Kalahari v. Kevin Ham, Host Start Internet Services Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kalahari, A Division Of Nasboek Ltd. (Sa) -V- Host Start Internet

Services, Inc.

Case No. D2001-0992

1. The Parties

The Complainant is Kalahari, A Division Of Nasboek Ltd. (SA), 1 Neels Bothma

Street N1 City Business Park, Goodwood, 7463, Republic of South Africa.

The Respondent Is Host Start Internet Services, Inc., 5406 Bruce Street, Vancouver,

BC V5P3M3, Canada.

2. The Domain Name and Registrar

The Domain Name is <kalahari.com>.

The Registrar is Tierranet, Incorporated.

3. Procedural History

The Complaint was received by WIPO on August 3, 2001. WIPO has verified that

the Complaint satisfies the formal requirements of the Policy, the Rules and

the Supplemental Rules and that payment was properly made. The Administrative

Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph

2(a). Tierranet ("the Registrar") has confirmed that <kalahari.com>

("the Domain Name") was registered through it and that Host Start

Internet Services, Inc. ("the Respondent") is the current registrant.

The Registrar has further confirmed that the Policy is applicable to the Domain

Name.

On August 10, 2001, WIPO notified the Respondent of the Complaint in the usual

manner and informed the Respondent inter alia that the last day for sending

its Response to the Complainant and to WIPO was August 31, 2001. On August 27,

2001, a Request for extension of Response filing deadline was received by WIPO.

On August 27, 2001, an Objection was received by WIPO from the Complainant.

Further submissions were received from the Respondent and Complainant regarding

the extension on August 27, 2001. On August 27, 2001 the objection was withdrawn

by the Complainant and WIPO granted the request for the extension. On September

10, 2001, the Response was received by WIPO by email and in hard copy form on

September 11, 2001.

The Panel was properly constituted. The undersigned Panelists each submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence

of which the date scheduled for the issuance of the Panel’s Decision is October

18, 2001.

On October 8, 2001, the Complainant sent by email to the members of the Panel

a further submission responding to the Respondent’s response.

On October 19, 2001, upon the receipt of Panel’s request, WIPO notified a revised

decision date as October 25, 2001, to the Parties.

4. Factual Background

The Complainant is a South African based online service provider whose sole

method of conducting business is via the Internet.

The Complainant has since 1998 marketed its products and services under and

by reference to the name Kalahari. It registered the domain name, <kalahari.net>,

on April 7, 1998.

On a date prior to June 9, 1999, the Complainant entered into an agreement

with a company named Electric Ocean to acquire the registration of the Domain

Name which was at that time held by Electric Ocean. However, before the transfer

could be effected the registration of the Domain Name was cancelled on Electric

Ocean’s failure to pay the fees. The Domain Name fell back into the public domain.

In June/July 1999, the Complainant filed applications in South Africa for registration

of the kalahari.net logo (a word and device mark) in Classes 16 and 35.

In December 2000, the Respondent, a Canadian internet services company, registered

the Domain Name.

On March 6, 2001, the Complainant’s Counsel sent an email to the Respondent

reading:

"Hi,

My name is Reinhardt Buys. I am interested in the Domain Name www.kalahari.com.

Is it for sale and what will the price be?

Reinhardt."

The Respondent did not reply.

On June 14, 2001, another representative of the Complainant, Francis Cronjé

telephoned the Respondent and spoke to Dr. Kevin Ham of the Respondent with

a view to acquiring the Domain Name.

On June 18, 200,1 Mr. Cronjé emailed the Respondent in the following

terms:

"Good day, or depending on the time there, good evening to you Kevin,

Possible Lease Agreement or Sale of Domain Name kalahari.com

Hope you remember this, but it is with regards to our telephone conversation

on 14 June 2001. Have you guys had the time to discuss a possibility of a Lease

Agreement or maybe even a possible sale of your Domain Name kalahari.com? I

was hoping you can maybe let me in on that, and maybe supply me with a proposition

or offer to that extent.

I appreciate your time and look forward to hearing from you.

Regards, Frances Cronjé."

