WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Afrisport Intellectual Property (PTY) Ltd. v. D
Case No. D2007-1449
1. The Parties
Complainant is Afrisport Intellectual Property (PTY) Ltd., of Milnerton, Western Cape, South Africa, represented by Dr. Gernholtz Inc. – Intellectual Property Lawyers, South Africa.
Respondent is D, of Northwest, United Kingdom of Great Britain and Northern Ireland, represented by S. Bernard, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Register
The disputed domain names , , , and (hereinafter the “Domain Names”) are registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the Arbitration and Mediation Center (the “Center”) on October 2, 2007. On October 3, 2007, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Domain Names at issue. That same day, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2007. The Response was received on October 29, 2007 via e-mail.
On October 30, 2007, Complainant submitted a supplemental filing via e-mail. On November 5, 2007, Respondent submitted a responsive supplemental filing via e-mail.
The Center appointed David H. Bernstein as the sole Panelist in this matter on November 5, 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.
In the supplemental filing, Complainant responds to a number of Respondent’s arguments. None of those arguments, though, raise issues that could not have been anticipated by Complainant in the Complaint. Because the supplemental filing does not address any new facts or legal precedents not available at the time of the Complaint, the Panel declines to consider Complainant’s supplemental filing (and, accordingly, also declines to consider Respondent’s supplemental filing, which is moot).
4. Factual Background
Complainant is the owner of the trademarks AFRI SPORT (Registration No. 1989/10408, registered on November 3, 1989) and AFRISPORT (Registration No. 2002/09919, registered on July 10, 2002), both of which are registered in South Africa for mineral and aerated waters and other non-alcoholic beverages; syrups and other beverages for making beverages; beer, ale and porter (hereinafter “the Trademarks.”). Complainant acquired the Trademarks by assignment from its predecessor company, Trans-Scripto (pty), Ltd. on February 5, 2007. Trans-Scripto had acquired the AFRI SPORT trademark registration from the original proprietor, Mailfruit (Pty) Ltd., on April 7, 2000.
Complainant is not yet using the Trademarks in connection with any goods or services. It has submitted what it describes as “copies of some of the final designs of the various alcoholic beverages that are waiting to be launched,” but states that the launch “has been suspended due to the obstacle with the “www.” domain names dispute.” Complainant does not explain why this domain name dispute should have any impact on the launch of the product, especially since Complainant has secured the domain name .
The Respondent registered the Domain Names in dispute on the following dates:
May 31, 2003
May 31, 2003
June 7, 2005
August 2, 2005
Each of the Domain Names resolves to a landing page with “sponsored” pay-per-click (PPC) links to other websites. The “www.” website contains sponsored links to South African travel, online dating, and sporting accessories websites. The “www.” website consists of links to sports and coaching-related websites based mostly in South Africa and the United Kingdom. The other two websites consist of “sponsored results” in categories such as “Finance,” “Travel,” “Entertainment,” and “Electronics.” Each website included a search function and an advertisement that reads:
“Buy this Domain. This domain is for sale! Many domains available. Visit www.d or email sales@d.”
Each site also contains links such as “Domain Appraisal,” “Buy Domains,” “Sell Domains,” “Domain Parking,” “Domain Auction,” and “Domain Transfer.”
During the period from August 2006 to March 2007, Complainant’s representative corresponded with Respondent by email. Complainant’s representative inquired as to the asking price for the domain name . In October 2006, Respondent indicated that the domain name was for sale for $9,500. On February 9, 2007, after several intermediate offers were rejected, Complainant’s representative sent an email accepting the original $9,500 offer, but Respondent replied on February 26, 2007, by stating that it had received several offers and was reconsidering its options. Respondent informed the Panel that it had decided to develop its own website rather than sell the domain name, and has submitted a letter, dated February 8, 2007, showing that it had paid a website developer a �100 deposit towards the development of the website. Respondent has also provided the Panel with a link to the website that is under development, but the Panel is unable to determine how much of this work had been done prior to the initiation of this proceeding and how much may have been done in the weeks since the Complaint was filed.
5. Parties’ Contentions
A. Complainant
Complainant contends that the Domain Names are confusingly similar to the Trademarks, AFRI SPORT and AFRISPORT, in which Complainant has rights because three of the domain names (, , ) incorporate the Trademarks exactly, and the fourth () is simply a pluralized version of Complainant’s Trademarks.
Complainant further asserts that Respondent has no rights or interests with respect to the Domain Names. Complainant states that Respondent holds no trademark rights in “Afri sport” or “Afrisports.” Complainant argues that Respondent has not used the Domain Names for any bona fide purpose. Complainant states that they are being used solely as advertisements for Respondent’s primary business of selling and trading in domain names and as a portal to other websites.
