The Complainant is Nedbank Limited of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Gregg Ostrick, GNO, Inc. of New Orleans, Louisiana, United States of America (“United States”), represented by John Berryhill, Ph.d. esq., United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 17, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2016. On April 6, 2016, the Respondent requested the extension of the Response due date. In accordance with the Rules, paragraph 5(b), the Center extended the Response due date until April 14, 2016.
The Response was filed with the Center on April 14, 2016.
The Complainant submitted a Supplemental Filing on April 22, 2016.
The Center appointed Nick J. Gardner, Tony Willoughby and Richard G. Lyon as panelists in this matter on May 4, 2016. The Panel finds that it was properly constituted. Each member of 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 bank incorporated in South Africa. Its origins date back to 1888. It trades under its own name. It also operates or promotes what it refers to as “The Green Trust” – further details of this appear under the Complainant’s Contentions, below. It owns a number of registered trademarks for the words “The Green Trust” which date from 1990 – for example South African trademark 1990/4674 registered with effect from June 8, 1990. These trademarks disclaim any rights in the words “green” and “trust” singly. It has in total 49 such trademarks all of which are registered in southern African countries (South Africa, Namibia, Lesotho and Botswana). The Complainant also owns a number of domain names including the words “green” and “trust”. These are discussed further below.
The Disputed Domain Name was originally created on August 18, 2004. It has been used to resolve to a parking page containing sponsored links. The content of this page is discussed further below.
The Respondent is an individual based in the United Sates who is in the business of trading in domain names. He owns a large portfolio of domain names.
The Complainant’s legal advisers have written letters of complaint to the Respondent but received no reply. 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Name is identical to its registered trademark GREEN TRUST.
It then says that the Respondent has no rights or legitimate interests in the term “Green Trust”. The Complainant says that its use of the term “Green Trust” commenced in 1990 whilst the Disputed Domain Name was not registered until 2004. The Complainant describes its “Green Trust” as follows:
“THE GREEN TRUST funds a broad range of conservation projects from species-focused projects to urban greening projects. All these projects retain a significant focus on community-based conservation. THE GREEN TRUST supports projects which focus on the prevention of degradation of the South African natural environment, the conservation of biodiversity and the sustainable use of natural resources. This is achieved through financing, networking, programme management and project development by engaging effectively with strategic partners to access and share resources.”
And
“In 1991, the Complaint partnered with the World Wildlife Federation (“WWF”) in a joint initiative geared towards providing support and finance for programmes focused on the conservation of biodiversity in South Africa and the preservation of South Africa’s natural resources for the benefit of its people. This joint venture was named the WWF Nedbank Green Trust, and in 2016 the Complainant will be celebrating 25 years of its partnership with the WWF.”
The Complainant says it owns a number of domain names that incorporate the words “green” and “trust”, namely , , , , , , , and .
The Complainant has provided examples of promotional material and website content that it publishes. These are discussed further below.
The Complainant says that a Google search for “The Green Trust” revealed 148,000,000 results with the first 4 results and many later ones referring to the Complainant’s “The Green Trust”. It provides a print out of the first three pages of these results.
The Complainant has not provided any financial information about its “Green Trust”.
The Complainant says that the website associated with the Disputed Domain Name features various topics associated with banking and finance, such as loans, credit and banking. Furthermore, it says that when one accesses the Financing tab, for example, a number of sponsored listings related to this subject are reflected. Screen-prints of the landing page and Financing page are provided by the Complainant. It says that the selection of financial and banking related topics for the website was clearly with the Complainant in mind. It also says that it is noteworthy that many of the sponsored listings on the Financing tab (and also the Banking and Credit tabs) reference websites in South Africa, where the Complainant is located. One of the listings also features the Complainant. It says that this shows clearly the Respondent had knowledge of the Complainant’s GREEN TRUST marks and no doubt adopted the Disputed Domain Name to benefit from the Complainant’s reputation in it.
