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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sanlam Limited v. Selat Sunda Incorporated

Case No. D2000-0895

 

1. The Parties

The Complainant is Sanlam Limited. Its address is Legal Services Department, ADV.Magda Lombard, PO Box 1, Sanlam Court, 7532, Republic of South Africa.

The Complainant is represented in this Administrative Proceeding by Mr. Neil Dundas (Attorney) of Bowman Gilfillan Incorporated, PO Box 3511, Halfway House, 1685, Republic of South Africa.

The Respondent is Selat Sunda Incorporated of PO Box 962, Buffalo, New York, NY 14201, United States of America.

The Respondent is unrepresented in this Administrative Proceeding.

 

2. The Domain Names and Registrar

The domain names in dispute are "sanlam.com" and "sanlam.net".

The registrar is Network Solutions, Inc. 505 Huntmar Park Drive. Herndon, Virginia 20170-5139, USA.

 

3. Procedural History

The Complainant lodged its Complaint by e-mail communication to the WIPO Arbitration and Mediation Center (WIPO) on July 28, 2000. A hard copy of the Complaint was received by WIPO on August 15, 2000. WIPO acknowledged receipt of the Complaint on August 7, 2000. On August 1, 2000, WIPO requested verification from the Registrar of the domain names in dispute. The Registrar of both domain names is Network Solutions. The Registrar reported on August 9, 2000, that the registrant of "sanlam.com" was Selat Sunda Incorporated of PO Box 962, Buffalo NY, NY 14201, USA. The administrative, technical, zone and billing contact was Selat Sunda Web Admin, with the e-mail address of "selatsunda@INAME.COM". The address of this contact was the same as that of the registrant of the disputed domain name. The telephone number of the contact was given as (877) 892 8558 and the fax number as (212) 656 1307.

The Registrar’s report with respect to the domain name "sanlam.net" was that the registrant was PHBConsulting of PO Box 962, Buffalo, NY 14201. The administrative, technical, zone and billing contact was also Selat Sunda Web Admin, with the e-mail address "selatsunda@INAME.COM" the address, telephone and fax numbers of the contact were the same as the contact for the domain name "sanlam.com".

At the time of the Registrar’s report, both "sanlam.com" and "sanlam.net" were in "Active" status.

Both Selat Sunda Incorporated and PHB Consulting appear from this record to be so closely related and intertwined that they are, in the view of the Administrative Panel in this decision hereafter described as "the Respondent".

On August 15, 2000, a Complaint Deficiency Notification was sent to the Complainant. The notification pointed out a formal deficiency to the Complainant, in that the complaint had not been signed by the Complainant or its authorized representative as required by the Rules, paragraph 3(b)(xiv), and a request was made for a correction as soon as possible. An amended Complaint with the omission rectified was received by WIPO on August 21, 2000.

On August 23, 2000, a notification of Complaint and Commencement of the Administrative Proceeding was sent by WIPO. The notification informed the recipient of the formal date of commencement of the administrative proceeding, that being August 23; the last day for sending the Response to the Complaint, which was September 11, 2000; and the fact that if its Response was not sent by September 11, it would be considered in default. The notice continued to say that in a default situation the Administrative Panel will still be appointed to review the facts of the dispute and to decide the case. The notice also pointed out that the Administrative Panel would not be required to consider a late-filed Response, but would have the discretion to decide whether to do so, and, as required by paragraph 14 of the Rules, may draw such inferences from the default as it considers appropriate.

On September 17, 2000, WIPO sent a notification of Respondent Default to Registrants of the disputed domain names.

WIPO extended an invitation on September 22, 2000, to the undersigned to serve as the Sole Panelist to decide the case. The undersigned accepted the invitation and forwarded his Statement of Acceptance and Declaration of Impartiality and Independence on September 26. The Administrative Panel, consisting of the undersigned as the Sole Panelist, was appointed on September 27, 2000, and the case file to date was duly transmitted by courier to the Administrative Panel.

