WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Randgold Resources Limited and Randgold & Exploration Company Limited v. Pico Capital Corporation

Case No. D2001-1108

 

1. The Parties

The First Complainant is Randgold Resources Limited, a Jersey corporation with its principal place of business at St Helier, Jersey, Channel Islands. The Second Complainant is Randgold & Exploration Company Limited, a South African corporation with its principal place of business at Johannesburg, South Africa. The Complainants are represented by Mr. N.D. Dundas of John & Kernick, Attorneys of Midrand, South Africa.

The Respondent is Pico Capital Corporation of Sarasota, Florida, U.S.A. The Respondent is represented by Mr. Mike Beck, its Chief Executive.

 

2. The Domain Names and Registrar

The domain names at issue are <randgold.com>, <randgold.net> and <randgold.org>. The domain names are registered with Network Solutions Inc. of Herndon, Virginia, U.S.A. ("the Registrar"). The domain names were registered on February 18, 1999.

 

3. Procedural History

The Complaint submitted by the Complainants was received on September 10, 2001, (electronic version) and September 12, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On September 14, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

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

Confirm that the domain names at issue are registered with the Registrar.

Confirm that the person identified as the Respondent is the current registrant of the domain names.

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 building contact for the domain names.

Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.

Indicate the current status of the domain names.

By email dated September 18, 2001, the Registrar advised WIPO Center as follows:

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

It is the Registrar of the domain name registrations <randgold.com>, <randgold.net> and <randgold.org>.

The Respondent is shown as the "current registrant" of the domain names.

The administrative technical and billing contact is also the Respondent.

The UDRP applies to the registration.

The domain name registrations <randgold.com>, <randgold.net> and <randgold.org> are currently Ďactiveí.

The Registrar 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") (hereinafter simply the "Policy").

The advice from the Registrar that the domain names in question are Ďactiveí indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on September 19, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. 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.

A Response was received by the WIPO Center from the Respondent on September 20, 2001, by e-mail and September 25, 2001, in hard copy.

The Complainant elected to have its Complaint resolved by a one-person panel. The Respondent elected to have the Complaint resolved by a three-person panel. Both parties have paid the requisite sums to WIPO Center.

WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. Henri Alvarez of Fasken Martineau DuMoulin, LLP, Solicitors, of Vancouver, British Columbia, Canada, and Mr. Archibald Findlay SC, of Durban, South Africa, to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.

All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On October 11, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by October 24, 2001. Moreover, because of the later filings by the parties the time for forwarding the decision has had to be extended.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

Without seeking the prior consent of the Panel, the Complainant sought to file a Reply in the Response. The Panel decided to admit this Reply but gave the Respondent three working days within which to reply to any fresh matters raised in the Reply. Respondent availed itself of this opportunity. All submissions filed have been considered by the Panel.

 

4. Factual Background

The First Complainant was incorporated in August 1995, to engage in the exploration and development of gold deposits outside of South Africa, with an emphasis on sub-Saharan Africa. It was listed on the London Stock Exchange in July 1997, and is a subsidiary company of the Second Complainant. South Africa is the largest producer of gold in the world, producing some 30% of the worldís total demand. It has reserves estimated at 40,000 tonnes.

The main gold-producing area in South Africa is in the Witwatersrand Basin, which has been mined for 100 years. This area is commonly referred to as "the Rand". Rand Mines Limited, in 1992, unbundled its interests to create, inter alia, the Second Complainant, which has also diversified into other minerals.

The name "Randgold" is a combination of the last syllable of the word "Witwatersrand" and the word "Gold". It is identified throughout the world with both Complainants. The First Complainant is a significant international producer of gold not only in South Africa, but in other African countries. The First Complainantís operating profit for the first quarter of 2001, is of the order of US$10.6 million.

The Complainants first began using the Randgold mark in South Africa in 1995. The mark is well-known within the gold mining industry and in West and Southern Africa.

