WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mission KwaSizabantu v. Benjamin Rost

Case No. D2000-0279

 

The Parties

The Complainant is Mission KwaSizabantu, a non-profit association with legal status, registered under the laws of Republic of South Africa and having its principal place of business at KwaSizabantu, District of Kranskop, KwaZulu-Natal, South Africa.

The Respondent is Benjamin Rost, an individual having the address at Handelsvertretung Rost, Dahlienweg 14, D-74417 DE, Gschwend, Germany.

 

The Domain Name(s) and Registrar(s)

The domain names at issue are:

kwasizabantu.com
kwasizabantu.org
kwasizabantu.net

The Registrar with which the domain names are registered is Network Solutions, Inc., having the postal address PO Box 17305, Baltimore, MD21297-0525, USA.

 

Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 11, 2000, and the signed original together with four copies was received on April 13, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant on April 14, 2000.

On April 12, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue were registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

On April 13, 2000, NSI confirmed by reply e-mail that the domain names <kwasizabantu.com>, <kwasizabantu.org> and <kwasizabantu.net> are registered with NSI, are currently in active status, and that the Respondent, Benjamin Rost, is the current registrant of the names. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on April 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of May 14, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís confirmation. In addition, the complaint was sent by courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." In any event, evidence of proper notice is provided by the evidence in the record of the Respondentís participation in these proceedings.

In response to a request to WIPO by email on May 14, 2000, WIPO determined that time was extended to May 21, 2000 for the filing of a response by Benjamin Rost. On May 20, 2000, WIPO received by email a Response and a hard copy confirmation was received by fax May 22, 2000.

On May 26, 2000, in view of the Respondentís election of a single member panel, WIPO Center appointed John Terry to serve as Panelist in Case No. D2000-0279, having received a Statement of Acceptance and a Declaration of Impartiality.

On May 26, 2000, the WIPO Center notified the parties that John Terry had been appointed as the Panel and set the projected decision date as June 8, 2000.

 

Factual Background

The Complainant does not assert that it is the owner of any registered trade marks or applications for registered trade marks in any countries but states that after it was established in South Africa in 1970, its activities had become known in many countries as activities of an organization known by the name "Mission KwaSizabantu", that the organisationís activities have been generally known with reference to the word "KwaSizabantu" and from 1970 that name became a trade mark of Mission KwaSizabanto. The Complainant states it is operating internationally in Netherlands, Belgium, Germany, Switzerland, Russia, Australia and Romania.

The Complainant also contends it is commonly known by the following names:

KwaSizibantu,
KwaSizabantu Mission,
Sizabantu,
KSB,
Mission KSB,
KSB Mission, and
KwaSiza.

The activities of the Complainant are that of a religious sect in which the Zulu language is stated to be that most commonly used. The word "KwaSizabantu" is said to be a Zulu word meaning "The Place Where People are Helped" and is only found in the Zulu language. The Complainant contends that the word "KwaSizabantu" is without meaning [other than in the Zulu language] except insofar as the word has meaning as referring to the Complainant.

The Complainant states that its primary business is to help and uplift people spiritually, socially and physically, and the people who have come for help are from all walks of life and are of many different nationalities and varied ages, backgrounds and interests. The Complainant states that the expansion of this organization and activities is included in the establishment of a complex of buildings in South Africa with on average 1,300 people per day staying at the complex or visiting the complex.

The Complainant states that in addition to the spiritual work, it is involved in some 27 projects including adult education and projects run on a commercial basis such as bottling mineral water. The Complainant lists some 18 specific project examples in its complaint and states that the projects have "their own trade names [and] they are closely associated with KwaSizabantu". The Complainant contends:

"In religious circles, anybody familiar with the name ĎKwaSibantuí will, when he/she sees the name, immediately associate it with the Complainant."

The Response includes Annex A being an extract from the home page of the Respondentís website. This evidence shows that the subject home page relates to "the South African mission, KwaSizabantu, situated in Krums Kop, KwaZulu/Nutal, South Africa" and states that responsibility for the home page rests with "former leaders, co-workers and followers of the South African based KwaSizabantu Mission and European branches who could not, in good conscience, before God and men, continue to agree with or be affiliated with the mission".

Except as noted below, the Response does not dispute the factual assertions summarised above but does make legal contentions referred to below and which relate to the interpretation to be given to the factual circumstances.

 

Partiesí Contentions

Complainant

The Complainant contends that the domain names are identical to the name or trademark by which the Complainant is generally known internationally and in which the Complainant has rights, that the Respondent has no rights or legitimate interest in respect of the domain names and the domain names were registered and are being used in bad faith.

