The Complainant is Konga Online Shopping Limited of Yaba, Lagos State, Nigeria, represented by Babajimi Ayorinde, Nigeria.
The Respondent is Rocket Internet GmbH, Arnt Jeschke of Berlin, Germany, represented by Rösler, Rasch & Partner Patent und Rechtsanwälte, Germany.
The disputed domain name <konga.sc> is registered with INTERNETX GMBH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 27, 2014.
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”).
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 July 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2014. The Response was filed with the Center on July 22, 2014.
On July 30, 2014, the Center received a communication from Ms. J. Thorell asking that she and a Mr. C. Bischoff be copied on emails moving forward in this case. The Center requested to identify her role in the proceeding on July 31, 2014. In a communication to the Center of August 12, 2014, Ms. J. Thorell stated that she and Mr. C. Bischoff “represent Kinnevik on the Konga Board of Directors”.
On June 3, 2014, the Registrar indicated to the Center the date of expiry of the disputed domain name as June 19, 2014. On June 3, 2014, the Center asked the Registrar to confirm in accordance with the ICANN Expired Domain Deletion Policy that the disputed domain name would be placed in Registrar lock status and so remain until after the lapse of the expiry date until the UDRP proceedings are concluded and to advise whether any action was required by the Parties to keep the domain name under Registrar lock. On June 3, 2014, the Registrar confirmed that the disputed domain name would be renewed by the Registrar and would also remain on Registrar lock. On June 3, 2014 the Center wrote to the Parties and Registrar urging the Parties to contact the Registrar to arrange payment of any renewal/registration fees that might be due. On June 5, 2014, the Center requested the Registrar to confirm that the disputed domain name was in the process of being placed on Registrar lock and the Registrar confirmed that the disputed domain name had been so placed. On June 20, 2014, the Respondent replied to the Center’s communication of June 3, 2014 indicating that, per the WhoIs record, the renewal appeared to have been processed.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 21, 2014. 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.
The Complainant is a limited liability company registered under the laws of Nigeria on February 2, 2012. The Complainant carries on an online retailing business in Nigeria via the website “www.konga.com”. The Complainant has applied for registered trademarks in the Nigerian Trademarks Registry, namely first, an apparently figurative mark for KONGA LOGO in international classes 9, 16, and 35, applied for on March 28, 2012 and acknowledged by the said Registry on April 13, 2012; and secondly an apparent word mark for the KONGA in international classes 9, 16, 41 and 42 applied for on December 24, 2013 and acknowledged by the said Registry on January 10, 2014. There is no evidence before the Panel that these applications have proceeded to grant.
The Respondent is a company incorporated in Germany. It is an international investor in electronic commerce businesses and indirectly controls Ecart Internet Services Nigeria Limited, an online retail company in competition with the Complainant in Nigeria and which carries on its Nigerian business under the trade name “Jumia” and uses the domain name <jumia.com.ng>.
The disputed domain name was created on June 19, 2012.
It appears from email correspondence produced by the Complainant that Mr. O. Samwer of the Respondent met Mr. S. Shagaya of the Complainant at some point between June 8 and 14, 2012. In an email dated June 15, 2012, from Mr. Shagaya to Mr. Samwer, Mr. Shagaya thanks Mr. Samwer for his time that week and explains that he had to take time to consider Mr. Samwer’s offer but that he has opted to pursue opportunities “outside the umbrella proposed”. On June 17, 2012, Mr. Samwer replied to Mr. Shagaya’s email suggesting that Mr. Shagaya should “think a little bit longer about it and give it some more time” and stating that “[…] the chances for you to win in the long-term are much higher if you work with us and we become partners.”
The Complainant also produces a later exchange of email which ranges in date from October 21, 2013 to November 6, 2013 and which the Complainant says is a conversation in which Konga domain names are tied to Mr. Shagaya’s willingness “to not hire people from the competitor’s operations and a potential merger again”. This email is best described as “mid conversation” rather than illustrating a complete exchange of communications between named parties from beginning to end. All of the email noted below has been extracted from what appears to be a single email trail culminating in the email of November 6, 2013 at 09:06. The complete trail is as follows:
On October 21, 2013, Mr. Samwer writes; “sim, [sic] this is not what we agreed.”