In the opinion of the Administrative Panel this Panel is properly constituted.
The language of the proceeding is English.
The scheduled date for the submission of a decision by the Panel is October 10, 2000.

 

4. Factual Background

The Complainant, Sanlam Limited, is a limited liability company incorporated under the company laws of the Republic of South Africa. It is an undenied fact alleged by the Complainant that the sanlam name, first introduced by the Complainant in 1918 in the Republic, is an acronym in Afrikaans of "Sud Afrikaanse Nasionale Lewens Assuransie Maatskapy" (which translates into English as South African National Life Insurance Company). Since that time the Complainant has traded under that acronym and has used it extensively throughout the Southern African region as its distinguishing mark. As a consequence, the Complainant changed its name first from the Afrikaans name to Sanlam Proprietary Limited, and after its listing in the South African and Namibian Stock Exchanges on November 30, 1998, again changed its name to Sanlam Limited.

In 1995, the Complainant designed and implemented an Internet website with the name WWW.SANLAM.CO.ZA. The Complainant had used the sanlam name and trademark extensively and continuously since 1918. From 1984, the Complainant claimed exclusivity in the sanlam name through South African trademark registrations. In 1996 it extended its exclusivity of the sanlam name internationally, through trade mark registrations by Impilo Limited, the Complainant’s international intellectual property vehicle, in Great Britain and Northern Ireland; and filed an application for a European Community Trade Mark in classes 9, 36, and 42 on December 13, 1996.

From the Complainant’s searches on July 26 2000, of the Network Solutions "WHOIS" database, the record of the "sanlam.com" domain name was created on December 21, 1998. The Complainant queried the Respondent as regards the latter’s right to the use of the sanlam name. The answer the Complainant received was not satisfactory. Subsequently, it came to its notice that the domain name "sanlam.net" had been registered by PHB, which has the same address as the Registrant of "sanlam.com". The Complainant after further inquiries brought the Administrative Proceeding with respect to both domain names.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contention is that it is a company registered and based in South Africa. It has always carried on a substantial financial services business in Southern Africa. That its use of the expression "sanlam" dates from the establishment of the company in 1918, the name of which in the Afrikaans’ language was "Sud Afrikaanse Nasionale Lewens Assuransie Maatskapy" from which the acronym sanlam was derived. The Complaint adduced massive evidence of its business in the financial world, and the other financial institutions from the United Kingdom, Europe and the United States with which it dealt. It is, no doubt, one of the companies with which anyone interested in emerging markets, especially of Africa, would be familiar. By continuous use of the sanlam name and trademark, the Complainant claims to have acquired a reputation which is an extremely valuable asset. The trademark was first acquired under the common law. But it was later asserted through the trademark registrations previously referred to. The Complainant’s complaint is that the domain name, "sanlam.com" which the Respondent has registered is identical to the Complainant’s trademark in sanlam in which the Complainant has exclusive and extensive rights; and that the domain name is likely to confuse the public into believing that the Respondent’s registered domain names are those of the Complainant or are associated with the Complainant’s business, and therefore that the Complainant endorses the Respondent’s business. But the Complainant states that, the Respondent’s business is not the business of the Complainant; neither is the Complainant associated with nor does it endorse the Respondent’s business.

The Complainant further states that in August 17, 1999, it, through its Representative, addressed a letter to the Respondent setting out its (the Complainant’s) trademark rights to the sanlamM name. The Complainant, in that letter, pointed out to the Respondent that it (the Complainant) would like to register the sanlam trade mark as a ".Com" domain name, but was unable to do so due to the Respondent’s prior registration. The Complainant asked the Respondent what right the Respondent had to use the sanlam name as a ".Com" domain name; and what the Respondent’s intended purpose was for the use of the "sanlam.com" domain name. The letter pointed out that that the Complainant would like to resolve the matter amicably, and therefore invited the Respondent to contact the Complainant’s Representative before August 25, 1999.

