The Complainant is The South African Football Association (SAFA) of Johannesburg, South Africa, represented by Adams & Adams Attorneys, South Africa.
The Respondent is Fairfield Tours (Pty) Ltd of Cape Town, South Africa.
The disputed domain name <bafanabafana.com> (the “Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on July 24, 2009. On July 27, 2009 the Center transmitted by e-mail to Network Solutions, LLC, a request for registrar verification in connection with the Domain Name. On the same day Network Solutions, LLC, transmitted by e-mail 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” 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 July 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2009. On August 3, 2009 Respondent submitted a communication by facsimile to the Center. On August 4, 2009 the Center acknowledged receipt of this communication and requested the Respondent to confirm that communication to be the complete Response and informed that, if the Respondent did not do so, the Respondent's communication of August 3, 2009 would be considered as its Response. The Respondent did not submit any communication thereafter and accordingly its communication of August 3, 2009 is to be regarded as its Response.
The Center appointed Archibald Findlay as the sole panelist in this matter on August 26, 2009. 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.
The Complainant has included in the Complaint, as Exhibit 13 thereto, a copy of a letter dated December 1, 2008 addressed to its legal representatives by the Respondent. That letter bears the heading “Without Prejudice”. What is also significant is the fact that the letter dated August 3, 2009 submitted by the Respondent to the Center and considered as its Response (being the letter referred to earlier) was also addressed to the legal representatives of the Complainant (and not the Center) and likewise bears the heading “Without Prejudice”, although clearly intended to set out the Respondent's contentions in answer to the Complaint.
Since the parties and the Complainant's legal representatives are South African, it is appropriate to bear in mind that correspondence exchanged between parties or their legal representatives in South Africa when canvassing overtures of settlement of any dispute which is pending before a Court of law or a Tribunal, very often head such correspondence “Without Prejudice”. Such a heading does not, however, automatically render the contents of the letter inadmissible in the proceedings in question as the Court or Tribunal may still refer to the contents in order to so determine admissibility. The mere appending of the label “Without Prejudice” has in fact been found by South African Courts and considered by legal writers not to be the decisive factor in any enquiry in this regard. (If authority is needed for this purpose the Panel would refer to the decision of the then Supreme Court of South Africa in the case of Jili v. South African Eagle Insurance Co Ltd 1995(3) SA 269 (N) particularly at 275 A-F). Indeed support for this proposition is also to be found in Wigmore on Evidence, Volume IV (Chadbourn Revision) at paragraph 1061 (pages 35-36), thus demonstrating that the proposition is one which is wider in its application and not merely limited to South Africa.
In the present instance there are, apart from the content being inconsistent with settlement discussions per se, contentions advanced by the Respondent to justify its actions and seeking to put forward arguments against the contentions of the Complainant. There are, in addition, two further important factors which weigh in favor of such admissibility in the view of the Panel.
The first of these is that both letters are addressed to the Complainant's legal advisers and similarly marked. Clearly there is no doubt that the second letter was intended to serve as a Response (albeit not a complete Response in terms of the Rules) and, despite being addressed to the Complainant's legal advisers, was copied to the Center. The marking of this letter “Without Prejudice” was clearly not intended, therefore, to be part of any settlement proposals or negotiations but to set forth the Respondent's case.
The second factor is that the first letter, Exhibit 13 to the Complaint, advances arguments as to why the Respondent's offer to sell the name at the stipulated price is fair and should be accepted. It is couched not as a settlement proposal but as an offer to sell the Domain Name, with appropriate motivation. (The Panel will deal later with the offer itself in a different context). Moreover, no objection was put forward by the Respondent to the disclosure in these proceedings of the first letter, Exhibit 13.
This, therefore, leads to the conclusion, in the view of the Panel, that what was contained in the letters was clearly not intended to be part of any settlement proposals or negotiations but rather to set forth the Respondent's arguments to counter those of the Complainant. The fact that the letter, the Complainant's Exhibit 13, sets out and seeks to motivate a fair selling price shows also that it was not intended that it should be inadmissible but rather places it within the category of relevant evidence which the Panel must consider. Were it otherwise, the Panel could not receive evidence of offers to sell a domain name, which can of course be a material part of any enquiry.
The Complainant is The South African Football Association (SAFA) which is a South African association established under the laws of South Africa. The Complainant has registered various trademarks in South Africa incorporating the words “Bafana Bafana” with and without device, has applied for further similar registrations which have been published in the South African Patent Journal and are pending and has also applied to register a further trademark BAFANA BAFANA. The Complainant is the umbrella association which governs and regulates the sport of soccer in South Africa. The Complainant is a member of the world governing body of soccer, being the Fédération Internationale de Football Association (“FIFA”). As a member of FIFA the Complainant adheres to certain standards and codes of ethical practice of the latter and its official website is “www.safa.net.”
