Pick and Pay for Domain Name

Complainant is a South African public company, operating several chains of retail groceries, supermarkets, hypermarkets, liquor stores, clothing stores and pharmacies in southern Africa and in Australia though majority-owned subsidiaries and franchisees.  The group processes 5 million sales transactions monthly in more that 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 "Pick 'N Pay" mark has been used since 1967 and Complainant's company has spent more than $62 million annually through advertising and marketing the brand.

The disputed domain name, "www.pickandpay.com", was registered on October 9, 2001 and redirects to "www.001porn.com", a landing page with explicit sexual images and categorized links to a multitude of commercial pornography websites.  The Respondent, who appeared to be an individual residing in England, did not respond to the complaint.

Although acknowledging that Complainant's marks represent one of the best-known retail brands in southern Africa and the confusing similarity with the disputed domain name, the Panel nonetheless denied the Complaint.  The Panel's decision turned on the question as to whether it can be reasonably 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.  Denying the Complaint, the Panel determined that the disputed domain name is a "sensible English phrase comprised of dictionary words" and might have been chosen for reasons other than emulation of the Complainant's similar marks.  There was no indication in the record that the Respondent registered multiple domain names exploiting South African retail brands, nor was there evidence 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 Panel found that the record did 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.  Pick 'n Pay Holdings Limited v. Darren Stevens, WIPO Case No. D2007-1583