WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Media24 Limited v. Llewellyn Du Randt CASE NO D2009-0699 1. The Parties
The Complainant is Media24 Limited of Cape Town, Republic of South Africa (“South Africa”), represented by Cliffe Dekker Hofmeyr Inc, South Africa.
The Respondent is Llewellyn du Randt of Rant-en-Dal, Krugersdorp, South Africa appearing pro se. 2. The Domain Name & Registrar
The disputed domain name (the “Domain Name”) is registered with Cronon AG Berlin, Niederlassung Regensburg. 3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (“the Center”) on May 28, 2009. On May 28, 2009 the Center transmitted by e-mail to Cronon AG Berlin, Niederlassung Regensburg, a request for registrar verification in connection with the Domain Name. On June 2, 2009 Cronon AG Berlin, Niederlassung Regensburg, transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 12, 2009. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy” or “UDRP”), the Rules for the Policy (“the Rules”), and the WIPO Supplemental Rules for the 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 June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response (as extended) was July 20, 2009. The Response was filed with the Center on July 20, 2009.
The Center appointed Archibald Findlay as the sole panelist in this matter on August 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality & Independence, as required by the Center, to ensure compliance with the Rules, paragraph 7.
On examination of the Complaint and the Response, the Panel became aware of two matters which required clarification. Accordingly on August 26, 2009 it issued Procedural Order No. 1 in the following terms:
“1. The Panel hereby requests, pursuant to paragraphs 10 and 12 of the Rules, the Complainant to deliver a copy of the annexure referred to in paragraph 43.33 of its amended Complaint dated June 12, 2009, namely Annexure ‘FM20', alternatively to confirm that such document does not exist.
Such materials should be submitted to the WIPO Arbitration & Medication Center (‘the Center') by email to domain.disputes@ no later than August 31, 2009. The Respondent shall have three (3) calendar days following the Complainant's submission (if any) in which to file any comments or documents in reply thereto.
2. On June 2, 2009 the Center received confirmation from the Registrar Cronon AG Berlin, Niederlassung Regensburg, that Llewellyn du Randt was the current registrant of the Domain Name in question.
In the circumstances, the parties are invited, within 5 (five) calendar days of the date hereof (i.e. no later than August 31, 2009) to submit such further submissions and contentions as they may wish as to:
(i) the correctness or otherwise of the information contained in Annexure ‘FM1' to the amended Complaint;
(ii) whether Llewellyn du Randt is correctly cited as the Respondent in these proceedings or whether the Resondent should be Zekini CC.
3. The due date for the decision in this case is hereby extended until September 14, 2009.”
The first matter raised in Procedural Order No. 1 has fallen away inasmuch as the Complainant confirms that the annexure referred to as “FM20” was a typographical error and should have been a reference to Annexure “FM19”. That issue has therefore been resolved.
The parties responded timely (although in so doing the Complainant went beyond the ambit of Procedural Order No 1 and sought to introduce further matters by way of an unsolicited reply) to the second paragraph of Procedural Order No. 1, i.e. by August 31, 2009. The Respondent also submits that this matter should be stayed pending the outcome of litigation relating to a labour dispute between it and the Complainant. These matters are dealt with in the next paragraph under the heading “Preliminary Issues”.
Although certain correspondence prior to the appointment of the Panel was exchanged with the Respondent in German and he was afforded the opportunity of submitting the Response in either English or German, the Response was submitted in English, save for some limited text in exhibits or annexures which was in Afrikaans (which the Panel did not require to be translated) and all proceedings before the Panel have been conducted in English. Since the Respondent did not elect to communicate with the Panel in any language other than English, the Panel accordingly conducted the proceedings in English, exercising its authority to do so under paragraph 11(a) insofar as it may be necessary to invoke the provisions of the Rules. 4. Preliminary Issues A. Citation of Respondent
In the Respondent's Response the citation of the parties was altered to reflect, in place of the Respondent, Zekini CC, which the Panel takes to be a duly registered and incorporated close corporation under the close corporations legislation of South Africa and which is a juristic person. In the body of the Response the Respondent stated categorically:
“Zekini cc owns the Domain, not Llewellyn du Randt, as per Annexure ‘F1' supplied by the Complainant. Zekini cc registered the domain in January 2009 for development purposes and the domain ‘finmedia24' .....”