The Respondent replied as follows:

"Frances,

We have been discussing this over the weekend. We felt that this is a Domain

Name we would not like to sell and if we were to sell it, it would only

be worth our while for a five figure value.

Leasing the domain would cover that over a period of years if there was a buy

out option.

If this falls within your budget, we would discuss it in more detail. If not,

I wish you the best on your online ventures.

Sincerely

Kevin Ham."

The Complainant did not respond to that last email but instead initiated this

complaint procedure.

5. Parties’ Contentions

A. Complainant

The Complainant claims common law trade mark rights in the name Kalahari as

a result of its trade under the name Kalahari. The Complainant also relies on

its trade mark rights in the mark kalahari.net which it has applied to register

in South Africa in Classes 16 and 35. The Complainant says that it has done

extensive marketing of its products and services under the name Kalahari since

1998 "acquiring a reputation uniquely associated with [its] common law

trade mark and has further become a well know business, relying on its credit

worthiness. By [its] functioning within the context of the undertaking, these

factors have contributed to the goodwill of the business, which serves as the

object of an immaterial property right, under the South African Common Law."

The Complainant argues that the Domain Name is identical to its name Kalahari

and is confusingly similar to its trade mark kalahari.net.

The Complainant also asserts that the Respondent has no rights or legitimate

interest in respect of the Domain Name. The Complainant argues that the Respondent

is not using and has not used and is not demonstrating and has not demonstrated

intent to use the Domain Name legitimately in connection with a bona fide offering

of goods and services in commerce. The Complainant says that "although

it seems as if the Domain Name www.kalahari.com linked to a specific site, a

number of other domain names that are owned by the Respondent also link to the

same site, hiding the fact that the Respondent is a cyber squatter…" The

other domain names which link to the site are <hawaiibigisland.com>, <travelshop.com>

and <travelworld.com>.

The Complainant says that the Respondent will not be able to "succeed

in illustrating a claim that it is commonly known by the name Kalahari in Canada."

The Complainant says that it is known as Host Start Internet Services. "

… Neither the Respondent’s location nor the contents on the site have any association

with the Kalahari in Southern Africa whatsoever. Finally, the Respondent does

not have any common law or registered trade mark rights in the name Kalahari…"

The Complainant goes on to say that the Domain Name was registered in bad faith

on the basis that it was registered or acquired primarily for the purpose of

selling, renting or otherwise transferring the Domain Name Registration to the

Complainant for valuable consideration in excess of the Domain Name Registrant’s

out of pocket costs directly related to the Domain Name. The Complainant points

to the Respondent’s response to its approach in which the Respondent says that

it would not be prepared to sell the Domain Name for anything less than a five

figure sum. The Complainant also points to "the fact that the Domain Name

www.kalahari.com merely link and/or is a copy of an existing site (sic)."

This appears to be a reference to the fact that the other domain names referred

to above also link to the same site.

The Complainant further asserts the Respondent "has registered the Domain

Name in order to prevent Kalahari, the owner of the trade mark from reflecting

the mark in a corresponding Domain Name and has engaged in a pattern of such

conduct." The Complainant also states that "by using the Domain Name,

the Respondent has intentionally attempted 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 its website or location or other product or service on its

website or location."

Finally the Complainant accuses the Respondent of engaging in morally reprehensible

conduct linking the website at www.kalahari.com "to other sites containing

sexually explicit language and pornographic content, tainting the Respondent’s

claim of a bona fide purpose and illustrating its use in bad faith. The Respondent

has done this by allowing pop-up menus in its programming language, catering

for the owners of pornographic content such as www.popuptraffic.com who is also

the owners of www.turbofind.com. The Complainant says that it is well recognised

that associations with a sex site could be significantly damaging to other types

of business. The Complainant points to a previous WIPO Decision as authority

for the proposition that this type of behaviour is an aggravating element in

consideration of bad faith issues. The Complainant states that "the site

www.kalahari.com allows for sex and adult related searches where web users can

access hard core pornography without any adult verification service whatsoever

– this is a far cry from the apparent travel rated focus of the site."

B. Respondent

The Respondent contends as follows:

1. Kalahari is a common geographic term to which the Complainant does not have

exclusive rights under the policy.

