WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ponahalo Capital (Pty) Ltd v. Lawrence E.M. Hart
Case No. D2007-0415
1. The Parties
The Complainant is Ponahalo Capital (Pty) Ltd of Parktown, South Africa, represented by Bowman Gilfillan Inc. of Johannesburg, South Africa.
The Respondent is Lawrence E. M. Hart, Lakeforest, California, United States of America, represented by Rutan & Tucker, LLP, of Costa Mesa, California, United States of America.
2. The Domain Names and Registrars
The disputed domain names <ponahalo.com>, <ponahalo.net> and <ponahalo.org> (the “Domain Names”) are registered with Register.com (the ”Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2007. The Center transmitted its request for registrar verification to the Registrar by email on March 19, 2007. The Registrar responded the same day confirming that it was the registrar and the Respondent was the registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that the Domain Names would remain locked during this proceeding, and that the registration agreement was in English and contained a submission by the registrant to the jurisdiction at the Registrar’s principal office; and providing the contact details in respect of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 April 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2007. The Response was filed with the Center on April 30, 2007.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 18, 2007. 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. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a company representing historically disadvantaged persons in South Africa. Its major shareholders include a trust for South African pensioners of De Beers Consolidated Mines (“DBCM”), the Ponahalo De Beers Disadvantaged Womens’ Trust, the Ponahalo De Beers Disabled Persons’ Trust and the Ponahalo De Beers Community Trust.
In November 2005, the Complainant purchased 26% of DBCM for R3.7 billion (US $612 million). DBCM is the largest producer of diamonds in South Africa.
The Respondent registered the Domain Names and also the domain names <ponahalo.co.uk> and <ponahalo.co.za> in November 2005. The Complainant’s attorneys wrote cease and desist letters to the Respondent on December 2, 2005 and August 8, 2006. The Complainant’s attorneys wrote a further letter on November 20, 2006 stating “We have had an opportunity to take instructions from our client. Our client is prepared to offer you R2,800 for the <ponahalo.com>, <ponahalo.co.uk> and <ponahalo.co.za> domain names”.
The Domain Name <ponahalo.com> is currently pointed to a web page inviting offers to purchase diamonds or this Domain Name. The Domain Names <ponahalo.net> and <ponahalo.org> are pointed to parking web pages.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that its attorney spoke to the Respondent by telephone on October 17, 2006. The Respondent indicated that he was an ex-South African living in the United States of America and that he would be prepared to sell the Domain Names together with <ponahalo.co.uk> and <ponahalo.co.za> to the Complainant for US $10 million. The Complainant’s attorney asked the Respondent to put his proposal in writing and the Respondent undertook to do so.
Shortly after this, the Complainant’s attorney received a call from a person claiming to be the Respondent’s attorney who said that he was also an ex-South African. The latter went on to say that the Complainant must make a written offer to the Respondent in respect of the Domain Names and <ponahalo.co.uk> and <ponahalo.co.za>. He followed this up with an email to the Complainant’s attorneys, confirming that the Complainant must make a written offer to the Respondent. This prompted the Complainant’s attorneys’ letter of November 20, 2006, mentioned above, offering the Respondent R2,800. The Respondent has not replied.
With regard to the requirements of the Policy, the Complainant states that it has applied to register PONAHALO as a trademark in South Africa for business management services in class 35 and mining services in class 37. The Complainant has also acquired a number of domain names incorporating its PONAHALO mark. The Complainant maintains that the PONAHALO trademark has been exclusively associated with the Complainant, including on the Internet. The Complainant points out that the Domain Names are identical to its mark and that there is a substantial likelihood of confusion.
The Complainant further maintains that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they were registered and are being used in bad faith. The Complainant submits that in view of the extensive publicity given to its acquisition of 26% of the shares of DBCM, the Respondent must have been aware of its use of the mark PONAHALO when he registered the Domain Names and that he did so with the intention of diverting internet users to his website, misleading them into believing that he is associated with the Complainant and thus disrupting the Complainant’s business.
The Complainant requests a decision that the Domain Names be transferred to it.