On October 22, 2013, Mr. Shagaya writes; “my understanding is that these were conversations that begun [sic] before we met. / I have asserted it to stop forthwith and it has. this will not come up again.”
On November 6, 2013 at 08:01, Mr. Samwer writes; “You are not sticking to deals we agreed, Sim. / Keeping agreed deals is the first step to at all have conversations about doing more. If agreed deals are not kept, then there is no basis to do anything further. Cannot be trusted, so pls decide if you want to keep agreed deals (domains were not part of this deal as you can see below).”
On November 6, 2013 at 09:05, Mr. H. Persson writes; “I Agree. / And it reminds me of the konga domains that you gave [sic] agreed to hand over. That was the first agreement so maybe you can start there.”
On November 6, 2013 at 09:06, Mr. Samwer writes to Mr. Persson, copied to Mr. Shagaya and others, on a subject line of “Re; Poaching”: “I did not agree to hand over konga domains. I said there are conditions. / So Sim has to decide if honours [sic] his word. If not, no reason to have any further talk about domains, mergers, etc.”
The Complainant contends that the disputed domain name is identical to trademarks in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that at some time before June 15, 2012, Oliver Samwer, co-founder and principal of the Respondent, proposed to S. Shagaya, CEO and co-founder of Konga, a partnership deal between “Jumia” and the Complainant, which Mr. Shagaya declined. The Complainant produces relative email correspondence between Mr. Samwer and Mr. Shagaya. The Complainant states that the Respondent subsequently began the process of registering the disputed domain name in various jurisdictions with a view to using the same as a bargaining tool to obtain the Complainant’s agreement to a partnership. The Complainant does not specify the jurisdictions concerned.
The Complainant states that the Respondent does not and has never traded or carried on business under the name “Konga” and notes that the Respondent has also registered domain names with the word “Jumia” in the same jurisdictions. The Complainant submits that the only logical explanation for this is that the Respondent intends to extend its “Jumia” franchise to these jurisdictions and wishes to ensure that the Complainant cannot compete with “Jumia” in such jurisdictions.
The Complainant asserts that the Respondent has no legitimate interest in the name “Konga” and submits that the Respondent’s actions were carried out in bad faith to shut the Complainant out of various jurisdictions where the Respondent plans to establish “Jumia”. The Complainant notes that it wishes to establish its own franchise in such jurisdictions in the future.
The Complainant submits that as a result of prior use it has a common law right to exclusive use of the name “Konga” in respect of e-commerce businesses. The Complainant notes in this connection that it carries on business through the domain name <konga.com> which was registered as far back as April 18, 2002. The Complainant asserts that the use of the word “Konga” by the Respondent in the disputed domain name is so similar to the Complainant’s name and trademark applications that it is likely to cause confusion by leading people to believe that the disputed domain name belongs to the Complainant. The Complainant contends that the disputed domain name incorporates the Complainant’s trademark in its entirety.
The Complainant states that the Respondent is not currently using the disputed domain name in connection with any ongoing business. The Complainant submits that the email correspondence from Mr. Samwer set out in the factual background above indicates that one of the conditions for releasing the disputed domain name is the merger or partnership between the Complainant and the Respondent’s “Jumia” operation.
The Complainant asserts that it is clear that the Respondent’s registration of the disputed domain name, being the name of its main competitor on the African continent, must have been carried out in bad faith. The Complainant notes that the registration was made shortly after the incorporation of the Complainant, when it became clear that the Complainant was not interested in a partnership with the Respondent and was about to compete with the Respondent’s “Jumia” venture in Nigeria’s market.
The Respondent notes that the disputed domain name is a country code domain used for the public in the Republic of Seychelles. The Respondent states that the distance between that country and Nigeria is nearly 6,000 kilometers and there is no evidence in the Complaint regarding any special relationship between these countries. The Respondent adds that neither the business nor the trademark of the Complainant is known outside Nigeria.
The Respondent states that the Complainant has no trademark or company rights in Seychelles and has never had a business named “konga” or similar in that country.