Respondent

The Respondent contends that the Complainant does not "own any trademark or copyright on the name ĎKwaSizabantuí in any country" and that the name is generic, not owned by the Complainant and also used by other unrelated businesses. The Respondent contends that the domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights and asserts he is making a legitimate non-commercial and fair use of the domain names. The Respondent asserts the domain names were registered for and have been used for providing information about the Complainant and not "to mislead or divert consumers or to tarnish the service mark of [the Complainant]", that the domain names were not registered with the intention of disrupting the business of the Complainant and the "website reflects no business purposes or efforts (sic) for financial gain or competition with the businesses of [the Complainant]".

 

Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." This dispute concerns activities over a broad range of countries with the parties domiciled in different jurisdictions. The parties have not made any submissions as to any particular applicable laws. The Panel must therefore decide this matter applying appropriate general principles.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

  1. that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
  2. that the Respondent has no rights or legitimate interests in respect of the domain name; and,
  3. the domain name has been registered and used in bad faith.

The Respondent merely asserted that the name "KwaSizabantu" was generic and used by unrelated businesses but has not given any particulars or evidence to rebut the prima facie claim to the trademark ownership as set out in the Complaint. The Panel holds that the Complainant has established rights in the word "KwaSizabantu" as a trademark or service mark by virtue of its reputation and such rights would be enforceable at least in such jurisdictions as recognise common law rights or similar principles of law. The Panel finds that each of the domain names is identical to the trademark or service mark asserted by the Complainant since the suffix portion of the total domain name, i.e.<.com> or <.net> or <.org> does not characterise the domain name but refers to the top level domain in which the characterising unique name is to be found.

It is beyond the scope of the present adjudication to consider any such issues as the boundaries of free speech generally and the manner and extent to which a trademark in general may be used fairly and without infringement of registered trademark rights or in breach of other relevant principles of law directed at protecting consumers or protecting trademark ownersí rights. In the present matter, the Respondent has plainly used the best Internet vehicles to attract those wanting to and indeed expecting to find material associated with the Complainant. The Respondent is not simply using the Complainantís trademark in e.g. the body of material published such as might be legitimate, at least in some jurisdictions, in circumstances of comparative advertising or out of necessity to refer to the Complainant and/or its activities and characteristics. The domain names of the Respondent can be characterised as creating initial interest confusion even though closer inspection of the website will result in such initial confusion being displaced and deception avoided. However, such initial confusion is not enough for a Complaint to justify remedy under the Policy.

Paragraph 4(c) of the Policy sets out three non-limiting examples of circumstances which, if established to the satisfaction of the Panel, rebut a Complainantís assertion that the domain name owner has no rights or legitimate interests in respect of the domain name. The Respondent relies on circumstance (iii) of paragraph 4(c) which is in the following terms:

"[The domain name owner is] making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Paragraph 4(c) of the Policy places the onus on the Respondent to rebut a Complainantís assertion of lack of rights or legitimate interest in the domain name. The Panel construes circumstance (iii) to the effect that the Respondent must establish:

  1. his use is legitimate non-commercial or fair use of the domain name. It is not enough under this requirement for the Respondent simply to show there is fair use of a trademark e.g. in a website but the Respondent must satisfy the Panel there is either legitimate non-commercial use or legitimate fair use of the domain name itself; and
  2. his use is without intent for commercial gain; and
  3. his use is without intent to misleadingly divert consumers; and
  4. his use is without intent to tarnish the trademark or service mark at issue.

The admitted nature of the use of the domain names in a website includes alternative views and indeed critical views concerning the Complainant and its activities. The Panel holds such activity amounts to tarnishing the activities associated with the trademark or service mark "KwaSizabantu", and this is sufficient to fail point (d) of the test. Therefore, the Respondent does not establish any rights or legitimate interests under the express circumstances of paragraph 4(c).

The Panel further holds that the Respondent has failed to establish that he has otherwise any rights or interests legitimate in terms of paragraph 4(c) since the effect of using each of the domain names in issue is to attract into any website to which the domain name resolves persons who believe and expect they will be accessing material from the Complainant; the Panel holds this is not legitimate use of the domain name in issue. The Respondent does not establish any other basis for otherwise rebutting the Complainantís case that the Respondent has no rights or legitimate interest in respect of the domain name.