Subsequently, the Panel felt that, in view of the challenge raised to the identity of the Respondent, the Parties should be afforded the further opportunity which is canvassed in paragraph 2 of Procedural Order No. 1.
Annexure “FM1” to the amended Complaint, a print-out of a WhoIs search result, was relied upon by the Complainant and reflects Llewellyn du Randt as the owner of the Domain Name, although there is mention of the administrative contact being Llewellyn du Randt Zekini. In view of the challenge, the Panel wished also to ascertain whether or not either of the parties might contend that there was an underlying registrant or respondent, although the confirmation to the Center by Cronon AG Berlin confirmed the listed Respondent as the registrant of record.
Pursuant to Procedural Order No. 1, the Complainant reiterated its reliance upon its Annexure “FM1” and submitted a further record of a search as Annexure “FIN1”. The material details of this later annexure correspond with Annexure “FM1” and also reflect Llewellyn du Randt as the owner of the Domain Name.
The Respondent pointed out that the Complainant, whilst contending that the registration date reflected in Annexure “FM1” was March 24, 2009, pointed to a discrepancy in paragraph 43.23 of the Complaint that the Complainant had in fact referred to the date of March 23, 2009. The Complainant's explanation for this in its Response to Procedural Order No. 1 was that this date appears from the record of a further search, Annexure “FM18”, which is indeed so. The Complainant, however, submits that this does not materially affect the substance of the enquiry as to the fact that it was the Respondent who registered the Domain Name.
In his additional materials furnished in response to Procedural Order No 1, the Respondent put up an e-mail from one Ms. Barbosa, who is described as a personal assistant to Zekini management, addressed to “Developers” and which states:
“We need you to register ‘finM' and and pointed to ‘www.'. Below is our registration and VAT numbers should you need it and please have them send me the invoice.”
That e-mail appears to have been sent on March 20, 2009 at 11.17 a.m. It was responded to by an author whose name has been deleted by the Respondent but which response bears the date and time March 23, 2009 02:25 p.m. and is addressed to Llewellyn du Randt. It reflects as a subject “Re: Nuwe DNS” (the word “Nuwe” being Afrikaans for “new”) and simply states: “Ook net parked?” (the words “ook” and “net” meaning “also” and “only.”) At the outset this, in the Panel's view, is inconsistent with the statement alleged in the Response that the Domain Name was registered in January 2009 and the fact that the Response is addressed to Llewellyn du Randt and not Zekini CC also tends to suggest that he may have been the intended respondent, although the Panel does not draw any strong inference therefrom as it is unclear whether it was merely intended to be addressed to him as a member of Zekini CC. Furthermore the reply therein that the Domain Name was “Also Only Parked” does not assist in confirming the fact of registration.
In the absence of any other evidence to gainsay the later evidence put up by the Complainant and confirmed by the Center, or to suggest that Zekini CC may have an interest as being an underlying registrant, or otherwise, the Panel is, in the circumstances, of the view that the Respondent Llewellyn du Randt is correctly cited in these proceedings and not Zekini CC, as suggested by him. The fact that there is a slight discrepancy in the date does not, in the view of the Panel, sufficiently detract from the reliability of the registration as confirmed by the concerned Registrar. B. Unsolicited Reply by Complainant
In correspondence with the Center and before the Panel was constituted, the Complainant sought leave to submit a reply to the Response and was informed that this was a matter within the discretion of the Panel. In its request the Complainant contended that it was in the interests of justice that it be permitted to do so. Procedural Order No. 1, however, prompted the Complainant to submit further materials over and above dealing with the issues in that Procedural Order, which constituted an unsolicited reply. As this is now before the Panel, and to the extent that it goes beyond the issue raised in the Procedural Order, the Panel has to consider whether to receive the additional evidence. Apart from its general contention that it is in the interest of justice that it should be so received by the Panel, no further motivation has been submitted. Although views range from that of a minority, that unless the panel specifically solicits a supplemental filing it will not consider such in its decision (Viacom International Inc. & MTV Networks Europe .v. Rattan Singh Mahon, WIPO Case No. D2000-1440), the majority view appears to be that, provided the parties are treated equally and that each party has a fair opportunity to present its case, the panel has a discretion to permit this course. (De Dietrich Process Systems v. Kentron Ireland Ltd,WIPO Case No. D2003-0484; AutoNation Holding Corp. .v. Rabbea Alawneh,WIPO Case No. D2002-0058; Delikomat Betriebsverpflegung Gesellschaft m.b.H.v. Alexander Lehner,WIPO Case No. D2001-1447). These authorities also support the notion that the party seeking to bring the supplemental filing should demonstrate its relevance to the case and why it was unable to provide the information in its initial filing.