Complainant also alleges that Respondent registered and is using the Domain Names in bad faith. Complainant claims that the Domain Names were registered after Complainant’s trademark rights had been established. Complainant asserts that Respondent’s sole purpose in registering the Domain Names was to trade, license and, sell domain names. Complainant states that Respondent has registered hundreds of other domain names for these same purposes, and notes that some of these other domain names appear to contain trademarked names. Complainant further asserts that the links accessible from the Domain Names intentionally mislead Complainant’s customers. Finally, Complainant asserts that Respondent is concealing its true identity by refusing to reveal its full name and instead identifying itself as “S. Bernard.”
Complainant also asserts that Respondent’s registration of the Domain Names has interfered with its plans to release beverages under the name “Afrisport”.
B. Respondent
In response to Complainant’s assertion that Complainant holds the trademarks AFRI SPORT and AFRISPORT, Respondent contends that Respondent has been unable to independently verify whether Complainant has any trademark rights in Great Britain, where Respondent is located.
Respondent asserts that Respondent has legitimate rights or interests in the Domain Names. Respondent claims that Respondent registered the Domain Names in order to broadcast sports in Africa and take advantage of the opportunity to take part in the growing Internet business in Africa. Respondent acknowledges that it did consider selling the Domain Names to Complainant in August 2006, but claims that it decided to develop a website for the Domain Names as a portal for African sport in January 2007, 10 months before the Complaint was filed.
Respondent also claims that the Domain Names were registered in good faith. Respondent notes that the term “Afrisport” is merely a contraction of the commonly used words, “African” and “Sport,” and that is but one of many domain names registered by Respondent that also consist of the abbreviation “Afri” followed by a generic word. Respondent points out that it registered in 2003, prior to any contact with the Complainant. Respondent argues that it is not trying to misleadingly divert Complainant’s customers because Complainant has not yet released any products and, therefore, has no customers to divert. Furthermore, Respondent notes that Respondent’s website under construction is a sports news site, which is unrelated to Complainant’s Trademarks with respect to beverages, and is not intended to tarnish these Trademarks. In addition, Respondent notes that Respondent did not register the South African country level domain name (), which shows that Respondent did not register the Domain Names in bad faith in order to obtain money from the trademark owner.
Finally, Respondent argues that Complainant’s e-mails to Respondent, in which Complainant inquired about purchasing the Domain Names, constituted an acknowledgement of Respondent’s rights to the Domain Names. Furthermore, Respondent notes that since Complainant’s initial contact with Respondent, Complainant has purchased several domain name variations on “Afrisport” (such as and ), yet Complainant has not created a website offering any goods or services on any of these Domain Names.
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
For the reasons discussed below, the Panel concludes that Complainant has satisfied its burden of proving the first factor, but has not proven the third factor. Because Complainant has not proven bad faith registration, the Panel need not decide the disputed issue of whether Respondent has any rights or legitimate interests in the Disputed Domain Names.
A. Identical or Confusingly Similar
Complainant has provided evidence that it owns two trademarks registered in South Africa: AFRI SPORT and AFRISPORTS. These Trademarks are entitled to a rebuttable presumption of validity. See Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at � 1.1 (“If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights.”) (available at ).1
Respondent defends on the ground that Complainant does not possess a valid trademark in Great Britain, where Respondent is located. That is immaterial. For purposes of the Policy, ownership of a trademark anywhere is sufficient to satisfy that aspect of the first factor. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Bennett Coleman & Co Ltd. v. Steven S Lalwani, WIPO Case No. D2000-0014; Bennett Coleman & Co. Ltd. v. Long Distance Telephone Co.,WIPO Case No. D2000-0015.
The one open question about the Trademarks – which has not been addressed by the Respondent – is whether the South African registrations are entitled to deference in light of the Complainant’s admission that the Trademarks have not been used during the seven years since Complainant’s predecessor acquired the Trademarks. Normally, under the laws of some common law countries, a lengthy period of non-use would give rise to a presumption of abandonment, and Complainant has not submitted evidence of its demonstrable intention, throughout this seven year period, to begin use. The only thing Complainant has submitted, are mock-ups of labeling for the planned alcoholic beverage products, but there is no indication of when these were prepared. If this issue were determinative, the Panel, which is not familiar with South African law on this point,2 would have asked the Parties for their views on this issue. Because the Panel finds no bad faith registration, though (see Section 6.C. infra), there would be no practical benefit to asking the Parties to submit supplemental briefing on that issue, whereas such a request would require the Parties to expend additional time and resources on this proceeding and would delay its ultimate resolution. Accordingly, for purposes of this decision only, and because Respondent has not challenged Complainant’s South African trademark registrations, the Panel will assume that Complainant has shown sufficient trademark rights to satisfy that component of the first factor.
