Sanlam Limited v. songyiqing / ziyouzhiye
Claim Number: FA1212001475014
Complainant is Sanlam Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is songyiqing / ziyouzhiye (“Respondent”), represented by Bill Gao, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sanlam.mobi>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
JAIME DELGADO as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 10, 2012.
On December 11, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com. confirmed by e-mail to the National Arbitration Forum that the <sanlam.mobi> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com. and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com. has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sanlam.mobi. Also on December 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 7, 2013.
An Additional Submission was received by Complainant and determined to be complete on January 9, 2013.
On January 17, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed JAIME DELGADO as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of the SANLAM mark, which is registered in various countries worldwide, including South Africa’s Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 96/12410 registered September 3, 1996), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 000420067 registered December 13, 1996), and the United Kingdom’s Intellectual Property Office (“UKIPO”) (Reg. No. 2,118,114 registered July 3, 1998). See Complainant’s Annexure 1. Complainant uses the mark in its business, Sanlam Ltd, which is incorporated in South Africa. Complainant was established in 1918, under the name “Suid-Afrikaanse Nasionale Lewens Assuransi Maatskappij Beperk,” meaning “South African National Life Assurance Company Limited,” forming the SANLAM acronym. Complainant operates offices throughout the continent of Africa, as well as in the United Kingdom, India, and Australia. Complainant owns the <sanlam.com> mark, as well as several other domain names, and uses the resolving website to provide information on its programs. Complainant has spent a substantial amount of money to promote its programs, and generate extensive press coverage.
Respondent registered the <sanlam.mobi> domain name on June 3, 2010. The domain name resolves to a website that promoted domain names with the generic top-level domain (“gTLD”) “.mobi,” and also included links to a variety of products and services targeting consumers in South Africa. The <sanlam.mobi> domain name is confusingly similar to Complainant’s SANLAM mark. Respondent does not hold any rights or legitimate interests in the domain name, as it does not have authorization to use the SANLAM trademark, and Respondent registered the mark to attract, confuse, and profit from Internet users searching for Complainant on the Internet. Respondent has not been commonly known by the <sanlam.mobi> domain name. Respondent registered several other domain names using the gTLD “.mobi” and incorporating marks belonging to other parties, which establishes a pattern of bad faith registration and use. Respondent registered the domain name in order to earn a profit from the links appearing at the resolving webpages.
Respondent denies that the <sanlam.mobi> domain name is identical to Complainant’s SANLAM mark, as Complainant has no registered trademark rights in the SANLAM mark. Complainant does not have exclusive prior rights to the word SANLAM in China, as the trademark has a regional nature. Complainant has not established common law.
Respondent claims to own rights and legitimate interests in the <sanlam.mobi> domain name, under the principle of “first come, first registration.” Due to the lack of critical mass of potential users of “.mobi” technology, Respondent’s current passive use does not eliminate his possible rights or legitimate interests in the disputed domain name. Respondent registered the domain name in order to establish a mobile Internet service website, and not to sell it to Complainant. Respondent does not make an unfair competitive use of the domain name. Respondent did not register and use the <sanlam.mobi> domain name in bad faith, as Respondent “hardly learnt [sic] of the trademarks owned by Complainant,” and when Respondent registered the domain name, it was not aware of the mark, and further had no intent of disrupting Complainant’s business. Respondent should not be obliged to undertake the task of searching for a mark prior to registering a domain name. Complainant has failed to demonstrate that Respondent registered the disputed domain name with the purpose of selling it. There is no bad faith in registering and holding a domain name with plans for future developments related to an existing business.
Complainant argues that it does indeed own trademark rights in the SANLAM mark, as shown by its trademark registrations. Complainant argues that Respondent has no evidence that supports its contention of having a legitimate interest in the <sanlam.mobi> domain name or rebutting the allegation of Respondent’s bad faith registration and use. Merely registering a domain name does not establish a legitimate interest. Respondent is a cybersquatter that calculated its registration toward Complainant’s SANLAM mark.
Suid-Afrikanse Nasionale Lewensassuransie Matskappy Ltd. was incorporated under the laws of South Africa and it owns several trademark registrations in South Africa and Namibia dated as early as 1996, for the word “SANLAM” either alone or with other words, among others, CIPC (Reg. No. 96/12410 registered September 3, 1996), the OHIM (Reg. No. 000420067 registered December 13, 1996), and the UKIPO (Reg. No. 2,118,114 registered July 3, 1998).
