The Complainants are San Lameer (Pty) Ltd (the “First Complainant”) and Sanlam Ltd (the “Second Complainant”), of South Africa, represented by Bowman Gilfillan Incorporated, South Africa.
The Respondent is Atlantic Internet Services (Pty) Ltd of Pretoria, Gauteng, South Africa.
The disputed domain name <sanlameer.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration & Mediation Center (the “Center”) on April 13, 2010. On April 13, 2010 the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. 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 April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 12, 2010.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on May 20, 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.
Enquiries by the Panel made of the Center also established that the Respondent has not communicated at all with the Center, despite the latter inviting it to do so by e-mail.
The First Complainant has put up as annexures to the Complaint documentary evidence demonstrating that a series of trademarks consisting of the name San Lameer were registered in a series of different classes (in relation to inter alia insurance and financial products and services) between January 1980 and November 1994 and of which it is the trademark proprietor.
The Complainants have also put up a schedule reflecting that an affiliate company, Sanlam Immaterial Property (Pty) Ltd (which is described by them as their intellectual property vehicle) registered three domain names, namely <sanlameer.org>, <sanlameer.biz> and <sanlameer.info>, on November 16, 2009.
According to a WhoIs search, the disputed domain name was registered on November 18, 1998 and the registration updated on November 9, 2009.
The Complainants' Complaint may be summarised as follows:-
The SANLAM trade mark was first introduced and used by Sanlam in 1918 in the Republic of South Africa, as an acronym for the ‘Suid Afrikaanse Nasionale Lewens Assuransie Maatskappy' (English translation: South African National Life Insurance Company). Since this date, the SANLAM trade mark has been used extensively throughout the Southern African region and internationally. During the nineties the Second Complainant's focus gradually shifted from life insurance to providing a broader range of financial products and services and in 1998 it was demutualised and listed on the JSE Securities Exchange, as well as the Namibian Stock Exchange, on November 30, 1998. As a result of demutualisation over 2.2 million South Africans were able to invest in the Second Complainant.
The First Complainant was established by the Second Complainant in 1964. The purpose of the establishment of the First Complainant was to establish a vacation and residential estate under the name “San Lameer”. The Complainants draw attention to the fact that the name “San Lameer” is a derivative of the Second Complainant's SANLAM trade mark. In 1974 the Complainants purchased the land that comprises the First Complainant's San Lameer vacation and residential estate. This land is situated on the South Coast of South Africa's KwaZulu-Natal Province. In July 1977, San Lameer was proclaimed a private township in terms of the San Lameer Town Planning Scheme. In 1990, additional land was purchased by the Complainants to enable the introduction of the championship golf course and club house, which were built according to strict conservation requirements.
The First Complainant's San Lameer vacation and residential estate comprises a beach, which stretches for over a kilometre; an 18-hold golf course and other sporting facilities; a number of villas; and a four-star hotel, namely the Mondazur Resort Estate Hotel. As a result of the Complainants' marketing and advertising efforts over the years, as well as the number of different people that have vacationed at the estate over the years, the SAN LAMEER trade mark has become well-known and distinctive of the First Complainant's goods and services.
As a result of the extensive use of the trade mark, the SAN LAMEER trade mark is very well-known in relation to the provision of accommodation-related goods and services as well as the First Complainant's San Lameer vacation and residential estate. The words SAN LAMEER serve as a unique and distinctive element, which element is a determinative and well-known designation of source for the First Complainant's goods and services.
The Complainants contend that the disputed domain name incorporates the First Complainant's SAN LAMEER mark in toto and submit therefore that it is identical to the First Complainant's trade mark.
The Complainants submit that the disputed domain name is used in conjunction with a website providing accommodation reservation services for the First Complainant's San Lameer vacation and residential estate. These services are offered in such a manner as to convey to the public that the website operated at this domain name is the official reservation site, and that the website is operated by the same entity that provides the actual accommodation services and runs the estate, when this is not in fact the case. Similarly, the First Complainant is involved in, inter alia, the provision of reservation for accommodation services for the San Lameer vacation and residential estate by means of its “www.sanlameer.co.za” website.