The Respondent asserts that the Complainant’s trademark applications are insufficient to prove an identity or confusing similarity to the disputed domain name. The Respondent contends that they are regional Nigerian trademark applications only and that the mentioned company right is also regional. The Respondent submits that even if such applications were sufficient for a complaint under the Policy, they are not identical or confusingly similar to the disputed domain name. The Respondent points out that the documentation submitted by the Complainant in respect of the first trademark application states that this is for a “KONGA LOGO”, without showing the same. The Respondent asserts that such logo could have been entirely figurative with no verbal element. The Respondent states that the Complainant has failed to show for which goods and services the application was filed, as required under paragraph 3(b)(viii) of the Rules, and has only detailed the international classes applied for.
With regard to the trademark application applied for on December 24, 2013, the Respondent notes that this mark post-dates the creation of the disputed domain name, which was registered one and a half years earlier. The Respondent makes the same criticism of this mark regarding the Complainant’s failure to show the goods and services in respect of which the application was filed.
The Respondent states that the Complainant’s company name does not confer any rights upon it and notes that the Complainant has no business rights in Seychelles and carries on business and is known in Nigeria only.
The Respondent submits that the disputed domain name is not used for an e-commerce website but has since April 1, 2013 shown an advertisement for an online dating website which has not yet launched. The Respondent states that the announcement was made long before the Respondent had notice of the Complaint. The Respondent notes that the website forwards to a “.za” domain name, namely <konga.co.za> and states that one of the Respondent’s subsidiaries already operates such a business in South Africa under the domain <elitesingles.co.za>.
The Respondent asserts that it usually registers a large number of international country code domains consisting of fantasy names because it is one of the world’s largest startup incubators. The Respondent says that it registered the disputed domain name as it sounded appealing for an online dating website.
The Respondent states that it indirectly owns and controls an online retail platform called “Jumia” which operates from <jumia.com> and addresses several African countries such as Egypt, Morocco, Ivory Coast, Uganda, Kenya and Nigeria. The Respondent adds that the Complainant’s <konga.com> business only addresses Nigerian consumers, with reference to the Complainant’s online terms and conditions. The Respondent states that from a cursory search its law firm has been unable to find any trademark rights of the Complainant containing KONGA outside Nigeria. The Respondent notes that the search found 108 trademarks containing a “konga” element and 71 exact trademarks for KONGA worldwide that are not owned by the Complainant.
The Respondent submits that the emails produced by the Complainant do not provide evidence that the Parties ever negotiated about forming a business outside Nigeria. The Respondent states that the Parties were in negotiations about a merger in Nigeria between <konga.com> and <jumia.com.ng>, the latter being the Nigerian business of the Respondent. The Respondent asserts that the emails do not provide any evidence of pressure being brought to bear upon the Complainant and only demonstrate that there had been negotiations regarding “konga domains”. The Respondent adds that there is no evidence showing which domains were covered by that term and/or that the disputed domain name was included.
The Respondent asserts that the mere fact that the Parties had been in contact does not automatically indicate that the disputed domain name was registered in bad faith, considering the large amount of “konga” trademarks worldwide and the fact that <konga.com> is a Nigerian business only.
The Respondent notes that the Complainant did not register the domain name <konga.ng> and does not use <konga.com.ng>. The Respondent states that it is notable that the Complainant showed no interest in domain names outside Nigeria until after the Respondent had registered the disputed domain name.
The Respondent submits that the fact that it is using the disputed domain name for an online dating website that has not yet been launched means that the Parties are not competitors in this regard and that the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business. The Respondent asserts that had the disputed domain name been registered in bad faith the Respondent would have used the disputed domain name to forward traffic to the “www.jumia.com” website, which it says has never happened over the life of the disputed domain name.