In terms of paragraph 12 of the Rules, the panel is empowered, in its sole discretion, to request further statements or documents in addition to the complaint and the response from either of the parties. As there is no right of supplemental filing or a reply by the complainant to the response and the panel is vested with the sole discretion to decide on whether or not it should receive an unsolicited reply, it is clearly an indulgence granted to a party dependent upon it being shown that the party should be granted such indulgence. This is different from a situation where the panel decides of its own motion to call for additional filings from parties. The former instance, in the view of the Panel, requires a party to demonstrate why it should be afforded such an indulgence and, at very least, there should be some motivation as to why it is necessary or desirable that this should take place. Without limiting the form and source of the motivation, the Panel would expect either that such motivation be self-standing or that circumstances are apparent in the Response to suggest that a reply is called for or that new material evidence had come to light after the lodging of the Complaint. (This is not intended to be an exhaustive list). In this regard, see also Qantas Airways Limited v. Minh Huynh,WIPO Case No. D2008-1382.
In the present instance, the only motivation is said to be that it would be in the interests of justice so to do. No elaboration of why it should be so or that further contentions in the intended reply suggest that this merits reception on any other basis. Mere assertion of a general legal principle without more does not bring the principle into operation. In the circumstances, the Panel declines to receive that portion of the additional materials supplied by the Complainant insofar as they go beyond dealing with the matters raised in the Procedural Order and disregards them in the present matter. C. Respondent's Request that these Proceedings be Stayed
In his Response the Respondent contends that the reason why its rights or legitimate interests in respect of the Domain Name, as reflected in the site, are not publicly available is due to a labour dispute and restraint of trade dispute preventing him from launching his business. He records that he has requested the Center to stay the hearing of this matter until the conclusion of the labour dispute which had been postponed to September 2009 and claims that a lot of meaningful data on the site, which has cost Zekini a considerable sum of money to develop and host, would be available to advance his case provided the Center gave the necessary guarantees that such information be treated as highly confidential and not made available to or be accessible by the Complainant.
Paragraph 18 of the Rules provides that, in the event of any legal proceedings having been initiated prior to proceedings such as these, the Panel is empowered to exercise its discretion in relation to a request for a stay. While it is true that the Respondent refers to pending Court proceedings as to a labour dispute, as well as a restraint of trade, and it appears that these may have commenced before the launch of these proceedings, the Panel is of the view that it is appropriate to proceed to a decision under the present circumstances and also notes the obligations under paragraph 2(h) of the Rules in regards to unilateral party communications. .
The Panel accordingly declines the Respondent's request that these proceedings be so conditionally stayed pending the finalisation of the Court case or cases. 5. Factual Background
The Complainant was incorporated in South Africa in 1950 and contends that it is a leading publishing company in South Africa, as well as throughout Africa. It has a considerable annual turnover and its operations include the ownership and management of a number of award-winning newspapers, magazines, Internet businesses, book publishing, printing plants and distribution companies. It currently publishes approximately sixty different magazine titles and sells some 5.9 million magazines with a readership of more than 8.7 million people per month in South Africa. These titles include Finweek, You, Huisgenoot, Go!, FHM, Men's Health, Kick Off, Cosmopolitan and Drum.
