Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC
Claim Number: FA1805001787219
Complainant is Sanlam Life Insurance Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Syed Hussain / Domain Management MIC (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sanlamcapital.com> and <sanlamgroup.com>, registered with Name.com, Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2018; the Forum received payment on May 17, 2018.
On May 17, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <sanlamcapital.com> and <sanlamgroup.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2018 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@sanlamcapital.com and postmaster@sanlamgroup.com. Also on May 18, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest financial service groups in Africa, primarily focusing on short-term insurance, personal financial services such as estate planning, trusts, home and personal loans, savings and linked products, investment, asset management, property asset management, stockbroking, risk management and capital market activities. Complainant has rights in the SANLAM mark through its registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 000420067, registered November 3, 1999). Respondent’s <sanlamcapital.com> and <sanlamgroup.com> domain names are identical or confusingly similar to Complainant’s mark as they merely add generic/descriptive terms to Complainant’s mark, along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <sanlamcapital.com> and <sanlamgroup.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to profit from pay-per-click hyperlinks. Further, Respondent lists the domain names for sale on the popular <sedo.com> website with asking prices between $1,750 and $2,750.
Respondent registered and uses the <sanlamcapital.com> and <sanlamgroup.com> domain names in bad faith. Respondent lists the domain names for sale for prices between $1,750 and $2,750. Further, Respondent has engaged in a pattern of bad faith, as it owns numerous domain names incorporating famous third-party marks and has prior adverse UDRP decisions against it. Additionally, Respondent’s use of the domain names to display pay-per-click links disrupts Complainant’s business by attempting to profit off Complainant’s well-established goodwill. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the SANLAM mark when it registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <sanlamcapital.com> and <sanlamgroup.com> domain names.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the SANLAM mark through its registration of the mark with the EUIPO (e.g. Reg. No. 000420067, registered November 3, 1999). Registration of a mark with the EUIPO, a government agency, sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Thor Equities, LLC v. andreas meinhold / Xenois Hospitality llc, FA 1659721 (Forum Mar. 11, 2016) (finding Complainant established rights in the THOR mark, citing, “Previous panels have found registration with the OHIM sufficient to establish a complainants rights in a mark under Policy ¶ 4(a)(i), even when Respondent does not operate within the European Union.”). The Panel finds that Complainant has established rights in the SANLAM mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <sanlamcapital.com> and <sanlamgroup.com> domain names are identical or confusingly similar to Complainant’s mark as they merely add generic/descriptive terms to Complainant’s mark, along with the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the disputed domain names are confusingly similar to the SANLAM mark under Policy ¶4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <sanlamcapital.com> and <sanlamgroup.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Syed Hussain / Domain Management MIC” as the registrant for both domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SANLAM mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the domain names to profit from pay-per-click hyperlinks. Using a domain name to profit from pay-per-click links generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages, which display links such as “Investment Advisors” and “Asset Investment.” The Panel finds that Respondent displays pay-per-click hyperlinks on the resolving webpages for the domain names which is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Complainant argues that Respondent registered the <sanlamcapital.com> and <sanlamgroup.com> domain names in bad faith as Respondent has a propensity for registering confusingly similar domain names and has prior adverse UDRP decisions against it. A complainant may use evidence of a respondent owning many domain names, along with prior adverse UDRP decisions against a respondent, in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). Complainant provides both a list of domain names owned by Respondent, along with a list of prior adverse UDRP decisions against Respondent, in attempts to further this claim. The Panel finds that Respondent registered and used the domain names in bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered and uses the <sanlamcapital.com> and <sanlamgroup.com> domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit from pay-per-click links. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, Complainant provides screenshots of the resolving webpages, which display links such as “Investment Advisors” and “Asset Investment.” The Panel finds that Respondent disrupts Complainant’s business and has attempted to commercially benefit off Complainant’s mark in bad faith registration and use under Policy ¶¶ 4(b)(iii) & (iv).
Complainant claims that Respondent had actual or constructive knowledge of Complainant’s SANLAM mark at the time of registering the infringing domain names. The Panel will disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the mark based on the competing links displayed on the resolving webpages, and the fact that both domain names consist of Complainant’s mark in its entirety. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <sanlamcapital.com> and <sanlamgroup.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 15, 2018
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