The Complainant is Lodges of Botswana (Proprietary) Limited of Maun, Botswana, represented by Information Governance (Pty) Limited, South Africa.
The Respondent is Island-S Limited of Cape Town, South Africa and Ebene Cybercity, Mauritius. 2. The Domain Names and Registrar
The disputed domain names, (the “First Domain Name”), (the “Second Domain Name”) and (the “Third Domain Name”) (together, the “Domain Names”) are registered with Group NBT plc aka NetNames (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 8, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 11, 2011. 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 company incorporated in Botswana, which since January 1, 1997 has been the lessee of land within a Controlled Hunting Area (“CHA”) in Botswana including sites known as “Delta” and “Oddballs”. One of the directors of the company is Peter Wingfield Sandenbergh. The current lease in favour of the Complainant is due to expire at the end of this year, but may be renewed. The Complainant contends that the Complainant’s predecessors had possession rights over the sites for many years prior to 1997 and the Panel accepts that as fact.
The lease grants to the Complainant “the exclusive right to traverse the CHA for tourism related purposes excluding hunting and game capture in accordance with the agreed management plan, but respecting the traditional rights as aforesaid, and the rights of any other Lessee within the CHA.”
On January 20, 1987 Peter Wingfield Sandenbergh (trading as Okavango Tours and Safaris) registered ODD BALLS as a trade mark for Tourist Agencies and related services in South Africa under number 87/0290. According to the Complainant the registration was assigned to the Complainant, but allowed to lapse in 1997.
The Respondent is a company incorporated in Mauritius with a place of business in Cape Town, South Africa. It is a tour operator selling packaged products to tourists, including (until recently) use of the facilities at the Oddballs Camp, Delta Camp and Oddballs Enclave. The moving force behind the Respondent is a Mr Nigel Garner and it is not in dispute that in the late 1990s he was an employee of the Complainant and in due course became a friend and business associate of Mr Sandenbergh. It is also not in dispute that the Respondent was for a time a significant provider of business to the Complainant.
The First Domain Name was registered on August 19, 2009, the Second Domain Name was registered on May 13, 2008 and the Third Domain Name was registered on June 25, 2009.
Initially, while the Complainant did not consent to registration of the Domain Names, the Complainant was aware of the registrations and did not object to them.
More recently, the Respondent’s use of the Domain Names has given rise to confusion, damaging to the Complainant’s business. The Complainant has asked the Respondent to cease use of the Domain Names. The Respondent’s response has been to invite the Complainant to purchase them, something the Complainant is unwilling to do. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names. As to bad faith, the Complainant contends that it did not give the Respondent permission to register the Domain Names and contends that “while the use by the Respondent of the Domain Names may not have initially been abusive, the continued use by the Respondent of the [Domain Names] has become abusive”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Identical or Confusingly Similar
The Complainant asserts trade mark rights in respect of the names ODDBALLS, DELTA CAMP and ODDBALLS ENCLAVE, being the names of the camp sites in the area of land which it has leased from the Tawana Land Board in Botswana.
Self-evidently, absent the generic “.com” domain suffix, each of the Domain Names is identical or confusingly similar to one or more of those names.
The issue for the Panel is as to whether there is sufficient evidence before the Panel to enable the Panel to conclude that the Complainant has the necessary trade mark rights.
There are no relevant registered trade mark rights. Until 1997, the Complainant was the proprietor of a South African registration of the name ODD BALLS, but in 1997 that trade mark registration was allowed to lapse on the grounds, according to the Complainant, that the name was sufficiently well known by then for the registration to serve no useful purpose.
What needs to be shown for a complainant successfully to assert common law or unregistered trade mark rights? This question is answered as follows in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.”
For its unregistered trade mark rights the Complainant argues as follows:
“As is provided in greater detail in previous paragraphs establishing the factual grounds for this Application, the Complainant has acquired by its use over a period of in excess of 26 years, the right to use the names Oddballs, Delta Camp and Oddballs Enclave by virtue of the fact that it (or its predecessors in title) built the Camps and have acquired the right to the land on which the Camps are situate by virtue of a Tourism Lease granted to it by the Tawana Land Board. The Tourism Lease describes the land as the Oddballs and Delta site.”
The Complainant appears to be saying that because it and/or its predecessors created camp sites bearing the names Oddballs, Delta Camp and Oddballs Enclave and has introduced tourists to those sites on a commercial basis over 26 years, it has acquired trade mark rights in the names of those sites.
Why should this be the case? Why are they not merely place names?. As the Complainant has indicated, the Lease under which it holds occupation rights over the sites in question identifies the sites by the names in which the rights are claimed. If on termination of the current Lease at the end of this year, the Tawana Land Board grants rights to another entity, will the Complainant be entitled to require the Land Board to change the names of the sites to something else? There is nothing before the Panel to indicate that that will be the case. On the evidence before the Panel the names are simply names of camp sites, albeit camp sites built by the Complainant and/or its predecessors.
What evidence is there that the Complainant has been using these names as trade marks? The Complainant does not apparently trade under any of these names. If it does, no evidence of any such use is before the Panel. No business documentation (e.g. letterheads, advertisements, brochures, print ups from the Complainant’s website) featuring the site names as trade marks has been produced to the Panel; nor has any indication been given as to the volume of the Complainant’s trade (if any) under these names as trade marks.
On the evidence before him the Panel is unable to conclude that the Complainant has relevant trade mark rights for the purposes of paragraph 4(a)(i) of the Policy and the Complaint fails. C. Rights or Legitimate Interests
In light of the foregoing finding, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
In light of the Panel’s finding under B above, it is unnecessary for the Panel to address this issue. However, the Panel observes that for a complaint to succeed under the Policy it is now well-established that the domain name(s) in issue must have been registered in bad faith as well as being used in bad faith. The Complainant has produced significant evidence to demonstrate that recent use of the Domain Names has been confusing and damaging to the Complainant’s business, but at the time of registration of the Domain Names the parties were co-operating commercially and, as the Complainant concedes, the Respondent’s initial use of the Domain Names may well not have been in bad faith.
The Policy is narrowly targeted at entities, which register domain names with the intention of abusing the rights of trade mark owners. It is not designed and was never intended to cover all abusive uses of domain names. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: March 17, 2011
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