It also publishes nearly sixty different newspaper titles and sells about 341.8 million newspapers annually in South Africa, many of which are leaders in their respective markets, such as the Daily Sun with a readership of 3.8 million people. With a daily circulation of about 800 000, the Complainant's daily newspapers account for a large proportion of the South African newspaper circulation figures and the weekly urban newspapers have a circulation of about 1.4 million, while the community newspapers' circulation amounts to about 1.3 million per week. These titles include Beeld, Die Burger, Rapport, Son, Volksblad, The Witness, and the abovementioned Daily Sun. The Complainant's Finweek magazine's circulation is approximately 30, 000 per month.
The Complainant's “” division is the largest Internet publisher in South Africa and has a series of associated divisions, including News24, Health24, Property24, Fin24, Careers24, Netads24 and Wheels24.
The Complainant contends that it is the proprietor of various registered and pending trademarks in South Africa dating back to 2000 that incorporate the words “Fin24” or “Media24”. It is the applicant for the registration of the trademark FINMEDIA24 in various classes in South Africa. It contends that it is also the proprietor of various registered and pending trademarks in foreign countries, including Botswana, China, Nigeria, the European Community, Ghana, Lesotho, Namibia and the United States of America, dating back to 2000, that incorporate the words “Fin24” or “Media24”.
The Complainant's Fin website is visited by over 600 000 individual browsers quarterly, which makes it the biggest financial news website in South Africa. It has won numerous national and international awards, including the “best on-line solution” award for its “www.Fin” website in 2007 and 2008. It has also sponsored various events and ceremonies in South Africa over the past years which include Finweek Business Breakfasts and Sake24 Economist of the Year.
The Complainant, together with its associated companies, is the registrant of some 38 domains which it contends incorporate its Fin24 or Media24 trademarks. It makes extensive use of the websites linked to these domains to advertise, market and promote its goods and services. These domain names include (registered on November 20, 2000), (registered on November 7, 2001), (registered on May 26, 2000), (registered on May 17, 2005), (registered on May 2, 2000) and (registered on August 28, 1998).
On October 1, 2007, the Complainant employed the Respondent as an Operations Manager. Prior to that appointment, he had been employed at one of the Complainant's associate companies from April 1, 2001. The Respondent ceased employment with the Complainant on December 12, 2008. 6. Parties' Contentions A. Complainant
The Complainant contends that there have been numerous previous top-level domain name decisions before UDRP panels finding that a domain name that incorporates a combination of a complainant's registered trademarks should be regarded as confusingly similar to a complainant's trademarks. It points out in this regard that the Domain Name is in fact clearly a combination of its registered trademarks. The Complainant further contends that similar South African domain name dispute decisions have also applied the principle that domain names incorporating a complainant's trademarks are confusingly similar.
The Complainant then contends that various Internet and trademark searches have revealed that the Respondent has not registered, used or applied for any of the trademarks incorporating the words “fin24”, “media24” or “finmedia”, nor has the Respondent any co-existing rights in these words or any combination thereof. It follows, so it is contended, that the Domain Name is clearly confusingly similar or identical to names or trademarks in which the Complainant has rights and that the Domain Name is also identical to the name of the Complainant's “FinMedia24” business unit.
The Complainant then contends that the Respondent is neither a member nor a licensee of the Complainant, nor is there any other relationship between the parties in terms of which the Respondent had any permission or consent to use the trademarks in question or any combination thereof. The Complainant further contends that there is no evidence prior to the notice to the Respondent of the dispute, nor any subsequent evidence of the Responsent's use of or demonstrable preparations to use, the name or a name corresponding thereto in connection with a bona fide offering of goods or services. In amplification it puts up Annexures “FM17” and “FM19”, examples of the websites of the Respondent presently under construction. The Complainant further submits that the Respondent has not been commonly known by the name, nor has it acquired similar or identical trademark and service mark rights and that a Google search of the phrase “Finmedia24” does not return any results relating to the Respondent, apart from the name.