2. The Complainant does not have a registered trade mark for Kalahari but simply

claims Common Law Rights as well as rights based on a mere trade mark application.

The Respondent states that the Complainant does not have enforceable rights

under the policy in connection with either an unregistered geographic mark,

an unregistered mark which is merely a combination of a geographic mark and

a generic word, or a mere Trade Mark Application.

3. The Respondent had no knowledge of the Complainant’s alleged trade mark

when it registered the Domain Name so it is impossible to establish bad faith

registration.

4. The Complainant’s Trade Mark Application is a design mark for its logo which

contains art work not just the text kalahari.net and thus does not resemble

the textual component of the disputed domain.

5. Kalahari is the name of a desert in Africa and the Respondent registered

it to use in connection with is plan to develop a website offering travel information

about Africa including the Kalahari.

6. Complainant’s present use of the Domain Name in connection with links to

general information also established its rights for legitimate interest in and

lack of bad faith registration and use of the dispute Domain Name.

As to the allegation that the Respondent offered to sell the Domain Name for

a sum in excess of the Respondent’s out of pocket expenses, the Respondent points

out that the response was simply a response to a unsolicited enquiry from the

Complainant and when it was made the Respondent had no idea of the existence

of the Complainant or its alleged trade mark rights, nor did it know that the

request was being made on behalf of the Complainant.

On this basis it cannot be said that the Domain Name was registered with any

mala fide intent toward the Complainant.

The Respondent’s submissions extend to no less than eleven pages of text and

no less than thirty-four citations of authority.

In light of the Panel’s decision and the basis for it, it is unnecessary to

expand further on the Respondent’s contentions save to say that the Respondent

has alleged that the complaint constitutes Reverse Domain Name Hijacking.

The Respondent’s allegation in relation to Reverse Domain Name Hijacking reads

as follows:

"Complainant Has Engaged in Reverse Domain Name Hijacking

Respondent respectfully submits that this is a case of Reverse Domain Name

Hijacking and, pursuant to Paragraph 15(e) of the Rules, this Panel should declare

in its decision that the Complaint was brought in bad faith and constitutes

an abuse of the administrative proceeding. See e.g. Goldline Int’l,

Inc. v. Gold Line, Case No. D2000-1151

(WIPO April 3, 2001). First, Complainant has no registered trademark for the

geographic term KALAHARI, and a simple review of relevant published decisions

under the Policy should have informed Complainant that it had no enforceable

rights to a trademark for the purposes of bringing this proceeding. It is telling

that Complainant fails to cite a single decision relating to unregistered geographic

term marks. Second, Complainant’s attempt to trap Respondent into offering to

sell it the Disputed Domain by i) hiding its identity; ii) acting as if though

it was a sincere inquiry; and iii) using it as a basis for establishing bad

faith after Respondent indicated its reluctance to the sell it the domain name,

is evidence of Complainant’s bad faith which should be condemned by this Panel.

Third, Complainant’s disingenuous attempt to characterize Respondent as a pornographer

is so utterly without merit, that it also rises to the level of abuse of this

proceeding.

It is respectfully submitted that this Panel should strongly condemn this unscrupulous

behavior as an abuse of the administrative process. It is WRONG for lawful registrants

of common word domain names to have to suffer the expense and hardship of defending

a frivolous claim like this one, and it is incumbent upon this Panel to blow

the whistle on this abuse and send a message to other potential Complainants

to think twice about filing an action in a matter that, on its face, clearly

does not constitute abusive domain name registration. As one Panel has recently

noted with language that is quite appropriate here:

Of course, this very Complaint is a form of "cyberbullying." . .

. it [is] troubling when a Complainant attempts to use this forum to take away

a domain name where any reasonable review of the ICANN Policies and Rules would

show that the Complainant’s case is extremely weak and, more importantly, when

it may well be that the Complainant holds greater economic power and commands

greater resources than the Respondent.

Maine Bait Company v. Brooks, supra."

