1.1 The Complainant is National Brands Limited, South Africa, represented by Adams & Adams Attorneys, South Africa.
1.2 The Respondent is Rob Seago, Majestic International Group, United States of America (“United States”), represented internally.
2.1 The disputed domain names <fiverosestea.com>, <fiverosesusa.com>, <freshpakrooibos.com>, <freshpakusa.com>, <pyottsusa.com> and <vitasnackusa.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2020. At that time, WhoIs details for the Domain Names, did not disclose the underlying registrant. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names. The Center sent an email communication to the Complainant on October 20, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2020.
3.2 The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Response was filed with the Center on November 23, 2020.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 27, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
3.5 The Complainant in an email to the Center dated November 30, 2020, sought a stay of these proceedings to explore settlement negotiations, and also sought to make various further submissions in respect of the Response. For reasons that are explained in greater detail later in this decision, the Panel informed the parties via the Center that it was willing to grant a stay if the Respondent confirmed that it agreed to such a stay by no later than December 4, 2020, but that absent such confirmation, the Panel would proceed to issue a decision. No such confirmation was forthcoming from the Respondent by that date and the Panel has, therefore, proceeded accordingly.
4.1 The Complainant is a company incorporated in South African’s that deals in fast-moving consumer goods. It has a large portfolio of products, marketed and sold under various brands including (a) “FIVE ROSES” for teas, (b) “FRESHPAK” for rooibos teas, (c) “PYOTTS” for biscuits and baked confectionery, and (d) “VITASNACK” for rice crackers.
4.2 The Complainant is the owner of various registered trade marks in various countries that comprise or incorporate those brand names, including:
(i) South African trade mark no 1938/00431 with a registration date of March 24, 1938, for FIVE ROSES as a word mark in class 30;
(ii) United States trade mark no 4921997 registered on March 22, 2016, for FIVE ROSES as a standard character mark in class 30;
(iii) South African trade mark no 1994/01198 registered on November 11, 1997, for FRESHPAK as a word mark in class 30;
(iv) South African trade mark no 1962/00479 with a registration date of February 17, 1962, for PYOTTS as a word mark in class 30; and
(v) South African trade mark no 2001/18858 registered on May 8, 2006, for VITASNACK as a word mark in class 30.
4.3 The Respondent is a company incorporated in California in 2005. It is the successor in business to and operates various businesses under a number of names including African Hut. The African Hut business was established in 1994 and has operated, inter alia, from a website using the domain name <africanhut.com>. This website focuses on selling South African and British products to ex-pats living in the Unites States. These products are also sold by the Respondent from a bricks and mortar store in Southern California.
4.4 Genuine products under the brands relied upon by the Complainant were sold from the <africanhut.com> website in 1998. It appears that the Respondent has to at least some degree continued to sell these products subsequent to that date.
4.5 The Complainant has sourced various South African products through the Indian Ocean Export Company (“IOEC”), who are based in Durban, South Africa. In or about April 2008 a meeting took place in California between a representative of the IOEC and the Respondent at which the further sales and marketing by the Respondent of Five Roses Teas, Freshpak Rooibos Tea and Pyotts products in the United States were discussed. As a consequence, the Respondent proceeded to undertake various tasks including providing details as to packaging and labelling requirements so that any products imported complied with United States import regulations.
4.6 Shortly thereafter on April 11, 2008, the Respondent registered each of the Domain Names. However, there is no suggestion that any of these Domain Names have been used since registration to promote the Complainant’s products. By the time the Complaint in these proceedings was filed, all of the Domain Names, save for the <pyottsusa.com> Domain Name, were being used to display what appeared to be pay-per-click links. In those cases where the Domain Names were being used to display pay-per-click links, these links included at least one directed to tea, food or food related services. The <pyottsusa.com> Domain Name, was not being used for any active web page.
5.1 In its Complaint, the Complainant described its business, the marks it relies upon, and how the Domain Names have been used. It claims that it had wished to send a letter of demand to the Respondent before commencing these proceedings, but that it was unable to do so since the Registrar failed to respond to the Complainant’s request that it disclose the identity of the registrant.
5.2 In addition to registered trade mark rights, the Complainant relies upon alleged unregistered trade mark rights in each of the relevant brands. It contends that each of the Domain Names wholly incorporates one of its marks and that each Domain Name is confusingly similar to that corresponding mark.
5.3 The Complainant contends that it has no relationship with the Respondent and that the use of the Domain Names (insofar as they are used at all) prima facie demonstrates that the Respondent has no right or legitimate interest in the same.
