WIPO Arbitration and Mediation Center

The Complainant is Rovos Rail (Pty) Limited of Rovos Rail Coach, Dock Road, Victoria & Alfred Waterfront, Cape Town, South Africa, represented by D M Kisch Incorporated, of Sandton, South Africa.

The Respondent is Innovative Technical Solutions of 509 Tag Lane, Ramona, California, United States of America.

The disputed domain name is <rovosrail.com>.

The Registrar is Tucows Inc., of Toronto, Ontario, Canada.

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on October 25, 2001, and in hard copy on October 30, 2001. It named as Respondent Marco Polo Vacations of San Diego, California. The Complaint was acknowledged on November 2, 2001, and on November 5, 2001, the Center sought registration details from the Registrar. On November 6, 2001, the Registrar informed the Center that the disputed domain name was registered with it but that the current registrant is Innovative Technical Solutions; that the language of the Registration Agreement is English and that the Policy applies to the disputed domain name, the status of which is "on hold within our system, to ensure that no changes occur to the ownership or Registrar for the duration of the dispute".

On November 7, 2001, the Center notified the Complainant of the deficiency in the Complaint, because it did not identify the registrant of the domain name as the Respondent. On November 13, 2001, by email and on November 19, 2001, in hard copy, the Complainant filed an amendment to the Complaint naming Innovative Technical Solutions as Respondent.

The Center satisfied itself on November 20, 2001, that the Amended Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Amended Complaint by post/courier (with enclosures) to the Respondent at the address mentioned above and by facsimile and email (without attachments). The Center included with that material a letter dated November 20, 2001, containing notification of the commencement of this administrative proceeding.

The last day specified by the Center for a Response was December 10, 2001. No Response was filed and on December 18, 2001, the Center notified the parties of the Respondent’s default.

The Complainant had elected to have the case decided by a single-member Panel and on January 10, 2002, the Center notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of January 24, 2002.

In response to a request from the Panel, the Registrar confirmed that the transfer of the registration of the disputed domain name from Marco Polo Vacations to the Respondent, Innovative Technical Solutions, occurred on October 5, 2001 (before the Complaint was filed), not on October 29, 2001 (after the Complaint was filed), as stated in the Amended Complaint.

Accordingly, by Procedural Order No. 1, the Panel directed that the Complainant be given an opportunity to make further submissions and to provide further evidence to the Panel, by February 4, 2002, to demonstrate a case against Innovative Technical Solutions based either on Innovative Technical Solutions’ conduct or on a connection between Marco Polo Vacations and Innovative Technical Solutions on which the Complainant may wish to rely.

On the basis that the Respondent had failed to submit a Response to the Amended Complaint, the Order did not make provision for the Respondent to reply to any further submission made by the Complainant but provided that the Respondent should make any request to do so to the Center by February 8, 2002, in which case the Panel would issue a further Order to allow the Respondent to submit a response only to any new information provided by the Complainant.

Regardless of whether any further submissions were made, the Panel extended the time for its decision until February 12, 2002.

On February 1, 2002, the Complainant filed with the Center and served on the Respondent a further submission. No request was made by the Respondent for leave to reply to it.

The Panel is satisfied that the Complaint, as filed and as subsequently amended, was in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Amended Complaint’s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice of the Amended Complaint to the Respondent. No Response was filed to the Amended Complaint nor to the Complainant’s further submission. The Panel was properly constituted.

The language of the proceedings was English, being the language in which all submissions were filed.

The Complainant is the proprietor of the trade mark ROVOS RAIL, consisting of the word ROVOS, made up from the name of the Managing Director of the Complainant, ROHAN VOS, and the descriptive word RAIL. The Complainant has trade mark applications and registrations for the trade mark ROVOS RAIL in South Africa, Zimbabwe, Namibia and in the United States of America.

Since its incorporation in 1989, the Complainant has continuously conducted train safaris throughout Africa and advertised and promoted these services in various parts of the world.

The Complainant has representative offices in South Africa, Germany, England, Australia and the United States. Most of the Complainant’s business is channelled through these offices.

As a result of extensive national and international marketing and advertising campaigns, the Complainant has developed a reputation and goodwill in its ROVOS RAIL name and trade mark in the international travelling and holiday market, which is readily and distinctively associated throughout the world with the Complainant’s touring services. The Complainant has acquired a substantial international reputation through its continued exposure in the international media.

Marco Polo Vacations Inc ("MP") operated for some time as one of the Complainant’s tour operators in the United States, generating income from commission from the Complainant in booking passengers on tours provided and arranged by the Complainant under its ROVOS RAIL trade mark on its various routes. Apart from the initial booking, MP was not involved in rendering any of the services provided by the Complainant.

Although MP was authorised to make bookings with the Complainant on behalf of passengers and to advertise the Complainant’s services using advertising material, such as brochures and pamphlets, provided by the Complainant, MP was never authorised to use the Complainant’s intellectual property, including the ROVOS RAIL name and trade mark. MP was never authorised to use the Complainant’s trade mark in the disputed domain name.