B. Respondent
The Respondent submits that the Complainant had no rights to the trademark PONAHALO when he registered the Domain Names. According to the Respondent, the Complainant’s agreement with DBCM was announced on November 9, 2005, whereas he received written confirmation of his registration of the Domain Names at 7:51 pm, Pacific Time, on November 8, 2005.
The Respondent also contends that the Complainant’s trademark applications in classes 35 and 37 do not cover the Respondent’s activities which concern the design and sale of jewelry.
The Respondent alleges that he has been using the Domain Names in connection with his jewelry business since well before receiving notice of this dispute. According to the Respondent PONAHALO is a Lozi word for “appearance”, “view” or “vision” and is therefore apt for the jewelry industry.
The Respondent maintains that he registered the Domain Names for his own use and never approached the Complainant with any offer to sell them. On the contrary, it was the Complainant who approached the Respondent with its offer of R2,800, which would not have covered the costs of registration. The Respondent relies on the absence of any counter-offer by him to sell the Domain Names and his use of them in connection with his legitimate and long-standing jewelry business as indicating that he did not register them for the purpose of transferring them to the Complainant or a competitor of the Complainant for valuable consideration in excess of his out-of-pocket costs.
The Respondent states that he has not included any disclaimer on his website because he does not believe that there is any risk of confusion, but that he has offered to do so and this offer was summarily declined by the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark in which they have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith.
Each of these requirements will be considered in turn:
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel does not regard the Complainant’s ungranted applications to register the mark PONAHALO as conferring rights in this mark on the Complainant. This view is in line with previous decisions under the Policy such as Vertical Computer Systems, Inc. v. Registrant of “pointmail.com”, WIPO Case No. D2001-0006.
However, the Panel is satisfied on the evidence that the Complainant has unregistered rights in the mark PONAHALO as a result of the extensive publicity regarding its acquisition of a substantial shareholding in DBCM. The Panel accepts that, as a result of this publicity, the name “Ponahalo” is exclusively associated with the Complainant to a very large number of people in South Africa and elsewhere.
Although the Complainant has a social and political mission, it is carrying out this mission by commercial means, namely investing in and participating in the management of the mining business of DBCM. In these circumstances, the Panel considers that the Complainant has unregistered rights in the mark PONAHALO that would be likely to be protected by the South African law of passing off.
Rights of this nature have been held to qualify for the purpose of the first requirement of the Policy in numerous decisions following the leading case of Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210. The commercial character of the means by which the Complainant seeks to achieve its ends differentiates the present case from cases such as Kathleen Kennedy Townsend v B.G. Birt, WIPO Case No. D2002-0030, where the Complainant did not have any rights in her name as a trade or service mark because she was not carrying on any commercial activity under it.
The Domain Names are effectively identical to the Complainant’s PONAHALO mark. For the purpose of this requirement, the generic top level domain suffix is to be disregarded.
As discussed below, the Panel does not accept the Respondent’s contention that he registered the Domain Names before the announcement of the Complainant’s agreement with DBCM. However, even if he had done so, this would not affect the first requirement of the Policy. It is well-established that this does not require that the Complainant’s rights precede the registration of the Domain Name: see, for example, Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
The Panel concludes that the first requirement of the Policy is satisfied.
B. Respondent had no Rights or Legitimate Interests
As mentioned above, the Respondent claims that he registered the Domain Names at 7:51 pm, Pacific Time, on November 8, 2005, before the announcement of the Complainant’s deal with DBCM on November 9, 2005. However, the Panel notes that the BBC website report of the announcement of the Complainant’s acquisition exhibited to the Complaint indicates that it was last updated at 12:34 GMT on Tuesday November 8, 2005 and refers to the deal being announced on Tuesday.
The Panel observes that Pacific Time is eight hours behind GMT, so the BBC report was apparently posted more than fifteen hours before the Respondent registered the Domain Names. The Panel therefore finds that the Respondent registered the Domain Names after the announcement of the Complainant’s deal with DBCM.