The third requirement under paragraph 4(a) of the Policy is that the Complainant establishes that the domain name "has been registered and is being used in bad faith". Paragraph 4(b) sets out exemplary but non limiting circumstances which if found are deemed to constitute registration and use of a domain name in bad faith. Circumstance (i) does not apply as there is no assertion by the Complainant that the Respondent has registered any of the domain names for the purpose of selling, renting or otherwise transferring a domain name registration. Circumstance (ii) is not established; although the Complainant has asserted that the names were all registered on 1 February 2000 for a purpose of preventing the Complainant from reflecting its own name in a corresponding domain name, circumstance (ii) also requires that there be proof that the Respondent has engaged in a pattern of such conduct. There is no assertion or proof of any such pattern of conduct. Circumstance (iv) only applies where it is shown that the intent of the Respondent in using the domain name was to attract the users "for commercial gain". The Panel holds that the evidence of the Respondent is sufficient rebuttal, if indeed rebuttal is required; paragraph 18.5 of the Complaint does not plead that the activity of the Respondent was for commercial gain.

A critical circumstance is in paragraph 4(b)(iii) in relation to the present matter, namely whether the Complainant has shown that the Respondent has registered the domain name "primarily for the purpose of disrupting the business of a competitor". The Policy does not define who is a "competitor" for the purpose of the paragraph, i.e. is it a competitor of the domain name owner or a competitor of the Complainant? Neither does the paragraph define what is encompassed by the expression "business of a competitor". There is no reference to the business being one where trade is conducted for commercial gain. For this reason and because of the context of paragraph 4(b)(iii) as an example within the general heading of "bad faith", the Panel holds that the expression "business" must be liberally construed to cover activities concerning the supply of some goods or services and in respect of which a reputation may be gained. The activities of the Complainant are held to come within the ambit of this term. Regarding the word "competitor" similarly, the Panel holds that this term naturally should be read as relating to the "competitor" of the domain name owner. The natural meaning of the word "competitor" is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor. The Panel holds that the Respondent meets this definition and therefore paragraph 4(b)(iii) now turns upon whether the Complainant has established that the activity of the Respondent was "primarily for the purpose of disrupting" the activities of another.

On the admitted facts and in particular Annex A to the Response setting out an extract from the website, it is plain that the intent and indeed the effect of the website is to publish to a reader highly negative views which inevitably have a propensity to undermine any prior favourable views that the visitor to the website might have previously had. Plainly the Respondent in registering the domain names and establishing his website has used the best vehicle known to him of securing publicity for the website information on the Internet and has done so in a manner which inevitably brings visitors to the website who had an intention to find out authorised information about the Complainantís activities. The activities of the Respondent, as demonstrated by its website, is therefore disruptive of the activities of the Complainant. Both parties recognised rights of free speech and commentary. The Respondent could have made its publications otherwise than in the present manner but chose not to and the Panel holds that on the evidence, a primary effect of the Respondent in registering and using the domain names has been to have a disruptive effect on the activities of the Complainant, the Panel infers this was a primary purpose of the Respondent and it is no rebuttal for the Respondent to assert that any disruption is merely a consequence of him publishing his view of the truth. In the light of the Panelís determination of the way in which paragraph 4(b)(iii) should be construed and the facts of this matter, the Panel holds that bad faith has been established in terms of that paragraph 4(b)(iii) of the Policy.

Had the Panel ruled otherwise in relation to paragraph 4(b)(iii), that would not be the end of the matter as the four circumstances are not limiting and the Panel would have to consider whether registration and use by the Respondent was within the general expression "in bad faith". The Policy does not define "bad faith" and none of the prior decisions reviewed by the Panel under the ICANN procedures seek to make such a definition. If the Panelís interpretation of paragraph 4(b)(iii) above were to be held to be too wide and as a consequence the Complainant had not made out its case, then the Panel would still find that the requirement for registration and use in that bad faith had been made out on the ground that the actual use of the domain name in fact achieved the purpose of disrupting activities of the Complainant and the primary purpose of the Respondent (not rebutted in the Response) in choosing the present domain names was to cause the persons seeking information on the Complainantís activities to be drawn into the Respondentís website and thereby to be exposed to contrary and critical views. The Panel holds that bad faith in terms of paragraph 4(a)(iii) is established, it being no answer that the content of the website is offered in good faith. This determination is reinforced by the facts that visitors to the website are exposed to the Respondentís views and his continued ownership and use of the domain names is a barrier to the visitor finding out the information and views of the Complainant which is denied the opportunity to have a domain name in the most popular Registry where persons can be most expected to go at first instance to try and find a relevant website.

 

Decision

For all of the foregoing reasons, the Panel decides that the domain names at issue are identical to the trade mark or service mark which had previously been used by the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the domain names at issue have been registered and are being used in bad faith. Accordingly, the Panel requires, pursuant to paragraph 4(i) of the Policy, that the domain names at issue be transferred to the Complainant.

 


 

John Terry
Sole Panelist

Dated: June 7, 2000