MP registered the disputed domain name on June 15, 2000, and shortly thereafter so informed the Complainant. The Complainant requested MP to assign the name to it upon payment of MPs registration costs. No progress was made.

On January 4, 2001, MP offered to sell the disputed domain name to the Complainant, together with 3 other domain names (not relevant here) for US$250,000. On April 23 2001, MP rejected an offer from the Complainant to buy the disputed domain name for US$5000 and said it would sell it for US$45,000.

After MP transferred registration of the disputed domain name to the Respondent, the Complainant approached the Respondent on November 8, 2001, setting out the facts and attaching a copy of the Complaint with a view to settle the matter amicably. The Respondent replied that all future correspondence should be addressed to Marco Polo Vacations "…the party responsible for the registration of this domain".

The following is taken from the Complaint.

The Complainant requests the Panel to direct that <rovosrail.com> be transferred to Complainant on the following legal grounds.

The disputed domain name is identical to the Complainant’s registered trade mark ROVOS RAIL.

The fact that MP registered the disputed domain name, which wholly incorporates the Complainant’s trade mark, together with the conduct of MP, leaves no doubt that the adoption of this domain name was a carefully planned and calculated step intended to take unfair advantage of the international repute and goodwill of the Complainant’s trade mark. It is also blatantly obvious that MP has no claim whatsoever to the above domain name or trade mark, especially as the services advertised on the web site using the disputed domain name are provided by the Complainant only, without MP participating on any level.

There can be no doubt that the public will be confused, and in fact have been confused, into believing that the domain name and the web site are those of the Complainant or that the Complainant is associated with or endorses MPs business, which it clearly does not.

In view of the facts that the Complainant commenced use of the name ROVOS RAIL in 1989, 11 years prior to MPs registration of the disputed domain name in June 2000, and that MP conducted business with the Complainant before it registered the disputed domain name, MPs registration of the disputed domain name is an attempt unfairly to exploit the Complainant’s goodwill and reputation in the ROVOS RAIL trade mark.

MP cannot deny that it was fully aware of the Complainant’s rights to and reputation in the name ROVOS RAIL. MP was fully aware of the Complaint at the time of transfer of the domain name on October 29, 2001, after the Complaint was filed.

It is therefore clear that MP attended to the transfer of its domain name with the sole purpose of avoiding proceedings against it and that its actions were in fact mala fide.

The Respondent has no legitimate right or interest in respect of the domain name in question and has no reputation therein whatsoever.

The Respondent’s actions have prevented the Complainant from registering its trade mark as a domain name, thereby preventing it from effectively marketing and promoting its products in the Internet environment.

Furthermore, the Respondent is fully aware of the Complainant’s right in and to the trade mark ROVOS RAIL as well as all the surrounding facts because the Respondent received a copy of the Complaint on November 7, 2001, prior to its amendment. The Respondent’s actions were mala fide in that the Respondent has intentionally and unlawfully registered the disputed domain name with a view to (a) preventing the Complainant from registering its trade mark as a domain name and (b) using this as leverage to demand an undue amount of money for the transfer of the domain name to the Complainant. These actions were at all relevant times mala fide.

The following is taken from the Complainant’s submission in response to Procedural Order No. 1:

The transfer of the domain name from MP to the Respondent on October 29, 2001, [scil October 5, 2001] as per the Registrar (Tucows, Inc) and not October 29, 2001, as reflected in the Amended Compliant, does not affect the basis of the Complaint.

MPs actions were at all times mala fide and it was fully aware of possible further action that will be taken by the Complainant. MP attended to the transfer of its domain name with the sole purpose of avoiding proceedings against it.

Furthermore, the Respondent still has no legitimate right or interest in respect of the disputed domain name and to the trade mark ROVOS RAIL as set out in Amended Complaint.

No Response was filed.

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 8(a) of the Policy, which forms part of the registration agreement, a registrant may not engage in "cyberflying" - transferring a domain name registration to another holder during a "pending" proceeding. Any such transfer may be cancelled by the Registrar.

Under Rule 3(xii), a respondent is notified of a proceeding before its formal commencement. To avoid injustice to complainants, several Panel decisions have interpreted paragraph 8(a) as applying from the initiation of the proceeding (by the filing of the complaint) rather than from the formal commencement of the proceeding under Rule 3(a): British Broadcasting Corporation v. Data Art Corporation / Stoneybrook (WIPO Case No. D2000-0683); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol (WIPO Case No. D2001-0489); Imperial Chemical Industries, PLC v. Oxford University (WIPO Case No. D2001-0292); Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc. (WIPO Case No. D2001-0732) and Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp. (WIPO Case No. D2001-0936).