The Complainant then draws attention to its contention that the Respondent was summarily dismissed from its employment, which gives rise to the likelihood that the Respondent had some bad faith motive in registering the name. This is coupled with the assertion that, as a result of the Respondent's employment by the Complainant, it cannot be disputed that the Respondent would have had knowledge of the Complainant's FIN24 and MEDIA24 trademarks. This leads to the further conclusion, so it is contended, that it is inconceivable that the Respondent was not aware of the launch of the FinMedia24 business unit, albeit that the Respondent was not directly involved therein but his office was in close proximity to the offices of those employees concerned therewith. The Complainant states that, although the launch of FinMedia24 was officially announced to the employees only on March 23, 2009, a number of them were aware thereof from September 2008 and no doubt discussed the launch amongst each other. The Complainant also draws attention to the noncommercial or fair use of the name as further evidence of bad faith.
The Complainant relies, in addition, upon the timing of the registration of the Domain Name, namely March 23, 2009, which coincides with the date of the official announcement of the launch of FinMedia 24 by it and avers that this is an important factor in the overall enquiry. The Complainant's argument is furthermore that the Respondent is using or has registered the Domain Name in a way that leads people to believe that the Domain Name is linked in some way with the Respondent and that is registration of the Domain Name was in order to prevent the Complainant from reflecting its trademarks in a corresponding name. The Complainant then sums up by submitting that all these factors support the proposition that the Domain Name was name registered primarily to unfairly disrupt the business of the Complainant. B. Respondent
The Respondent, at the outset, draws attention to what are described as errors in the Complaint, the first of which being the discrepancy in the date alleged in respect of registration of the name, i.e. whether it was the March 23, 2009 or March 24, 2009. The Respondent then contends that he was not summarily dismissed on December 12, 2008, nor did he leave the Complainant's employment on that date.
The Respondent complains that in letters of demand the Complainant gave an unreasonable time of a single day for the Respondent to acknowledge permission to transfer the name and that letters were of a threatening nature. The Respondent avers that one Mr. Delport of the Complainant had admitted it was attempting to brand him as a cyber squatter in order to create a negative connotation for use in the labour dispute and this was also the reason why the Complainant brought the present matter against him in person rather than against Zekini CC who, he contends, is the rightful owner of the name. He contends that it is the harrassment of Mr. Delport that has currently prevented the launch of a business by Zekini CC.
The Respondent draws attention to a further discrepancy in the date of registration of between the text of the Complaint and Annexure “FM11” put up as proof of such registration. Similarly he contends that the dates relating to the registration of are markedly different, being May 2, 2000 on the one hand, as against October 3, 2007 on the other. The Respondent draws attention to discrepancies between the text of the Complaint and certain of the annexures and avers that all these errors tend to suggest that the Complainant is acting in bad faith. The Respondent then points out that the Complainant appears not to have taken any steps against a large number of other owners of Domain Names similar to the Complainant's marks and gives a series of examples to support the contention that the Complainant would appear to be targetting or harrassing the Respondent, rather than taking genuine steps against other intruders into its rights.
With regard to the Domain Name being identical or confusingly similar to trademark or service mark rights held by the Complainant, it is the Respondent's contention that these marks are substantially generic terms and are not capable of giving rise to any protectable rights. The Respondent relies upon a series of decisions of the South African Courts, as well as South African domain name decisions, in support of the proposition that the words which are purely descriptive or generic cannot be registered or give rise to protectable rights unless they have acquired a secondary meaning and have become capable of distinguishing the goods and services of the proprietor.
In support of this the Respondent then refers to his own Google searches which he contends show a vast number of matches for “fin”, “media” and “24”. He cites certain foreign examples where “finmedia” has been used, namely by a New Zealand based company Finmedia Ltd, and a Finnish company, in support of his further argument that the Complainant cannot claim unique, distinctive and exclusive trademarks in the light of these registrations. He points out that there has never been an attempt on the part of Zekini or its employees to gain financially from the name and that it is not about the disruption of the business of the Complainant, having registered only one name for development purposes and one for the final launch of products and services, the latter being the disputed name.