The Respondent gave the following reply through a Legal Adviser in a letter dated August 24, 1999, written on a letterhead of "Selat Sunda Inc":

"This website will be used to launch a new IT product soon. We note your use of the acronym "SANLAM" in South Africa and your trademark registration there. We do not believe that our use of the moniker detracts from your right to conduct business under that name in South Africa.

Which products or services does your client currently market under the name SANLAM in the United States?"

The Complainant contends that it took up the matter with Network Solutions which informed the Complainant of the ICANN Domain Name Dispute Resolution Policy.

Upon investigating the matter further, the Complainant states that it found that "sanlam.net" had also been registered in the name of PHB Consulting. No further detail was available except that the contact details were identical to that of the Respondent. An examination of the Network Solutions "WHOIS" database with respect to this registration showed that the record in the case of "sanlam.net" was created on November 12, 1998, which is earlier than the December 21, 1998, creation of the record for "sanlam.com".

The Complainant also states that in anticipation of this Administrative Proceeding, the Respondent incorporated a web page under the "sanlam.com" domain name titled "Sanlam Site Administrator & Network Local Activity Monitor", and that this was in a frantic attempt to create the impression that the Respondent had a demonstrable right to the sanlam name.

It is the case of the Complainant that the Respondent has not demonstrated a legitimate intention to use the "sanlam.com" domain name since its registration in 1998, but that under threat of these proceedings, recently incorporated a makeshift web page under the "sanlam.com" domain name in order to avoid, circumvent and/or delay these proceedings. The Complainant, therefore, submits that the Respondent has no rights or legitimate interests in respect of the sanlam name. The Complainant has attempted to investigate the activities of the Respondent but to no avail. A Dunn & Bradstreet report states that "There is no such company name, Selat Sunda Inc. doing business in the State of New York."

In support of its allegation of bad faith on the part of the Respondent, the Complainant points out that apart from the registration of the sanlam name as a ".COM", the Respondent has also registered a name which is so similar to another major South African trading company, Pick ’n Pay. According to the search report of Network Solutions "WHOIS" database, the domain name "picknpay.com" was registered by Selat Sunda Inc. of 11866 Clifton Lakewood Blvd., #302 Lakewood, Ohio 44107. The record shows that it was created on December 14, 1998, and updated on February 10, 1999. The contention of the Complainant on this point is that Pick ‘n Pay Retail Stores (Pty) Ltd., a company which is the third highest ranking company in the list of advertisers in South Africa, has used and traded in the name on "Pick ‘n Pay" that it has, at least, built substantial common law rights in the "Pick ‘n Pay" name. That company has an Internet website located at http://www.picknpay.co.za. Although the name registered by the Respondent in this respect is not identical to the South African company’s name, the Complainant contends that the two are too confusingly similar, as they are pronounced in the same way, to be neglected or excused.

Besides, the Respondent’s own name has always been available for the promotion of its business and yet the Respondent has chosen to register these confusingly similar names of prominent South African businesses such as the Complainant’s and that of Pick ‘n Pay.

In the light of the above, the evidence submitted and arguments advanced in support, the Complainant avers that:

"The Respondent’s actions have effectively and absolutely prevented the complainant from registering its trademark as a corresponding ".COM" domain name ….

and/or

That due to the Complainant’s extensive reputation and goodwill, the Respondent intentionally registered the domain name in question to attract for, financial gain, Internet users to its website. It has done so by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website product or service.

and/or

That before any notice to the Respondent of the dispute, there was no evidence of the Respondent’s use of, or demonstrable preparation to use, the domain name in connection with a bona fide offering of any goods or services.

and/or

That the Respondent is not commonly known by the domain name, and that it has not acquired any trademark or service mark rights in and to the sanlam name whatsoever."

The Complainant, therefore submits that the domain name in question was registered and is being used in bad faith by a Respondent who cannot accurately be identified.