C. The Complainant

The Complainant’s further submission extends for a further 1500 words the already

very extensive submissions in the case. It was filed out of time, but the Panel

has nonetheless read it. It is fundamentally flawed in that it fails to address

the single most important feature of the Response, namely the Respondent’s denial

that it was aware of the existence of the Complainant or its trade mark, when

the respondent registered the Domain Name.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the

Domain Name; and

(iii) Domain Name has been registered and is being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of

the Rules and in particular the following sentence namely: -

"If after considering the submissions the Panel finds that the Complaint

was brought in bad faith, for example in an attempt at reverse domain name hijacking

or was brought primarily to harass the domain name holder, the Panel shall declare

in its Decision that the Complaint was brought in bad faith and constitutes

and abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning

"using the Policy in bad faith to attempt to deprive a registered domain

name holder of a domain name."

Identical or confusing similarity

In light of the Panel’s decision in relation to bad faith registration and

use it is not necessary to investigate in detail the extent of the Complainant’s

rights in relation to the names or marks KALAHARI and KALAHARI.NET.

Rights or legitimate interest of the Respondent

In light of the Panel’s decision in relation to bad faith registration and

use, it is not necessary to investigate in detail the extent of the Respondent’s

rights in respect of the Domain Name. However, it is right to record that the

Panel was not at one on this point. One panelist took the view that "the

Complainant has probably done enough to establish that the Respondent has no

rights or legitimate interests in respect of the Domain Name, which is essentially

a geographical term", while another is of the view that "under both

US and Canadian law, a person who acquires a domain name in good faith does

have rights and legitimate interests in that name as a default matter, regardless

of whether it's a geographic term or not." The third panelist has

not expressed a view in the matter.

Bad Faith

Even if the Complainant were to have succeeded under paragraphs 4(a)(i) &

(ii) of the Policy, the Complaint as regards paragraph 4(a)(iii) to the effect

that the Domain name has been registered in bad faith and used in bad faith

cannot succeed.

The Respondent has denied that at the time it registered the Domain Name it

knew of the existence of the Complainant or its trade marks. The facts are that

the Complainant, based in South Africa, commenced ‘marketing’ (whatever that

may mean) its products and services on line in 1998. The Complaint contains

little if any evidence as to the nature and extent of that marketing. The Complainant’s

revenue figures are low and the Complainant’s site seems to be directed almost

exclusively the South African market. The Respondent, operating out of Canada,

registered the Domain Name in December 2000, if the Whois record attached to

the Complaint is correct. There is nothing in the Complaint to suggest why the

Respondent might have known of the existence of the Complainant.

All the examples of cybersquatting set out in paragraph 4(b) of the Policy

involve the Respondent, at the time of registration of the Domain Name,

targeting the Complainant in some way, whether it be with intent to damage the

Complainant, to extract money from the Complainant or to derive some unfair

benefit on the back of the goodwill of the Complainant.

While the list of examples set out in paragraph 4(b) is said to be non-exhaustive,

the Panel knows of no circumstances in which a respondent ignorant of the existence

of the complainant and its trade marks can be said to have registered the domain

name in question in bad faith.

The Panel finds that the Complainant has failed to prove that the Domain Name

was registered in bad faith and is being used in bad faith.

7. Decision

The Complaint is dismissed

8. Reverse Domain Name Hijacking

In the view of the Panel, this Complaint should not have been filed. The Complainant

ought to have known at the time of the pre-complaint communications between

the parties that the Respondent was not a cybersquatter.

Given the nature of the Response and in particular the Respondent’s denial

that it was aware of the existence of the Complainant and its trade marks at

the time of registration of the Domain Name, the further submission should not

have been made by the Complainant unless it was to address that issue.

If the Panel had been persuaded that the Complainant had deliberately set out

to abuse this administrative procedure, the Panel would have had no hesitation

in condemning the Complainant and upholding the Respondent’s claim of Reverse

Domain Name Hijacking. As it is, the Panel is uncertain in the matter and consequently

has no alternative but to put the ‘abuse’ down to incompetence.

Tony Willoughby

Presiding Panelist

Samuel K.B. Asante

Panelist

Michael Froomkin

Panelist

Dated: October 25, 2001