In any event, it is further submitted, the disputed domain name is so similar to the First Complainant's registered SAN LAMEER trade mark that there is a substantial likelihood that Internet users and consumers will be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainants and the Respondent, when in fact there is no such relationship. The Complainants therefore contend that the disputed domain name is confusingly similar to the First Complainant's trade marks for the reasons mentioned above.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
On October 5, 2009 the Complainants, through their legal Counsel, dispatched a ‘cease and desist' letter to the Respondent by e-mail, fax and registered post, informing the Respondent of the First Complainant's extensive SAN LAMEER trade mark rights, alleging that the Respondent had no rights or legitimate interests in and to the disputed domain name, and demanding that it immediately be transferred to the Complainants. A copy of the letter is attached as an annexure. As no substantive response was forthcoming from the Respondent at all, a further follow-up letter was dispatched by registered post, fax and e-mail to the Respondent on November 9, 2009, a copy of which is also attached as an annexure.
As at the date of the submission of this Complaint, the disputed domain name points to a website providing accommodation reservation services for the Complainants' San Lameer vacation and residential estate, which services are in direct competition to the goods and related services offered by the First Complainant through its “www.sanlameer.co.za” website. The Complainants draw attention to the fact that the First Complainant has a trade mark in Class 42 covering, inter alia, accommodation reservation services. The Complainants submit that the Respondent's conduct does not amount to a bona fide offering of goods and services. The fact that the Respondent has associated the disputed domain name with a website relating to accommodation reservation services is an indication that the Respondent is aware of the First Complainant's SAN LAMEER trade mark and is seeking to ride on the Complainants' coat tails and benefit from the considerable goodwill and reputation which vests in the First Complainant's SAN LAMEER trade mark.
The First Complainant is the exclusive proprietor of the SAN LAMEER trade mark. The Respondent is neither an agent nor a licensee of the First Complainant and therefore has no right to the use of the SAN LAMEER mark, or marks confusingly similar to this mark, in the disputed domain name.
The Complainants further aver that the disputed domain name was registered, and is being used, in bad faith.
The First Complainant has a long established reputation in the use of its SAN LAMEER trade marks, especially if one considers that the Complainants' “www.sanlameer.co.za” site has been in operation since at least September 2002 and its San Lameer vacation and residential estate has been in existence since 1977. It is therefore highly unlikely that the Respondent just happened to unintentionally select the Complainants' distinctive SAN LAMEER trade marks and inadvertently incorporate them into its selected domain name. It is most likely that the Respondent was fully aware of the First Complainant's SAN LAMEER trade mark rights and its reputation when registering the disputed domain name, as can be evidenced by the choice of domain name and website associated with the disputed domain name, and the fact that the Respondent has actually copied the ‘History' page from the First Complainant's own website. Taking this into account, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would be legitimate.
It is the Complainants' submission that the Respondent is trading on the value established by the First Complainant in its trade marks to attract users when entering the disputed domain, which includes the First Complainant's trade mark. It is contended that the Respondent is deriving economic benefit from this practice by attracting users to the Respondent's website, where competing goods and services are offered. This constitutes bad faith registration and use as defined by 4(b)(iv) of the Policy.
By its failure to respond at all, the Respondent is in default pursuant to paragraphs 5(e) and 14 of the Rules and paragraph 7(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive. Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the Respondent's rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii).
Notwithstanding default on the part of the Respondent, the Complainants bear the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not entitle the Complainants to a finding in their favour by reason thereof, nor does it constitute an acceptance or admission of any of the averments and contentions put forward or the supporting evidence put up. The Panel is nevertheless not bound to accept all that has been put up by the Complainants but must evaluate it as it stands. (Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).
The Respondent has failed to offer any affirmative facts and circumstances by way of challenge to what is pleaded by the Complainants. This may entitle the Panel to conclude, where appropriate, that such failure by the Respondent may weigh against it in circumstances where the Panel is satisfied by the Complainants that sufficient evidence is before it to warrant the drawing of a conclusion adverse to the Respondent. This can arise where there is an absence of any explanation which might have had a bearing upon any claim to rights or legitimate interest in the domain name, such as the use of, or preparation to use, the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate non-commercial or fair use of the domain name. (Berlitz Investment Corp v. Stefan Tinculescu, WIPO Case No. D2003-0465).
