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1. The Parties
The Complainant is Kalahari, A Division Of Nasboek
Ltd. (SA), 1 Neels Bothma Street
N1 City Business Park, Goodwood, 7463, Republic
of South Africa.
The Respondent Is Host Start Internet Services,
Inc., 5406 Bruce Street, Vancouver, BC V5P3M3, Canada.
2. The Domain Name and Registrar
The Domain Name is <kalahari.com>.
The Registrar is Tierranet, Incorporated.
3. Procedural History
The Complaint was received by WIPO on August 3,
2001. WIPO has verified that the Complaint satisfies the formal requirements
of the Policy, the Rules and the Supplemental Rules and that payment was
properly made. The Administrative Panel (“the Panel”) is satisfied
that this is the case.
The Complaint was properly notified in accordance
with the Rules, paragraph 2(a). Tierranet (“the Registrar”) has confirmed
that <kalahari.com> (“the Domain Name”) was registered through it and
that Host Start Internet Services, Inc. (“the Respondent”) is the current
registrant. The Registrar has further confirmed that the Policy is
applicable to the Domain Name.
On August 10, 2001 WIPO notified the Respondent
of the Complaint in the usual manner and informed the Respondent inter
alia that the last day for sending its Response to the Complainant and
to WIPO was August 31, 2001. On August 27, 2001 a Request for extension
of Response filing deadline was received by WIPO. On
August 27, 2001 an Objection was received by
WIPO from the Complainant. Further submissions were received from
the Respondent and Complainant regarding the extension on August 27, 2001.
On August 27, 2001 the objection was withdrawn by the Complainant and WIPO
granted the request for the extension. On September 10, 2001 the
Response was received by WIPO by email and in hard copy form on
September 11, 2001.
The Panel was properly constituted. The
undersigned Panelists each submitted a Statement of Acceptance and Declaration
of Impartiality and Independence.
No further submissions were received by WIPO or
the Panel, as a consequence of which the date scheduled for the issuance
of the Panel’s Decision is October 18, 2001.
On October 8, 2001 the Complainant sent by email
to the members of the Panel a further submission responding to the Respondent’s
response.
On October 19, 2001, upon the receipt of Panel’s
request, WIPO notified a revised decision date as October 25, 2001 to the
Parties.
4. Factual Background
The Complainant is a South African based online
service provider whose sole method of conducting business is via the Internet.
The Complainant has since 1998 marketed its products
and services under and by reference to the name Kalahari. It registered
the domain name, <kalahari.net>, on
April 7, 1998.
On a date prior to June 9, 1999 the Complainant
entered into an agreement with a company named Electric Ocean to acquire
the registration of the Domain Name which was at that time held by Electric
Ocean. However, before the transfer could be effected the registration
of the Domain Name was cancelled on Electric Ocean’s failure to pay the
fees. The Domain Name fell back into the public domain.
In June/July 1999 the Complainant filed applications
in South Africa for registration of the kalahari.net logo (a word and device
mark) in Classes 16 and 35.
In December, 2000 the Respondent, a Canadian internet
services company, registered the Domain Name.
On March 6, 2001 the Complainant’s Counsel sent
an email to the Respondent reading:
“Hi,
My name is Reinhardt Buys. I am interested
in the Domain Name www.kalahari.com <http://www.kalahari.com>.
Is it for sale and what will the price be?
Reinhardt.”
The Respondent did not reply.
On June 14, 2001 another representative of the
Complainant, Francis Cronjé telephoned the Respondent and spoke
to Dr. Kevin Ham of the Respondent with a view to acquiring the Domain
Name.
On June 18, 2001 Mr Cronjé emailed the
Respondent in the following terms:
“Good day, or depending on the time there,
good evening to you Kevin,
Possible Lease Agreement or Sale of Domain
Name kalahari.com
Hope you remember this, but it is with regards
to our telephone conversation on 14 June 2001. Have you guys had
the time to discuss a possibility of a Lease Agreement or maybe even a
possible sale of your Domain Name kalahari.com? I was hoping you
can maybe let me in on that, and maybe supply me with a proposition or
offer to that extent.
I appreciate your time and look forward
to hearing from you.
Regards, Frances Cronjé.”
The Respondent replied as follows:
“Frances,
We have been discussing this over the weekend.
