The Complainants are Serengeti Balloon Safaris Limited of Norfolk, United Kingdom of Great Britain and Northern Ireland and Tourist and Public Relations Services Limited t/a Serengeti Balloon Safaris of Arusha, United Republic of Tanzania, represented by Adlex Solicitors of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Nigel and Nita Pogmore of York, United Kingdom of Great Britain and Northern Ireland and SBSafety, of Serengeti, United Republic of Tanzania.
The disputed domain names <serengetiballoon.com> <serengetiballoonsafaris.com> <serengetiballoonsafaris.info> and <serengetiballoons.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 12, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 22, 2010. The Center verified that the amended 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 February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. On February 24, 2010, the Center received an informal email communication from the first Respondent. However the Respondents did not submit any formal response.
The Center appointed David Perkins as the sole panelist in this matter on March 24, 2010. 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.
4.A. The Complainants
4.A.1 The Second Complainant was incorporated as J M Tourist and Public Relations Services Limited in Tanzania on January 16, 1987 and changed to its present name, Tourist and Public Relations Services Limited on July 6, 2006.
4.A.2 The First Complainant was incorporated on June 19, 1991. Both companies are in common ownership.
4.A.3 Since 1991 the Complainants have carried on the business of providing hot air balloon flights over the Serengeti National Park in Tanzania under the name “Serengeti Balloon Safaris”.
4.A.4 The Complainants assert that they have acquired common law trademark rights in the mark SERENGETI BALLOON SAFARIS. This is on the following grounds.
4.A.5 First, on November 20, 2006 the Second Defendant registered that mark as a Business Name under the Business Names (Registrations) Ordinance (Cap. 213) of the Republic of Tanzania.
4.A.6 Second, the Complainants are the only balloon company in the Serengeti and in Tanzania. They fly over 10,000 passengers annually and since 1991 have flown over 100,000 in total. Such passengers come from all over the world and have included members of the English and other royal families.
4.A.7 The combined joint turnover of the Complainants for the last six years was 10.6 million Pounds.
4.A.8 The Complainants have undertaken extensive marketing under the SERENGETI BALLOON SAFARIS trademark. For example, the Complainants' services are featured in the brochures of most major international tour operators and commissions are paid to holiday operators totaling in excess of USD 1 million per annum. Other promotional activities include IMAX cinema films, inclusion in numerous television documentaries on the BBC and National Geographic, newspaper and magazine advertising, advertising in in-flight media and on airport displays, exhibiting at Trade Shows and producing branded videos, CDs, DVDs and merchandise. The Complainants have also since 1997 promoted its SERENGETI BALLOON SAFARIS business and brand through its website at <www.balloonsafaris.com>. The Complaint exhibits illustrations of examples of these promotional activities.
4.B.1 The Respondent Nigel Pogmore was a former Safety Officer and Pilot employed by the Complainants. He was dismissed in March 2009. The Respondent Nita Pogmore is his wife.
4.B.2 Both Respondents are the registrants of three of the four disputed domain names, namely:
<serengetiballoonsafaris.info> registered January 23, 2010
<serengetiballoon.com> registered January 22, 2010
<serengetiballoons.com> registered January 22, 2010
4.B.3 The fourth disputed domain name, <serengetiballonsafaris.com> was registered on January 18, 2010. Initially, that domain name was registered by a Proxy Registrant but after the Complaint was filed, the Registrant details were changed to SBSafety of Serengeti National Park. The Complainants' case is that SBSafety is the alter ego of Mr. Pogmore. It is a corruption of the First Complainant's acronym and, as will be seen, is used by Mr. Pogmore in the content of his criticism website to which the disputed domain name resolves. The Whois Registrant address and the telephone and fax numbers are false, since they are the operational address and contact numbers of the Second Complainant.
4.B.4 The disputed domain name <serengetiballonsafaris.com> resolves to the website “www.serengetiballoonsafaris.com” which contains criticisms by Mr. Pogmore of the Complainants' safety procedures. The nub of the material posted on that website is that when Mr. Pogmore drew alleged safety deficiencies to the attention of directors of the Complainants he was dismissed. Furthermore, he says that the Complainants have bribed the Tanzanian Civil Aviation Authority and tourism authorities to cover up such deficiencies. Mr. Pogmore states that he is currently in litigation with the Complainants in relation to what he terms as his unfair dismissal. He says that the United Kingdom Civil Aviation Authority pointed him in the direction “of becoming a whistle blowing”.
4.B.5 Mr. Pogmore explains that he is in fact the registrant of the disputed domain names, Mrs. Pogmore's name being included only by reason of the registration fees being paid by her credit card.
4.B.6 Mr. Pogmore says that the other three disputed domain names are inactive. The Complainants says that they resolve to parking pages, which redirect the visitor to a range of commercial websites, including travel websites. Printouts of those pages are exhibited to the Complaint.
