Bid Industrial Holdings (Proprietary) Limited v. XL Liu
Claim Number: FA1610001698526
Complainant is Bid Industrial Holdings (Proprietary) Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is XL Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 17, 2016.
On October 18, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. 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 October 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2016 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@bidvestcar.com, postmaster@bidvestcarhire.com, postmaster@bidvestcarrental.com. Also on October 19, 2016, 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 November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant has rights in the BIDVEST mark through its registration in South Africa (Reg. No. 1995/03810, registered on April 30, 1998). Respondent’s <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names are confusingly similar to the BIDVEST mark because they each contain the mark along with the descriptive terms “car,” “car hire,” or “car rental,” along with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names, as it has no permission to use the BIDVEST mark and there is no evidence to suggest being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used to provide affiliate links related to car rental services in competition with Complainant.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions found against it. Respondent uses the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names in bad faith because the resolving websites are used to provide affiliate links related to car rental services in competition with Complainant. Respondent registered the domain names in bad faith because it offered to sell them to Complainant for $20,000 in response to a cease and desist letter and because it registered the domain names specifically with Complainant and its BIDVEST mark in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Bid Industrial Holdings (Proprietary) Limited of Johannesburg, South Africa. Complainant is the owner of domestic and international registrations for the mark BIDVEST, which it has continuously used since at least as early as 1988 in connection with its provision of goods and services in the retail, distribution, and service industries. Complainant also owns registrations for several domain names including its primary website found at <bidvest.com>.
Respondent is XL Liu of Zhenjiang, China. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names were created on or about April 24, 2015.
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 BIDVEST mark through its registration in South Africa (Reg. No. 1995/03810, registered on April 30, 1998). Complainant has provided a copy of this registration. The Panel finds that Complainant has rights in the BIDVEST mark. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum September 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”).
Complainant argues that Respondent’s <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names are confusingly similar to the BIDVEST mark because they each contain the mark along with the terms “car,” “car hire,” or “car rental,” along with the gTLD “.com.” Complainant asserts that the terms “car,” “car hire,” or “car rental” are descriptive of services Complainant offers with its BIDVEST mark and therefore fail to distinguish the domain names. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel here finds the additional terms descriptive of the mark, and therefore finds the disputed domain names confusingly similar to the BIDVEST mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant maintains that Respondent is not commonly known by the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names, as it has no permission to use the BIDVEST mark and there is no evidence to suggest being so known. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel here finds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used to provide affiliate links related to car rental services in competition with Complainant. Complainant has provided screenshots of the resolving websites to demonstrate this use. The Panel here finds the evidence sufficient to support the conclusion that Respondent fails to use the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant claims that Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions found against it. Complainant refers to the following cases to demonstrate this pattern: Carrefour v. XL Liu. Case No. D2015-1429 (WIPO, 27 October 2015) and Vente-privee.com, Vente-privee.com IP s.a.r.l v. XL Liu. Case No. D2015-2166 (WIPO, 20 January 2016). The Panels finds these cases demonstrate a pattern of adverse decisions against Respondent and thus indicate 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).”).
Complainant alleges that Respondent registered the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names in bad faith because it offered to sell them to Complainant for $20,000 in response to a cease and desist letter. Complainant maintains that this offered price is in excess of Respondent’s out-of-pocket costs. Complainant has provided an e-mail exchange between itself and Respondent to demonstrate this offer of sale. However, there is no data provided indicating Respondent’s out of pocket costs for the disputed domains.
Complainant contends that Respondent uses the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names in bad faith because the resolving websites are used to provide affiliate links related to car rental services in competition with Complainant. Complainant has provided screenshots of the resolving websites to demonstrate this use. The Panel finds this evidence sufficient to support the conclusion that Respondent registered and uses the domain names in bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bidvestcar.com>, <bidvestcarhire.com>, and <bidvestcarrental.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 28, 2016
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