The Complainant says that in light of the substantial use of the GREEN TRUST trademarks by the Complainant since 1990 and the extensive advertising and promotion of the Complainant’s “Green Trust” initiatives, the Respondent could not have missed the existence of the Complainant’s rights when the Disputed Domain Name was registered. In fact, he “[c]learly . . .had knowledge of the Complainant and its THE GREEN TRUST marks” at the time of the registration of the Disputed Domain Name and subsequent use of it, which is demonstrated by the website references to the Complainant, and the products related to the banking industry within the geographic area where the Complainant operates.
Relying on all this material the Complainant says that the Respondent’s registration and use is in bad faith because (i) the Disputed Domain Name is the same as the Complainant’s trademark and (ii) the Respondent has made no attempt to use the Disputed Domain Name in respect of a bona fide offering of goods or services and (iii) the Disputed Domain Name was acquired by the Respondent with a clear intention to refer to the Complainant’s mark in order to capitalize on its reputation by diverting Internet users seeking information about the Complainant, to its website and earning a passive income from the sponsored links that appear on it. Such conduct demonstrates that the only purpose of the Respondent was to use the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to the website associated with it by creating a likelihood of confusion with the Complainant’s trade mark and to take unfair advantage from the well-known character of the trade mark for the Respondent’s profit.
Furthermore, the Complainant submits that a pattern of conduct is clearly apparent with regard the Respondent in the present case. The Complainant says the Respondent has a long history of registration of domain names comprising third parties famous trade marks in combination with generic terms, or misspelled. In this regard the Complaint as originally filed stated as follows “The Respondent has been the subject of at least 8 prior proceedings under the UDRP in which he and/or his business GNO, Inc was found to have abusively registered and used the trade marks of third parties. As demonstrated in the full list in Annexure 10, the Complainant asserts that paragraph 4(b)(ii) of the Policy also applies to the present case”. Following the filing of the Response in which the Respondent disputed most vehemently that this statement was factually accurate the Complaint lodged a supplemental filing (the” Supplemental filing”) which stated as follows:
“SUPPLEMENTAL FILING TO CORRECT TYPOGRAPHICAL ERROR IN COMPLAINT
1. Following receipt of the Respondent’s Response, Counsel on behalf of the Complainant realised that a typographical error regrettably occurred in Paragraph 22 of the Complaint under the heading dealing with Respondent’s bad faith. Reference to the 8 prior proceedings in the paragraph should be 3 prior proceedings, beingWIPO Case No. D2005-0681, NAF1380358 and NAF997923.
2. Also it appears that the UDRP search results reflecting these decisions were inadvertently not attached as part of Annexure 10, but instead the list referred to by the Respondent. The correct list is hereby attached.
Respectfully submitted” B. Respondent
The Respondent has produced a very detailed Response with accompanying documentary evidence, and set out numerous authorities in relation to its case. It is not necessary to repeat all that the Respondent has said here. The salient points the Respondent makes are as follows.
As an overarching point the Respondent says the term “green trust” is widely used by many persons to refer to environmental programs including trusts of one type or another, and no one person has a monopoly in the use of the words. It also says that such reputation and rights the Complainant has in the term “Green Trust” (and it challenges the Complainant’s claims in this regard) is in any event confined to Southern Africa.
The Respondent accepts that the Complainant “has shown that it has certain rights in “THE GREEN TRUST” for regional philanthropic activities conducted in locations remote from the Respondent”. He does not challenge the existence or date of the registered trademarks relied upon by the Complainant, but he does say that all other evidence produced by the Complainant as to activities concerning the “Green Trust” postdate the Respondent’s registration of the Disputed Domain Name.