Here the transfer from MP to the Respondent cannot be cancelled because it took place on October 5, 2001, before the Complaint was filed. Accordingly this proceeding is not against MP but against Innovative Technical Solutions. The Complainant must establish grounds for relief against Innovative Technical Solutions.

Numerous cases under the Policy have adopted and applied the principle that a respondent’s failure to dispute the allegations of the complainant permits the inferences that the complainant’s allegations are true and that the respondent knows its website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).

A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (Case D2000-0441):

"The Panel draws two inferences where the Respondent has failed to submit a response: (a) "the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802); Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102) and Blue Sky Software Corp. v. Digital Sierra Inc. (WIPO Case No. D2000-0165).

The disputed domain name is virtually identical to the Complainant’s registered trade mark ROVOS RAIL.

The Complainant has established this element.

The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The name of the Respondent is not and does not include any part of any of the disputed domain name. The trademark is well known. It combines an invented word (derived from the name of the Managing Director of the Complainant) with a descriptive word, the combination being distinctive of the Complainant’s services, which are promoted in many countries, including the United States of America where the Respondent resides. These circumstances shift the onus to the Respondent to demonstrate its rights to or legitimate interest in the disputed domain name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.

In the absence of a Response, the Panel is satisfied that the Complainant has established this element. The Respondent has no right or legitimate interest in respect of the disputed domain name.

The circumstances specified in paragraph 4(b) of the Policy as constituting evidence of both bad faith registration and use are not exhaustive.

There is no doubt that MP registered and used the disputed domain name in bad faith but this does not establish bad faith on the part of the Respondent. The Panel accepts the Complainant’s submissions that the conduct of MP was at all times mala fide; that MP was fully aware of possible further action by the Complainant; that MP attended to the transfer of its domain name with the sole purpose of avoiding proceedings against it and that the Respondent has no legitimate right or interest in the disputed domain name.

Bearing in mind that this proceeding is against the Respondent rather than MP, the critical question, a difficult one in this case, is whether there is any basis for findings of bad faith registration and bad faith use by the Respondent.

The Complainant submits that the Respondent and MP were fully aware of the Complaint at the time of the transfer of the disputed domain name. That submission was based on Annexure AA, being a ‘Whois’ search conducted on October 31, 2001. That search revealed merely that the record had been last updated (without specifying what the update was) on October 29, 2001. The Registrar, in response to an enquiry from the Center at the behest of the Panel, confirmed that the transfer actually took place on October 5, 2001, i.e. before the Complaint was filed. Accordingly Annexure AA does not support this conclusion.

The Complainant submits that when the Respondent applied for the registration of the disputed domain name, the Complainant had already established a huge international reputation in its trade mark. In the absence of a Response, the Panel is entitled to draw this conclusion. However, it is a conclusion which falls short of a finding that the Respondent was aware of the Complainant’s trade mark when it became the registrant of the domain name.

On the issue of bad faith the Complainant relies in two ways on the Respondent’s email of November 8, 2001, which replied to the Complainant’s message of the same day, in which the Complainant stated that it would amend the Complaint so as to substitute the name of Innovative Technical Solutions for that of MP as Respondent. The Respondent’s email was as follows:

First the Complainant says this confirms the present registration was done in bad faith and that MP is attempting to delay the finalisation of the present proceedings "by way of a bogus assignment to" the Respondent.

Second, the Complainant says this makes clear that the Respondent "is assisting [MP] to obtain its goals…as well as to assist [MP] to demand an undue amount of money for the transfer of the domain name to the Complainant".

The Panel is concerned to avoid any injustice to an innocent transferee of a domain name registration without notice of the Complainant’s mark nor of the bad faith of the transferor. In this case the Panel concludes (after much anxious consideration) that it would not be unjust to the Respondent for the Panel to accept the Complainant’s submissions on this point.

The Respondent must be taken to have known that it was by then the registrant of the disputed domain name. In the face of the Complainant’s assertion of trade mark rights and its stated intention to amend the Complaint so as to name the Respondent, simply to refer the Complainant to MP was hardly the act of an innocent transferee, independent of MP and having no knowledge of what had transpired between the Complainant and MP. It is consistent with knowing participation in a scheme by MP to avoid the Complainant’s claim and to extract undue payment for the disputed domain name. The failure to file a Response in the face of such serious accusations also enables this conclusion to be drawn.

Accordingly the Panel concludes that the disputed domain name was registered by the Respondent on October 5, 2001, in bad faith in that it was done as a means of assisting MP to avoid proceedings under the Policy and to extract an undue amount of money from the Complainant.

The Panel also concludes that the Respondent has used the disputed domain name in bad faith by holding it in furtherance of a scheme to assist MP to those ends. The ‘use’ requirement does not require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows (WIPO case D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO case D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO case D2000-0400); Video Networks Limited v. Larry Joe King (WIPO case D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO case D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO case D2000-0468).

The Complainant has established this element.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <rovosrail.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist

Dated: February 10, 2002