For the reasons it gives, the Complainant requests that in accordance with paragraph 4(b)(i) of the Policy, the Administrative Panel should issue a decision that both the "sanlam.com" and the "sanlam.net" domain names be transferred to the Complainant. The Complainant also requests any further relief as the Administrative Panel may decide.

B. Respondent

The Respondent has made no response to the Complaint. It, therefore brings no factual or legal contention before the Administrative. The only statement of the Respondent’s position has been given, not by the Respondent directly to the Administrative Panel, but in the letter which is submitted in the Complainant’s bundle of documents as the reply written by the Respondent’s Legal Adviser on August 24, 1999, which has been referred to earlier in the Complainant’s case as the response to the Complainant’s own letter of August 17, 1999, drawing the Respondent’s attention to the Complainant’s trademark rights in the sanlam name.

 

6. Discussion and Findings

Under paragraph 2 of the ICANN Uniform Domain Name Dispute Policy (the Policy), by applying to register a domain name, the applicant represents, among other things that to its knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and that the registrant will not knowingly use the domain name in violation of any applicable laws or regulations. The provision also places the responsibility for determining whether its domain name registration infringes or violates someone else’s rights on the applicant for registration.

By paragraph 4 of the Policy, the applicant for a domain name registration is required to submit certain types of dispute to a mandatory administrative proceeding. The applicable disputes are listed in sub-paragraph (a) of paragraph 4. It reads as follows:

 

"a. Applicable Disputes. You are required to submit to mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements is present."

The Respondent’s registration of the sanlam name as a domain name has been challenged by the Complainant in terms of paragraph 4(a) of the Policy. The Respondent is accordingly obliged to submit to a mandatory administrative proceeding.

The Complainant’s case in the proceeding has been fully set out under section 5 of this Decision under the heading "Parties Contentions". For the purposes of evaluation of the Complainant’s case it is only necessary to draw attention to the following highlights. The Complainant has alleged and has adduced supporting evidence in the case file that it presented that it had continuously used and traded under the mark sanlam since it was formed as a company in South Africa in 1918. It is one of the two largest financial services providers in the Southern African region. Its business is such that companies and other persons in Europe and the United States who are interested in emerging markets have been doing business with it under that trade name. In 1984, that is some fifteen years before the Respondent’s registration of the domain names "sanlam.com" and "sanlam.net", the Complainant registered the trademark sanlam in South Africa. It subsequently followed this trademark registration up with a trademark registration of the same name in Great Britain and Northern Ireland with effect from December 10, 1996. The Complainant also submitted a certificate showing that on December 13, 1996, it applied to the Office of Harmonization in the Internal Market (Trade Marks and Designs) of the European Community for the registration of the name sanlam. The evidence presented by the Complainant of the user of the trade name and mark, sanlam, is overwhelming.

The Respondent has not given formal explanation by way of a Response to the Complaint of its position. That, however, does not mean that the Complainant’s request for relief must automatically be granted. The Administrative Panel is of the view that even though the Respondent makes no Response to the Claim, the Claimant must establish its Claim independently of that fact. But all that can be gleaned by the Administrative Panel from the case file of the Respondent’s case is the letter which purports to have been written by the Legal Adviser on August 24, 1999, stating the object for registering the domain name "sanlam.com" as "This website will be used to launch a new IT product soon." If that is correct, that explanation would indicate that the website in question was intended to be used for commercial purposes. That letter continues, "We note your use of the acronym "sanlam" in South Africa and your trademark registration there. We do not believe that our use of the moniker detracts from your right to conduct business under that name in South Africa." However, the case made by the Complainant is that its trademark is registered also in Great Britain and Northern Ireland and an application for its registration has been pending with the European Community since December 1996. The letter finally ends with the significant question, "Which products or services does your client currently market under the name sanlam in the United States?" That suggests that in the view of the writer, domain names could be registered in order to divide commerce in goods and services in the global sphere into country pockets by separating the country of registration of a trademark from the country of registration of a domain name and saying that as long as the domain name is being used for the offer of goods and services in one country, that does not interfere with the trademark rights of a mark that has been registered in another country, however international that mark has become. The question is whether that fragmentation of the effect of use of a domain name, which is in its very nature an instrument with worldwide effect for the realisation of business and other interests, can be right.