The Respondent says that if a Google search is carried out in the United States in respect of “Green Trust” it produces millions of results with the Complainant’s “Green Trust” not featuring until the third page down in the results. The Respondent expressly sets out in the Response what he says are a few specific examples of other users of the same term found in these search results (and also says that many more can be found if required). The examples specifically identified are as follows:
GreenTrust Alliance
The Postcode Green Trust
Scottish Power Green Energy Trust
Global Deep Green Trust
Narroways Millenium Green Trust
St. Stephen’s Millenium Green Trust
Green Trust Cash
The Pratt Green Trust
Green-T
Green Trust Solutions
Green Trust Services
Green Trust energy consultancy
The Respondent also points out (with relevant details) that there are a number of registered trademarks in the United States for the term “Green Trust”, all postdating the Respondent’s registration of the Disputed Domain Name, and none of them have anything to do with the Complainant.
The Respondent says that when he registered the Disputed Domain Name in 2004 he had never heard of the Complainant or its “Green Trust” activities.
The Respondent fiercely disputes he has acted in bad faith and directly challenges the Complainant’s accusation of his having eight previous findings of abusive registration against him, which he characterizes as an “outright lie” and “purely libelous.”
The Respondent accepts that he did not reply to correspondence from the Complainant’s counsel, but says he was entitled not to do so, and no adverse inference should be drawn from that fact.
The Respondent makes many more points in support of his arguments but it is not necessary to consider those further – where relevant they are addressed below. 6. Discussion and Findings Procedural Matters
The Panel will allow the Complainant’s Supplemental Filing. It corrects an error in the Complaint - and that error was a matter that was hotly disputed by the Respondent. The Panel considers it to be in the interests of justice that an accurate factual record be considered. In any event admission of this filing does not alter the Panel’s decision in this case and hence causes no prejudice to the Respondent. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it owns a number of registered trademarks in respect of the term “Green Trust”. Although these trademarks disclaim rights in the individual words “green” and “trust” the Panel is satisfied that in relation to the two words when used together the Complainant has established it has rights in a trademark. The Panel holds that the Disputed Domain Name is identical to the GREEN TRUST trademark. It is well established that where the specific top-level of a disputed domain name (in this case “.com”) serves no purpose other than a purely technical one (contrast, for example, a domain name such as ), it may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In the present case the Respondent does not claim to have any rights in the term “Green Trust” except by having used that term for what he says is a “bona fide” parking page with sponsored links on it. The question of whether use of a domain name for a parking page itself establishes a legitimate interest is considered in WIPO Overview 2.0 of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) at section 2.6:
“Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?
Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In the present case the Panel finds that there is no capitalization upon the Complainant’s trademark value and is therefore inclined to find that the Respondent has established a legitimate interest. However, in view of the Panel’s finding on bad faith issues (see below) it is not necessary for the Panel to reach a conclusion on this issue. C. Registered and Used in Bad Faith
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered or used in bad faith. The Respondent says he had never heard of the Complainant or its use of the term “Green Trust” when he registered the Disputed Domain Name. Given the evidence before the Panel that account seems to the Panel to be entirely credible and the Panel sees no reason to doubt the Respondent’s statement. The term “greentrust” comprises two ordinary English words, “green” and “trust” which are conjoined. The Panel considers this conjoined term could readily be independently derived and sees no reason to doubt the Respondent’s account that this is what he did long before he had any knowledge of the Complainant.
In reaching this conclusion the Panel has considered the Complainant’s case that the Respondent must have had the Complaint’s use of the term “Green Trust” in mind when he registered the Disputed Domain Name. The Panel finds that case to be wholly unconvincing. The Complainant’s evidence as to the nature and extent of its reputation even within South Africa and adjoining territories is unsatisfactory in many respects. Specifically:
a. It is not entirely clear to the Panel that the term “Green Trust” is used by the Complainant as a trademark in the conventional sense in order to promote its business or its own products or services. It certainly is not used by the Complainant to promote directly the provision of banking or financial services under that name. On the evidence available it is used to refer to various activities of an environmental or philanthropic nature that are in some way promoted or supported by the Complainant, often in conjunction with a third party. If this was the only difficulty with the Complainant’s case the precise nature of the Complainant’s activities in this regard might merit further consideration – however in the light of the further difficulties with the Complainant’s case (below) the point is moot.
