WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wineland-Thomson Adventures Inc., Thomson Safaris Limited v. Allan Cavanagh
Case No. D2010-2040
1. The Parties
The Complainants are Wineland-Thomson Adventures Inc. of Watertown, Massachusetts, United States of America and Thomson Safaris of Arusha, Tanzania, represented by Adlex Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Allan Cavanagh of Galway, Ireland.
2. The Domain Name and Registrar
The disputed domain name <thomson-safaris.com> is registered with Blacknight Internet Solutions Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 24, 2010, the Center transmitted by email to Blacknight Internet Solutions Ltd. a request for registrar verification in connection with the disputed domain name. On November 25, 2010, Blacknight Internet Solutions Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on November 30, 2010.
The Center verified that the Complaint together with the amendment to 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 December 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2011.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 12, 2011. 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. Factual Background
The Complainants are in common ownership. The First Complainant is a United States corporation which markets and promotes safari tours under the name and trademark THOMSON SAFARIS. It is the owner of United States Trademark No. 3,316,029 dated October 23, 2007, claiming first use in commerce in 1981. The Second Complainant is a Tanzanian company which has, since 1981, conducted safari tours in Tanzania. It is licensed under Tanzanian law and has operated such tours under the name and trademark THOMSON SAFARIS since at least 1992. The Complainants’ turnover for the past decade has been in excess of USD 90,000,000 and their marketing expenditure has been approximately USD 2,600,000. They have received extensive press coverage and many industry awards. (Complaint Exhibits 13 and 14).
According to evidence provided in the Complaint, the Respondent provides event entertainment services in the nature of caricatures. He owns and operates a website at <www.caricatures-ireland.com>. As of October 20, 2010 the disputed domain name redirected to that website.(Complaint Exhibit 16).
At the time the Complaint was filed, the website at the disputed domain name included, as well as information about the Respondent’s services, a replica of the Complainants’ trademark and logo, links to articles and blogs relating to the Respondent and a murder in Kenya in 2008 and a link to the website of a competitor of the Complainants in Tanzania.(Complaint Exhibits 18 to 22).
5. Parties’ Contentions
The Complainants contend that they have registered and common law rights in the trademark THOMSON SAFARIS and that the disputed domain name is confusingly similar to that trademark.
The Complainants further contend that the Respondent’s use of a domain name which is confusingly similar to their trademark does not constitute a bona fide offering of its goods and services, nor is it a legitimate noncommercial or fair use. The Complainants therefore contend that, they have made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that showing.
The Complainants deny that the disputed domain name is being used for a genuine criticism site or that it is not being used for commercial gain.
They contend that the use of a domain name identical to their trademark and the use of their logo shows that the disputed domain name was chosen and is being used to trick users seeking the Complainants’ site into visiting the Respondent’s site.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainants have demonstrated that they have both registered and common law rights in the name and trademark THOMSON SAFARIS. The operative part of the disputed domain name takes that trademark entirely with the addition only of a hyphen between the two words.
The Panel therefore finds that the disputed domain name is substantially identical to a trademark in which the Complainants each have rights.
B. Rights or Legitimate Interests
The Complainants have made a strong showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has had an opportunity to rebut that showing but has failed to do so. The Complainants have shown that the Respondent’s use of the disputed domain name to redirect to his own commercial website is neither legitimate, noncommercial nor fair. Such use is not a bona fide use of the domain name in relation to the Respondent’s caricature services. There is no logical connection between the Complainants’ well established trademark and the Respondent’s services nor is there any evidence of any other basis upon which the Respondent could have established any legitimate right or interest in the domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
At the time the Respondent registered the disputed domain name in February 2010 the Complainants' trademark was well established. The use of the Complainants’ name and logo on the Respondent’s website and the posting on that site of information relating to past events allegedly connected to the Complainants shows that at the time of registration of the disputed domain name the Respondent was fully aware of the Complainants and their rights in their trademark. The subsequent use of the disputed domain name to redirect traffic to the Respondent’s commercial website which carried material critical of the Complainants and a link to the website of one of the Complainants’ competitors evidences an intention on the part of the Respondent to damage the Complainants and to profit from confusion inevitably generated in the minds of Internet users seeking to access the Complainants’ genuine website. Even if the Respondent’s use of the disputed domain name had not been commercial, as noted by the panel in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376, cited by the Complainants, "In short, what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trade mark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website."
In the Panel’s view, those comments are apposite to any contention that the Respondent’s use of the disputed domain name was for genuine criticism.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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, <thomson-safaris.com> be transferred to the First Complainant, Wineland-Thomson Adventures Inc. as requested in the Complaint.
Desmond J. Ryan AM
Dated: January 24, 2011