WIPO Domain Name Decision D2007-1358 for host4africa.biz, host4africa.name, host4africa.ws

 

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 name registration and over 3 years after the Complainant’s use of the HOST4AFRICA trademark commenced in 2004.

(f) the Disputed Domain Names are not the only names which the Respondent could use to describe its business.

(g) the Respondent’s threat to auction the Disputed Domain Names for a total price of US $3000 if the Complainant did not purchase them and then subsequently changing the asking price for them, constitutes evidence of bad faith.

The Complainant requests that the Disputed Domain Names be transferred to it.

B. Respondent

The Respondent contends in connection with the Complainant’s rights that since the Complainant’s trademark is pending, it does not have exclusive rights to the use of the name HOST4AFRICA. It also indicates that there are at least 5 other domain names with similar names registered in competition with the Complainant being , , , , and . No further information in connection with these names was provided.

The Respondent contends that the Complainant’s HOST4AFRICA business is not as well-known in South Africa in comparison with other entities, but admits that it is not “not known in the market place”.

The Respondent contends that in South Africa many businesses, for example Cars 4Africa, Parts 4Africa and Plumbing 4Africa use the phrase “4 Africa” as part of their business names. It did not provide details of these businesses.

The Respondent contends in connection with the issue of confusing similarity that there is not likely to be confusion between the parties as a consequence of its adoption of the Disputed Domain Name because of the differences in the manner in which the Respondent markets its hosting services, and that the Complainant’s evidence of a single instance of confusion is not sufficient to prove that a likelihood of confusion exists. The Respondent contends that the confusion arose because its site was not available to the relevant party making the enquiry and that only the website at “www.h” showed at the time.

The Respondent contends that the Complainant’s website differs materially from the Respondent’s website at “www.” and that there are differences in the type of hosting services provided by the parties.

The Respondent admits that although the first portion of the Disputed Domain Name is the same as in the domain name owned by the Complainant, the Respondent presents itself as H

With reference to the Complainant’s claims that the Respondent does not have a legitimate interest in the Disputed Domain Names, and that it registered and used the Disputed Domain Names in bad faith, the Respondent contends that the domain name was adopted because it was looking for a domain name that indicated that it would be targeting clients in Africa and not South Africa, at the same time giving the name an African feeling.

The Respondent denies that it registered the Disputed Domain Names and as a result of the Complainant’s letter of demand but claims that when it noticed later the same day that and were available, they were registered to use together with .

The Respondent admits that it approached the Complainant for hosting services some years ago but the arrangement was subsequently cancelled. The Respondent denies that its hosting with the Complainant should necessarily have made him aware of the Complainant’s rights.

The Respondent advises that the Complainant indicated to it in an e-mail dated August 2, 2007, that it was no longer interested in the domain name. This e-mail was not provided to the Panel.

The Respondent contends in connection with the incomplete registration details for the Disputed Domain Name that he changed addresses and simply neglected to change the address particulars.

The Respondent furthermore indicates that it owns 5 domain names with HOST4AFRICA as part of the domain names, but does not provide further details with this information.

The Respondent proceeds to claim that the Complainant itself has a history of registering domain names in bad faith in that it owns domain names with the indicators .uk and .us but is not resident in the United Kingdom nor provides a television service. It also contends that the Complainant is acting in bad faith because the Complainant’s principal business activities as they appear on records researched by the Respondent do not include Internet hosting services but unrelated services.

 

6. Discussion and Findings

6.1 Procedural Matters

(a) Multiple Respondents

Rule 1 of the Rules provides that a Respondent is the holder of a domain name registration against which a complaint is initiated. Pursuant to Rule 3(c) of the Rules a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder.

The Complainant asserts in connection with the two Respondents that since their administrative contact, Mr. Marais, who responded to the letter of demand, indicated that PTLH consists of a section called that it thereby confirmed that the registrant in this matter, being H and PTL Hosting are one and the same entities. In the heading of its Response, the Respondent is indicated as Johan Stephan Marais trading as H and PTL Hosting. A single address is provided as the contact information. Furthermore, the Respondent itself indicates in its Response that PTLH and H, are the same. Accordingly, the Panel is satisfied that the Complaint complies with the formal requirements of the Policy and Rules.

6.2. Substantive Matters

Paragraph 4 of the Policy requires that the Complainant proves each of the following elements in order for the Disputed Domain Names to be transferred.

(a) that the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights and

(b) that the Respondent has no rights or legitimate interest with respect to the Disputed Domain Names and

(c) that the Disputed Domain Names have been registered and are being used in bad faith.