Turning to the remaining component of this factor, the Panel notes that the Domain Names all contain Complainant’s AFRISPORT trademark in their entirety. Three of the domain names (, , and ) are identical to Complainant’s AFRISPORT trademark except for the top-level-domain, and the fourth () is a pluralized version of Complainant’s trademark.
Accordingly, the Panel finds that the Domain Names are identical or confusingly similar to trademarks in which Complainant has rights, and thus that the requirement of Paragraph 4(a)(i) of the Policy has been met.
B. Rights or Legitimate Interests
Because of the Panel’s finding with respect to the third factor, see below, and because the parties disagree about whether Respondent has rights or a legitimate interest in the Disputed Domain Names, the Panel need not address the question of whether Complainant has satisfied its burden of proving that Respondent lacks rights in or legitimate interests with respect to the Disputed Domain Names. See, e.g., River Island Clothing Co. Limited v. Name Administration Inc. (BVI),WIPO Case No. D2007-1293.
C. Registered and Used in Bad Faith
For this Complaint to succeed, Complainant must prove by a preponderance of the evidence that the Domain Names have been registered and are being used in bad faith. See Bootie Brewing Co. v. Deanna D. Ward,WIPO Case No. D2003-0185 (acknowledging consensus on use of preponderance of the evidence standard). On the evidence presented, the Panel finds that Complainant has failed to establish by a preponderance of the evidence that the Domain Names were registered in bad faith. Accordingly, the Panel need not consider whether the Domain Names are being used in bad faith.
Respondent asserts that Respondent cannot be found to have registered the Disputed Domain Names in bad faith because Respondent, a UK-based company, was unaware of Complainant or its South African Trademarks when it registered the Disputed Domain Names. As numerous UDRP Panels have held, absent a showing that Respondent was willfully blind to Complainant’s rights, e.g., Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, such a showing is typically determinative of a lack of bad faith registration. See, e.g., Micron Technology, Inc. v. Null International Research Center, WIPO Case No. D2001-0608. Given that Complainant’s Trademarks are not famous or well known and that Complainant does not even sell any products, the Panel finds Respondent’s assertions credible. See, e.g., Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609; cf. Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340. The Panel also finds credible Respondent’s assertion that it registered these Domain Names because they are a contraction of the potentially descriptive phrase “African Sport.” Complainant has not introduced any evidence to rebut Respondent’s contentions, or any evidence to establish that Respondent should have been aware of Complainant’s Trademarks. See Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445.
Complainant alleges that, even though Respondent may not have been aware of Complainant’s existence, Respondent should have been aware that some of the many other domain names it registered included trademarked names. Complainant argues that this proves that Respondent acted in bad faith generally when it registered hundreds of domain names and offered them for sale. That argument is without merit. In the absence of any specific evidence that these Domain Names were registered in bad faith, Complainant cannot rely solely on an unsubstantiated allegation that other, unrelated domain names were registered in bad faith to satisfy its burden that these Domain Names were registered in bad faith. See Displays Depot, Inc., supra.
Finally, Complainant alleges that Respondent’s failure to supply the full name of its representative constitutes a bad faith attempt to conceal Respondent’s true identity. The Respondent’s identification of its representative as “S. Bernard” is not the type of concealment of identity that prior panels have found to constitute bad faith. Moreover, Respondent has provided an accurate mailing and e-mail address, did respond to Complainant’s inquiries about possible sale of the Domain Names, and has responded to the efforts of Complainant and the WIPO to contact Respondent. See National Futures Association v. John L. Person,WIPO Case No. D2005-0690 (noting that, “False registration information has been considered as evidence of bad faith when it involves a deliberate attempt to conceal identity and avoid application of the Policy” and finding that there was no attempt to conceal identity where Respondent had provided the correct address information); Kabushiki Kaisha Bic Camera v. Netline Systems, WIPO Case No. D2002-0817 (finding that the respondent had in bad faith hidden its identity by not replying to the letter sent by the complainant asking them to transfer the domain name and also by not being available at the address listed as the administrative address in the WHOIS Registration data).
Accordingly, the Panel finds that Respondent did not register the Disputed Domain Names in bad faith in this case.
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 Complaint be denied.
David H. Bernstein
Sole Panelist
Dated: November 26, 2007
1 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled by WIPO from the decisions of numerous WIPO Panelists during the first five years of administration of the UDRP. See Fresh Intellectual Properties, Inc. v. 800N, Inc.,WIPO Case No. D2005-0061 (March 21, 2005). Accordingly, when such a consensus has developed, it is incumbent upon Panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. See Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014 (April 22, 2004).
2 The Panel has consulted the South African “Country Portal” on the International Trademark Association website , which suggests that a South African trademark registration may be subject to cancellation under Section 27 of the South African Trademarks Act if “a continuous period of five years or longer has elapsed from the date of issue of the certificate of registration during which the trademark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof or any person permitted to use the trademark as contemplated in section 38 during the period concerned.”
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