5.4 The Complainant further contends that the fact that all the Domain Names were registered at the same time in connection with different marks of the Complainant demonstrates that the Respondent must have been aware of the Complainant’s rights at the time the Domain Name were registered. It claims that the Domain Names have been registered either to take advantage of what it contends is the substantial reputation and goodwill in the Complainant’s marks or in order “to sell them at exorbitant prices”. In the circumstances, it claims that the Domain Names have been registered and used in bad faith.
5.5 In its Response, the Respondent describes its business, and the history of The African Hut business in particular. It describes its meeting with IOC in April 2008 (as detailed in the Factual Background of this decision). It then goes on to contend that it registered the Domain names in April 2008 “as a direct result of those discussions, and with the prospect of this new business opportunity in the United States”. The Respondent asserts that “no definitive agreement has been […] to import those products on a larger scale, but [that it] remain[s] open to that possibility in future” and that it “continue[s] to import, sell and promote these products to the South African expatriates”.
5.6 Further, the Respondent claims to be the oldest and largest importer/retailer of South African groceries in the United States. It also contends that under United States law every foreign food facility is required to have a representative residing in the United States. It also claims that one of its co-owner has been the “Initial Agent” for the Complainant’s products in the United States.
5.7 The Respondent “recognizes” the Complainant’s rights but contends that when the Respondent registered the Domain Names, the Complainant had no registered trade mark right in the United States either because (in the case of FRESHPACK, FIVE ROSES and POTTS) earlier registered trade marks had been cancelled, or because (in the case of VITASNACK) the Complainant had not registered that term.
5.8 The Respondent further contends that the circumstances of the Respondent’s (or those associated with it) dealings with IOC and the Complainant’s products, the prospect of future business and an alleged significant investment in those brands in the Unites States, the Respondent has a legitimate business interest in the Domain Names.
5.9 Further, the Respondent maintains that the circumstances surrounding the registration of the Domain Names and the fact that they have merely resolved to default parking pages created by the Register, are such that there has been no registration or use of the Domain Names in bad faith. It also contends that “Bakers” has largely replaced “Pyotts” as a brand name for certain products of the Complainant. It claims that is it is significant that the Respondent has not registered the domain name <bakersbiscuits.com>.
6.1 The Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 Before addressing each of the requirements of the Policy in turn, the Panel will briefly address the Complainant’s request for a stay.
6.3 Where after a panel has been appointed the parties to proceedings under the Policy agree that a stay of those proceedings would be helpful to enable them to explore settlement, a panel will usually accommodate such a request. Suspension of proceedings is something that is expressly provided for in paragraph 17 (a)(i) of the Rules. However, the Policy is also designed to provide a process for the speedy determination of disputes. With this in mind, a stay of a few weeks should in most cases be sufficient to allow any settlement discussions to take place, and a panel may be reluctant to grant a stay for a longer period.
6.4 Further, once proceedings have formally commenced and certainly after a panel has been appointed, the issue of a stay is not one which is in the unilateral control of a complainant. A respondent may have a legitimate interest in wanting the proceedings speedily to continue to a decision. Accordingly, although ultimately this is a matter of panel discretion, the panel may not agree to a complainant’s unilateral request (see in this respect a similar analysis, albeit in the slightly different context of a complainant request for termination of proceedings, in Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis WIPO Case No. D2016-2601). The wording of paragraph 17(a)(i) of the Rules also appears to assume that both the complainant and the respondent have agreed that proceedings should be stayed, in that it refers to a request for a stay from the parties (as opposed to a request from a party).
6.5 It is for this reason that when the Complainant requested a stay, the Panel indicated to the parties that it would agree to that request provided that the Respondent confirmed that it also consented to this. The Respondent did not provide that confirmation and, accordingly, the Panel has issued this decision.
6.6 The Complainant has demonstrated that it is the owner of registered trade mark rights in at least in South Africa for FRESHPACK, FIVE ROSES, POTTS and VITASNACK. One of these marks is recognisable in each of the Domain Names. Indeed, the most sensible reading of each of these Domain Names is as incorporating one of these marks in combination with the word tea, or a word associated with a certain type of tea, or the term “USA” and the “.com” generic Top-Level Domain (“gTLD”). In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.7 The Complainant has, therefore, satisfied the Panel that each of the Domain Names are confusingly similar to one of the Complainant’s registered trade marks and has thereby made out the requirements of paragraph 4(a)(i) of the Policy.
6.8 The Respondent advances a case that it has rights and legitimate interests recognised under the Policy, because (a) it has historically sold, and perhaps presently is selling, genuine products of the Complainant under the marks incorporated in the Domain Names, and (b) that at the time of registration of the Domain Names, it was actively involved in discussions with a South African supplier of those products as to the more extensive sale of those products in the United States.
