Kibali Goldmines SA v Evans Wesonga

WIPO Case No. D2023-0905

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Kibali Goldmines SA v. Evans Wesonga

Case No. D2023-0905

1. The Parties

The Complainant is Kibali Goldmines SA, Congo, represented by Dorsey & Whitney, LLP, United States of

America.

The Respondent is Evans Wesonga, Kenya.

2. The Domain Name and Registrar

The disputed domain name <kibaligoldmines.com> (the “Domain Name”) is registered with Internet Domain

Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28,
2023. On March 1, 2023, the Center transmitted by email to the Registrar a request for registrar verification
in connection with the Domain Name. On March 3, 2023, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name, which differed from
the named Respondent (Unknown, Not disclosed) and contact information in the Complaint. The Center
sent an email communication to the Complainant on March 9, 2023, 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 March 9, 2023.

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 March 20, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 9, 2023. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 11, 2023.

The Center appointed Jeremy Speres as the sole panelist in this matter on April 21, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was founded in 2009 as a mining services company and is the owner of the Kibali Gold
Mine located in the north-eastern province of Haut-Uélé in the Democratic Republic of the Congo. The
Complainant, and its affiliates and subsidiaries, as well as its partial owner and exclusive operator, Barrick
Gold, have used the trade mark KIBALI in connection with its gold mining services in both the Democratic
Republic of the Congo, throughout Africa, the United States, and around the world since at least as early as

2009.

The Complainant owns trade mark registrations for its KIBALI mark in various jurisdictions in Africa, including
Organisation Africaine de la Propriété Intellectuelle (“OAPI”) Trade Mark Registration No. 86372 KIBALI in
class 14 with registration date January 29, 2016. An OAPI registration confers trade mark rights in 17 mostly
French-speaking countries in Africa.

The Domain Name was registered on November 16, 2022, and resolves to a website headed “KIBALI GOLD MINE” featuring a replica of the Complainant’s logo and the text “A combined open pit and underground gold mine in the Haut-Uélé province of the northeast Democratic Republic of the Congo” amongst other elements.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its well-known KIBALI mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and used in bad faith given that it has been used to impersonate the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s registered KIBALI mark is wholly contained within the Domain Name as its first element with the addition of the dictionary terms “gold” and “mines”. Where the trade mark is recognisable within the disputed domain name (as in this case), the addition of other terms (including descriptive terms) does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s mark was registered and well known for many years prior to registration of the Domain certified that the Domain Name is unauthorised by it.

The general impression created by the Domain Name’s website, including use of the Complainant’s
distinctive logo and a descriptor that matches the Complainant’s services, is one of impersonation of the
Complainant. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g.

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impersonation) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0 at
section 2.13.1).

There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy, nor any others which might confer rights or legitimate interests upon the Respondent, pertain. The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1).

C. Registered and Used in Bad Faith

UDRP panels have consistently found that registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term, as in this case as discussed below) to a famous or well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4).

It is well accepted that impersonation is clear evidence of bad faith registration and use (FLRish IP, LLC v. prince zvomuya, WIPO Case No. D2019-0868). That impersonation was the intention of the Respondent upon registration of the Domain Name, and that the Respondent was aware of and targeted the

Complainant’s mark, is clear from the fact that the Domain Name’s website makes prominent use of the
Complainant’s unique logo, the name of the Complainant’s gold mine and a descriptor matching the
Complainant’s services. The Domain Name itself incorporates terms descriptive of the Complainant’s
business, alongside the Complainant’s well-known mark, which is a further indicator of bad faith (WIPO
Overview 3.0 at section 3.1.2).

The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).

The Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <kibaligoldmines.com>, be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: May 4, 2023