b. Although the registered trademarks relied upon date from 1990 it is far from clear to the Panel that the other evidence the Complainant has presented establishes use by the Complainant of the term “Green Trust” which predates the Respondent’s registration of the Disputed Domain Name. Certainly at least some of the promotional material relied upon is of a later date, as it contains references to specific events with dates later than 2004. The various domain names that the Complainant owns were all registered after 2004, which tends to suggest that its activities in relation to the “Green Trust” may postdate 2004 or at least be of a different and more extensive nature after that date. Overall the Panel is left in the dark as to the extent of the Complainant’s reputation even in South Africa in 2004 when the Disputed Domain Name was registered.
c. In many cases the term “Green Trust” is used in conjunction with other terms, such as “Nedbank”, or “World Wildlife Fund”. It seems to be commonly referred to as “The WWF Nedbank Green Trust”. The Panel is unable to assess with any confidence what reputation the Complainant has in the term “Green Trust” on its own.
However ultimately these issues do not matter. Even if the Complainant’s evidence is taken at face value all that it establishes is a reputation in the term “Green Trust” in South Africa and adjoining countries. This is implicitly acknowledged in the Complaint, which states at page 10, section 7: “ the Green Trust trade mark enjoys a substantial reputation not only in South Africa but also in many African countries.”
No case is advanced by the Complainant to suggest that it has had at any time any reputation outside Africa in the term “Green Trust” and no direct evidence is adduced to suggest why the Respondent, a domain name registrant in the United States, would or should have known of an entity that operates only in southern Africa or trademarks registered only in southern Africa. The Complainant’s case in this regard relies entirely on inference based on three matters.
The first is a Google search, which shows the Complainant’s Green Trust as being the most prominent result – again however the terminology varies with the first entry for example being for the “WWF Nedbank Green Trust”. In any event the Panel does not find this search convincing in establishing any type of reputation in areas outside Southern Africa. The search was clearly carried out in South Africa on Google’s local South African site, and as is well known the results obtained are likely to be influenced by where the search is carried out. Different results will be obtained elsewhere as is demonstrated by the Respondent who exhibits a Google search that he has carried out in the United States. Strikingly in the Complainant’s search the first page of results features multiple references to the Complainant’s “Green Trust” whilst in the Respondent’s search quite different entries are shown – the first entry for example concerns , which appears to be a United States business, while any entry relating to the Complainant (again as “WWF Nedbank Green Trust”) is not found until the third page.
The second limb of the Complainant’s inferential case is based upon the content of the parking page that is linked to the Disputed Domain Name. Again as is well known such pages are typically automatically generated by software that uses a range of factors including the lexicological significance of the terms making up the domain name to generate links to third party sites. They may also be generated “on the fly” and the content displayed may well depend upon the precise characteristics of the computer being used to access the page in question, including its geographical location and any “cookies” present in its caches. The Panel finds it entirely unsurprising that in this case the search results the Complainant has produced include links to sites (which appear to be South African, but are not sites of the Complainant) offering personal loans, accounting services, financing and refinancing services, and online financial education as well as a link to a site called “Nedbank Home Loans” which is presumably that of the Complainant (though not so far as can be discerned having any “Green Trust”-connection).