The Complainants filed applications for its trademark "Rand Gold" in South Africa. The documents annexed to the Complaint show trademark applications received for registration in South Africa on October 16, 2000, and in Australia on February 21, 2001.

An exhibit to the Complaint refers to numbered trademarks in Tanganika, United Kingdom and United States, but there is no indication as to whether these references are to applications and, if so, to what date an application was made or whether trademark registration has been accorded in all or any of these particular jurisdictions. One should have thought that the Complainants, in a matter of this importance, would have gone to the trouble of exhibiting the full particulars of the trademark situation at least in the United States of America where the Respondent is based.

 

5. Parties Contentions

Complainant:

The Complainants have extensive rights to the mark "Randgold" both as a registered mark (as to which there is no proof of actual registration anywhere) and at common law: the words "Rand" and "Gold" apply to the goldmining industry and the word "Rand" has been used since the 19th century to indicate goldmining in South Africa. The Respondent has no right to use the name. The use of all of the domain names in issue will confuse the public and indicate that the Respondent has been endorsed by the Complainants. The domain names are identical to the Complainantís mark.

The Respondent has registered as domain names also <goldfields.net> and <goldfields.org>. Goldfields is a South African mining house which has built up rights through its name.

The Respondentís website was instituted in anticipation of the administrative proceedings in an attempt to create an impression that it has a demonstrable right to the "Randgold" name.

The Respondent alleges in its website that it has mining interests in the U.S.A. and West Africa. The Complainants contend that these mining interests are merely "smokescreens" to create the impression that the Respondent has a legitimate interest in the name "rand gold", which it does not. The Respondentís website is of bad quality with little information about the Respondentís operation staff, location and other activities.

A Dun & Bradstreet report obtained by the Complainants (the information in which has not been denied by the Respondent) states that there is no company incorporated in the U.S.A. doing business in Florida under the name "Randgold Inc". The report further revealed that the Respondent was involved in investment banking, with Mr. Beck being its only employee and Chief Executive Officer.

In an email from the Respondent, Mr. Beck stated to the Complainants that:

"Increasingly we have been receiving at our website www.randgold.com emails (and telephone calls) from a number of persons contact or further information on Rand Gold resources. The level of traffic is becoming a bit burdensome."

Later in the email, the Respondent offered to relinquish the domain name for US$30,000.00. The Complainants submit that the Respondent has registered and used the domain name in bad faith.

Respondent:

The Respondent in its Response states it has been active in the goldmining and exploration industry since 1985: since that time, Mr. Beck has been a co-founder, director and investor in a number of goldmining and exploration companies which he lists, alleged to have been publicly traded on either the Canadian or Australian Stock Exchanges. Some of the companies no longer exist as a result of merger or acquisitions or change of name, but their public records "exist to confirm my prior involvement in each of the above companies as a co-founder, investor and director". However the Respondent has not provided any documentation to prove these assertions.

Mr. Beck further claims to have been a co-founder, director or principal shareholder in a range of privately held companies engaged in gold exploration and mining, including Randgold U.S.A. Inc. and Randgold Limited. According to the private investigatorís report, no such companies exist in the United States.

Mr. Beck claims that the interests in these private companies have been in his personal name or through a holding company such as the current Respondent, that his personal income from these activities has varied between approximately $1 million to $8 million per annum and is his main source of income. Since 1988, he has held indirect interests in 25 mineral concessions in more than 10 companies, many in West Africa; he has been involved in West Africa long before the Complainant extended its business out of South Africa and West Africa.

Mr. Beckís intent in registering the domain names at issue was "to preserve the names in anticipation of their use in connection with future activities of my various private gold exploration companies, including Randgold USA Inc. and Randgold Limited. The same is true of my registration of the domain name <goldfields.net> and <goldfields.org>. I did not register the domain names with the intent of selling them at a profit".

He did not initiate contact with the Complainant about the sale of the names and agreed only to sell them for $30,000, when pressed.

The Complainantís assertion of confusion is not supported in that the Respondent has received only five misdirected emails over the past year.