The first of the three tests stated in paragraph 4 of the Policy which the Complainant has to satisfy in order to succeed is that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has submitted ample evidence that the domain names complained of, namely "sanlam.com" and "sanlam.net", are identical or confusingly similar to the Complainant’s trademark. This evidence is uncontradicted. In the opinion of the Administrative Panel, this first test is satisfied.

The next test which the Complainant must satisfy in terms of paragraph 4(a) of the Policy is that the Respondent has no rights or legitimate interests in respect of the domain names. The sanlam name being identical to the domain names in dispute, the onus falls upon the Respondent to show that it nevertheless has a right or legitimate interest in respect of those names. Some indication has been given in paragraph 4(c) of the Policy of the situations which a Respondent could use in resisting an allegation that it had no rights or legitimate interests in respect of a domain name. They are merely examples, and not intended to be exhaustive, but they illustrate the type of defenses that a Respondent could raise. They are as follows:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) if you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. "

Can the Respondent avail itself of any of these defenses in the circumstances of this case?

According to the Complainant, the Respondent registered the domain names "sanlam.com" and "sanlam.net" in December and November, respectively, of 1998. Neither was associated then with a website. The Complainant says that the Respondent incorporated a web page "a short while ago" under the "sanlam.com" domain name, entitled "Sanlam Site Administrator & Network Local Activity Monitor". The Complainant submits that this web page incorporation was merely made in anticipation of these administrative proceedings, "in a frantic attempt to create the impression that it has a demonstrable right to the sanlam name." Paragraph 4(c)(i) would afford the Respondent a justification for the use of the sanlam name, even if the Administrative Panel were to accept that the Complainant has established a trademark, if before any notice to it of the dispute, the Respondent showed its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. That raises two issues, namely in the context of this provision, when was notice of the dispute given to the Respondent; and if that were to be established, then had the Respondent been using or making any demonstrable preparations to use the questioned domain names, before that date, in connection with a bona fide offering of goods or services?

In the absence of a Response by the Respondent to the Complaint, the Administrative Panel is obliged to look at such material as is otherwise available to it in the proceeding. In answer to the first question, when did the Respondent receive notice of the dispute in this case, two obvious dates immediately stand out for consideration. The first is the date on which the Respondent received the letter of the Complainant drawing attention to the Complainant’s trademark rights, asking the Respondent what right the Respondent had to use the sanlam name as a ".com" domain name; and what the Respondent’s intended purpose was for the use of the "sanlam.com" domain name; and pointing out that that the Complainant would like to resolve this matter amicably. That date would be the reasonable date by which time the Respondent would have received the Complainant’s letter. It would be any date after the writing of the letter on August 17, 1999, but cannot be later than the date of the reply letter from the Respondent’s Legal Adviser, dated August 24, 1999. The alternative possible date on which it could be said that notice of the dispute was given to the Respondent could be the date on which the Complaint in this Administrative Proceeding was notified to the Respondent, namely, September 17, 2000. Of the two dates, this Administrative Panel is of the opinion that the first would be the correct one in this context. To adopt the alternative date, which is the time when this dispute was submitted for a decision by the Panel would be unreasonable. It cannot be said that the two parties could be disputing their rights in a series of correspondence long before the submission of the dispute in submitted for decision by an Administrative Panel, and yet the Respondent must be taken to have received notice of the dispute only when the Administrative Proceeding commences. That interpretation would give the Respondent an opportunity to take steps to avail itself of the benefit of paragraph 4(c)(i) by using or making demonstrable preparations to use the disputed domain name in connection with the offer goods or services, long after it has had notice of another person challenging his right to the domain name, provided it is before the time of commencement of the Administrative Proceeding resulting from that challenge. That cannot be right.