The Complainants' main contention that the disputed domain name incorporates the First Complainant's SAN LAMEER mark in toto is sufficient to satisfy this element. The Complainants cite Yahoo!, Inc v. Cupcake Patrol & John Zuccarini, WIPO Case No. D2000-0928 in support of their contention. The fact of such incorporation is not only decisive but also sufficient, in the view of the Panel, to establish that the disputed domain name is identical or confusingly similar to the First Complainant's registered marks (Quixar Investments, Inc., v. Dennis Hoffman, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns & Adam-12 dot.com, WIPO Case No. D2001-0784; Experian Information Solutions, Inc. v. B P B Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367; Société des Produits Nestlé SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016; Media 24 Ltd v. Llewellyn Du Randt, WIPO Case No. D2009-0699; The South African Football Association v. Fairfield Tours (Pty) Ltd, WIPO Case No. D2009-0998).
The fact that the trade marks may be registered as two separate words, namely “San” and “Lameer”, does not, in the view of the Panel, alter the position at all, just as a misspelling would not have affected the significance of the disputed domain name for the purpose of comparison (see Yahoo! Inc case supra).
In these circumstances the Panel is satisfied that the Complainants have 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(a)(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 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 target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainants to prove that the Respondent has no rights to or legitimate interests in the domain name, once the Complainants establish a prima facie case that none of the three circumstances establishing rights or legitimate interests 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 Complainants to prove each of the three elements of paragraph 4(a). (Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270; see also Universal City Studios Inc. case supra).
By reason of its default the Respondent has placed itself in a position that it has not assumed or attempted to discharge the burden of production of the necessary evidence to rebut any such prima facie case. The enquiry must therefore focus upon what is said by the Complainants in order to determine whether or not such a prima facie case has been established.
At the outset, the First Complainant is said to be the exclusive proprietor of the SAN LAMEER mark and the Respondent is neither an agent nor a licensee of the First Complainant. It follows, therefore, that the Respondent has no right to the use of that mark in the disputed domain name. Any such unauthorised use for commercial purposes would violate the exclusive trade mark rights enjoyed by the First Complainant (Caesar's World Inc & Park Palace Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; A T & T Corp v. Roman Abreu d/b/a Smart Talk Wireless, WIPO Case No. D2002-0605; America Online, Inc., v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360).
Apart from there being no authorisation on the part of the First Complainant, there is no relationship or association between the Complainants and the Respondent, whether by way of licence or otherwise, which also militates against the Respondent having any rights or legitimate interest or other entitlement which might fall within that purview. (Sybase Inc case, supra).
The Complainants also stress the fact that the Respondent is not offering the First Complainant's trade mark goods or services but is using the disputed domain name to attract Internet users and switch them to other goods. Likewise it is not taking any steps to prevent confusion by making it clear that its use of the domain name is not that of the First Complainant, coupled with the adoption of information from the First Complainant's website as to the accommodation offered by it, thereby seeking to suggest that there is a connection or association between the Respondent and the Complainants, when there is not.
In view of the facts and circumstances put up in respect of this ground alone and which are unchallenged, the Panel is satisfied that the Complainants should succeed on this leg of the enquiry.
The Complainants have, however, proceeded to put up further facts and circumstances, coupled with argument, on the basis that, even if there was any likelihood of the Respondent being said to have been a third party agent renting out accommodation for the First Complainant, it does not satisfy the requirements which would establish any right or legitimate interest under that score.
The Panel assumes that, as the disputed domain name was registered more than eleven years ago, and since procedurally the Complainants are not afforded an opportunity to reply as of right, they elected to anticipate this possible defence in the Complaint; hence the contentions and evidence put up.
In advancing their contentions, the First Complainant in particular points out that some third party estate agents rent out accommodation at its resort on behalf of third parties who own time share but the First Complainant does not have a list of accredited estate agents. However, it closely monitors their activities and use of its trade mark, permitting them to do so in such a manner as to convey that the services are offered by the agent in its capacity as agent. The Panel assumes that the Complainants therefore wished to negate any attempt on the part of the Respondent, had the Respondent sought to raise this defence on this leg.