With regard to the application for the trademark FINMEDIA24, the Respondent contends that the application was brought after it learnt of the name and that it filed its trademark application on April 17, 2009, which constitutes a typical case of reverse Domain hijacking. The Respondent then contends that he has not acted in bad faith, nor is his conduct unfair or dishonest in nature, and it is permissible for the use of such Domain Name otherwise there would be recognition of granting monopolies in respect of simple descriptive terms adopted as domain names. 7. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Domain Name is identical or confusingly similar
The schedule, put up as the Complainant's Exhibit “FM6” and supported by more detailed registration documentation from the South African Companies & Intellectual Property Rights Registration Office, Exhibit “FM7”, listing the marks registered or pending, relates to marks. All the marks so identified, save for the five FINMEDIA24 (in respect of which applications were made on April 17, 2009) pre-date the registration of the disputed name. The Complainant also schedules certain foreign marks (i.e. in countries other than South Africa), namely MEDIA24, MEDIA24 and devices FIN24 and FIN24 and devices both registered and pending. The Respondent in no way challenges either their existence or validity, nor the accuracy of their respective descriptions in the Complainant's Exhibits “FM6” and “FM7”.
Even if some trademarks were not registered at the time, those rights are still protectable as common law trademark rights (Imperial College v. Christopher Dessinroz,WIPO Case No. D2004-0322; The British Broadcasting Corporation v. Jaime Rentoria,WIPO Case No. D2000-0050).
The fact that the wordmark has been incorporated entirely into the name by the Respondent is sufficient to establish that a Domain Name is identical or confusingly similar to the Complainant's registered mark (Quixar Investments Inc v. Dennis Hoffman,WIPO Case No. D2000-0253; Universal City Studios Inc v. David Burns & Adam – 12 Dot Com,WIPO Case No. D2001-0784; Experian Information Solutions Inc v. BPB Prumerica Travel –WIPO Case No. D2002-0367; Société des Produits Nestlé Sa v. Mustafa Yakin/Moniker Privacy Services,WIPO Case No. D2008-0016).
Furthermore, the fact that different trademarks are combined in the Domain Name gives rise to confusion inasmuch as it consists of a combination of two or more trademarks in which the Complainant holds rights (Astro-Med Inc v. Merry Christmas Everyone! & B Evans,WIPO Case No. D2000-0072; Saab Automobile AB et al v. Joakim Nordberg,WIPO Case No. D2000-1761; Audi AG v. Hans Wolf ,WIPO Case No. D2001-0148; Qantas Airways Ltd case, supra).
The addition of a specific top level domain is not an element of distinctiveness but can be taken into consideration when evaluating the identity and similarity of the Complainant's trademark and the Domain Name (Magnum Piering Inc v. The Mudjackers & Garwood S Wilson SR,WIPO Case No. D2000-1515; Rollerblade Inc v. Chris McCradey,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com –WIPO Case No. D2001-0374; Qantas Airways Ltd case, supra).
The Panel has considered the proposition contended for by the Respondent that in trademark law words which are purely descriptive or generic cannot be registered or give rise to a protectable right unless they have been used to such an extent that, as a matter of fact, the words have acquired a secondary meaning and become capable of distinguishing the goods or services of the proprietor. In particular, among the many Court and other decisions referred to, the Respondent relies on what is regarded in South African law as the leading case on passing off, namely Capital Estate & Others v. Holiday Inns Inc & Others 1977(2) SA 916 (AD) where the wrong of passing off is therein (at 929 C-E) described as follows:
“The wrong known as passing off consists in a representation by one person that his business (or merchandise, as the case may be) is that of another, or that it is associated with that of another, and, in order to determine whether a representation amounts to a passing-off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the business of the one is, or is connected with, that of another. (See, e.g. Policansky Bros Ltd v. L & H Policansky 1935 AD 89 at pp 97 & 113; Truck & Car Co Ltd v. Kar-N-Truck Auctions 1954(4) SA 552 (AD) at pp 557 & 559). Whether there is a reasonable likelihood of such confusing arising is, of course, a question of fact which will have to be determined in the light of the circumstances of each case.”
