Quad Rocky Marketing (Pty) Ltd v Client Care, Web Commerce
WIPO Case No. D2023-3919
•29-11-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Quad Rocky Marketing (Pty) Ltd v. Client Care, Web Commerce
Communications Limited
Case No. D2023-3919
1. The Parties
| 1.1 | The Complainant is Quad Rocky Marketing (Pty) Ltd, South Africa, represented by KISCH IP, South |
| Africa. | |
| 1.2 | The Respondent is Client Care, Web Commerce Communications Limited, Malaysia. |
2. The Domain Name and Registrar
| 2.1 | The disputed domain name <rockybootsouthafrica.com> (the “Domain Name”) is registered with |
Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
| 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September the Registrar disclosed the underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on September 27, 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 October 2, 2023. 19, 2023. At that time, the public WhoIs details for the Domain Name did not disclose the identity of the | underlying registrant of the Domain Name. On September 21, 2023, the Center transmitted by email to the | |
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| 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”). | ||
| 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2023. The Respondent did not submit any response. | ||
| Accordingly, the Center notified the Respondent’s default on November 2, 2023. |
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| 3.4 | The Center appointed Matthew S. Harris as the sole panelist in this matter on November 17, 2023. |
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
| 4.1 | The Complainant is a company incorporated in South Africa. It has since the 1990’s either itself or |
through licensees, manufactured, sold and distributed, inter alia, various types of apparel and footwear
(including lifestyle shoes, outdoor shoes, outdoor boots, sandals and slip-ons) under the ROCKY name in
South Africa.
| 4.2 | The Complainant has spent considerable sums (particularly in the years 2002 to 2014 but also in |
subsequent years) to promote the ROCKY brand in South Africa. An exclusive licensee of the Complainant as of 2022 has sold and continues to sell the Complainant’s products in South Africa through a retail website operating from the domain name <footgear.co.za>.
4.3 The Complainant is the owner of various trade marks in South Africa that comprise or incorporate the term “Rocky”. They include:
(i) South Africa Registration No. 1993/01625 for ROCKY as a word mark registered on February 16,
1995 in class 25;
(ii) South Africa Registration No. 2007/23569 for ROCKY as a word mark registered on May 20, 2010 in
class 35; and
(iii) South Africa Registration No. 2017/25972 for a device mark, applied for on September 6, 2017 and
registered on February 8, 2023 in class 25, which takes the following form:
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5. Parties’ Contentions
A. Complainant
| 5.1 | The Complainant contends that it has satisfied each of the elements required under the Policy for a |
transfer of the Domain Name. It describes its business, trade marks and the way in which the Domain Name
has been used.
| 5.2 | The Complainant also contends that the products sold from the website operating from the Domain |
Name are “third-party products”, but does not further explain why this is the case. Somewhat inconsistently, it also contends that the requirements of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (which sets out a series of requirements in relation to the sale by a reseller of genuine products of a trade
mark owner) are not satisfied in this case.
B. Respondent
| 5.3 | The Respondent did not reply to the Complainant’s contentions. |
6. Discussion and Findings
A. Identical or Confusingly Similar
| 6.1 | It is generally accepted that the first element functions primarily as a standing requirement. The |
standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward
comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
| 6.2 | The Panel finds the Complainant has shown rights in respect of trade mark for the purposes of the |
Policy. WIPO Overview 3.0, section 1.2.1. The only sensible reading of the Domain Name is as the terms
“rocky”, “boot” and “South Africa” in combination with the “.com” generic top level domain (“gTLD”).
| 6.3 | Accordingly, the entirety of the Complainant’s mark is reproduced within the Domain Name and as a |
consequence that mark is clearly recognisable within Domain Name. If follows that the Domain Name is
identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The addition of the ordinary word “boot” and the country name “South Africa” does not prevent a finding of
confusing similarity between the Domain Name and the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.8
| 6.4 | In the circumstances, the Panel finds the first element of the Policy has been established. |
B. Rights or Legitimate Interests
| 6.5 | Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may |
demonstrate rights or legitimate interests in a disputed domain name.
| 6.6 | In the present case the Complainant has established a prima facie case that the Respondent lacks |
rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s
prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate
interests in the Domain Name.
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| 6.7 | However, dealing with the issue more directly, and for reasons that are set out in the context of its |
assessment of bad faith, the Panel is satisfied that the Domain Name has been registered in order to
impersonate the Complainant for commercial gain. There is no right or legitimate interest in such
impersonation (see for example WIPO Overview 3.0, section 2.13.1) and the Panel is of the view that such
impersonation provides positive evidence that no rights or legitimate interests exist.
| 6.8 | The Complainant somewhat inconsistently claims that the products offered for sale are those of a |
“third-party” but then relies upon the conditions set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 as to when a reseller of genuine products of a trade mark owner might use that trade mark in a domain name. It is also not clear what exactly is meant by “third-party” products and the Complainant’s claims are little more than assertion in this respect. Nevertheless, none of this ultimately matters. Even if
the Domain Name were being used to sell genuine products of the Complainant, the fact that the Domain Name inherently and deliberately impersonates the Complainant is sufficient to justify a finding of lack of rights or legitimate interests (see in this respect the reasoning set out by this Panel in Johnson & Johnson v.
Ebubekir Ozdogan, D2015-1031
WIPO Case No. ). In any event, the Panel also accepts that the website operating from the Domain Name.
| 6.9 | Accordingly the Panel finds the second element of the Policy has been established. |
C. Registered and Used in Bad Faith
6.10 The Panel is satisfied that the Domain Name has been registered and used by the Respondent with knowledge of the Complainant and its rights and with a view to impersonating the Complainant for financial gain.
| 6.11 | First there is the form of the Domain Name itself. As has been explained above in the context of a |
consideration of the first element of the Policy, the only sensible reading of the Domain Name is as the terms
“rocky”, “boot” and “South Africa” in combination with the “.com” gTLD. Given that the Complainant is
engaged in the footwear business and in particular in the sale of outdoor boots, and is based in and conducts
business in South Africa, the only sensible reading of the Domain Name is as involving a deliberate
reference to the Complainant’s business and marks. Further, this conclusion is reinforced by the website
operating form the Domain Name that offers for sale boots in South Africa. Finally, there is the fact that there
is no disclosure, let alone clear disclosure, of who is behind the website operating from the Domain Name.
6.12 Registering and holding a Domain Name that inherently and deliberately impersonates a trade mark
holder involves registration and use in bad faith. The website operating from the Domain Name also falls
within the scope of paragraph 4(b)(iv) of the Policy, which is one of the circumstances evidencing bad faith
registration and use.
| 6.13 | Accordingly the Panel finds the third element of the Policy has been established. |
7. Decision
| 7.1 | For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the |
Panel orders that the disputed domain name, <rockybootsouthafrica.com>, be transferred to the
Complainant.
/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: November 29, 2023
| 4.4 | The Domain Name was registered on February 8, 2022. It appears to be registered in the name of a |
company located in Malaysia (although whether the company name given is a real entity in Malaysia is
questionable).
| 4.5 | The Domain Name has been used since registration for an English language website that has offered |
for sale boots and other footwear giving prices in South African Rand. The website prominently used the
name “Rocky” throughout and a device that takes the following form:
| 4.6 | The site does not disclose who is the person or entity that is operating this website, or provide any |
physical address for the operator. The terms and conditions and privacy pages of the website refer to
various pieces of United Kingdom legislation.
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