In principle the Complainants rely upon Oki Data Americas, Inc v. ASD Inc, WIPO Case No. D2001-0903.
Reference to that case reveals that in considering whether a complainant has failed to show that a respondent does not have a legitimate interest in the domain name in question in circumstances where the respondent is an authorised sales or service agent of trade marked goods and can use the trade mark in its domain name, certain requirements must be met. In the Oki Data case (supra) the real issue was characterised as to whether or not a respondent's offerings could be said to be bona fide.
Those requirements have then been tabulated in the Oki Data case (supra) (and on reference to several WIPO UDRP decisions therein) as follows:-
(a) A respondent must actually be offering the goods or services at issue.
(b) A respondent must use the site to sell only the trade marked goods, otherwise it could be using the trade mark to bait Internet users and then switch them to other goods.
(c) The site must accurately disclose the registrant's relationship with the trade mark owner and it may not, for example, falsely suggest that it is the trade mark owner or that the website is an official site.
(d) A respondent should not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name, as a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark.
Having regard to the facts and circumstances put forward by the Complainants, the Panel is satisfied that the Respondent has not met the above test in the Oki Data case, which is said to be the minimum requirements in this regard. In particular, and in relation to its non-disclosure of the fact that it has no relationship with the First Complainant, coupled with the evidence put up that on its website it is holding out that the beach which forms part of the resort is its own and not that of the First Complainant, which is a false assertion, requirements (a) and (c) of the Oki Data case have not been met.
The Panel is of the view that the Complainants should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainants have established the second element in terms of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides some guidance on this question. It provides:
“For the purposes of Paragraph 4(a), the following circumstances, 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:
(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 web site 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 web site or location or of a product or service on your web site or location.”
While bad faith can exist where a domain name contains in its entirety a complainant's trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a one-word combination of a complainant's registered trade marks, albeit that they consist of two words.
What is significant in the present case is paragraph (iv) quoted above. As already pointed out, the Respondent has made the misleading statement as to the beach forming part of the First Complainant's resort area as being its own, and on its website it has also copied the history page of the First Complainant's website, implying that the Respondent either has a relationship with the First Complainant or does so with the approval or endorsement of it. Such copying may amount to a copyright infringement.
By so doing, in the view of the Panel, the implication from the Respondent's website to a would-be customer is quite clear that it is a website either of or in some way associated with the First Complainant. This, in the view of the Panel, leads to the inescapable conclusion that it is calculated to suggest to those who visit the site that they are invited to do business with either the First Complainant itself or someone authorised on its behalf in relation to the First Complainant's accommodation. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith (Media 24 Ltd case supra).
Moreover, by use of the First Complainant's trade mark in the disputed domain name, the Respondent is trading on the value established by the First Complainant in its marks to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice also would constitute bad faith (Yahoo! Inc & Geo Cities v. Data Art Corp, Data Art Enterprises Inc, Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
In this regard it is a factor also to be taken into account that the First Complainant commenced operations some twenty years prior to the registration of the disputed domain name, which would mean that the First Complainant had by then established itself in the market and built up appropriate goodwill (Sanofi-Aventis v. Ashima Kapoor, WIPO Case No. D2005-0770).
The selection of a domain name identical to that of the First Complainant, as also reflected in its registered trade marks, particularly in the absence of any explanation, leads, in the view of the Panel, to the conclusion that the Respondent must have known of the reputation of the First Complainant in the market and that it therefore selected the domain name in circumstances where it was very well aware of the First Complainant's reputation and intended to benefit therefrom (Deutsche Post AG v. Mail MiJ LLC, WIPO Case No. D2003-0128).
The Panel is therefore satisfied that the Respondent has established the third element under paragraph 4(a)(iii) of the Policy.
For all the aforegoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <sanlameer.com> be transferred to the First Complainant, San Lameer (Pty) Ltd.
Archibald Findlay, S.C.
Dated: May 28, 2010