WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BWR Resources Ltd v. Waitomo Adventures Ltd

Case No. D2000-0861

 

1. The Parties

The Complainant is BWR Resources Ltd, a New Zealand corporation with its principal place of business at Waitomo Caves, New Zealand. The Complainant is represented by Mr. P. Dengate Thrush, Barrister, of Wellington, New Zealand.

The Respondent is Waitomo Adventures Ltd, also of Waitomo Caves, New Zealand. The Respondent, through J. D. Hardie & Co., Patent, Design & Trade Mark Attorneys of Auckland, New Zealand, claimed in an email dated September 21, 2000 that the World Intellectual Property Organization Arbitration & Mediation Center ("WIPO Center") had not served it with a Notification of Complaint and Commencement of Administrative Proceeding. On September 22, 2000, WIPO Center advised J. D. Hardie & Co. that the documents had been duly sent to the Respondent by email and courier to all the addresses provided by the Registrar and the Complainant. They were also advised that the Administrative Panel could decide in its discretion to allow the filing of a late Response. A further copy of the relevant documentation was sent as requested. J. D. Hardie & Co. acknowledged that the Respondent had received a copy of the Complaint from the Complainant on August 1, 2000. As at the date of this decision, WIPO Center has not received a request for the filing of a Response. The Panel has sighted documentation which indicates that the Respondent had received the Notification of Complaint and Commencement of Administrative Proceeding at 9 am on August 22, 2000 at Waitomo Caves. Accordingly, in the absence of a Response, the Panel is treating this complaint as undefended.

 

2. The Domain Name and Registrar

The domain name at issue is "blackwaterrafting.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI"). It was registered on September 28, 1999.

 

3. Procedural History

The Complaint submitted by BWR Resources Ltd was received on July 25, 2000 (electronic version) and July 31, 2000 (hard copy) by WIPO Center.

On August 11, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain name at issue is registered with NSI.

Confirm that the company identified as the Respondent is the current registrant of the domain name.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email 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 for the domain name.

Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

Indicate the current status of the domain name.

By email dated August 15, 2000, NSI advised WIPO Center as follows:

NSI had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name registration "blackwaterrafting.com".

Waitomo Adventures Ltd of Box 29, Waitomo Caves, New Zealand, is shown as the "current registrant" of the domain name "blackwaterrafting.com".

The administrative, technical, zone and billing contact is Diane Blackmore, Web Innovations Ltd, Suite 3, West Plaza, Grey Street, Tauranga, New Zealand.

NSIís 4.0 Service Agreement is in effect.

The domain name registration "blackwaterrafting.com" is in "Active" status.

NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is still "active", indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on August 17, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 5, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No Response was filed by the Respondent to which a Notification of Default was sent by WIPO Center on September 12, 2000. There then followed the email correspondence between WIPO Center and the Respondentís representatives detailed earlier.

On September 7, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On September 7, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On September 27, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on October 2, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by October 10, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant was incorporated on May 10, 1993 under the name Black Water Rafting Ltd. On March 27, 1998, it changed its name to BWR Resources Ltd, on which date another company called Black Water Rafting Ltd was incorporated.

The directors of both companies are and have been Messrs. P. C. Chandler and J. K. Ash. They pioneered the business of offering tours on rivers flowing through underground caves of which the Waitomo area has many. Customers were conveyed on rafts made of large motor vehicle inner tubes Ė the activity being called "cave tubing" or "cave rafting". Even before the incorporation of a company, the business being conducted in partnership by Messrs. Chandler and Ash was called "Black Water Rafting". The partnership applied to register a trademark for Black Water Rafting in 1988, but the application lapsed.

The Complainant owns New Zealand trademark 258573 for "Black Water Rafting". The trademark is registered as from its application date, February 8, 1996, and is currently in force. The mark is registered in international class 39 in respect of the following services: "arranging and conducting tours, escorting of travelers, such services being connected with the adventure tourism industry and in particular with cave tubing and cave rafting".