The Complainant's role and objective in South African soccer includes the promotion and facilitation of the sport, as well as interaction with the South African government to generate soccer as a national asset, creating beneficial relationships with the corporate world and hosting major soccer events in South Africa. It is also the body which regulates and manages the South African national soccer team known world-wide as Bafana Bafana. The Complainant is the body charged with the responsibility of organising and managing the major FIFA World Cup event which is to be hosted in South Africa in the year 2010, which is the first occasion that the FIFA World Cup tournament will be hosted by an African country.
The South African national soccer team, Bafana Bafana, is no less significant in that it was the first multi-racial national team following the apartheid regime in South Africa. The team played its first match as a national team in 1992. In 1996 the team hosted and won the African Cup of Nations and was the hosting team for the FIFA Federations Cup that was held in South Africa during June 2009. It is also the hosting team for the upcoming FIFA 2010 World Cup.
The activities of both the Complainant and the national soccer team Bafana Bafana under its aegis are also well publicised on various websites, examples of which have been annexed as exhibits to the Complaint.
The Respondent is a tour company which offers an extensive range of tours not only in South Africa but also in neighbouring countries, together with allied services. Included in its package of tours are specialist tours such as sport tours. The Domain Name was initially registered by the Respondent on February 18, 2002, which registration, in the words of the Respondent in its letter, the Complainant's Exhibit 13, has been kept up on a continuous basis.
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, and relies upon the schedule of trademarks both registered and pending, which have been registered or pend in various classes and consist of wordmarks, namely BAFANA and BAFANA BAFANA, as well as the mark BAFANA coupled with a device and a series of marks which depict the words BAFANA BAFANA coupled with a logo. It is also contended that the evidence put up by the Complainant establishes that the trademark BAFANA BAFANA is known internationally as the South African national team which is directly linked to the Complainant, that the mark is used extensively in relation to soccer paraphernalia and other official license products, and that the name BAFANA BAFANA has also become known as a leading sports brand commercialised through selected suppliers and distributors. The Complainant further submits that through its master licensee in South Africa the use of the trademark in relation to soccer paraphernalia and other merchandise is affected and that the official BAFANA BAFANA website, which is hosted by the Complainant at “www.bafanaonline.com”, contains extensive information about the team, sponsors, official merchandise and other market related information about the BAFANA BAFANA brand. It follows, so the Complainant contends, that it has established its right in the BAFANA BAFANA trademark and that the Domain Name wholly incorporates the Complainant's BAFANA BAFANA trademark. The Complainant further contends that the addition of the top level domain name “.com” does not negate the confusing similarity between the mark and the Domain Name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name inasmuch as it uses the BAFANA BAFANA trademark within the Domain Name without authorisation from the Complainant. It further contends that it became aware of such use by the Respondent only after discovering that a company had been registered by the Respondent under the name “Bafana Bafana (Pty) Ltd”, which company registration is the subject of separate proceedings. It also contends that, when it learnt of this, it confronted the Respondent and called upon it to cease its use, whereupon it found out that the Respondent had at some stage approached the Minister of Sport & Recreation in South Africa regarding proposed use, which is dealt with in a letter dated 22 May 1996, the Complainant's Exhibit 12. The Complainant contends that it was clearly evident to the Respondent that, as it would have been aware of the Complainant's rights in the BAFANA BAFANA trademarks, it could not use the same without authority from the Complainant but, despite this knowledge, it proceeded to register the Domain Name. The Complainant also, relying on the letter of December 1, 2008 from the Respondent, the Complainant's Exhibit 13, draws attention to the statement therein that the Respondent is not using the Domain Name but takes care to keep up the registration on a continuous basis. The Complainant further contends that it established user rights in the BAFANA BAFANA trademark prior to the Respondent's unauthorised registration and before any use that might have taken place of the Domain Name. It points out further that the Respondent has not shown that it has ever been known by the name Bafana Bafana, that it acquired any rights in the mark, or used the mark in the course of trade, and therefore contends that the election to register the Domain Name must have been for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of out-of-pocket expenses directly related to the Domain Name.