The Respondentís gold interests are mainly in Ghana whereas the Complainantís are mainly in South Africa and Mali. The Respondent has a well-documented history of activity in the gold industry in sub-Saharan Africa long before the Complainant extended beyond South Africa.

Supplementary Pleadings

In its Reply, Complainants point out that the issue is not whether Respondent has interests in the goldmining industry, but whether Respondent has any rights or legitimate interests in the disputed names.

Complainants point out the lack of evidence to support the existence of the companies named in the Response. The existence of the companies bears no relevance to the dispute.

As to the Respondentís claim of lack of confusion, Complainants point to his email of March 5, 2001, in which Mr. Beck refers to the number of emails and telephone calls from persons seeking contact with the Complainant, including "Canadian/Aussie/African persons and companies with African-based exploration projects"; "The level of traffic is becoming a bit burdensome".

In the further Response, Respondent asserts Mr. Beckís long involvement in the goldmining industry and claims that this involvement gives him a legitimate interest in the domain names.

Mr. Beck invites the Panel to search public databases and/or search historical records for evidence of his involvement as an officer or director. He invites the Panel to contact named persons to confirm his long association with goldmining in Ghana.

He denies the confusion point but does not reconcile that assertion with his email quoted above.

He claims that because of his association with the goldmining industry since 1985, in sub-Saharan Africa, he has every right to the domain names and characterizes Complainants as a "sore loser crying foul to the Panelists in an attempt to expropriate what quite clearly is not theirs".

 

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;

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

- The domain name has been registered and used in bad faith.

In the view of the Panel, the disputed domain names are identical to the Complainantís common law mark Randgold and also to the pending registrations for that mark in South Africa and Australia. In the absence of better particulars, the Panel cannot assess the names against the trademark registration applications or whatever they are, in the three other countries named. The Panel notes that it was beholden on the Complainants to prove their case. A common law mark has been clearly established by the Complainantís use of the word Ďrandgoldí in association with their gold mining activities over many years.

With regard to the second criterion, clearly no right or license was given by the Complainants to the Respondent to use the name Randgold. In view of the uncontested evidence of the enquiry agent that no company exists under this name in Florida, one would have thought that the Respondent should have produced some evidence of incorporation of a company under the name Rand Gold. He has failed to do so. It may be that a website of Randgold was created by the Respondent but there is no suggestion that it is attached to any particular business trading under the name of Randgold. It is not good enough for a Respondent to invite the Panel to check public records or contact named individuals. It would be quite wrong for the Panel to do so. A party is under a duty to produce evidence in support of its case. It is not for the Panel to undertake an inquisitional role. Respondent has chosen to produce not one document in support of its assertions.

Even accepting that Respondent (or more correctly Mr. Beck, who is not the Respondent) did have involvement in the goldmining industry in Ghana, it is clear that the word "Rand" is associated worldwide with South African goldmining. Respondent has offered no explanation for using the word "Rand".

The Panel finds the second criterion proved.

In respect of the third criterion, the Respondent, on his own statement, is fully aware of the world of goldmining. He must have known of the Complainants and of their long association with the goldmining industry in South Africa. He would also have known that the abbreviation ĎRandí refers to South African gold. He states that he has little interest in South Africa and that his interests are mainly in Ghana or the United States. It is therefore possible for the Panel to infer that he registered the name in bad faith, knowing that the name "Randgold" was associated with the Complainants and referred to gold produced in South Africa. Respondentís willingness to sell the domain names demonstrates continuing bad faith. Accordingly, the Panel finds the third criterion proved.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names registered by the Respondent are identical to the trademark to which the Complainants have rights;

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

(c) The Respondentís domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <randgold.com>, <randgold.net> and <randgold.org> be transferred to the Complainants.

 


 

Hon. Sir Ian Barker QC
Presiding Panelist

Henri Alvarez
Panelist

Archibald Findlay, SC
Panelist

Dated: October 24, 2001