Although there are now six operators in the Waitomo area offering adventure tourism services, the Complainant is the only one using the words "black water rafting" in its promotional material. This Panelist is able to take judicial notice of the fact that Waitomo Caves is a relatively small and sparsely populated area, some 200 kilometers from Auckland. The Complainant has advised persons in the travel industry and the media of its right to use the name "black water rafting".

The Respondent was incorporated on July 2, 1993. Prior to incorporation, its proprietors offered a form of adventure tourism which involved abseiling into a cave. The operation was called "Lost World Adventures". It has other names for its offerings, such as "Pink Gumboot Cave Tour" or "Tumu Tumu Toobing".

In 1998, the Respondent registered the domain name "waitomo.co.nz" and established a website with a general heading "Waitomo Adventures", offering various adventure tourism activities. No mention was made of the Complainant or black water rafting in this website.

In 1999, the Complainant registered various domain names, including "blackwaterrafting.co.nz" which is used as a website for the Complainantís offerings. Later, it found on search that "blackwaterrafting.com" was held by an apparent cybersquatter. The domain name did not then access a site and the price sought for the name was extortionate.

In late 1999, the Complainant learned that the Respondent had acquired the name "blackwaterrafting.com". When the name was visited, it showed links to the Respondentís existing website with meta-tags to "black water" and "black water rafting".

The Complainant has documented two instances where potential customers have been attracted to the Respondentís offering of "Blackwater Fever" under "trip combo" data. "Blackwater Fever" is a combination of abseiling and cave tubing/rafting trips which are in direct competition with the Complainantís "Blackwater Rafting" product.

The Complainant wrote to the Respondent on February 2, 2000 complaining about the Respondentís conduct and sought a discussion. No reply has been received to that letter.

 

5. Partiesí Contentions

The Complainant submits that the Respondent registered and is using its mark, "black water rafting", in bad faith. It claims that:

(a) The domain name is identical to its mark.

(b) The Respondent has no rights or legitimate interest in respect of the domain name.

(c) Registration and use in bad faith is shown by:

(i) The purchase of the domain name by the Respondent in late 1999, after the Complainantís registration of the mark and after the Complainantís use of it in a small community and in an industry which has few players.

(ii) The impression that the Respondent was connected with the Complainant.

(iii) The Respondentís failure to reply to the Complainantís letter of February 2, 2000.

(iv) The fame of the mark in the context of a specialized adventure tourist industry in a rural area.

(v) The Respondentís website which clearly indicates a connection with the Complainantís product.

(vi) The Respondent offers services similar to those of the Complainant.

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

The domain name "blackwaterrafting.com" is, in the judgment of the Panel, identical to the Complainantís mark. The ".com" adds nothing and can be disregarded for these purposes.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary. The Panel so decides. The Respondent has offered no evidence that it is known by the name.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), 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 web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name "blackwaterrafting.com" in "bad faith" for the reasons set out in its summary of the Complainantís submissions. The Panel accepts that "registration" in the case of this Respondent refers to the date when it acquired the name from the person who first registered it. Moreover:

(a) The Respondent, as a competitor with the Complainant in a specialized industry in a small rural area, must have known of the Complainantís mark.

(b) The Respondentís attempt to divert persons seeking the Complainantís product has actually caused confusion, as shown in the documents from potential customers annexed to the Complaint.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "blackwaterrafting.com" has been registered and is being used by the Respondent in bad faith.

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Attempts to hi-jack names where a trademark has been registered and where the Respondent knew or must have known about the mark have met with little success. The decisions of New Zealand Courts, by which the parties would be bound, are to similar effect. See NZ Post Ltd v Leng [1999] 3 NZLR 919. The Respondentís actions might also fall foul of the common law tort of "passing off" and the ambit of section 9 of the Fair Trading Act 1986 (New Zealand).

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "blackwaterrafting.com" be transferred to the Complainant.

 


Hon Sir Ian Barker QC
Presiding Panelist

Dated: October 4, 2000


[Note from the provider: Issues related to those addressed in the above WIPO Case No. D2000-0861 appear to have been subject of a subsequent court case in New Zealand.]