5.A.1 Complainants contend that by virtue of the extensive use and promotion of the SERENGETI BALLOON SAFARIS mark since 1991, they have acquired common law trademark rights in that brand.
5.A.2 Since two of the disputed domain names incorporate that mark in its entirety, namely <serengetiballoonsafaris.com> and <serengetiballoonsafaris.info>, the Complainants' say that they are identical.
5.A.3 The other two namely <serengetiballoon.com> and <serengetiballoons.com> incorporate all but the “safari” element of the trademark and, consequently, are asserted to be confusingly similar.
5.A.4 The Complainants say there is nothing to demonstrate that the Respondents can bring themselves within any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.5 In particular, the Complainants consider the content of the website at “www.serengetiballoonsafaris.com” to be defamatory. The image of a blazing balloon on the homepage is, they say, entirely unconnected with them. Since Mr. Pogmore states that his goal is to gain reinstatement as an employee of the Complainants, the Complainants regard the content of the websites as blackmail intended to cause them to make such reinstatement.
5.A.6 The Complainants rely on the decisions under the Policy listed under View 1 in paragraph 2.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. That View is that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with that mark.
5.A.7 As to the three inactive disputed domain names, the Complainants say that these are being used for commercial gain – namely, the click-through revenue they potentially generate – and, consequently, the Respondents cannot rely on paragraph 4(c)(iii) of the Policy.
5.A.8 The Complainants assert that registration of the four disputed domain names evidences “a pattern of conduct” for the purpose of demonstrating bad faith registration under paragraph 4(b)(ii) of the Policy.
5.A.9 As to the three disputed domains which resolve to the same parking page, the Complainants assert that paragraph 4(b)(iv) applies. They are identical or confusingly similar to the SERENGETI BALLOON SAFARIS mark and, consequently, are likely to create a likelihood of “initial interest” confusion with that mark on the part of Internet users seeking the Complainants. Additionally, they are being used to provide “commercial gain” from any click-through revenue derived, whether such gain is a benefit for the registrar or the Respondents. In that respect, the Respondents as the registrants of those domain names are responsible for the use to which such domain names are put to.
5.A.10 As to the disputed domain name <serengetiballoonsafaris.com>, which resolves to the criticism website, the Complainants say that it is demonstrably intended to trick users seeking the Complainants' own website. For example, it is identical to the SERENGETI BALLOON SAFARIS trademark. Finally, the WhoIs operational address and telephone and fax details are those of the Second Complainant. Still further, the criticisms are, the Complainants say, unjustified and defamatory. Finally, the homepage is, the Complainants say, dressed up to give at least an initial impression that it is an independent balloon safety website, not a website created by a disgruntled former employee. Consequently, it is plain – the Complainants say – that the domain name was registered and is being used in bad faith.
5.A.11 In this respect the Complainants quote extensively from the decision in Compagnie Generale des Matierres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376 cited in Tridos Bank N.V. v. Ashley Dobbs, WIPO Case No. D2002-0776, which is one of the cases cited in support of View 1 in paragraph 2.4 of the WIPO Overview referred to in paragraph 5.A.6 above.
5.A.12 The Complainants also cite the initial use of a Proxy Service as another indicia of bad faith.
5.B.1 Although no formal Response has been filed, it is clear from Mr. Pogmore's submission of February 24, 2010 that he considers the criticisms contained on the website at “www.serengetiballoonsafaris.com” to be entirely justified and that, consequently, he has a legitimate interest in using the SERENGETI BALLOON SAFARIS trademark as the domain name for a fair and noncommercial criticism site. He describes himself as a whistleblower providing a public service out of his genuine concerns for aviation safety. As such, he needs to use a domain name that will catch public attention and considers that use of the disputed domain names is a legitimate means of achieving that end.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The first issue for decision is whether the Complainants have common law trademark rights in SERENGETI BALLOON SAFARIS. That mark is a combination of the name of the famous game reserve in Tanzania, the Serengeti, and two descriptive words in common use. However, the combination of those words is capable of acquiring trademark status provided that there is evidence that it has become a distinctive identifier associated with the services provided by the Complainants.
6.6 Relevant evidence of such “secondary meaning” suggested in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 1.7, includes the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the complainant's rights in a common law trademark.
6.7 Here, the Complainants are the only balloon company in Tanzania and have been providing their unique balloon safaris over the Serengeti National Park since 1991. In that period of over 18 years, they have carried a significant number of visitors and generated substantial revenue; paragraphs 4.A.6 and 4.A.7 above. From the material exhibited to the Complaint, it is plain that they have advertised extensively on an international level and have established a well-known and unique service for those visiting the Serengeti. In terms of media recognition, they have been featured in BBC, National Geographic and other television productions, which have been shown in many countries of the world.