In the opinion of the Panel, there may be room for the view that the registration of a Domain Name which is confusingly similar to a registered trademark can, dependent on the circumstances, give rise to the remedy of passing off (see the decision of the Court of Appeal in England in British Telecommunications plc & Another v. One in a Million Ltd & Others and other actions [1998] 4 All E R 476 at 493 a-g) and obviously depending upon the relevant legislation applicable in the circumstances to an infringement of trademark rights protectable by injunction or interdict (British Telecommunications case, supra at 499 a-d). The attack by the Respondent on the words of the Complainant's trademarks not being protectable under trademark law does not, in the view of the Panel, avail the Respondent for the reason that most of the trademarks have already been registered and, whilst on the register, are protectable under the trademark law. In the context of South African trademark law, the trademarks on the register give rise to a protectable interest unless and until they are expunged from the register, which has not happened in the present instance. Whether the Respondent might have grounds to seek such expungement or be a person interested within the requirements of trademark law and have the necessary capacity to attack any registered trademark does not arise since, in the present matter, they derive their validity from the fact of registration. It is therefore unnecessary, in the view of the Panel, to decide whether or not the words used in the trademarks are indeed of the nature complained of by the Respondent and whether the trademarks should have been registered, or ought to be expunged or removed from the register because they should not have been so registered.
As a subsidiary to the Respondent's main attack in this regard, the Respondent also joins issue with the Complainant in that he contests the accuracy of the information set out by the Complainant in Annexure “FM11”, namely that it has 38 registered domain names which are similar or identical to its registered trademarks. The attack is set out in Annexure O to the Response and is on the basis that, despite such registrations, some eleven of those listed are described as “not working” and twelve are described as “unavailable”. The Panel notes, for the purposes of this leg of the enquiry, such disputes are outside the purview of an analysis under the first element and it is satisfied that the Complainant has established its protectable rights derived from the trademarks to which the Domain Name is confusingly similar.
In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that none of the three circumstances establishing the legitimate interests or rights applies, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a). (Document Technologies Inc v. International Electronic Communications Inc, WIPO Case No. D2000-0270; Universal City Studios Inc case, supra).
Apart from the fact of registration of the name by the Respondent at the time of the launch by the Complainant of its new department under that name, there is nothing, in the view of the Panel, before it which can be said to have established that the Respondent falls within the three enumerated circumstances referred to above. The mere fact that the name was registered does not, in the view of the Panel, go far enough to bring the Respondent within the first category in paragraph 4 (c)(i) above. In any event, the stance of the Respondent is that the pending Court cases interfered with his intentions and those of Zekini CC to develop the name and thereby use it. The Panel notes however that the Respondent has not produced any evidence of its preparation to use the Domain Name in connection with a bona fide offering of services and goods. The Panel accepts that it is not privy to the details of the dispute but there is no other evidence which can take the matter further in favour of the Respondent in order to bring him within the category in paragraph 4 (c)(i) above.
Viewing the evidence before the Panel, therefore, there is no suggestion that the Respondent holds a licence or any other authority from the Complainant or that he received any permission or consent to use the trademarks or any combination thereof. There is no other evidence of use or demonstrable preparations to use the name in connection with a bona fide offering of goods or services, save for the application dealt with earlier by the Panel that the Respondent sought a stay of these proceedings in order to place information before the Panel only and not make it available to the Complainant, which it was claimed might well have demonstrated this. That information, of course, was not disclosed at this stage, nor the nature thereof.
The Respondent has not sought to rely on any attempt to register a trademark with the name, nor that the name is a trade name used by the Respondent as such, and indeed prior to the registration of the Domain Name. In any event, in the view of the Panel, this would not have availed the Respondent whilst the Complainant was the proprietor of registered trademarks in this regard, because the Respondent would not have been able to claim ownership of any such mark in the circumstances in which he would have been aware, as an ex-employee, that the Complainant had a better claim to that ownership (Samsung Electronics (Pty) Ltd v. Sean Elseworth, SAIIPL Case No. ZA2008-0022).
The Panel is therefore satisfied that in the circumstances the Complainant has established the second element in terms of paragraph 4(a)(ii) of the Policy. C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides some guidance on this question. It provides:
“For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bath faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
While bad faith can exist where a domain name contains in its entirety a complainant's trademark (Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a combination of a complainant's registered trademarks.