A. The Disputed Domain Names are identical or confusingly similar to the Complainant’s mark.

1. Complainant has rights in an unregistered mark

The Panel finds that the Complainant has proven that it has rights in the unregistered HOST4AFRICA trademark despite the Respondent’s contention that the Complainant can not claim rights in an unregistered mark. The Policy clearly extends to protection of an unregistered trademark. Reference is made to the decisions in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322 and Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786.

Furthermore, the Complainant’s evidence in support of its use, consisting of copies of advertisements placed in magazines over the period November 2004 to June 2007, an indication of a large number of visits that its website at “www.h” receives, details of its advertising expenses to promote its business and an indication of the period of time over which it has used its trademark HOST4AFRICA of over 3 years, persuaded the Panel that it had made a prima facia case in support of common law rights in the trademark HOST4AFRICA. The evidence indicated above was not contested by the Respondent. In fact, the Respondent’s own evidence seemed to support the Complainant’s case by its acknowledgement that the Complainant is known in South Africa.

The Respondent’s further contentions in connection with the Complainant’s rights are that rights can not subsist in the mark HOST4AFRICA because of the generic nature of its components, and the existence of other domain names and businesses having names that incorporate 4AFRICA and HOST. The Panel finds that the generic nature of the components of the trademark HOST4AFRICA is irrelevant in determining the secondary meaning that attaches to the combination mark. The Panel also finds that the mere existence of other similar domain names does not mean that any business is conducted in connection with them and consequently that any competing rights have been acquired by third parties (which would in any case not have prevented the Complainant from relying on its own rights in the instant proceeding). Since the Panel was not provided with evidence in support of the businesses mentioned by the Respondent, it did not consider this point further, but even if the fact that the word 4AFRICA was shown to be popular, it is the whole of the mark HOST4AFRICA that is to be considered.

2. The Domain Names are identical or similar to the Complainant’s mark.

The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’ trademark HOST4AFRICA. The only difference between the Disputed Domain Names and the Complainant’s trademark is the generic indicators, “.biz”, “.name” and “.ws” which are to be ignored for purposes of this analysis. Furthermore, the content of a website and the question whether it is similar or different to the business of the trademark owner is irrelevant in a finding of confusing similarity.

B. Rights or Legitimate Interests

The panel in Do The Hustle LLC v Tropic Web,WIPO Case No. D2000-0624 summarised the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that once the Complainant has asserted that the Respondent has no rights or legitimate interest, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim. Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interest in a domain name.

On the facts of this matter the Respondent uses the Disputed Domain Names to promote hosting services in competition with the Complainant.

The Panel does not accept the Respondent’s case that it registered the Disputed Domain Name simply because it was seeking a domain name that had “an Africa feel”. The Respondent is familiar with the Complainant, having engaged in a previous business relationship with it and it is unlikely that it adopted this domain name by chance or because it had a legitimate interest in it. In fact, it appears from the correspondence exchanged between the parties that whatever interest the Respondent may have had, is tainted by the fact that when it received the Complainant’s letter of demand it threatened to auction the domain name if the Complainant did not make an offer for it.

With reference to the Disputed Domain Names and , these names were registered on the same day and subsequent to the Respondent receiving the letter of demand from the Complainant’s attorneys. It is difficult to envisage any interest of the Respondent in these domain names other than to derive a benefit from the goodwill that attaches to the Complainant’s trademark and to disrupt the Complainant’s business.

The Panel finds that the Complainant has discharged its onus in proving the Respondent does not have rights or legitimate interest in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith.

As set forth in paragraph B above, the Panel agrees that the Respondent registered and used the Disputed Domain Names for the purpose of attracting, for commercial gain, Internet users to its website by creating confusion with the Complainant’s mark as to its source, sponsorship, affiliation or endorsement as provided in paragraph 4(b)(iv) of the Policy.

The Panel finds that Internet users will likely be attracted to the website linked to Disputed Domain Names by the known mark HOST4AFRICA and that they will likely access the website because they are interested in the Complainant’s services. The instance of confusion advanced by the Complainant, albeit of a customer of the Respondent who ended up with the Complainant, which could easily have been in the reverse, demonstrates this point and the disruption to the Complainant’s business that the Disputed Domain Names are causing.

The Panel concludes that the third element of the Policy under paragraph 4(a) has been established.

 

7. Decision

For all the aforegoing reasons in accordance with paragraph 4(ii) of the Policy and 15 of the Rules, the Panel orders that the domain names , and be transferred to the Complainant.

Charn� Le Roux
Sole Panelist

Dated: November 22, 2007

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