The Complainant then submits that the Domain Name was registered and is being used in bad faith. Apart from the arguments relied on in regard to the previous category, it further relies upon the fact that the amount claimed of some USD 45 000,00 is far in excess of the renewal fees plus out-of-pocket expenses in relation to the name (which the Complainant argues would amount to USD 620,00), and that this alone establishes bad faith. The Complainant then contends that the passive holding of the name following registration without use also amounts to bad faith. It draws attention to the fact that the Respondent's reference on its website to events exclusively within the jurisdiction of the Complainant, such as the 2010 FIFA World Cup, is also indicative of the improper motive of the Respondent in seeking to suggest an association between it and Bafana Bafana when there is none.
The Respondent contends that the Complaint is considered to be a complete misrepresentation of the facts, but does not furnish any further detail as to what it considers to be a misrepresentation with regard to the amount referred to. It contends that this, in fact, embraces all costs and interest over thirteen years for a variety of items, including the formation of companies as well as the creating of a logo, and not only for registering the Domain Name and paying for its upkeep. The Respondent then contends that it was unaware that a website had in fact been constructed for it, as referred to by the Complainant, and that it took steps to enquire how this had come about. In support thereof it refers to annexed communications that it was simply a website under construction and that the position would be rectified. The Respondent then refers to discussions with the Complainant's legal adviser and confirms that it had not made use of the Domain Name, and puts forward an alternative proposal in its Response that it would agree to transfer the Domain Name at no cost to the Complainant on condition that the Complainant:
(i) afford it the opportunity to link its websites to the official website of Bafana Bafana and the Complainant since the Respondent believes that it could be of service to the Complainant and the Bafana Bafana team;
(ii) meet with the Chief Executive Officer of the Respondent to discuss the services that it could render to the Complainant and the team.
Save for the alternative proposal, the Respondent does not, in its Response, suggest that the Panel should not have regard to the contents of its letter, the Complainant's Exhibit 13, or that what is there said is inaccurate.
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The schedule, put up as the Complainant's Exhibit 3, listing the marks registered or pending, relates to marks all of which bear a number indicating, by South African Trademark Law and Regulations, that their respective registrations or applications when initially launched all pre-date the registration of the Domain Name by the Respondent. Moreover, the Respondent in no way challenges either their existence or validity, nor the accuracy of their respective descriptions in the Complainant's Exhibit 3.
The Complainant does not identify which marks have been registered and which are pending. By South African trademark law, registration of the mark is deemed to render the registration effective from the date of application. On the probabilities, having regard not only to the dates of applications for registration but the other relevant facts and circumstances relating to the Complainant's development and use of the name, Complainant had trademark rights pre-dating the registration of the Domain Name by the Respondent. Even if some trademarks were not registered at the time, those rights are still protectable as common law trademark rights (Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050).
While certain decisions in this field have, on occasion, called into question whether or not such evidence is sufficient (Red Bull GmbH v. Ian Andrew, WIPO Case No. D2001-0709), it seems to the Panel that, in the circumstances coupled with the fact that the Complainant has actively promoted the national team under the name of Bafana Bafana (which is the dominant or material portion of the respective marks), there is sufficient prima facie proof to establish that the Complainant has indeed rights flowing from trademarks both registered and pending.
The fact that the word mark has been incorporated entirely into the Domain Name by the Respondent is sufficient to establish that a Domain Name is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).
The addition of the specific top level domain 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 Domain Name (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; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382). In these circumstances the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
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 the purposes of paragraph 4(1)(ii) of the Policy, namely:
(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 the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) 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 target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that none of the three circumstances establishing the legitimate interests or rights applies, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a). (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc., supra).
In the present case, on the evidence before the Panel there is nothing to suggest that the Respondent seeks to bring itself within any one of the three abovementioned categories or demonstrate any other basis of a right or legitimate interest. Indeed the Respondent's case in regard to registration of the Domain Name, as appears from the letter of December 1, 2008, the Complainant's Exhibit 13, is that it was prompted to do so as a result of a communication from the then Minister of Sport, which would appear to be the letter of 22 May 1996 from the latter addressed to the Respondent, put up as the Complainant's Exhibit 12.
In showing an interest in the Respondent's wish to market and merchandise, inter alia, the name Bafana Bafana, in the course of the letter the Minister, however, states quite clearly:
“2 In order to protect the rights of national sports federations, I need proof that you have the full support of SARFU and SAFA to market and merchandise the trade names of Amabokoboko and Bafana Bafana.”
In this regard there is no evidence suggesting that such approval was ever sought by the Respondent from the Complainant who was specifically named by the then Minister, and in the letter of August 3, 2009, the Response put up by the Respondent, what is further significant is that it claims to have been unaware of the existence of a website reflecting the Domain Name registered by it. It further avers that, upon becoming aware of the existence of the website (which is depicted as the Complainant's Exhibit 14), it immediately took steps to ensure that the website would be cleared of all references. It further refers to and puts up communications from the Registrar confirming the instructions given by the Respondent.