6.8 Although the Complaint does not refer to any consumer surveys, in the Panel's opinion such evidence is not of itself necessarily determinative of whether common law trademark rights can be successfully asserted. The Complaint contains, in the Panel's view, adequate evidence which establishes that the mark SERENGETI BALLOON SAFARIS is a sufficiently distinctive identifier of the Complainants and the services they provide to constitute a common law trademark. Accordingly, the Complainants meet the requirement of paragraph 4(a)(i) of the Policy of establishing rights in the trademark / service mark SERENGETI BALLOON SAFARIS.
6.9 As to the second requirement of paragraph 4(a)(i) of the Policy, clearly two of the disputed domain names are identical to that trademark. They are <serengetiballoonsafaris.info> and <serengetiballonsafaris.com>.
6.10 The other two disputed domain names incorporate the first two words of the mark, namely SERENGETI and BALLOON, and are, consequently, in the Panel's view confusingly similar to that mark.
6.11 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.12 Here the issue is whether the Respondents are making a legitimate noncommercial or fair use of the four disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants' mark. Of the four disputed domain names, three are inactive but are parked with links to commercial websites, which includes travel websites. The fourth is used as a criticism website.
6.13 Dealing first with the three parked domain names. Clearly, they will be providing “commercial gain” either for the operator of the websites and/or to the Respondents in the form of click-through revenue. Consequently, the Respondents cannot bring themselves within paragraph 4(c)(iii) of the Policy. Nor, given the findings of identicality and confusing similarity of those domain names to the Complainants' SERENGETI BALLOON SAFARIS trademark can such use qualify as bona fide under paragraph 4(c)(i) of the Policy.
6.14 As to the fourth domain name used as a criticism site, the Complainants say that Mr. Pogmore is not engaged in genuine, noncommercial criticism. He is, as he states, intent on regaining his position as a Safety Officer and Pilot with the Complainants. However, it is equally clear that Mr. Pogmore genuinely believes that the Complainants' practices give rise to safety concerns, in which respect he sees his role as a “whistleblower” exposing in the public interest what he says are safety deficiencies. The Complainants deny that there are such deficiencies and characterise Mr. Pogmore's criticisms as defamatory.
6.15 As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions says in Section 2.4, there are two conflicting views. View 1 is that the right to criticise does not extend to registering a domain name that is identical or confusingly similar to the owner's trademark or conveys an association with that mark. The Complainants urge this view and cite the Decisions under the Policy which support that view; see, paragraph 5.A.6 above.
6.16 The contrary View 2, principally applied by United States panelists, is that irrespective of whether the domain name as such connotes criticism, the Respondent has a legitimate interest in using the trademark as part of the domain name for a criticism site if the use is fair and noncommercial.
6.17 As to View 2, in this Panelist's opinion it is beyond the remit of panelists under the Policy to decide what is “fair”. Mr. Pogmore obviously considers that his criticisms are justified. The Complainants say they are not. The Complainants further say that Mr. Pogmore is making the criticisms to pressurize them into reinstating his employment with them. It is not possible from the parties' respective submissions to form a view as to who is correct.
6.18 However, in any event, this Panelist subscribes to View 1. It is not a restraint on freedom of speech to prevent unauthorised use of a Complainant's trademark as a domain name resolving to a site containing material critical of such trademark owner. Mr. Pogmore could have chosen a variety of domain names as a vehicle for airing his grievances, none of which could be regarded as identical – as in this case – to the Complainants' SERENGETI BALLOON SAFARIS trademark. For example, subject to availability and to third party trademark rights, he could have used “Hot air balloon safety”; “Balloon Safety”; “Safari Ballooning”; “Safe Ballooning”; “Wild Life Ballooning”; “Ballooning in Africa” etc for a domain name and website at which to publicise his concerns.
6.19 In the circumstances, the Panel finds that the Complaint satisfies paragraph 4(a)(ii) of the Policy as regards the four disputed domain names.
6.20 As to the three disputed domain names which are parked with links to, inter alia, travel websites, this constitutes circumstances falling within paragraph 4(b)(iv) of the Policy.
6.21 As to the fourth disputed domain name which resolves to Mr. Pogmore's criticism website, in the light of the above finding that the Respondents have no rights to or legitimate interests in that domain name, registration of that domain name can only be in bad faith. Further, the domain names have, on Mr. Pogmore's admission, been registered as vehicles to carry his criticisms of the Complainants and disrupt their business. Mr. Pogmore is not a “competitor” as required by paragraph 4(b)(iii) of the Policy but, as stated in paragraph 6.5 above, the circumstances set out in paragraph 4(b) are not exhaustive of what can amount to bad faith registration and use under the Policy.
6.22 Accordingly, the Complainants have satisfied the dual requirement of bad faith in paragraph 4(a)(iii) of the Policy in relation to all four disputed domain names.
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 names, <serengetiballoon.com>; <serengetiballoons.com>; <serengetiballoonsafaris.com> and <serengetiballoonsafaris.info> be transferred to the first Complainant, Serengeti Balloon Safaris Limited as requested by the Complainants.
Dated: April 6, 2010