South African National Biodiversity Institute ("SANBI), established in terms of Section 10 of the National Environmental Management: Biodiversity Act 10 of 2004 (South Africa) v. JACK RILEY / PIONEER RESEARCHES / Bothalia Journal
Claim Number: FA1409001579817
Complainant is South African National Biodiversity Institute ("SANBI), established in terms of Section 10 of the National Environmental Management: Biodiversity Act 10 of 2004 (South Africa) (“Complainant”), represented by Natasha Steinberg of Fairbridge Arderne and Lawton INC(Fairbridges), South Africa. Respondent is JACK RILEY / PIONEER RESEARCHES / Bothalia Journal (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bothalia.com>, <bothalia.org>, <bothalia.net>, <bothaliajournal.com>, <bothaliajournal.org>, and <bothaliajournal.net>, registered with Enom, Inc. and Domain.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2014; the National Arbitration Forum received payment on September 16, 2014.
On September 16, 2014;, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the<bothalia.org>, <bothalia.net>, <bothaliajournal.com>, <bothaliajournal.org>, and <bothaliajournal.net> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2014 Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bothalia.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bothalia.com, postmaster@bothalia.org, postmaster@bothalia.net, postmaster@bothaliajournal.com, postmaster@bothaliajournal.org, and postmaster@bothaliajournal.net. Also on September 22, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 9, 2014.
Complainant submitted a timely additional submission, received on October 13, 2014, and was considered. Supplemental Responses of Complainant and Respondent were received on November 3 and 4, 2014 and were considered.
On October 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a State Entity created by statute and operates in national environment management. Complainant contends that it has rights in the BOTHALIA mark under Policy ¶ 4(a)(i) through its registrations with the South African Trade Mark Office. See Complainant’s Exhibit A.
Complainant has used the BOTHALIA mark on its house journal known as bothalia since its inception in 1921. Complainant’s journal is dedicated to the furtherance of botanical science, covering areas such as taxonomy, ecology, anatomy, and cytology. Complainant’s BOTHALIA mark is an invented word that was derived from the name “Botha,” after General Louis Botha, who was the first Minister of Agriculture of South Africa.
Complainant further contends Respondent’s disputed domain names are confusingly similar to Complainant’s BOTHALIA mark. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the BOTHALIA mark. Respondent’s <bothalia.com> domain name wrongly identifies itself as “Bothalia, A Journal of Botanical and Life Sciences Research.” Respondent’s resolving website displayed Complainant’s logo and the SANBI acronym. Respondent’s use creates a fraudulent misrepresentation that Respondent’s journal is that of Complainant’s. Respondent’s purpose in registering the disputed domain names is to collect subscription and submission fees from the authors who believe that they are submitting articles to Complainant’s reputable journal. Respondents <bothalia.org>, <bothalia.net>, <bothaliajournal.com>, <bothaliajournal.org>, and <bothaliajournal.net> domain names are inactive and currently under development. Respondent registered and is using the disputed domain names in bad faith. Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent uses the <bothalia.com> domain name to attempt to pass itself off as complainant’s legitimate business in order to commercially profit from confused Internet users. Respondent provides false WHOIS information for the disputed domain names.
B. Respondent
Respondent states that <bothalia.com> is an independent, self-financed authority acting separately from Complainant or other organizations cooperating with it. See Respondent’s Exhibit A.
Complainant has already chosen the name “African biodiversity and conservation” as its publication name, which has no relation to Respondent’s journal.
Respondent adds a notification to its homepage of the <bothalia.com> website showing the complete independent activities of Respondent. See Respondent’s Exhibit A.
Respondent’s journal is known world-wide and has required hundreds of hours of effort to maintain Respondent’s high reputation. The logo Respondent uses on the resolving website is not the same as Complainant’s. See Respondent’s Exhibit E.
C. Additional Submissions
Complainant does not dispute that Respondent is independent from Complainant. It is because Respondent is acting separately from Complainant that the grounds on which this complainant is based are raised. Complainant added the “African Biodiversity and Conservation” name to its existing trade mark so the name of Complainant’s journal remains the intellectual property of Complainant. Complainant has common law rights in the BOTHALIA mark based on its recognition and period of use. Complainant submits proof of use of the mark on its publication dating back to the 1920’s.
