WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foundation Agriterra v. Lorana Edmonds, Agriterra Limited
Case No. D2011-1624
1. The Parties
The Complainant is Foundation Agriterra of Arnhem, Netherlands, represented by Dirkzwager advocaten en notarissen N.V., Netherlands.
The Respondent is Lorana Edmonds of Tenterden, United Kingdom of Great Britain and Northern Ireland, Agriterra Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Salans LLP, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <agriterra-ltd.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 26, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On September 28, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 29, 2011. The Complainant filed a second amendment to the Complaint on October 3, 2011.
The Center verified that the Complaint together with the amendments 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 October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Response was filed with the Center on October 24, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on November 8, 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. Due to exceptional circumstances, the due date for the Panel to forward its decision to the Center was extended to November 25, 2011.
4. Factual Background
The Complainant is an organization headquartered in the Netherlands, founded in 1997 by a consortium of Dutch rural people’s organizations. The Complainant has operated under the trading name “Agriterra” since its founding in 1977, and claims unregistered service mark rights in “Agriterra”.1 The Complainant maintains a website at “www.agriterra.org”, where it provides information about the organization, its mission, and its activities.
The Complainant’s stated mission is to help rural membership organizations in developing countries through financial support, and to promote cooperation among these various organizations through the exchange of knowledge and skills. The Complainant is active in developing countries in Africa, Asia, Central and Eastern Europe, and Latin America, working with more than 80 rural organizations. Ultimately, the Complainant seeks to improve the livelihoods, and the economic and civil status of rural peoples.
The Respondent previously operated under the trade name “White Nile Limited”, and was principally involved in oil and gas exploration in Sudan. In January 2009, the Respondent redirected its activities in Africa to the agricultural sector, and changed its name to “Agriterra Limited”. The Respondent, which has traded on the London Stock Exchange as Agriterra Limited since 2009, currently owns several agricultural businesses in Africa, including a cattle ranch.
The disputed domain name was registered on December 22, 2008. The disputed domain name resolves to a website on which the Respondent provides information about its business activities as well as investor information. The Respondent’s website reflect that the company’s aspiration is to become one of the largest commercial agriculturally related operations in Africa.
Prior to the commencement of this administrative proceeding, the Complainant on several occasions made demands upon the Respondent to cease all use of the “Agriterra” name, which the Respondent has steadfastly declined to do.
5. Parties’ Contentions
The Complainant asserts that it has established rights in AGRITERRA as an unregistered service mark. The Complainant maintains that it since 1997 it has worked with more than 80 rural organizations in Africa, Asia, Central and Eastern Europe, and Latin America, and some 30 organizations in the Netherlands, promoting economic development through projects encouraging rural tourism, improving agricultural product production, the establishment of farmers credit banks, and development of existing and new markets for farmers. The Complainant offers evidence of its involvement in more than 900 such projects.
The Complainant relies on its website, articles from various foreign newspapers, and the Complainant’s presence at congresses involving rural and farmers organizations (as reflected in the agendas for these conferences), as evidence of the use of AGRITERRA as a service mark and indication that the Complainant is publicly known by the AGRITERRA service mark. The Complainant further asserts that it has rights in “Agriterra” as a trade name under Dutch law that may be protected under the Policy.
The Complainant maintains that the disputed domain name is virtually identical and therefore confusingly similar to the Complainant’s AGRITERRA mark. The Complainant further asserts that the Respondent does not have rights or legitimate interests in the disputed domain name, as the Respondent has not been authorized to use the Complainant’s AGRITERRA mark. The Complainant further contends that AGRITERRA is a coined term comprised of the components “agri” and “terra”, neither of which is frequently used in English in everyday contexts.
The Complainant argues that the Respondent changed its name from “While Nile Ltd.” to “Agriterra Ltd.” solely to trade on the goodwill in the Complainant’s AGRITERRA mark, as the Respondent shifted its business focus to agricultural investment and acquisition in African countries where the Complainant already is known for its support of agricultural development among rural populations. According to the Complainant, the Respondent’s registration and use of the disputed domain name has in fact confused and deceived the public.2
In light of this, the Complainant further asserts that the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name, and that the Respondent’s use of the disputed domain name is tarnishing the Complainant’s trade name. The Complainant states: “Complainant does not want to be confused or associated with the domain name of Respondent, since Complainant is a foundation willing to help the rural populations in developing countries, where the organization using the domain name of Respondent is solely looking for an investment in agriculture or other sustainable market with the aim to make profit”.
In light of the foregoing, the Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent has sought investment opportunities in Africa for a number of years, and would most likely have been aware of the Complainant because of the Complainant’s economic activities in developing countries in Africa related to agriculture. The Complainant contends that the Respondent adopted and has used the disputed domain name with the intent of passing off the Respondent’s goods and services either as being those of the Complainant. The Complainant asserts that the foregoing establishes bad faith under paragraph 4(b)(iv) of the Policy. The Complainant also argues that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor within the meaning of paragraph 4(b)(iii) of the Policy
The Respondent asserts that the Complainant has failed to demonstrate that it has common law trademark rights in “Agriterra”. Further, the Respondent maintains that the Complainant has failed to provide any evidence of passing off, which requires proof of (1) reputation or goodwill in respect of the Complainant’s asserted mark, (2) the Respondent’s use of the mark or a confusingly similar variant to cause deception in the marketplace, and (3) damage or foreseeable damage to the Complainant.