We felt that this is a Domain Name we would not like to sell and if we
were to sell it, it would only be worth our while for a five figure value.
Leasing the domain would cover that over
a period of years if there was a buy out option.
If this falls within your budget, we would
discuss it in more detail. If not, I wish you the best on your online
ventures.
Sincerely
Kevin Ham.”
The Complainant did not respond to that last email
but instead initiated this complaint procedure.
5. Parties’ Contentions
A. Complainant
The Complainant claims common law trade mark rights
in the name Kalahari as a result of its trade under the name Kalahari.
The Complainant also relies on its trade mark rights in the mark kalahari.net
which it has applied to register in South Africa in Classes 16 and 35.
The Complainant says that it has done extensive marketing of its products
and services under the name Kalahari since 1998 “acquiring a reputation
uniquely associated with [its] common law trade mark and has further become
a well know business, relying on its credit worthiness. By [its]
functioning within the context of the undertaking, these factors have contributed
to the goodwill of the business, which serves as the object of an immaterial
property right, under the South African Common Law.”
The Complainant argues that the Domain Name is
identical to its name Kalahari and is confusingly similar to its trade
mark kalahari.net.
The Complainant also asserts that the Respondent
has no rights or legitimate interest in respect of the Domain Name.
The Complainant argues that the Respondent is not using and has not used
and is not demonstrating and has not demonstrated intent to use the Domain
Name legitimately in connection with a bona fide offering of goods and
services in commerce. The Complainant says that “although it seems
as if the Domain Name www.kalahari.com <http://www.kalahari.com> linked
to a specific site, a number of other domain names that are owned by the
Respondent also link to the same site, hiding the fact that the Respondent
is a cyber squatter…” The other domain names which link to the site
are <hawaiibigisland.com>, <travelshop.com> and <travelworld.com>.
The Complainant says that the Respondent will
not be able to “succeed in illustrating a claim that it is commonly known
by the name Kalahari in Canada.” The Complainant says that it is
known as Host Start Internet Services. “ … Neither the Respondent’s location
nor the contents on the site have any association with the Kalahari in
Southern Africa whatsoever. Finally, the Respondent does not have
any common law or registered trade mark rights in the name Kalahari…”
The Complainant goes on to say that the Domain
Name was registered in bad faith on the basis that it was registered or
acquired primarily for the purpose of selling, renting or otherwise transferring
the Domain Name Registration to the Complainant for valuable consideration
in excess of the Domain Name Registrant’s out of pocket costs directly
related to the Domain Name. The Complainant points to the Respondent’s
response to its approach in which the Respondent says that it would not
be prepared to sell the Domain Name for anything less than a five figure
sum. The Complainant also points to “the fact that the Domain Name
www.kalahari.com <http://www.kalahari.com> merely link and/or is a copy
of an existing site (sic).” This appears to be a reference to the
fact that the other domain names referred to above also link to the same
site.
The Complainant further asserts the Respondent
“has registered the Domain Name in order to prevent Kalahari, the owner
of the trade mark from reflecting the mark in a corresponding Domain Name
and has engaged in a pattern of such conduct.” The Complainant also
states that “by using the Domain Name, the Respondent has intentionally
attempted to attract, for commercial gain, internet users to its website
or other online location, by creating a likelihood of confusion with the
Complainant’s mark, as to the source, sponsorship, affiliation or endorsement
of its website or location or other product or service on its website or
location.”
Finally the Complainant accuses the Respondent
of engaging in morally reprehensible conduct linking the website at www.kalahari.com
<http://www.kalahari.com> “to other sites containing sexually explicit
language and pornographic content, tainting the Respondent’s claim of a
bona fide purpose and illustrating its use in bad faith. The Respondent
has done this by allowing pop-up menus in its programming language, catering
for the owners of pornographic content such as www.popuptraffic.com <http://www.popuptraffic.com>
who is also the owners of www.turbofind.com <http://www.turbofind.com>.
The Complainant says that it is well recognised that associations with
a sex site could be significantly damaging to other types of business.
The Complainant points to a previous WIPO Decision as authority for the
proposition that this type of behaviour is an aggravating element in consideration
of bad faith issues. The Complainant states that “the site www.kalahari.com
<http://www.kalahari.com> allows for sex and adult related searches
where web users can access hard core pornography without any adult verification
service whatsoever - this is a far cry from the apparent travel rated focus
of the site.”