6.9 The circumstances in which a reseller may have a right or legitimate interest under the Policy is summarised in section 2.8.1 of the WIPO Overview 3.0. The first paragraph of this section states:
“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
6.10 The difficulty that the Respondent faces so far as the “Oki Data test” is concerned, is that there is no suggestion that any of the Domain Names have been used at all since registration in respect of the relevant goods. Instead, they appear to have merely displayed pay-per-click links, or in one case has not been used at all. A reseller does not have a right and legitimate interest in registering and holding, but not otherwise using, a domain name incorporating the marks of another entity whose goods or services it sells.
6.11 There is also a further problem for the Respondent. As sections 2.5.1 and 2.8.2 of the WIPO Overview 3.0 records, where a domain name is identical to a mark or comprises the mark combined with some other term that does not sufficiently signal that the domain name registrant is not the trade mark owner, then the domain name is likely to involve impermissible impersonation of the trade mark owner. There is no right or legitimate interest in such impersonation. This is so regardless of whether the “Oki Data” test has been satisfied.
6.12 Here the additions to the trade marks in the Domain Name are the words “USA”, “tea” or “rooibos”. As is discussed in section 2.5 of the WIPO Overview 3.0 and by this Panel in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031, the addition of a geographical term is generally insufficient to signal that the domain name registrant is not the trade mark owner. In the opinion of the Panel, the terms “tea” and “rooibos” are also insufficient since they are just a description of the product involved.
6.13 As is suggested in the final paragraph of section 2.8.1 of the WIPO Overview 3.0, matters may be very different if the Domain Names were registered pursuant to an agreement with the Complainant. However, as is addressed in greater detail when considering the issue of bad faith below, it appears to be undisputed that regardless of the conversations that the Respondent had with IOC, there was no such agreement.
6.14 In the circumstances the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.15 There appears to be little dispute that the Respondent was engaged in discussions in 2008 with IOC regarding an arrangement for the more extensive sale and promotion of products under the various brands recorded in the Domain Names, and that the Domain Names were registered in anticipation of such arrangement.
6.16 What is less clear is the relationship between IOC and the Complainant. The Respondent does not allege that somehow IOC was acting with the authority, or as the agent, of the Complainant. However, even if the Panel were to assume that these discussions took place with the authority of the Complainant such that the Complainant and IOC can be treated as the same person for the purposes of assessing the question of bad faith, the Respondent does not claim that the Domain Name registrations took place with the consent or blessing of IOC and the Respondent admits that it did not ultimately enter into the arrangement discussed.
6.17 Where a registrant registers a domain name incorporating a trade mark without the consent of that trade mark holder and in anticipation of a broader deal that might be done with the trade mark holder, then prima facie the registration and subsequent holding of that domain name is in bad faith. The registrant in those circumstances is at best acting presumptuously, in assuming that a deal will be done whereby the registration and use of the domain name will be retrospectively approved. Further, the possibility of abusively using those registrations in the course of negotiations is obvious.
6.18 The Panel is prepared to assume that the registrations in this case, were merely presumptuous and that there was no intention to misuse those registrations in ongoing discussions (notwithstanding that at times parts of the Response, appears less directed to the question of whether the requirements of the Policy had been satisfied, but to selling the Respondent’s services in the United States). However, this is still registration and use in bad faith, especially when the composition of those registrations carries a risk of implied affiliation.
6.19 Further, the Panel is unpersuaded by the Respondent’s arguments in relation to the fact that it has not registered another domain name that incorporates what it describes as the replacement brand for “Pyotts”. If the Respondent’s point is that it is not a crude cybersquatter, who has registered domain names with a view to sale to the trade mark owner, then the Panel accepts that this is correct. But this is not the only circumstances where registration and holding of a domain name can be in bad faith.
6.20 Similarly the Panel is unpersuaded by the argument that at the time that the Domain Names were registered the Complainant did not own any registered trade mark in the United States. A complainant does not show that there is trade mark infringement to succeed under the Policy (see for example Ritzio Purchase Limited v. Domain Admin, PrivacyProtect.org / Timur Ziganshin / Lianna Tall, Escave Ltd / Private Whois, Global Domain Privacy Services Inc / Moniker Privacy Services WIPO Case No. D2015-0875). That is not to say that the absence or the existence of a trade mark in a particular jurisdiction may not in some cases be important. It is something that could, for example, be significant if a respondent contends that it was unaware of the complainant’s business and marks at the time of registration of the domain name and without any intention to take any advantage of any association with the complainant’s marks. But this is not the position in this case. The Domain Names were registered in full knowledge of the Complainant’s brands and products and with the admitted intention of use in connection with the same.
6.21 In the circumstances, the Panel finds that the Respondent registered and has held the Domain Names in bad faith and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
6.22 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <fiverosestea.com>, <fiverosesusa.com>, <freshpakrooibos.com>, <freshpakusa.com>, <pyottsusa.com>, <vitasnackusa.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: December 10, 2020