The Respondent further argues that the disputed domain name is not confusingly similar to the Complainant’s asserted mark, given the addition in the disputed domain name of “-ltd”, which typically is a designation for a commercial, for-profit enterprise, and not a charitable organization. In addition, according to the Respondent, the activities of the Complainant and the Respondent are fundamentally different. The Complainant appears to be a charitable organization (“Stichting” in Dutch) that supports the development of rural people’s organizations. According to the Respondent, the Complainant works as a grass-roots level in the countries in which it is active while the Respondent works at an investment level to support and develop its subsidiaries in relevant countries.
The Respondent maintains it has rights and legitimate interests in the disputed domain name. According to the Respondent, it has been commonly known by the disputed domain name. The Respondent notes that it has been admitted for trading as “Agriterra Limited “ on AIM, a branch of the London Stock Exchange, since January 2009, and that investors have been trading the company’s shares since that time. The Respondent argues that the mere existence of the Complainant’s service mark or trade name does not mean that the Respondent has no rights in the disputed domain name, and the Respondent contends that the Complainant has failed to demonstrate registration and use of the disputed domain name in bad faith.
Citing the Oxford Dictionaries Online, the Respondent asserts that the name “Agriterra” is comprised of “Agri”, recognized as a combining form for agriculture, and “Terra”, which is Latin for “earth” and used in English (typically with a modifier) to mean “land” or “territory”. According to the Respondent, both of these terms are commonly used in relation to activities in the agricultural sector. The Respondent also asserts that the Complainant is not the only entity using “Agriterra”.3 In addition, the Respondent maintains that its corporate registration of the name “Agriterra Limited” confers a presumption of legitimacy, which the Complainant has failed to rebut.
The Respondent denies that it registered or is using the disputed domain name in bad faith. The Respondent maintains that is had no knowledge of the Complainant prior to receiving the Complainant’s notice letter dated July 27, 2009, and that the Respondent’s corporate name (and the disputed domain name) were chosen without any regard to or knowledge of the Complainant’s activities. Further, the Respondent asserts that it has absolutely no interest in creating confusion by suggesting any link or association with the Complainant. According to the Respondent, such confusion, if it existed, could not result in any commercial gain for the Respondent, because the activities and services of the two organizations are sufficiently different that no such gain could result from any initial interest confusion arising from the disputed domain name.
The Respondent further maintains that even a cursory glance at its website would make clear to any potential investor that the Respondent is wholly unrelated to the Complainant’s foundation, but rather that the Respondent is a for-profit company with tradable securities. The Respondent contends that the Complainant’s asserted service mark is not a household name, and that the Complainant is not known in the investment sector, even if known in the not-for-profit agriculture development sector. The Respondent argues that the Complainant and Respondent have completely different target audiences, and that the Respondent in no manner represents that its goods or services are those of the Complainant.
The Respondent observes that the Complainant’s primary concern appears to be that the Respondent should change its registered trading name. According to the Respondent, there is no mention of an objection to the disputed domain name in any of the Complainant’s correspondence. The Respondent submits that this proceeding has been brought by the Complainant with the aim of forcing the Respondent to change its name through the threat of the transfer or cancellation of the disputed domain name. The Respondent characterizes this as an abuse of the administrative proceeding under paragraph 15(e) of the Rules.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that the disputed domain name should be either cancelled or transferred:
(i) The disputed 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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established trademark or service mark rights in AGRITERRA. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
To establish unregistered or common law rights in a mark, a complainant must show that the name has become a distinctive identifier associated with the complainant’s goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Version (“WIPO Overview 2.0”), paragraph 1.7. Where the asserted common law or unregistered trademark is comprised of descriptive or dictionary words, the complainant usually must present evidence of “secondary meaning” or acquired distinctiveness. See The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483.
For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under the tort of passing off, and considerations of parity, it has been recognized that unregistered rights can arise that are equivalent to common law rights for purposes of the UDRP when the complainant is based in a civil law jurisdiction. See WIPO Overview 2.0, paragraph 1.7 (and cases cited therein). As noted in S.N.C. Jesta Fontainbleau v. Po Ser, WIPO Case No. D2009-1394, in assessing what constitutes an equivalent to a common law trademark right for purposes of the Policy, it is important to understand what a common law mark is. In many jurisdictions the view is that a common law mark is a name or sign in which the owner has established reputation or goodwill sufficient to sustain an action against a third party using the name or a confusingly similar variant thereof to pass off its goods or services as those of the mark owner (a passing off action).
