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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pick ‘n Pay Holdings Limited v. Darren Stevens

Case No. D2007-1583

1. The Parties

The Complainant is Pick ‘n Pay Holdings Limited, Claremont, Cape Town, Republic of South Africa, represented by Michalsons Attorneys, Republic of South Africa.

The Respondent is Darren Stevens, Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed Domain Name <pickandpay.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2007. On October 29, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2007, 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2007.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 3, 2007. 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 a public company organized under the laws of the Republic of South Africa. The Complainant operates several chains of retail groceries, supermarkets, hypermarkets, liquor stores, clothing stores, and pharmacies in southern Africa and, more recently, in Australia through majority-owned subsidiaries and franchisees. The group processes some five million sales transactions monthly in more than 400 stores labeled with the PICK ‘N PAY brand and also serves thousands of customers through its online shopping facility at “www.picknpay.com”. The Complainant’s group spends more than USD $62 million annually advertising and marketing the PICK ‘N PAY brand, which has been used continuously since 1967. The Complainant furnished evidence of extensive advertising and media coverage of the PICK ‘N PAY companies and brand in southern Africa.

Relevant trademarks used by the Complainant and companies in the Complainant’s group are held by its subsidiary Pick ‘n Pay Retailers (Proprietary) Limited. These include South African registered trademarks for PICK-‘N-PAY in various classes, the earliest of which (No. 73,5623 and Nos. 74/1729 through 74/1765) were first registered in 1973 and 1974, respectively. Numerous design marks were subsequently registered in the Republic of South Africa in which PICK ‘N PAY (without hyphens) is a distinctive element. The Complainant claims similar trademark applications and registrations in Australia, Botswana, Lesotho, Namibia, and Zimbabwe.

The Domain Name was registered on October 9, 2001. The Domain Name redirects to “www.001porn.com”, a landing page with explicit sexual images and categorized links to a multitude of commercial pornography websites. No copyright notice appears on the landing page, nor is there any other identification of the operator of the website.

The Respondent, who appears to be an individual residing in England, did not reply to a cease-and-desist letter and email from the Complainant’s counsel dated September 26, 2006. The Respondent also failed to submit a Response in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its PICK ‘N PAY marks, which the Respondent has not been authorized to use. The Complainant infers that the Domain Name was registered and used in a bad-faith attempt to mislead Internet users for commercial gain, exploiting the Complainant’s well-known brand.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant unquestionably has rights in registered PICK-‘N- PAY standard-character trademarks, as well as numerous design marks in which PICK ‘N PAY is a distinctive element. The Panel does not view the presence or absence of hyphens as distinctive in this case, and in any event the Complainant’s marks appear in both forms.

The Domain Name is not identical to the Complainant’s marks, because the Domain Name spells out the word “and” rather than using the colloquial abbreviation “’n”. The result is visually and phonetically similar, and it is semantically identical. The Panel concludes, therefore, that the Domain Name is confusingly similar to the Complainant’s marks for purposes of the first element of the Complaint.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant asserts, without contradiction, that it has not authorized the Respondent’s use of a Domain Name confusingly similar to the Complainant’s marks.

The Respondent has not come forward with an explanation for his selection of the Domain Name. There is no indication in the Domain Name registration or on the website to which the Domain Name resolves that the Respondent is known by the Domain Name. The Domain Name is clearly not being used for legitimate noncommercial purposes.

The commercial use of the Domain Name would not be deemed part of a bona fide offering of goods or services if the record indicated that the Respondent’s probable intent was to create a likelihood of confusion with the Complainant’s marks. That issue is better addressed below, in weighing the bad-faith element of the Complaint.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It is undisputed that the Complainant’s marks represent one of the best-known retail brands in southern Africa. As such, the brand could profitably be exploited with a confusingly similar domain name. The question is whether it can reasonably be inferred that the Respondent in England was aware of the PICK ‘N PAY brand and used a variation on the mark intentionally to mislead Internet users.

An earlier WIPO Panel considered the opportunistic value of the current Domain Name in Sanlam Limited v. Selat Sunda Incorporated, WIPO Case No. D2000-0895. In that proceeding, the Panel found bad-faith registration and use of domain names using the trademarked acronym of a South African life insurance company. The Panel observed that the respondent in that proceeding had also registered, at about the same time, the current Domain Name, <pickandpay.com>. The Panel treated this as corroboration of the Respondent’s bad faith:

“Now Pick ‘n Pay is one of the largest commercial traders of South Africa […]. The registration of the domain name similar to the Pick ‘n Pay mark puts the matter beyond doubt. It shows that as the Complainant states the Respondent has been registering high profile South African marks for its own purposes.”

That UDRP decision was published in October 2000, a year before the Respondent in the current proceeding registered the Domain Name. There is nothing in the record of this proceeding indicating a relationship between the current Respondent and the respondent in the 2000 UDRP proceeding, a company located in the United States of America. The decision does indicate that at least one party outside the region recognized the commercial value of the Domain Name for its similarity to a widely known South African brand. There is no direct evidence that this was a factor in the Respondent’s acquisition of the Domain Name, however, nor is it known whether the Respondent obtained the Domain Name directly from the respondent named in the Sanlam Limited proceeding.

The fact that the Respondent did not reply to a cease-and-desist letter, or to the UDRP Complaint, suggests a lack of proper regard for the intellectual property rights of others. And the Complainant is understandably concerned that its reputation may be tarnished by an apparent association with pornography. As the Complainant observes, many UDRP decisions find that such use of a domain name that is confusingly similar to a trademark is itself an indication of bad faith.

In this case, however, the Domain Name is a sensible English phrase comprised of dictionary words, and it might have been chosen for reasons other than emulation of the Complainant’s similar marks. Unlike the Sanlam Limited proceeding, there is no indication here that the Respondent registered multiple domain names exploiting South African retail brands. There is also no evidence in the record that the Complainant advertises in the United Kingdom of Great Britain and Northern Ireland, or that its website attracts English Internet users. In short, the record does not warrant a finding that the Respondent in England was, more likely than not, aware of the Complainant’s South African retail brand when he registered the Domain Name. See Nursefinders, Inc. v. Vertical Axis, Inc / NURSEFINDER.COM c/o Whois IDentity Shield, WIPO Case No. D2007-0417 (insufficient evidence to conclude that a respondent in the Republic of Korea registering a domain name comprised of common English words was aware of a trademark used only in the United States of America).

This UDRP decision does not preempt the Complainant’s recourse to the courts, where it may be possible more fully to investigate the transactions and the Respondent’s intent. On the record of this proceeding, however, the Panel concludes that the Complaint does not establish the required element of bad-faith registration and use of the Domain Name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist

Dated: December 19, 2007