this is clear evidence that it is not making legitimate or fair-use of the domain name but is using it with intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue i.e. PNET.
In the Panel’s view and in the absence of a Response, the evidence contained in Annexures K and L to the Complaint plainly shows that the Respondent has no rights or legitimate interests in respect of the disputed domain name within Paragraphs 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that within Paragraph 4(b)(ii) of the Policy, the Respondent has registered the disputed domain name to prevent the Complainant, the registered owner of the trade mark PNET, from reflecting that trade mark in a corresponding domain name.
The Complainant relies upon the evidence that the Respondent would have been aware that the Complainant which operates its business in South Africa and is known in the South African recruitment industry would “conceivably” seek to register a domain name incorporating the mark PNET and the abbreviation for South Africa “ZA”, over 20 years after registration of the marks. This view is supported by the evidence of the content of the Respondent’s website which shows that the Respondent would have been aware of the Complainant’s rights at the date of registration of the disputed domain name.
In the absence of a Response and on the evidence the Panel finds that the Respondent registered the disputed domain name in bad faith.
The evidence of the Respondent’s website incorporating content from the Complainant’s website is in the Panel’s view clear evidence that the Respondent’s website has been created in such a way that users of the website will confuse the Respondent’s business with that of the Complainant. This shows that the disputed domain name was registered for the purpose of disrupting the business or activities of the Complainant within paragraph 4(b)(iii) of the Policy.
The Complainant also submits that the Respondent has, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website within paragraph 4(b)(iv) of the Policy.
In support of this submission the Complainant relies upon: the fact that the mark PNET is wholly included in the disputed domain name, the mark is used on the Respondent’s website, the Respondent is purporting to represent itself as the Complainant and has copied all of the Complainant’s job listings on to its website. It submits that there is no doubt that the Respondent’s website will confuse consumers into assuming that there is a link or affiliation between the Complainant and Respondent where this is not the case.
The Panel agrees with these submissions and in the absence of a Response finds that the disputed domain name was registered and used by the Respondent in bad faith within 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 <pnetza.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 25, 2021