ADMINISTRATIVE PANEL DECISION
Cliffe Dekker, Inc. and Hofmeyr Herbstein & Gihwala, Inc. v. Information Services, Brian Evans
Case No. D2008-1327
1. The Parties
The Complainants are Cliffe Dekker, Inc. of Cape Town, South Africa (the “First Complainant”), and Hofmeyr Herbstein & Gihwala, Inc. of Sandton, South Africa (the “Second Complainant”), represented by Cliffe Dekker, Inc. of South Africa.
The Respondent is Information Services, Brian Evans of Los Angeles, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cliffedekkerhofmeyr.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2008 by email and on September 5, 2008 by hardcopy. On September 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 2, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 30, 2008. The Response was filed with the Center on September 21, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 29, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainants in this administrative proceeding are law firms duly incorporated in terms of the company laws of South Africa. On June 11, 2008, the Complainants publicly announced their intention to enter into a merger effective on September 1, 2008 under the name of “Cliffe Dekker Hofmeyr”. This announcement was widely published in South African media and in various online publications worldwide. The Complainants subsequently acquired all regulatory approvals required for the merger.
The First Complainant and its predecessors in title have been using the name CLIFFE DEKKER as a trade mark and as a trading style since 1926. The First Complainant is the proprietor of South African trade mark Registration No. 1999/02972 CLIFFE DEKKER FULLER MOORE in class 42 and the South African trade mark Registration No. 2002/01754 CLIFFE DEKKER in class 42. The Second Complainant and its predecessors in title have been using the HOFMEYR trade mark and trading style since 1964 and it is the proprietor of South African trade mark Registrations No. 1997/20128 and No. 1997/20128/1 HOFMEYR in classes 16 and 42. The Complainants previously offered their services on the Internet inter alia at <cliffedekker.com> and <hofmeyr.com>.
On June 13, 2008, the First Complainant received an unsolicited email from someone using the email address “email@example.com” containing an offer to sell the disputed domain name to the First Complainant at a price of US$ 12,000. Searching the Whois database the First Complainant found that the domain name was registered in the name of a certain Brian Evans, apparently a notorious cyber-squatter who had registered the disputed domain name on June 12, 2008. On June 24, 2008, the First Complainant received another email form “firstname.lastname@example.org”, offering the domain name at a price of US$ 14,500.
On July 9, 2008, the First Complainant sent a letter of demand to the registrant at the time, Brian Evans, demanding that the domain name be transferred to the Complainants. On July 9, 2008, a certain M. Blitz responded, using the email address “email@example.com” and offered to sell the domain name to the Complainants for a non-negotiable amount of US$ 10,500. The Complainants declined the offer on July 9, 2008. The First Complainant received another response stating that the domain name would be transferred to a third party, that the Complainants would have “to take it up with the new owners of this non-trademarked domain name” and that “the offer stands”. The Complainants again rejected the offer. The domain name owner responded by stating “Do as you must. Price doubles after 24 hours offer”.
On July 10, 2008, the Complainants conducted another Whois search which revealed that the disputed domain name had been transferred to the Respondent, the contact person for the Respondent being a certain Hofmeyr C. Dekker.
On August 27, 2008, the First Complainant sent a letter to the Respondent demanding that the domain name be transferred to the Complainants. The Respondent did not respond to this letter of demand.
The disputed domain name is linked to the website at “www.montaguegoldsmith.com”, a website of a property investment and fund management company based in London, United Kingdom. On August 14, 2008 the Complainants contacted Montague Goldsmith's London office telephonically. On information, Montague Goldsmith were unaware that the disputed domain name was linked to their website and this was done without their consent.
5. Parties' Contentions
The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar and/or identical to the trade names, registered and common law trade marks and existing domain names of the Complainants individually, and identical to the trade name, registered and common law trade marks of the Complainants in combination.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not a member or licensee of the Complainants, nor is there, or was there, any other relationship between the Complainants and the Respondent in terms whereof the Respondent has received any permission or consent to use the trademarks CLIFFE DEKKER or HOFMEYR or to use a combination of the names of these two firms. Furthermore, the Complainants contend that there is no evidence prior to the notice to the Respondent of the dispute, nor is there any subsequent evidence of the Respondent's use of or demonstrable preparations to use the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services, that the Respondent is not making a legitimate non-commercial, commercial or fair use of the domain name, that the Respondent and/or the previous owner of the domain name is the owner of any trade mark registration or intellectual property rights for the terms “Cliffe Dekker” or “Hofmeyr”, individually or in combination, and that the Respondent has neither been commonly known by the domain name nor acquired similar or identical trade mark or service mark rights.
(3) The Complainants finally contend that the domain name was registered and is being used in bad faith.
With regard to the registration of the domain name by Brian Evans and the subsequent transfer to the current Respondent, the Complainants contend that the transfer is a mala fide attempt to frustrate the Complainants' efforts to obtain ownership of the disputed domain name. The Complainants contend that there is no evidence that the Respondent lawfully exists (a number of Internet Searches did not reveal any entity in California named Information Services), that the Respondent is merely used as a front for fraudulent purposes, and that Brian Evans is the mala fide controlling entity behind the Respondent. The Respondent knew, or must at least be deemed to have known of the Complainants' well known trade marks and trading styles and of the name of the newly merged firm.
With regard to bad faith use, the Complainants contend that the timing of the registration of the domain name clearly shows bad faith on behalf of the Respondent and/or Brian Evans as it has been held in numerous decisions that the timing of a domain name registration close to an announcement of a name change or merger is an important factor in determining the existence of bad faith. Furthermore, the Complainants contend that the offer to sell the domain name following a public announcement of a merger is clear evidence of bad faith and that Brian Evans is a notorious cyber-squatter who was ordered to transfer domain names to the respective complainant in numerous earlier proceedings where registration and use in bad faith were established.