B. Respondent
The Respondent contends as follows:
1. Kalahari is a common geographic term to which
the Complainant does not have exclusive rights under the policy.
2. The Complainant does not have a registered
trade mark for Kalahari but simply claims Common Law Rights as well as
rights based on a mere trade mark application. The Respondent states
that the Complainant does not have enforceable rights under the policy
in connection with either an unregistered geographic mark, an unregistered
mark which is merely a combination of a geographic mark and a generic word,
or a mere Trade Mark Application.
3. The Respondent had no knowledge of the Complainant’s
alleged trade mark when it registered the Domain Name so it is impossible
to establish bad faith registration.
4. The Complainant’s Trade Mark Application is
a design mark for its logo which contains art work not just the text kalahari.net
and thus does not resemble the textual component of the disputed domain.
5. Kalahari is the name of a desert in Africa
and the Respondent registered it to use in connection with is plan to develop
a website offering travel information about Africa including the Kalahari.$
6. Complainant’s present use of the Domain
Name in connection with links to general information also established its
rights for legitimate interest in and lack of bad faith registration and
use of the dispute Domain Name.
As to the allegation that the Respondent offered
to sell the Domain Name for a sum in excess of the Respondent’s out of
pocket expenses, the Respondent points out that the response was simply
a response to a unsolicited enquiry from the Complainant and when it was
made the Respondent had no idea of the existence of the Complainant or
its alleged trade mark rights, nor did it know that the request was being
made on behalf of the Complainant.
On this basis it cannot be said that the Domain
Name was registered with any mala fide intent toward the Complainant.
The Respondent’s submissions extend to no less
than eleven pages of text and no less than thirty-four citations of authority.
In light of the Panel’s decision and the basis
for it, it is unnecessary to expand further on the Respondent’s contentions
save to say that the Respondent has alleged that the complaint constitutes
Reverse Domain Name Hijacking.
The Respondent’s allegation in relation to Reverse
Domain Name Hijacking reads as follows:
“Complainant Has Engaged in Reverse Domain Name
Hijacking
Respondent respectfully submits that this is
a case of Reverse Domain Name Hijacking and, pursuant to Paragraph 15(e)
of the Rules, this Panel should declare in its decision that the Complaint
was brought in bad faith and constitutes an abuse of the administrative
proceeding. See e.g. ’Goldline Intl, Inc. v. Gold Line <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1151.html>,
Case No. D2000-1151 (WIPO April 3, 2001). First, Complainant has
no registered trademark for the geographic term KALAHARI, and a simple
review of relevant published decisions under the Policy should have informed
Complainant that it had no enforceable rights to a trademark for the purposes
of bringing this proceeding. It is telling that Complainant fails
to cite a single decision relating to unregistered geographic term marks.
Second, Complainant’s attempt to trap Respondent into offering to sell
it the Disputed Domain by i) hiding its identity; ii) acting as if though
it was a sincere inquiry; and iii) using it as a basis for establishing
bad faith after Respondent indicated its reluctance to the sell it the
domain name, is evidence of Complainant’s bad faith which should be condemned
by this Panel. Third, Complainant’s disingenuous attempt to characterize
Respondent as a pornographer is so utterly without merit, that it also
rises to the level of abuse of this proceeding.
It is respectfully submitted that this Panel should
strongly condemn this unscrupulous behavior as an abuse of the administrative
process. It is WRONG for lawful registrants of common word domain
names to have to suffer the expense and hardship of defending a frivolous
claim like this one, and it is incumbent upon this Panel to blow the whistle
on this abuse and send a message to other potential Complainants to think
twice about filing an action in a matter that, on its face, clearly does
not constitute abusive domain name registration. As one Panel has recently
noted with language that is quite appropriate here:
Of course, this very Complaint is a form of “cyberbullying.”
. . . it [is] troubling when a Complainant attempts to use this forum
to take away a domain name where any reasonable review of the ICANN Policies
and Rules would show that the Complainant’s case is extremely weak and,
more importantly, when it may well be that the Complainant holds greater
economic power and commands greater resources than the Respondent.
Maine Bait Company v. Brooks <http://www.arb-forum.com/domains/decisions/98246.htm>,
supra.”