The Respondent does not deny that he knew of the Complainant and its adoption of the mark PONAHALO when he registered the Domain Names. Furthermore, he claims to be in the jewelry business and does not dispute that he is of South African extraction. It is therefore likely that he followed major developments in DBCM’s business with some interest. The Panel concludes on the balance of probabilities that the Respondent knew of the Complainant’s adoption of the mark PONAHALO and the announcement of its acquisition of its holding in DBCM before he registered the Domain Names.
The Respondent claims that he was using the Domain Names in connection with his jewelry business well before receiving any notice of this dispute. However, he provides no evidence to substantiate this contention and the Panel also notes that he does not say that he was using the name PONAHALO before the Complainant’s announcement of its deal with DBCM. The Panel concludes on the balance of probabilities that the Respondent was not using the name PONAHALO in the course of business prior to the announcement of the Complainant’s acquisition of its shareholding in DBCM.
In these circumstances, the Panel considers that any use by the Respondent of the Domain Names was commenced after the announcement in order to profit from confusion with the Complainant. Although the Respondent submits that he operates in a different field to the Complainant, the Panel finds that, on the contrary, the respective fields are closely related, given that one of the main uses of diamonds is in jewelry. In the Panel’s view, there is an obvious likelihood of confusion which the Respondent in all probability realized and intended when he registered and started to use the Domain Names.
Accordingly, the Panel finds that any use of the Domain Names by the Respondent has not been in connection with a bona fide offering of goods or services, nor legitimate non-commercial or fair use, such as to give rise to rights or legitimate interests in respect of the Domain Names within the meaning of the Policy.
It also appears that the Respondent was not commonly known by a name corresponding to the Domain Names.
Having reviewed the evidence, the Panel is satisfied that there is no other basis on which the Respondent might claim to have rights or legitimate interests in respect of the Domain Names. The Panel accordingly concludes that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
As mentioned above, the Complainant alleges that the Respondent offered to sell the Domain Names together with <ponahalo.co.uk> and <ponahalo.co.za> to the Complainant for US $10 million, but this is disputed by the Respondent.
The Panel notes that the Complainant’s account is verified by the Complainant’s attorney, who participated in the relevant conversation (on his account) and who signed the Complaint. By contrast, the Respondent’s account is not verified by any direct statement of any party to the conversation; the Response is signed by the Respondent’s attorney, who did not take part, and does not exhibit any affidavit or statement signed by the Respondent. The Panel also views statements in the Response with some skepticism in view of the inaccuracy of the contention that the Domain Names were registered prior to the announcement of the Complainant’s acquisition of its stake in DBCM.
The Panel finds in all likelihood that the Respondent did offer to sell the Domain Names together with <ponahalo.co.uk> and <ponahalo.co.za> to the Complainant for US$10 million in a telephone conversation with the Complainant’s attorney on or about October 17, 2006.
In any event, it is not disputed that the Respondent’s website is offering the Domain Name <ponahalo.com> for sale and it is not suggested that the other Domain Names were registered with a different intent.
The Panel concludes that the Respondent registered the Domain Names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of the costs of registering them. This constitutes evidence of registration and use of the Domain Names in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Panel also considers that the Respondent registered the Domain Names in order to prevent the Complainant from reflecting its PONAHALO mark in a corresponding name. Furthermore the Respondent has engaged in a pattern of such conduct, having registered the three Domain Names together with <ponahalo.co.uk> and <ponahalo.co.za>. The Respondent thereby registered the domain names likely to be of most interest to the Complainant, given its association with DBCM, a major Anglo-South African corporation. Even if the Respondent (who is based in the United States of America) carries on a business selling jewelry as he claims, there appears to be no reason why he should want all five domain names except to block the Complainant. This constitutes further evidence of registration and use in bad faith in accordance with paragraph 4(b)(ii) of the Policy.
Finally, as discussed above, the Panel considers that the Respondent has used the Domain Names in order to attract Internet users to his website for commercial gain by the likelihood of confusion with the Complainant’s PONAHALO mark. This constitutes evidence of bad faith in accordance with paragraph 4(b)(iv) of the Policy.
The Panel concludes that the Domain Names were registered and are being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <ponahalo.com>, <ponahalo.net> and <ponahalo.org> be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: June 1, 2007