The Complainant is The Association of the Timbavati Private Nature Reserve of Lyme Park, Sandton, South Africa, represented by Schreuder Attorneys, South Africa.
The Respondent is Micha Wacquier, Puur Investments (Pty) Ltd of Cape Town, South Africa. 2. The Domain Name and Registrar
The Disputed Domain Name, , is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Center received an informal email communication from the Respondent on May 15, 2018. On May 21, 2018, the Center received an informal email communication from a third party. The Parties did not settle. As no formal response was forthcoming, the Respondent was in default and the Panel was appointed.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on June 11, 2018. 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 following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of a response rebutting them, can be accepted as background facts to the extent reasonable.
The Complainant is The Association of the Timbavati Private Nature Reserve which was established in 1956. In terms of its constitution, its main purpose and concern are "the nature conservation and promotion of the conservation of biodiversity of the reserve, management of its ecosystem, landscapes and species population and to serve its ecological interests".
The Complainant is a voluntary organization and is comprised of more than 50 members who together make up the Association of the Timbavati Private Nature Reserve and whose land together forms the Timbavati Private Nature Reserve which is a protected area in terms of legislation. The Complainant was invited to become an integral part of the Greater Kruger National Park in 1993. There are some 12 lodges on the reserve, and the Timbavati Private Nature Reserve is a renowned private game reserve in South Africa, highly regarded by the public.
The Complainant has made extensive and worldwide use of the trade names "Timbavati" and "Timbavati Private Nature/Game Reserves", and trademarks with those names, since 1956 and is the owner of registered domain names incorporating the names "Timbavati" and "Timbavati Game Reserve". The Complainant claims common law rights derived from the use of the trade name "Timbavati" and "Timbavati Private Nature/Game Reserves" on a continuous basis since 1957.
The Complainant has put up a considerable body of documentation by way of annexures to the Complaint displaying the nature of its business and what is available publicly.
It also draws attention to the fact that pursuant to another dispute resolution proceeding, it had transferred to it the domain name in 2015 and had before that registered the domain name in 1998.
The Disputed Domain Name was registered on September 10, 2015, and resolves to a website featuring content related to destinations in South Africa including, inter alia, the Complainant's game reserve. 5. Parties' Contentions A. Complainant
Apart from the registration and use of domain names incorporating the name "Timbavati", the Complainant puts up evidence as to its extensive use of "Timbavati" and protests that the Respondent appears to not only recreate the look and feel of the Complainant's website to which the Complainant's own domain name resolves, but also, by reason of the incorporation of the name "Timbavati" in the Disputed Domain Name, is using a domain name that is identical, or at least confusingly similar to the Complainant's mark (with a result that is tantamount to a misrepresentation by the Respondent). The Respondent holds itself out to be the Complainant or in some way linked with the Complainant, in order to take advantage of the Complainant's good name and reputation by marketing accommodation in the Complainant's reserve. It has also put up evidence in that regard.
The Complainant further alleges that, on October 24, 2017, the Complainant's attorneys sent the Respondent a letter of demand requiring, among other things, that the latter cease the use of the Disputed Domain Name and provide the Complainant with an undertaking that it would transfer the Disputed Domain Name to it. In response, the Respondent employed legal advisors who replied by suggesting that the Respondent's use of the Complainant's trade name on its website was a reference point in a number of contexts and that there was no intention to infringe.
The Complainant also avers that there is a false representation by the Respondent on its website that it is linked to the Complainant's reserve because of a welcome expressed to that game reserve, i.e., "Welcome to Timbavati Game Reserve", which it has later replaced with the heading "Timbavati Reservations". Thus it follows that the Respondent purposefully operates its website in an attempt "not only to seek to affiliate itself to the 'Timbavati' and 'Timbavati Private Nature/Game Reserve' trademarks but to also derive economic benefit" by using the Complainant's marks in bad faith.
The Complainant further avers that the registration and use of the Disputed Domain Name were clearly in bad faith, having regard to the circumstances, i.e., the adoption of the name without any permission, authority or link to the Complainant, and unfairly disrupts its business for gain and, in turn, diverts income by securing bookings for which it would charge would-be clients. B. Respondent
Apart from the informal email received by the Center on May 15, 2018, in which the Respondent stated "[it] will consider a reasonable offer for the domain in question and transfer it into [the Complainant's] name", the Respondent did not choose to put up a formal response or raise a defense to the Complainant's contentions. The Parties did not settle the matter. 6. Discussion and Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"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;
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate a respondent's rights or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii) of the Policy.
Notwithstanding the fact that the Respondent has not submitted a formal response, the Complainant bears the burden of proof in respect of each of the three elements of paragraph 4(a) of the Policy referred to above.
