WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H4A Internet Services CC v. host4africa and PTL Hosting

Case No. D2007-1358

1. The Parties

The Complainant is H4A Internet Services CC, South Africa, represented by Warren Weertman of Bowman Gilfillan Inc., South Africa.

The Respondents are host4africa, South Africa, and PTL Hosting, South Africa, represented by an internal representative.

2. The Domain Name and Registrar

The Disputed Domain Names , and are registered with Go Daddy, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007 in hard copy. On September 17, 2007, the Center transmitted by email to Go Daddy, Inc. a request for registrar verification in connection with the domain names at issue. On September 17, 2007, Go Daddy, Inc. transmitted by email to the Center its verification response confirming inter alia that the Respondents are listed as the registrants and providing the contact details and also that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the Disputed Domain Names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 28, 2007, and the original Complaint in electronic form on October 1, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 October 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. In light of the Respondent’s request for an extension dated October 18, 2007, the Center granted a one week extension on October 23, 2007 after which the due date for Response was October 30, 2007. The Response was filed with the Center on October 30, 2007.

The Center appointed Charn� Le Roux as the sole panelist in this matter on November 8, 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 South African corporation that has been trading under the name H since February 2004. It is the owner of a pending trademark application in South Africa filed on July 2, 2007 for HOST4AFRICA covering, in general, Internet hosting services. It is also the proprietor of a number of domain names incorporating the trademark HOST4AFRICA, including , , , , , , , , and . The domain name was registered on November 28, 2001 and is in the name of H

The Complainant provided examples of advertising of its trademark HOST4AFRICA in magazines dated November 2004, February 2005, August 2005 and June 2007.

H is indicated as the owner of the domain name , registered on June 23, 2006. PTL Hosting is indicated as the owner of the domain names and both of which were registered on July 24, 2007. H and PTL Hosting are the same entity and henceforth will be referred to simply as the Respondent.

The Complainant’s attorneys addressed a letter to the Respondent on July 24, 2007 calling for the voluntary delivery up of the Disputed Domain Name, . Correspondence was subsequently exchanged between the parties regarding the possible sale of the Disputed Domain Names for amounts varying from US $3000 (on auction) to US $1070. These negotiations terminated.

The website attached to the Disputed Domain Names offers Internet hosting services.

5. Parties’ Allegations

A. Complainant

The Complainant contends that it is the proprietor of the unregistered trademark HOST4AFRICA. It also claims proprietorship of a number of domain names incorporating the trademark HOST4AFRICA including , , , , , , , , and . The dates of registration of these domain names and their recorded registrant were not provided and the Panel ascertained, as indicated above, and as it is entitled to do, that the domain name was registered on November 28, 2001 and is in the name of H. The remaining domain names are in the name of Host4africa CC and were registered over the period January 2004 to August 2007.

The Complainant states that it commenced trading in February 2004 and that its website receives in the region of 12,700 unique visitors per month and approximately 57,000 hits per month. The Complainant states that it provides hosting to in excess of 5,400 websites on behalf of clients.

The Complainant contends that it has spent in excess of approximately US $10,000 every month on advertising and promoting its business by various means.

The Complainant claims that as a consequence of its extensive use of its HOST4AFRICA mark, it has become known in South Africa in relation to Internet hosting services. It claims that the mark HOST4AFRICA serves as a unique and distinctive element and designates the Complainant’s Internet hosting services.

The Complainant contends that the Disputed Domain Names are confusingly similar to its HOST4AFRICA trademark in that all of them wholly incorporate the mark. It contends that, as a consequence, there is a substantial likelihood that Internet users will be confused into believing that there is some connection between the Complainant and the Respondent. The Complainant provided evidence of an instance of confusion.

The Complainant contends that the Respondent lacks rights or legitimate interest in the Disputed Domain Names in that:

(a) subsequent to its attorneys dispatching a letter of demand to the Respondent on July 24, 2007, in which it asserted its rights in the HOST4AFRICA trademark and called for the transfer of the Disputed Domain Name to it, the Disputed Domain Names and were immediately registered by the Respondent;

(b) the Respondent has not been commonly known by the Disputed Domain Names and it has not acquired any trademark or service mark rights in the Disputed Domain Names;

(c) the Respondent is neither an agent nor licensee of the Complainant and it has no connection or affiliation with the Complainant;

(d) the website to which the Disputed Domain Names point provide Internet hosting and related services in competition with the services offered by the Complainant through its website at “www.h”, which does not amount to a bona fide offering of goods and services;

(e) the Respondent was aware of the Complainant’s rights in the HOST4AFRICA mark at the time that the Disputed Domain Names were registered because it was a previous customer of the Complainant.

The Complainant furthermore contends that the Respondent acquired and used the Disputed Domain Names in bad faith in that:

(a) based on the Complainant’s reputation in its HOST4AFRICA mark, its use of the mark since February 2004 and registration of the various domain names that incorporate its HOST4AFRICA mark, the Respondent did not inadvertently select the mark HOST4AFRICA for its domain names, but more than likely registered the Disputed Domain Names with the intention of diverting Internet users to the Respondent’s website and to mislead them into believing that there is an association with the Respondent and the Complainant.

(b) the Respondent received commercial benefit from the activities on the website attached to the Disputed Domain Names, which benefit is based on the goodwill that the Complainant owns in its trademark.

(c) the Respondent’s incomplete or false contact details for the domain name demonstrates its bad faith.

(d) the registration by the Respondent of the Disputed Domain Names and subsequent to it receiving a letter of demand from the Complainant’s attorneys, further constitutes evidence of bad faith.

(e) the Respondent registered the Disputed Domain Names almost 6 years after the Complainant’s HOST4AFRICA domain