Respondent is attempting to confuse internet users through the use of the confusingly similar logo displayed on Respondent’s website.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases as indicated by the registration dates of the disputed domain names. Complainant states that the disputed domain names were registered on either the same date, or nearly the same date. Additionally, Complainant asserts that Respondent has provided incorrect and fictitious information on the WHOIS information. Complainant states that the contact telephone numbers are incorrect, in that the contact number for Jack Riley/ Pioneer Researches appears to be one digit short and inactive. Additionally, the telephone number for Bothalia Journal is the contact number for the University of Pretoria’s national sciences Building 2 in South Africa. Complainant also states that the e-mail addresses are incorrect and do not exist. See Complainant’s Exhibit C.
Complainant has sufficiently presented evidence demonstrating that the domain names are commonly owned.
Complainant has established that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; Respondent has no rights or legitimate interests in respect to the domain name and the domain name has been registered and is being used in bad faith and should be transferred to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it is a State Entity created by statute and operates in the area of National Environment Management. Complainant contends that it has rights in the BOTHALIA mark under Policy ¶ 4(a)(i) through its applications with the South African Trade Mark Office. See Complainant’s Exhibit A (Reg. No. 2014/20955 filed August 8, 2014), and common law rights based on use dating back to the 1920’s.
It is not necessary to obtain a registration for a given mark in order to have rights in it. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant claims use of the BOTHALIA mark on its house journal known as bothalia since its inception in 1921. Complainant submits documentary support for this claim. Complainant states that its journal is dedicated to the furtherance of botanical science, covering areas such as taxonomy, ecology, anatomy, and cytology. Complainant claims that its BOTHALIA mark is an invented word that was derived from the name “Botha,” after General Louis Botha, who was the first Minister of Agriculture of South Africa. Common law rights in a mark require a showing of secondary meaning. Secondary meaning can be shown through evidence of continuous, ongoing use, financial investment, and notoriety and recognition from the public. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).
Complainant has submitted proof of continuous use of the mark in publications dating back to 1921. In addition, Complainant has shown use of the mark in publications under its name The South African National Biodiversity Institute or “SANBI” since May of 2005. Respondent submits no proof disputing Complainant’s proof of continuous and longstanding trademark ownership.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. In so arguing, Complainant states that Respondent is not commonly known by the BOTHALIA mark. The WHOIS information for the disputed domain names to see that the names of the registrants appear to be protected services. Additionally, Complainant states that Respondent provides fictitious information in the WHOIS database. Complainant claims that it has never authorized Respondent to use the BOTHALIA mark in any way and contends that Respondent has no trademark or intellectual property rights in the disputed domain name. As such, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent’s <bothalia.com> domain name wrongly identifies itself as “Bothalia, A Journal of Botanical and Life Sciences Research.” Respondent’s resolving website has displayed Complainant’s logo and the SANBI acronym. See Complainant’s Exhibit E. Complainant also contends that Respondent’s use creates a fraudulent misrepresentation that Respondent’s journal is that of Complainant’s. Complainant presumes that Respondent’s purpose in registering the disputed domain names is to collect subscription and submission fees from the authors who believe that they are submitting articles to Complainant’s reputable journal. The Panel in Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. Likewise, the immediate Panel may find similarly and conclude that Respondent’s attempts to appear as Complainant for commercial profit is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant next argues that Respondents <bothalia.org>, <bothalia.net>, <bothaliajournal.com>, <bothaliajournal.org>, and <bothaliajournal.net> domain names are inactive and currently under development. Prior panels have frequently concluded that failing to make an active use of a disputed domain name does not convey rights or legitimate interests in that Doman. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds accordingly under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant explains that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant states that Respondent uses the <bothalia.com> domain name and SANBI name on its website to attempt to pass itself off as complainant’s legitimate business in order to commercially profit from confused Internet users. Prior panels have frequently concluded that using a disputed domain name to appear as complainant in order to commercially profit, is a strong indication of bad faith use and registration under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel concludes that Respondent’s use of the <bothalia.com> domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent has provided incorrect and fictitious information on the WHOIS information. Complainant states that the contact telephone numbers are incorrect, in that the contact number for Jack Riley/ Pioneer Researches appears to be one digit short and inactive. Additionally, Complainant states that the telephone number for Bothalia Journal is the contact number for the University of Pretoria’s national sciences Building 2 in South Africa. Complainant also states that the e-mail addresses are incorrect and do not exist. See Complainant’s Exhibit C. Respondent’s submission of falsified WHOIS information indicates bad faith use and registration. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bothalia.com>, <bothalia.org>, <bothalia.net>, <bothaliajournal.com>, <bothaliajournal.org>, and <bothaliajournal.net> domain names be transferred from Respondent to Complainant.
_________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: November 11, 2014
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