In the circumstances, the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v. Global Net 2000 Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons Inc. v. Domain.Contact,WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA,WIPO Case No. D2011-0049; VKR Holding A/s v. A Domain Privacy/Host Master, Transure Enterprise Ltd.,WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc, supra; RX America LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v. A Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra,WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc,WIPO Case No. D2012-1213). B. Identical or Confusingly Similar
The Complainant has been using the "Timbavati" trade name since prior to the registration of the Disputed Domain Name. The Complainant put up details of its use of its trade name as well as the domain names it owns.
The Complainant avers that it is the proprietor of the "Timbavati", "Timbavati Reserve" and "Timbavati Private Nature/Game Reserve" trademarks, and that the Timbavati Private Nature Reserve is a game reserve and a protected area in terms of the National Environmental Management Protected Areas Act 67 of 2003, as amended. The Complainant's reserve was originally proclaimed a game reserve under Government Gazette Proclamation No. 228 of 1962. The Complainant has submitted evidence of the use of its mark on its website, which describes, inter alia, the formation of the Complainant in 1956.
Under the circumstances, the Complainant's claim to common law or unregistered rights in the "Timbavati Reserve" and "Timbavati Private Nature/Game Reserves" marks (the "Mark(s)") is well founded. (See also, Fairhaven Country Estate (Pty) Ltd v Harris and Another, 2015 (5) SA 540 (WCC)).
The fact that the "Timbavati Reserve" Mark has been incorporated entirely into the Disputed Domain Name is sufficient to establish that they are identical or confusingly similar (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopking / Neo net Ltd,WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services,WIPO Case No. D2008-0016).
The fact that the Disputed Domain Name incorporates the most dominant elements of the "Timbavati Private Nature/Game Reserves" Mark is also sufficient to establish that they are confusingly similar.
The addition of the generic Top-Level Domain ".org" is generally not an element of distinctiveness that ought to be taken into consideration when evaluating the identity and/or confusing similarity of a complainant's trademark and the domain name (Magnum Piering, Inc. v. The Mudjackers and Garwood S Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh,WIPO Case No. D2008-1382).
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. C. 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 Disputed 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 Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish 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 Disputed Domain Name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, the burden of production on this factor shifts to the Respondent to rebut or displace the Complainant's evidence in this regard, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com., supra).
The Respondent has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established. (Kansai Plascon (PTY) Limited v. C/O Private Ranger Limited, Registrant of / Mike Goden,WIPO Case No. D2017-1848).
The Respondent has no right to the use of the Complainant's Marks as part of the Disputed Domain Name.
Moreover, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement in the Disputed Domain Name which might fall within that purview (Sybase Inc. v. Analytical Systems,WIPO Case No. D2004-0360).
The Complainant also contends that the Respondent is using the Disputed Domain Name for the purpose of misleading unsuspecting persons who react thereto while relying on the reputation of the Complainant.
Furthermore, it is obvious to the Panel that the Disputed Domain Name, is confusingly similar to the Complainant's Marks. (Sanofi v. Domain King,WIPO Case No. D2015-1799; Kansai Plascon (PTY) Limited v. C/O Private Ranger Limited, Registrant of / Mike Goden, supra).
In view of the facts and circumstances which are unchallenged, the Panel is of the view that the Complainant succeeds on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy. D. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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 bad 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 website 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 website or location or of a product or service on your website or location."
Bad faith can exist where a domain name contains in its entirety or the most dominant elements of a complainant's trademark or service mark.
The implication arising from the Disputed Domain Name, in the mind of a would-be customer, is therefore clearly that the Respondent's website is in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is misled to believe it is engaging in business with either the Complainant itself or someone authorized on its behalf in relation to its services. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use (Media24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551; Sanofi v. Domain King, supra).
The Complainant contends that the Respondent has not been given any permission to register or use any domain name incorporating the trade name of the Complainant. It follows, therefore, that the Respondent has no right to the use of the Marks as part of the Disputed Domain Name and that any unauthorized use for commercial purposes would most likely violate the Complainant's rights. (Guerlain S A v. Peikang,WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertain Corporation v. Japan Nippon,WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless,WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, supra; San Lameer, supra).
There is no authorization, relationship, or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in the Disputed Domain Name (Sybase Inc. v. Analytical Systems, supra).
Moreover, by use of the Complainant's Marks in the Disputed Domain Name, the Respondent is trading on the value established by the Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587).
The selection of a domain name that is confusingly similar to, the Complainant's Marks and the Complainant's domain names, together with the circumstances of this case, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore registered the Disputed Domain Name in circumstances where it was very well aware of the Complainant's reputation and intended to illegitimately benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Novartis AG v. Domains By Proxy, LLC/Manny Ghumman, WIPO Case No. D2014-0224).
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the third element of the Policy. 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 Disputed Domain Name, , be transferred to the Complainant.
Archibald Findlay SC
Sole Panelist
Date: June 13, 2018
Full & Egal Universal Law Academy