The Complainant is The Trustees for the time being of the Nelson Mandela Foundation Trust of Johannesburg, South Africa, represented by Edward Nathan Sonnenbergs Inc., South Africa.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Rafael Trevisan, Trevis, Inc. of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2019, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 22, 2019. On February 22, 2019, the Center received an email communication from the Respondent.
The Center verified that the Complaint together with the amended 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 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. No formal response was filed with the Center.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 1, 2019. 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 Complainants are the Trustees of the Nelson Mandela Foundation Trust. The Trust was founded by the late Nelson Mandela in 1999 to contribute to the promotion of social justice. Programs it operates include the Nelson Mandela International Dialogues and the Nelson Mandela Annual Lecture series as well as many community based projects including Mandela Day held annually on July 18.
Amongst other things, the Complainants are the owners of registered trademarks for:
(a) NELSON MANDELA and device in South Africa, Numbers 1999/22179 – 22191, for a wide range of goods and services in International Classes 9, 14, 16, 18, 20, 24, 25, 27, 28, 35, 36, 41 and 42, which were filed on November 29, 1999;
(b) NELSON MANDELA in South Africa for goods and services in International Classes 16 and 35, Numbers 2004/17449 and 2011/29648, which were filed on, respectively, October 4, 2004 and November 17, 2011;
(c) NELSON MANDELA in the United Kingdom, Trademark No. 2391453, also for goods and services in International Classes 14 and 35 and which was filed on May 10, 2005; and
(d) MANDELA in South Africa for a wide range of goods and services in International Classes 14, 16, 36 and 41, Numbers 2004/17458, 2004/17460, 2004/17461 and 2011/29647 – the 2004 marks were filed on October 4, 2004 and the class 14 mark was filed on November 17, 2011.
The Complainants also have numerous domain names, the main one from which they operate being .
The Respondent1 registered the disputed domain name on September 26, 2000.
The disputed domain name resolves to a webpage which features a banner across the top. On the left of the banner is a circular device and the word “Mandela”, then headings or links for “Home”, “Download”, “Blog”, “Support” and “Contact”.
The “Home”, “Support” and “Contact” pages include another prominent banner or notice which states “Yeah, this page is under construction forever, however if you need support you always can send an email to support@” or variations on this message.
Although not reproduced in the printout annexed to the Complaint, the homepage also includes a Flash component above the “under construction” message which displays a rotating sequence of graphs such as “Alert Errors”, “CPU Usage” etc.
The footer of the homepage includes links for “Latest from the Blog”, “Useful Links” (with links to Oracle Technology Network, oradeep and VictorDBA.net), standard “Follow Us” buttons and “Join our Mailing List”. There is a copyright footer “Copyright © Mandela Inc. All rights reserved”.
Clicking on the “Downloads” link automatically downloads to one’s computer some software files including one called “mandela.exe”.
The Blog page has one post, apparently from February 2012, “Waiting for ‘PX DEQ CREDIT:SEND BLKD’?” This appears to be a technical discussion about ways to reduce the time for the named function to be carried out. The blog post includes a single reference to “Mandela” as a program which can be used to readily identify whether the user’s database is “expecting too much” for “PX Deq Credit:send blkd”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:
(i) the disputed domain name is identical 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The Panel notes that the Registrar has confirmed that the registration agreement is in English. The website to which the disputed domain name resolves is in English. Furthermore, the Second-named Respondent has also submitted a response in English.
In these circumstances, the Panel considers that it is appropriate to apply the default rule under paragraph 11 of the Rules. Therefore, the language of the proceeding is English. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of three sets of registered trademarks referred to in section 4 above for MANDELA, NELSON MANDELA and NELSON MANDELA and device.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective Parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.org” gTLD, the disputed domain name is identical to the Complainants’ trademark for MANDELA alone.
Applying the principles outlined in WIPO Overview 3.0, section 1.10, it is appropriate to disregard the device element of the NELSON MANDELA and device trademark and take into account only the verbal element.
On this basis, the disputed domain name is confusingly similar to the Complainants’ registrations for NELSON MANDELA and NELSON MANDELA and device.
Accordingly, the Panel finds that the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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 consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainants. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with Mr Mandela or the Complainants in any way. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The Complainants contend that the renown of Mr Mandela’s name around the world is such that confusion will invariably follow from its unauthorised use by the Respondent in these circumstances.
As the Complainants recognise, only the registered trademarks for NELSON MANDELA and device were filed before the disputed domain name was registered. For the reasons outlined above, the Panel considers the disputed domain name to be confusingly similar to that trademark. Although the trademarks for MANDELA alone and NELSON MANDELA were registered in 2004 and 2005 after the registration of disputed domain name, the renown of Mr Mandela in his name was well and truly established before the disputed domain name was registered.
Taken together, these factors are sufficient to establish a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
In his email in response to the Complaint, the Respondent states that “Mandela” is the name of some free software he makes available to assist people using SQL databases. He says that the name is just an acronym for “ Micro Advanced Normalized Database Exploring for Long Activities”. The Respondent denies disrespecting Mr Mandela’s memory or using his name or legacy to promote his software or website.
The nature of the Respondent’s website and the fact that a software program of that name can be downloaded from the website have been described above.
The first problem with this explanation is that the expression from which the Respondent says he derived the acronym does not directly describe anything. Read literally, it arguably suggests that a particular kind of database is exploring for “long activities”. As described (by a single reference) in the Respondent’s blog post, however, the software in question can be used to find delays in database processing. That might be “exploring”, but it is not the database that is “exploring”.
This leads to the second and main problem, the Respondent has not exposed how he came up with the expression which he derived the “acronym” from. He does deny seeking to take advantage of Mr Mandela’s name. On the evidence in this proceeding, however, it appears highly likely that the Respondent was very well aware of Mr Mandela and his legacy. There is no suggestion that “Mandela” has any significance as a descriptive or geographical term. As already noted, it is highly likely that many people encountering the name “Mandela” in 2000 would have associated it immediately with Mr Mandela. The late Nelson Mandela was of course very well and favourably known around the world. Amongst other things, his release in 1990 from his lengthy imprisonment was extensively covered by the media around the world, he was awarded the Nobel Peace Prize in 1993 with FW de Klerk and he was elected President of South Africa in 1994 on the ending of apartheid. It is highly likely that people browsing the Internet or otherwise coming across the disputed domain name would think of Mr Mandela.
Just as the appropriation of another person’s distinctive and widely known trademark for use as a personal email address does not confer rights or legitimate interests under the Policy (see e.g. C.S. Lewis (PTE.) Ltd. v. Richard Saville-Smith,WIPO Case No. D2008-0821) so, in the present case, its adoption for the name of software – even software made freely available – without permission does not confer rights or legitimate interests.
Accordingly, the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Therefore, the Panel finds the Complainants have established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd.,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
For the reasons outlined in section 5B above, the Panel has not accepted the Respondent’s explanation that the disputed domain name is simply derived from a descriptive expression. The name “Mandela” has no significance in relation to software of the kind in question. Rather, on the record in this case, the name’s significance lies in the fact that it is Mr Mandela’s name and the trademark of the Complainants. It appears therefore that the Respondent has appropriated the trademark for his own purposes unrelated to any activities authorised by the Complainants and without their consent. As the primary significance of the name “Mandela” is as the Complainants’ trademark, therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 6. 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 Complainants.
Warwick A. Rothnie
Sole Panelist
Date: May 15, 2019
1 As the first-named Respondent is the privacy service used by the second-named Respondent, the Panel will just refer to the latter as the Respondent unless the context requires otherwise.
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