Adopting the date, at the latest, on August 24, 1999, as the date when the Respondent had notice of the dispute, the question is whether the Respondent had before that been using or making demonstrable preparations for the use of the domain names in dispute in connection with the bona fide offer of goods or services. The Respondent cannot genuinely claim that before it received any notice of the dispute, it had used or made demonstrable preparations to use the two domain names in dispute in connection with a bona fide offering of goods or services. As stated before, the Respondent registered the domains names "sanlam.net" and "sanlam.com" in November and December of 1998 respectively. There is no evidence that by the time that the Complainant drew the Respondent’s attention by the letter dated August 17, 1999, the Respondent had made any use of the registered domain names. In any event, the reply of the Legal Adviser of the Respondent on August 24, 1999, gives a sufficient answer to the question. It says: "This website will be used to launch a new IT product soon." Clearly, there had been no activity by way of use or demonstrable preparation for use of the domain names before this letter which was in answer to a challenge to the registration of the domain names, was written. If there had been any use or demonstrable preparations to use the domain names for any purpose before, the occasion for writing that letter would have been the time when the Respondent would have said so.

There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if it has acquired no trademark or service mark rights in them. Nor is there evidence that the Respondent is or has been making legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no further ground which the Administrative Panel can find as justification for the Respondent in the registration or use of the domain names.

The most difficult part of this case is with respect to the need for the Complainant to show, as required by paragraph 4(a)(iii) of the Policy that the domain names "sanlam.com" and "sanlam.net" have been registered and are being used by the Respondent in bad faith. In this regard paragraph 4(b) of the Policy gives a number of circumstances, but without limitation, which if found by the Panel would amount to registration and use of a domain name in bad faith. They are as follows:

(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 website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The problem arises from the fact that with the Respondent putting forward no Response, it is difficult to exonerate it of an intention or action to do each and every one of the above things. The difficulty in exonerating him arises from the fact that by registering the domain names and the reply that the Respondent’s Legal Adviser gave, the Respondent has put itself in the position to do one or more of these acts showing bad faith. As pointed out by this Panel in the decision on WIPO Case No.D2000-0225, Nandos International Limited v. M. Fareed Farukhi, "it would be of assistance to a Panel deciding the issue if the Respondent were to give an indication of the basis of his claim of right when that is denied by the Complainant. After all, knowledge of that fact is peculiarly within the Respondent’s knowledge." But the Respondent in this case has filed no Response. Its Legal Adviser in the letter of August 24, 1999, argues that the Complainant’s trademark right in the sanlam name is restricted to South Africa, because as the letter says "We note your use of the acronym "SANLAM" in South Africa and your trademark registration there. We do not believe that our use of the moniker detracts from your right to conduct business under that name in South Africa." The point about the Internet and domain names, however, is that their effect is global. If a person relies on the fact that a trademark is registered in one country and therefore, there can be no breach of its rights in the registration of a domain name in another country, however well known the trademark is outside the country of registration, he must be wrong. The registration of the domain name prevents the person who has the trademark even in one country from registering that mark as a domain name to promote its business as long as the existing registration of the other continues. It may be that the person who first registered the domain name had no knowledge of the existence of the mark, or has some right derived from some other source, in which case different considerations would arise. But if the person has that knowledge, and nevertheless chooses to register and use for commercial gain the trademark or service mark of another country which is well known internationally, even though not officially registered in his country, he must justify the registration and use of the domain name, if challenged, or he runs the risk of offending against the Policy.

It is well to bear in mind that domain names being of an international nature, they should be considered from an international perspective. The very use in a name with the ".com" designation indicates that the domain name is an international commercial organization. A respondent can have a right to use a domain name in certain circumstances, even if it bears a similarity to a trademark. If that name consists of his own name, for instance, he would be entitled to use it even though it is also a mark to which the Complainant has a right or entitlement. Registration through acquiescence of the original owner would also constitute a defense. Admittedly the obligation to prove that the Respondent has no rights or legitimate interests in respect of the domain name, lies on the Complainant. But if, with knowledge of it, he registers a domain name identical to or so similar to the trademark or service mark, with the intention of preventing the owner of the mark from reflecting the mark in a domain name, that person would fall foul of the provisions of paragraph 4 if he did so in any of the circumstances stated in sub-paragraph (b).