If the Respondent indeed had any rights in and to the Domain Name or contended for such rights, the Panel finds it highly improbable in light of the circumstances that it would then have acceded to the requirement stipulated by the Complainant as to the website, but would rather have contended that its rights entitled it to the use of the Domain Name, inter alia through the medium of the website. Furthermore, in its letter of December 1, 2008, which is reaffirmed in its Response, the Respondent confirms that the Domain Name has not been used. This too is a very strong indicator in the view of the Panel that it could not have had any legitimate interest or right in the Domain Name.
The Panel accordingly finds that the Complainant has established the second element in terms of paragraph 4(a)(ii) of the Policy.
The Complainant in its Complaint, in advancing the argument that there had been no use, has drawn attention to Allianz Ag And Dresdner Bank Ag v. Comofer S.L., WIPO Case No. D2001-1398, in support of its contention that a respondent seeking considerably more than out-of-pocket expenses for the purchase by a complainant of a domain name is itself evidence sufficient to justify a finding of bad faith under paragraph 4(b)(i) of the Policy.
In the present matter and in paragraph 4 of the letter of December 1, 2008, the Complainant's Exhibit 13, the Respondent formulates its claim for reimbursement as follows:
“Actual payments made were for the following:
- to attorneys to register the companies Bafana Bafana Sport (Pty) Ltd and Bafana Bafana Holdings (Pty) Ltd
- to design studio for design of the Logo
- to attorneys to apply for registration of Trademarks and Logo in the different categories
- to attorneys to defend the trademark and logo
- to auditors for auditing of the year end financials
- to register the domain name
[T]hese items together with interest amounted to R 145,611.65 at the time of first offering it to SAFA. Since then with accumulated interest at 15% per annum the amount has grown to R 367,773.69 at the end of September 2008.”
Against this, of course, is the Complainant's contention that the maximum properly claimable would have been USD 620,00 as against a claim of USD 45 000,00. When the items set out in the computation of the claim are examined, they go far beyond the registration and maintenance of the Domain Name and include a variety of other costs incurred. The Respondent has not seen fit to allocate amounts to each of the categories for which it contends and has claimed interest at a particularly high rate, bearing in mind that in South African law there is a general principle known as the in duplum rule that interest on a loan should not exceed the capital amount in total. Albeit that this is not a loan transaction, it is nevertheless a feature, in the view of the Panel, that the claim is vastly in excess of the out-of-pocket expenses and therefore the contentions made by the Complainant in this regard are also well founded. This would therefore, of itself, be grounds for finding the existence of bad faith.
Moreover, the Complainant in its Complaint relies upon the case of Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 in support of its further contention that inaction on the part of a respondent and failure to use a domain name gives rise to a passive holding of the name and in turn is evidence of bad faith. This proposition is well supported by other panel decisions, namely Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250.
The Panel is further of the view that the Complainant has established that its trademarks and the name Bafana Bafana are well known, certainly in South Africa, where the Respondent trades, if not further afield. The Panel also finds that, in view of the admonition to be found in the letter from the Minister of Sport that the Respondent was to secure the necessary support from the Complainant before embarking upon the promotion of the Domain Name, the Respondent must have realised that the Complainant had rights in and to the name and therefore any attempt by the Respondent to exploit the Domain Name or use it would have been in bad faith. (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Internet Billions Domains Inc., WIPO Case No. D2003-0985).
Moreover the shift in stance by the Respondent from its claim for a large sum in its initial approach to the Complainant, when compared with that in its Response that it would not seek money provided it were permitted to have trade associations with the Complainant, suggests that, by holding the Domain Name, it wishes to create an impression of association between the Respondent and the Complainant and, as such, would also support an inference of bad faith (Benetton Group S.p.A. v. Azra Khan, WIPO Case No. D2002-0810); alternatively, and at very lowest, that it was attempting to hold the Domain Name to induce the Complainant to accede to it having business links with the latter. Such holding would also, in the view of the Panel, constitute bad faith.
The Panel is therefore satisfied that, on the facts and circumstances of this particular case, the Respondent has registered the Domain Name in bad faith under the Policy, paragraph 4(a)(iii).
For all the aforegoing reasons, in accordance with paragraph 4(a) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bafanabafana.com> be transferred to the Complainant.
Archibald Findlay, S.C.
Dated: September 11, 2009