Finally the Complainant has also relied upon what it says is the Respondent’s conduct as a serial registrant of abusive domain names. The Panel finds the Complainant’s original case in this regard unsatisfactory and notes that no explanation has been provided as to how the double mistake (as to both the number of previous cases, and the content of the exhibited schedule) occurred, nor has any apology been offered, beyond an acceptance in the Supplemental Filing that the error was “regrettable”. Be that as it may, the case now advanced by the Complainant is that three previous findings against the Respondent show him to have a propensity for filing abusive registrations. One of these cases (Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc., WIPO No. Case D2005-0681) seems to the Panel to be finely balanced and one member of the three-member panel dissented from the majority decision (a point not pointed out by the Complainant in the present case). The two other cases (which concerned the domain names and ) are not in the Panel’s view sufficiently egregious in the context of the Respondent who trades in domain names and who owns a large portfolio of such domain names, as to lead the Panel to infer he is engaged in a deliberate business practice of registering domain names knowing them to be abusive. Certainly in the present case the other factors in the Respondent’s favour significantly outweigh the inference (if any) to be derived from these previous cases.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled. D. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” - see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Policy provides that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Rules, paragraph 15(e), call for this analysis even when the Respondent has not expressly requested a finding of abuse - seeTimbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork,WIPO Case No. D2013-1603.
The Panel considers that whether a finding of RDNH is appropriate depends upon whether or not the Complainant should have appreciated its case had no reasonable prospect of success. See WIPO Overview 2.0, paragraph 4.17.1 See also for example Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091 where the panel noted that whether a complainant should have appreciated at the outset that its complaint could not succeed, will often be an important consideration.
In the view of the Panel, the present Complaint is one where the case as advanced by the Complainant had no reasonable prospects of success. There are multiple defects in the case. The following are the most obvious:
a. The Complainant should have appreciated that establishing registration and use in bad faith in respect of a domain name which was a conjoining of two ordinary English words with obvious meanings relevant to environmental and financial products or services was likely to involve a factual situation where a wide number of persons were using those words as names and/or trademarks. The Complainant appears to have ignored this issue.
b. The Complaint is based upon evidence that at most establishes the Complainant had a reputation in the term “Green Trust” in South Africa and adjoining countries. There is no evidence at all of any reputation elsewhere in the world, nor indeed is there even any assertion that such a reputation exists. As such no case at all was advanced as to why the Respondent, who is based in the United States, either was, or should have been, aware of the Complainant or its “Green Trust”-operation.
c. Even a cursory search focused on international aspects should have enabled the Complainant to appreciate that there were numerous users of the term “Green Trust” in many different jurisdictions round the world and that there was no reason at all to conclude that the Complainant’s entirely southern African based reputation gave it any rights in the term outside its local area.
d. Instead the Complainant’s entire case was based on three inferential matters – (1) Google search results for the term “Green Trust”; (2) the contents of the parking page operated at the Disputed Domain Name and (3) the Respondent’s conduct in having a history of abusive registrations.
e. So far as the Google search results are concerned the Complainant’s case fails to take account of the fact that the results likely to be obtained are entirely dependent on where in the world the relevant search is carried out – the fact that a search carried out in South Africa prominently displays results relating to the Complainant does not mean a search carried out in other jurisdictions will have the same results, as the Respondent has convincingly demonstrated.
f. So far as the parking page is concerned the Complainant has failed to appreciate that the content displayed by such a page is likely to be automatically generated and depend upon a number of factors, including the lexicological significance of the words making up the Disputed Domain Name and the geographical location of the place from where the page is accessed. Given the fact that “green” and “trust” are ordinary English words with obvious direct relevance to environmental and financial products or services the Complainant should have appreciated that the search results in question do not establish that the Respondent had the Complainant in mind either when he registered the Disputed Domain Name or at any other time.
g. So far as the Respondent’s alleged history of abusive registrations is concerned the Complainant should have properly identified the numbers involved in its Complaint as originally filed and should then have appreciated that these alone were not likely to persuade a Panel to find in its favor.
Given the nature of the Policy and the fact that the Complainant was legally advised by competent counsel this was a case which the Complainant should have appreciated had no reasonable prospects of demonstrating registration in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Presiding Panelist
Tony Willoughby
Panelist
Richard G. Lyon
Panelist
Date: May 18, 2016
1 "WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP."
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