This is the basis upon which the Complainant in this case claims unregistered service mark rights in AGRITERRA within the contemplation of the Policy. In support of its claim, the Complainant has submitted documentation reflecting long and continuous use of AGRITERRA in connection with the services provided by the Complainant to rural populations in developing countries since as early as 1997. The “Agriterra” name is recognized in publications of various rural peoples’ organizations, and the Complainant also has provided evidence of what appears to be unsolicited media recognition. The Panel is persuaded that a sufficient showing has been made that the “Agriterra” name over time has come to be recognized by the relevant public sector as an indication of source for the Complainant’s services.4 The Panel accordingly finds that the Complainant has established unregistered rights in AGRITERRA for purposes of paragraph 4(a)(i) of the Policy.
Turning to the question of identity or confusing similarity, the Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <agriterra-ltd.com> is confusingly similar to the Complainant’s AGRITERRA mark. The first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
In this instance, the Panel finds that the addition of the term “ltd” following “agriterra” is not sufficient to dispel Internet user confusion when the disputed domain names and the mark are compared under the standard identified above. Based on such a comparison of the Complainant’s mark and the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain name to promote and seek investment for its commercial agricultural ventures in developing countries in Africa where the Complainant also is present. It is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert Internet users or to tarnish the trademark or service mark at issue.
The Respondent maintains that it registered the disputed domain name without knowledge of the Complainant or the Complainant’s rights in the AGRITERRA mark. Further, the Respondent maintains that by virtue of the Guernsey registration of Agriterra Limited as the Respondent’s corporate name in January 2009, and the trading of securities under that name on the London Stock Exchange, it has been commonly known by that name prior to any notice of this dispute. The Respondent also observes that “Agriterra” is comprised of “agri”, a commonly used combining term in relation to agriculture, and “terra”, which is commonly used in English to denote “land” or “territory”. Thus, the Respondent appears to assert that its use of “Agriterra” is descriptive in nature in relation to the Respondent’s business activities as well as the Complainant’s services.
A number of UDRP panels have held that where a respondent registers a domain name consisting of common or descriptive terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The domain name must have been registered because of, and any use consistent with, its attraction as a descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
It appears to the Panel that “Agriterra” has a descriptive connotation when used in with agriculture or agriculturally-related activities by virtue of the derivation of the term. At the same time, however, the Panel is not inclined to characterize the term “Agriterra” in and of itself as a common or dictionary word. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (CREDITKEEPER, although a combination of the dictionary words “credit” and “keeper”, is not itself a dictionary word). In addition, the Panel notes from the record that the disputed domain name was registered in December 2008, prior to the Respondent’s change of its trading name from “White Nile Limited” to “Agriterra Limited”.
Regardless, in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
After careful consideration of the totality of facts and circumstances in the record, the Panel finds that the Complainant has not satisfied its burden of demonstrating that the Respondent registered and is using the disputed domain name in bad faith. While the Panel has recognized that the Complainant has rights in the AGRITERRA name which are equivalent to common law trademark rights, and has found confusing similarity for purposes of paragraph 4(a)(i) of the Policy, the Panel is not persuaded that the Complainant could succeed in a passing off action against the Respondent under the facts and circumstances reflected in the record, nor that bad faith registration and use of the disputed domain name otherwise has been demonstrated.
As the Complaint acknowledges, the Complainant provides help to rural populations in developing countries, while the Respondent is seeking to profit from investment in agriculture or other sustainable markets. Although agriculture is a focal point for both the Complainant and the Respondent, they are not competitors in the sense of offering competing product and services, and as the Respondent observes, their audiences are different. It is not at all clear to the Panel why the Respondent, whose primary objective appears to be securing investors for its agricultural businesses, would seek to pass itself off as a charitable organization devoted to the economic assistance of rural populations. The content of the Respondent’s website does not manifest any clear intent to create such an association in the minds of Internet users.
The Respondent claims to have had no knowledge of the Complainant when registering the disputed domain name. The Respondent’s denial is plausible, as is the Respondent’s claim to have selected “Agriterra” because of the term’s strong association with agriculture. While there is indication in the record of instances of confusion resulting from the Respondent’s use of Agriterra Limited as its trading name, the facts and circumstances of this case on balance do not support a conclusion that the Respondent registered the disputed domain name in order to disrupt the activities of the Complainant’s foundation, or to intentionally attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s business activities.
Accordingly, the Panel finds that the Complainant has failed to satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Dated: November 25, 2011
1 The Complainant registered the name “Foundation Agriterra” with the Dutch Chamber of Commerce in 1997.
2 In correspondence with the Respondent prior to the commencement of this proceeding, the Complainant chronicled several instances in which the Complainant had been mistaken for the Respondent by several businesses interested in agricultural investment opportunities.
3 Such third-party use seems to be recognized as existing in the correspondence between the parties, although the Panel has found no specific examples of such third-party use in the record before it.
4 To the extent that AGRITERRA is comprised of descriptive or dictionary words, the Panel finds that the Complainant has made a sufficient showing of “secondary meaning” or acquired distinctiveness.