The Complainants are Marian Sandu and Silver Peach Marketing (Pty) Limited t/a AfricaStay, both of Gauteng, Republic of South Africa, represented by Adams & Adams Attorneys, the Republic of South Africa.
The Respondent is Thi Cam Cam, Tran Thi Cam, of Ho Chi Minh, Viet Nam.
The disputed domain name <africastay.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2008. On November 14, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On November 17, 2008, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 21, the reseller of Key-Systems GmbH dba domaindiscount24.com through which the domain name was registered confirmed that the language of the registration agreement was English. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 17, 2008.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 30, 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 the Rules, paragraph 7.
Since the first Complainant is a guiding mind of the company Silver Peach Marketing (Pty) Limited, which is the second Complainant and trades as “Africa Stay”, it will be convenient to refer commonly to “the Complainant”.
The facts below are abstracted from information submitted by the Complainant.
Marian Sandu and his wife Diana Lisa Sandu are the directors of Silver Peach Marketing (Pty) Limited, which has been registered in the Republic of South Africa since at least as early as 2004, and trades as AfricaStay.
Until recently the Complainant was itself the owner of the disputed domain name <africastay.com>. The disputed domain name was transferred to the Respondent without the knowledge or approval of the Complainant, who now seeks its return.
Little is known about the Respondent except for the information accompanying the current registration details of the disputed domain name.
The Complainant's contentions include the following.
The trademark AFRICASTAY is used by the Complainant in relation to travel arrangements and the business currently services approximately 20,000 clients annually. The Complainant has acquired a protectable interest in the trademark AFRICASTAY under common law. The AFRICASTAY trademark has acquired a secondary meaning and is associated with the Complainant and its services.
The AFRICASTAY trademark is well known in print advertisements in publications including GSA Travel Marketing Magazine, and is advertised on-line. The company uses also the domain name <africastay.co.za>. Documentary evidence submitted includes print advertisements, website screenprints, letterheads and business cards.
The disputed domain name <africastay.com> is identical to the Complainant's AFRICASTAY trademark. The website to which the disputed domain name now resolves, operated by the Respondent, is effectively a copy of the Complainant's website with amendments.
The Complainant contends that until recently it was the legitimate owner of the disputed domain name, and submits in evidence a confirmatory e-mail from the registrar Key-Systems GmbH, archived screenprints of the website ranging in date from August 26, 2004 to February 12, 2008, and a printout of its history from “www.hosterstats.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, but obtained its registration by diverting certain of the Complainant's emails and reading the necessary access code in October 2008. Other of the Complainant's sensitive emails were diverted to the Respondent, enabling attempts to cause the Complainant financial and business damage. The activity came to light when an attempt to divert money from the Complainant was foiled.
There is no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a good faith offering of goods or services. Its use is not bona fide since the Respondent is prepared to sell the disputed domain name to the Complainant. Following searches, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is not making legitimate non-commercial or fair use of the disputed domain name, but has offered to sell it back to the Complainant for “U$60,000”.
The Complainant further contends that the disputed domain name was registered by the Respondent and is being used by the Respondent in bad faith. On October 31, 2008, the Complainant received an e-mail from the Respondent offering to sell back the disputed domain name for “U$60,000”. Documentary evidence in the form of an exchange of emails is submitted in support of this contention. In the correspondence the Respondent cited financial difficulty and family commitments as the reason for taking the disputed domain name.
The Complainant says that because the disputed domain name is identical to a trademark in which it has rights and the corresponding website is substantially identical to the Complainant's website, the Respondent is attempting to deceive Internet users into believing that the website is still owned and operated by the Complainant. Accordingly, there is a real risk that the Respondent is fraudulently accepting payment from the Complainant's clients. There is also a real risk that information that should be private to the Complainant, such as client usernames and passwords, may be provided inadvertently to the Respondent.
In remedy the Complainant request the transfer to it of the disputed domain name, and requests an early decision since its business is suffering ongoing harm.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules, that:
(i) the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent's domain name has been registered and is being used in bad faith.
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant is required to prove that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to the trademark.
The trademark in which the Complainant claims rights is AFRICASTAY. The trademark appears to be unregistered and the rights claimed by the Complainant are those is has acquired in common law. Although the words “Africa” and “stay” comprising the trademark may individually be generic, in combination they form a distinctive word or name. It is clear from the evidence that the Complainant has built a substantial business around the name “Africa Stay” in recent years. The Panel finds that the Complainant has rights in the trademark AFRICASTAY within the meaning of paragraph 4(a)(i) of the Policy.
The disputed domain name is <africastay.com>. Stripped of its gTLD domain designator, the remainder of the disputed domain name is “africastay”, which clearly is identical to the Complainant's trademark AFRICASTAY, and the Panel so finds.
The Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states in evidence that it has never had any legitimate connection with the Respondent and has not in any way allowed it to use its trademark. In anticipation of any Response under paragraph 4(c) of the Policy, by which the Respondent may seek to establish rights or legitimate interests, the Complainant states that according to enquiries the Respondent is not making a bona fide offering of goods or services through the disputed domain name because the website is an appropriation of the Complainant's own. There is no claim or evidence that the Respondent is commonly known by the disputed domain name or similar. For the same reasons the use to which the Respondent has put the disputed domain name is neither noncommercial nor fair. The Complainant says that the disputed domain name was taken from it by the device of re-registration, whereby the Respondent pretended to be the Complainant, and accordingly the Respondent cannot possibly have any rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case that the Respondent has not refuted or replied to in this proceeding, to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 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 your website or location or of a product or service on your website or location.
The evidence in the form of emails between the Parties supports the contention that the Respondent tried to sell the disputed domain name to the Complainant for initially $60,000. The Complaint refers to the money as “U$” (possibly intended as a reference to US dollars, although the exact nationality of the dollar is not specified). It is clear from the tone of the email exchanges, however, and from the later reductions of this demand, that it represented an amount considerably in excess of the expenses of registration. The Panel finds for the Complainant in the terms of paragraph 4(b)(i) of the Policy.
The Complainant has demonstrated in evidence that its business activity has depended on the traffic through its Internet presence using the disputed domain name. The Respondent is deemed by the Panel to be a competitor of the Complainant within the meaning of the Policy (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279: “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”). By its appropriation of the disputed domain name and diversion of traffic intended for the Complainant, the Respondent is found to have been disruptive of the Complainant's business in the terms of paragraph 4(b)(iii) of the Policy.
The Panel cannot conceive of any plausible reason for the Respondent to have created a website that is effectively a copy of the Complainant's former website under a domain name comprising the Complainant's trademark, except to confuse and divert intended viewers of the Complainant's business to the Respondent for commercial gain. Bad faith registration and use by the Respondent is found under paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith in the terms 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 <africastay.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: January 7, 2009