Suid-Afrikanse Nasionale Lewensassuransie Matskappy Ltd. later changed its corporate name to Sanlam, Limited.
Sanlam Material Property Limited owns several registrations and pending applications for the word “SANLAM” in Australia, Botswana, Ghana, India, Mozambique, Namibia and South Africa. Sanlam Limited is the sole shareholder of Sanlam Material Property Limited.
Respondent owns the domain name <sanlam.mobi> registered in June 3, 2010.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims in its Complaint and Additional Submission that it owns rights in the SANLAM mark through its various international trademark registrations. Complainant relies on its registered trademarks with the CIPC (Reg. No. 96/12410 registered September 3, 1996), the OHIM (Reg. No. 000420067 registered December 13, 1996), and the UKIPO (Reg. No. 2,118,114 registered July 3, 1998), among others, to demonstrate its rights in the mark. The panel in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), stated that the complainant’s numerous trademark registrations around the word established the complainant’s rights in its mark. The Panel concludes that Complainant has rights in its SANLAM mark pursuant to Policy ¶ 4(a)(i) via its many trademark registrations with various agencies internationally. The Panel finds that Complainant may claim trademark rights in its mark under Policy ¶ 4(a)(i), without having registered its mark with Respondent country’s trademark authority. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <sanlam.mobi> domain name incorporates Complainant’s SANLAM mark in its entirety, adding only the gTLD “.mobi.” The Panel concludes that using Complainant’s entire mark in the domain name and adding the gTLD “.mobi” does not negate the identical aspect of the <sanlam.mobi> domain name to Complainant’s SANLAM mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the addition of “.mobi” was a functional change and thus the <gwbakeries.mobi> domain name was identical to the GW BAKERIES mark under Policy ¶ 4(a)(i)).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that there is no evidence that Respondent has been commonly known by the disputed domain name, and that Respondent has no association with Complainant, nor is it authorized to use Complainant’s trademarks. The Panel notes that the WHOIS information identifies “songyiqing / ziyouzhiye” as the domain registrant, and finds that Respondent could not be commonly known by the <sanlam.mobi> domain name under Policy ¶ 4(c)(ii) due to the WHOIS information and Complainant’s assertion that Respondent lacks permission to use its mark in a domain name registration. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent uses the <sanlam.mobi> domain name to make a commercial use and that such use is unfair. Complainant alleges that Respondent uses the domain name to carry out a scheme to cause consumer confusion for a commercial purpose by posting affiliate links at the resolving website that display advertising targeting consumers in the South African market. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), held that where the respondent did not offer goods or services on its website aside from a variety of links to third-party websites, it was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the resolving website to display hyperlinks to entities that offer similar services to those Complainant offers does not constitute use of the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). The Panel concludes that “sanlam” is not a word that one may find in a dictionary; rather it is an acronym of Complainant’s original corporate name, and therefore it is hard to imagine that Respondent may have a legitimate interest in such name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent owns several domain names using the “.mobi” gTLD and names that are either confusingly similar or identical to well-known trademarks, including <mitsubishi.mobi> and <passat.mobi>. Complainant provides a table of seven domain names registered by Respondent that use marks belonging to other entities, and asserts that such registrations offers evidence of Respondent’s pattern of bad faith registration and use. The panel in Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003), stated that the respondent previously registered numerous domain names, such as <pillsbury.com> and <honeywell.net> and that the subsequent registration of the disputed <marlboro.com> domain name was evidence of bad faith registration and use. The Panel concludes that Respondent’s previous registrations of other famous marks incorporated into domain names demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Complainant makes the assertion that Respondent makes an effort to confuse, attract, and profit from Internet users searching for Complainant’s business online by deliberately causing Internet traffic to reach Respondent’s website and posting sponsored links to generate revenue. The Panel finds that Respondent’s registration and use of the <sanlam.mobi> domain name was in bad faith pursuant to Policy ¶ 4(b)(iv), due to Respondent’s intent to attract and profit from Internet users confused by the domain name’s affiliation with Complainant. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <sanlam.mobi> domain name be TRANSFERRED
from Respondent to Complainant.
J Delgado
JAIME DELGADO, Panelist
Dated: January 25, 2013
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