What is significant in the present case, in the view of the Panel, is paragraph (iv) quoted above. The Complainant's Annexure “FM17”, being the print-out of what appears on the website under construction for the disputed name, merely contains the legend “This will soon be the new home of the domain:” (Emphasis by the Panel). A similar website under construction has also been depicted in the Complainant's Annexure “FM19” for “www.finm” where the same wording appears.
The Panel is of the view that the words depicted on the website under construction bring the Respondent's actions within paragraph (4)(b)(iv) quoted above. The implication to the reader and would-be customer is quite clear, in the view of the Panel, that there is a change of site and that this is about to occur soon. The fact that the Respondent did not earlier have such a registration or website can only lead, in the view of the Panel, to the inescapable conclusion that this is calculated to suggest to those who visit the site that, inter alia, any of the Complainant's earlier sites with similar names will shortly be transferred to, or superseded by, this one. The Panel accepts that this is not a case where such a site bearing the Domain Name identical to the Complainant's trademark is readily distinguishable from association with the Complainant and as such operative at the instance of the Respondent but, in the light of the reasoning referred to above in regard to the use of a name which consists of a combination of trademarks owned by the same proprietor, there is a sufficient and strong probability that there would be a likelihood of confusion with the Complainant's marks and Domain Names, coupled with the suggestion that, by implication, the Complainant has either itself embarked upon the creation of a new site or that the Respondent is somehow linked to the Complainant and does so with its consent. That, in the view of the Panel, would, by application of paragraph (4) (b) (iv) of the Policy, constitute bad faith.
Moreover, where a former employee registered a domain name that incorporated the company name of his former employer, that was considered to be evidence of bad faith, even where no offer to sell the domain had been made to the complainant. (Tourism & Corporate Automation Ltd v. TSI Ltd,WIPO Case No. DAF 0096). This is further fortified by the underlying reasoning that, where a respondent who had been a former employee of a complainant adopted a distinctive element of his former employer's common law trademark and where he must have been aware of the complainant's reputation, that constituted registration and use in bad faith (ESAT Digifone Ltd v. Michael Fitzgerald trading as TELCO Resources,WIPO Case No. D2000-0602; Fry's Electronics Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435). It is true that in the Fry's Electronics case, supra the question of actual knowledge arose. In the present case this is disputed by the Respondent, although the probabilities support that he will at least have had constructive knowledge. The position of a former employee is also suspect since, as a rule, former employees do not have a legitimate right or interest in registering in their own names their former employer's trademark as a domain name and that such registration is considered likewise to be evidence of bad faith (Savino del Bene Inc v. Graziano Innocenti Gennari,WIPO Case No. D2000-0113).
Even though the Respondent complains that the development of the site and use of the name is prevented by the pending Court cases, the concept of use of a domain name is not limited to positive action but includes passive inaction (Telstra Corp Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Despite the Respondent's disavowal of any intention to sell the Domain Name or disrupt the business of the Complainant, and its further contention that the Domain Name is a very suitable and descriptive one, having regard to the products which it intends to market, nothing has been put forward by him to show that the Domain Name was one which he had already conceived of and intended to develop before the name was adopted by the Complainant.
In particular, the Panel takes account of the fact that the Respondent initially sought to contend that the Domain Name had been registered in January 2009, whereas in fact it was registered in March 2009 at the time of the launch by the Complainant of its business unit. It also takes into account that, had it in fact been registered or the steps to register been taken earlier, such steps would in all probability have occurred either whilst the Respondent was still in the employ of the Complainant or shortly after leaving that employ, and that such an appropriation of the Domain Name would hardly have been in good faith in those circumstances, even though the Respondent disputes that he was summarily dismissed. In arriving at its view the Panel makes no finding as to why he was dismissed and whether the dismissal was justified or unlawful. On the reasoning in the Salvino del Bene case, supra, for an ex-employee to appropriate his former employer's name to be considered that he had acted in good faith thereby would, in the view of the Panel, justify no less an inference, if the appropriation occurred whilst the employee was still in employment and before his cessation of employment.
In these circumstances, the Panel concludes that the Complainant has established the third element in terms of paragraph 4(a)(iii) of the Policy. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Archibald Findlay S.C.
Sole Panelist
Dated: September 14, 2009
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