C. The Complainant.
The Complainant’s further submission extends for
a further 1500 words the already very extensive submissions in the case.
It was filed out of time, but the Panel has nonetheless read it. It is
fundamentally flawed in that it fails to address the single most important
feature of the Response, namely the Respondent’s denial that it was aware
of the existence of the Complainant or its trade mark, when the respondent
registered the Domain Name.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the
Complainant must prove that
(i) The Domain Name is 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
interest in respect of the Domain Name; and
(iii) Domain Name has been registered and is being
used in bad faith.
If the Complaint fails, the Panel has to have
regard to paragraph 15(e) of the Rules and in particular the following
sentence namely: -
“If after considering the submissions the Panel
finds that the Complaint was brought in bad faith, for example in an attempt
at reverse domain name hijacking 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 and abuse of the Administrative
Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph
1 of the Rules as meaning “using the Policy in bad faith to attempt to
deprive a registered domain name holder of a domain name.”
Identical or confusing similarity
In light of the Panel’s decision in relation to
bad faith registration and use it is not necessary to investigate in detail
the extent of the Complainant’s rights in relation to the names or marks
KALAHARI and KALAHARI.NET.
Rights or legitimate interest of the Respondent
In light of the Panel’s decision in relation to
bad faith registration and use, it is not necessary to investigate in detail
the extent of the Respondent’s rights in respect of the Domain Name. However,
it is right to record that the Panel was not at one on this point. One
panelist took the view that “the Complainant has probably done enough to
establish that the Respondent has no rights or legitimate interests in
respect of the Domain Name, which is essentially a geographical term”,
while another is of the view that “under both US and Canadian law, a person
who acquires a domain name in good faith does have rights and legitimate
interests in that name as a default matter, regardless of whether it's
a geographic term or not.” The third panelist has not expressed a view
in the matter.
Bad Faith
Even if the Complainant were to have succeeded
under paragraphs 4(a)(i) & (ii) of the Policy, the Complaint as regards
paragraph 4(a)(iii) to the effect that the Domain name has been registered
in bad faith and used in bad faith cannot succeed.
The Respondent has denied that at the time it
registered the Domain Name it knew of the existence of the Complainant
or its trade marks. The facts are that the Complainant, based in South
Africa, commenced ‘marketing’ (whatever that may mean) its products and
services on line in 1998. The Complaint contains little if any evidence
as to the nature and extent of that marketing. The Complainant’s revenue
figures are low and the Complainant’s site seems to be directed almost
exclusively the South African market. The Respondent, operating out of
Canada, registered the Domain Name in December 2000, if the Whois record
attached to the Complaint is correct. There is nothing in the Complaint
to suggest why the Respondent might have known of the existence of the
Complainant.
All the examples of cybersquatting set out in
paragraph 4(b) of the Policy involve the Respondent, at the time of registration
of the Domain Name, targeting the Complainant in some way, whether it be
with intent to damage the Complainant, to extract money from the Complainant
or to derive some unfair benefit on the back of the goodwill of the Complainant.
While the list of examples set out in paragraph
4(b) is said to be non-exhaustive, the Panel knows of no circumstances
in which a respondent ignorant of the existence of the complainant and
its trade marks can be said to have registered the domain name in question
in bad faith.
The Panel finds that the Complainant has failed
to prove that the Domain Name was registered in bad faith and is being
used in bad faith.
7. Decision
The Complaint is dismissed
1. Reverse Domain Name Hijacking
In the view of the Panel, this Complaint should
not have been filed. The Complainant ought to have known at the time of
the pre-complaint communications between the parties that the Respondent
was not a cybersquatter.
Given the nature of the Response and in particular
the Respondent’s denial that it was aware of the existence of the Complainant
and its trade marks at the time of registration of the Domain Name, the
further submission should not have been made by the Complainant unless
it was to address that issue.
If the Panel had been persuaded that the Complainant
had deliberately set out to abuse this administrative procedure, the Panel
would have had no hesitation in condemning the Complainant and upholding
the Respondent’s claim of Reverse Domain Name Hijacking. As it is, the
Panel is uncertain in the matter and consequently has no alternative but
to put the ‘abuse’ down to incompetence.
Tony Willoughby
Presiding Panelist
Samuel K.B. Asante
Michael Froomkin
Panelists
Dated: October 25, 2001
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