The Response was filed by Brian Evans, former registrant of the disputed domain name on September, 21, 2008. He contends that he is not the “notorious Brian Evans” referred to in the Complaint, that the domain name was not registered the day after the press release, that the domain name is not trademark protected and that, therefore, the Complainants have no legal claim to it. Furthermore, Brian Evans contends that the domain name was registered for his publication company, and had only recently been transferred to him by the original owner who registered it in 2004.
Finally, the Respondent contends that he was contacted by one of the Complainants about purchasing the domain name and that it was never solicited to them.
6. Discussion and Findings
The original Registrant identity and subsequent change described above suggest that this is a case in which the Registrant of the disputed domain name tried to avoid or delay proceedings to be commenced against him by changing details of the Whois data of the disputed domain name after notice of a dispute that was about to arise with regard to such domain name: The Complainants sent a letter of demand to Brian Evans of the domain name whereupon the Whois data of the disputed domain name was changed to the current registrant, following an announcement to this effect by Brian Evans. Moreover, the Response filed in the current proceedings was written by the prior registrant, Brian Evans, in his own name and not on behalf of the current registrant, Information Services, the existence of which seems at least questionable. These facts lead to the assumption that the changing of the Registrant's identity was an attempt by the prior registrant to frustrate the Complainants' attempt to obtain ownership of the disputed domain name. As a result, the Panel will treat the prior registrant as beneficial holder of the disputed domain name and identical with the Registrant and will issue this decision based on both the actions of the prior registrant and the current registrant. Both registrants will hereinafter be referred to as the “Respondent”.
Although the transfer of the disputed domain name occurred after the registrant's knowledge of the dispute arising in this case, this is not a case of “cyberflying” or “cyberflight”. According to paragraph 8(a) of the Policy, the Respondent may not transfer the domain name registration to another holder during a pending administrative proceeding. Various Panels have discussed how to interpret “pending administrative proceeding”, more specifically, at which moment such proceeding is pending. One could refer to paragraph 4(c) of the Rules, stipulating that the date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under paragraph 2(a) in connection with forwarding the Complaint to the Respondent (i.e. the moment when the Complaint was received by the Respondent from the Provider). Alternatively, to give effect to paragraph 8(a) of the Policy and prevent malpractice by seeking to evade service of due process, the administrative proceedings could be considered to be pending as of the moment when the respondent is first informed about the filing of the complaint by the complainant. However, as in this case the domain name was transferred even before the Complaint was filed with the Center, this question will not be dealt with.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainants' trademarks CLIFFE DEKKER and HOFMEYR in which the Complainants have exclusive rights.
The fact that both trademarks are combined in the disputed domain name does not hinder the finding of confusing similarity, which may also be found where the domain name consists of a combination of two signs to which the complainant holds trademark rights (see Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761; Audi AG v. Hans Wolf, WIPO Case No. D 2001-0148).
Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that the complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the domain name, is not using the domain name in connection with a bona fide offering of goods or services and is not commonly known by the domain name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy.
The Respondent contends that the domain name was registered for his publication company and was merely transferred to him recently by the original owner who registered it in 2004. However, the Respondent has not provided any kind of evidence for this assertion and thus not met its burden of proof. As a result, the Respondent failed to establish rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
It must be noted that the disputed domain name was registered before the Complainants could acquire trademark rights in the name of the new entity, a scenario where bad faith registration is difficult to establish as a registrant generally cannot contemplate rights that do not exist at the moment of the registration of a domain name. However, it is consensus view that bad faith can also be found under such circumstances, in particular in merger situations (see ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669: “For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. […] From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.”; Nokia Corporation, Navteq Corporation v. Juha Vainio, WIPO Case No. D2008-0772), but also whenever the respondent registers a domain name with knowledge of potential third parties' rights and speculative intent (Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).
The Complainants have been rendering legal services for many years and are both well known in this field as evidenced by numerous consistently good rankings of large international law firms. The fact that the disputed domain name was registered only one day after the Complainants Cliffe Dekker, Inc. and Hofmeyr Herbstein & Gihwala, Inc. publicly announced their merger together with the name of the new entity “Cliffe Dekker Hofmeyr” and the fact that the disputed domain name is made up exclusively of the highly distinctive name of the new entity lead to the assumption that the Respondent must have been aware of the Complainants and their rights in the trademarks CLIFFE DEKKER and HOFMEYR. While the Respondent did not provide any explanation for the registration of the disputed domain name but merely denied the Complainants' assertions, there is no other explanation for the juxtaposition of the trademarks of the two law firms than the Respondent's intent to benefit from confusion or to sell the domain name to the Complainants following the merger. The Panel is therefore satisfied that the Respondent was aware of the Complainants and their prospective rights in the name “Cliffe Dekker Hofmeyr” when it registered the disputed domain name and therefore did so in bad faith under paragraph 4(a)(iii) of the Policy.
The Respondent also used the domain name in bad faith. The Complainants provided evidence that the Respondent offered the disputed domain name for sale to the First Complainant on June 13, 2008, only one day after its registration. As the price in the amount of US$ 12,000 is by far exceeding the Respondent's out-of-pocket costs directly related to the domain name, the Panel is satisfied that the disputed domain name was registered primarily for the purpose of selling it to the Complainants and therefore in bad faith under paragraph 4(b)(i) of the Policy. Furthermore, the Panel is satisfied that the Respondent acted in bad faith under paragraph 4(b)(ii) of the Policy as well: The Complainant provided evidence that the Respondent was involved in numerous other UDRP proceedings in the past, thereby acting in a pattern registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cliffedekkerhofmeyr.com> be transferred to the Complainants.
Dated: October 13, 2008