The real question here is whether the Respondent had knowledge of the sanlam trademark before it registered it as domain names. It ought to be remembered that the name sanlam is an acronym. It is possible that the Respondent did not know of this acronym, but happened on it by accident. The explanation which its web page suggests that the Respondent’s use of the expression is also an acronym derived from "Site Administrator & Network Local Activity Monitor" seems over-contrived. As the Complainant points out, it makes no grammatical sense. It further appears to have been given birth after the Complainant had first complained to the Respondent. The question asked by the Complainant is, if the Respondent is interested in choosing an acronym as a domain name, why did it not choose a domain name based on its own name, Selat Sunda Incorporation or PHB Consulting? After all Selat Sunda Incorporated has an e-mail address, "selatsunda@INAME.COM" which involves the use of its name. In this case, although the Respondent had the freedom to choose from a variety of other possible marks it "just happened" to choose a mark confusingly similar to the Complainant’s mark. It seems from all the circumstances as if the extended name is made up to justify the acronym rather than it being the parent of the acronym.

Furthermore there is evidence to suggest that the Respondent was at the time of registration of the domain names aware of the South African business world, as it registered at about the same time the domain name of "PICKANDPAY.COM". Now Pick ‘n Pay is one of the largest commercial traders of South Africa. As said before, it belongs to Pick ‘n Pay Retail Stores (Pty) Ltd. While the domain name registered is not exactly the same as the trademark of Pick ‘n Pay, the pronunciation of the two expressions is, however, practically the same. And, as has been said before, allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech. The overall test is one of impression of confusion in the mind of the person making the decision. See the New Zealand case of Polaroid Corporation v. Hannaford and Burton [1975] 1 NZLR 566 at p. 571. The registration of the domain name similar to the Pick ‘n Pay mark puts the matter beyond doubt. It shows that as the Complainant states the Respondent has been registering high profile South African marks for its own purposes. From the circumstances, the Administrative Panel concludes that the choice of sanlam by the Respondent is not a mere coincidence. The Respondent was aware of the South African scene and the important companies at the time of the registrations. Having regard to the question put to the Complainant in the letter of the Respondent’s Legal Adviser asking, "Which products or services does your client currently market under the name sanlam in the United States?", it would appear that in the view of the Respondent, if the Complainant was marketing a defined product under its sanlam name in the USA, another person could use the same name to market some other product in the same market. If that were to be allowed, it would amount to a disruption of the Complainant. But there is also the objection that those who know the sanlam mark might be confused by such user, and be attracted, to the Respondent’s website or other on-line location, under the impression that the Complainant was sponsoring, affiliated, or endorses the website or location or of a product or service on your website or location, as prescribed by paragraph 4(b)(iv) of the Policy.

It is no wonder that the Respondent Selat Sunda Incorporated (being PHB Consulting technically the registrant of the domain name "sanlam.net") did not bother to file a Response to this Complaint.

In the view of the Administrative Panel, the domain names "sanlam.com" and "sanlam.net" were registered for use by the Respondent in bad faith with the intention to mislead, for commercial gain, members of the public that the Respondent is using the domain names to offer products or services on its website sponsored by, affiliated to, or endorsed by the Complainant. The Respondent has no right to the use of the registered domain names. It is, therefore, wrong that the Respondent should be permitted to continue to have the capacity to use the disputed domain names.

 

7. Decision

Accordingly, it is hereby ordered that the domain names "sanlam.com" and "sanlam.net" be transferred to the Complainant, Sanlam Limited.

 


Austin Amissah
Presiding Panelist

Dated: October 10, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0895.html

 

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