The Respondent notes that the disputed domain name was registered on June 19, 2012, which it states is the month before <konga.com> was launched and one and a half years before the Complainant’s word mark application was made. The Respondent states that it did not register the disputed domain name for the purpose of selling it to the Complainant or a competitor thereof since the Complainant has no trademark rights anywhere outside Nigeria and the disputed domain name relates to Seychelles. The Respondent submits that the disputed domain name was not registered by the Respondent in an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as the Complainant’s trademark rights are not known outside Nigeria.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The inquiry under the first element is in two parts, namely first, does the Complainant have UDRP-relevant rights in a trademark and, secondly, is such trademark identical or confusingly similar to the disputed domain name. The first issue for the Panel is the fact that the trademarks relied upon by the Complainant are applications only which do not appear to have proceeded to grant. The preponderant view of panels under the Policy regarding trademark applications, shared by the present Panel, is that until an application proceeds to grant, it does not constitute a trademark in which a complainant has rights for the purposes of the Policy. This particular issue is comprehensively examined in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 which provides a detailed analysis of the relevant cases to that date and which was referred to by panels with approval more recently in Tiger Media, Inc. v. Leconte Pierre, WIPO Case No. D2011-0670 and Jetgo Australia Holdings Pty Limited v. Name Administration Inc. (BVI), WIPO Case No. D2013-1339. The Panel finds nothing in the Complainant’s submissions which persuades it to depart from the preponderant view and none of the circumstances from past cases which suggest that a trademark application may be sufficient, as cited in Fashiontv.com GmbH v. Mr. Chris Olic, supra, would appear to apply in any event. For example, in the present case the status of the Complainant’s trademark applications has been firmly challenged and placed in issue by the Respondent. In all of these circumstances, the Panel finds that the Complainant’s trademark applications do not constitute UDRP-relevant trademark rights.
In addition to the submissions relevant to its trademark applications, the Complainant also asserts that as a as a result of prior use it has a common law right to exclusive use of the name “Konga” in respect of e-commerce businesses. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the question of what needs to be shown for the complainant to successfully assert unregistered or common law trademark rights and provides the following consensus view:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
Here, the Panel is faced with just such a conclusory allegation from the Complainant as described above. The only relevant material produced by the Complainant is its Certificate of Incorporation, showing that it was registered on February 2, 2012, together with the trademark applications described in the factual background. The Complainant has provided no evidence of sales under the trademark, media recognition, consumer surveys, advertising or similar which might show that the term “Konga” has become a distinctive identifier associated with the Complainant or its goods and services. The Respondent, however, produced a screenshot from “en.wikipedia.org/wiki/Konga.com”, which appears to relate to the Complainant’s business, in support of its submission regarding the Complainant’s date of launch. This web page does contain some relevant material to the Complainant’s case. In fact, it indicates that a wealth of information may be available which could have been supplied by the Complainant in support of its assertion of unregistered or common law trademark rights. For example, the web page claims that the Complainant has more than 500 employees, an “Alexa” rank of 3,275, significant investment, a catalog of over 150,000 products, an award as one of the African technology startups of 2013 and the status of the most liked e-commerce platform on “www.facebook.com” with over a million fans.
The problem for the Complainant is that even if the Panel were to accept the “Wikipedia” screenshot as though it had been produced by the Complainant in support of its allegation of unregistered or common law trademark rights, the Panel would not have given any weight to this on its own. Further supporting evidence would have been required, as listings on Wikipedia can be created by individuals and are not necessarily subject to any fact checking. Accordingly, the better practice is to corroborate information with other sources (see the discussion on the subject of “Wikipedia” in Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431).
In all of these circumstances, the Panel finds that the Complainant has failed to establish the first element under the Policy, the effect of which is that the Complaint fails. The Panel notes that its approach on this matter is analogous with previous decisions under the Policy, such as for example Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036 and Blandy & Blandy LLP v. Mr. Daniel Beach, WIPO Case No. D2012-0972, in both of which cases the complainant made a similar unsupported allegation of common law rights.
The Panel is mindful that, pursuant to paragraphs 10 and 12 of the Rules, it would have been open to the Panel to request the Complainant to produce suitable evidence by way of a Panel Order. This would, however, have provided the Complainant with “a second bite at the apple” which would not in the Panel’s view be in line with the spirit of expediency and efficiency suggested in the Policy (see the reasoning regarding the soliciting of further evidence by the panel in Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama LLC, WIPO Case No. D2011-1451). Likewise, the present Panel has observed in the case of 5 PRE VIE W AB v. Diego Manfreda, WIPO Case No. D2013-1946, with reference to Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, that complainants should “get it right” the first time and should provide all the information necessary to prove their case from the material contained in the complaint and its annexes alone.
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the preceding head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
As noted above, in light of the Panel’s finding in terms of paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of registration and use in bad faith in the present case.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: September 4, 2014