South African National Biodiversity Institute ("SANBI), established in terms of Section 10 of the National Environmental Management: Biodiversity Act 10 of 2004 (South Africa) v. BTHLA JOURNAL
Claim Number: FA1507001628727
Complainant is South African National Biodiversity Institute ("SANBI), established in terms of Section 10 of the National Environmental Management: Biodiversity Act 10 of 2004 (South Africa) (“Complainant”), represented by Natasha Steinberg of Fairbridge Wertheim Becker (Fairbridges), South Africa. Respondent is BTHLA JOURNAL (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2015; the Forum received payment on July 14, 2015.
On July 14, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bthla-journal.com, postmaster@bthla-journal.org, postmaster@bthla-journal.net. Also on July 20, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims to have rights in the BOTHALIA mark based on its registrations with the South African Trade Mark Office. Respondent’s <bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net> domain names are confusingly similar to the BOTHALIA mark in which Complainant has rights. Respondent’s domains merely remove the letters “o,” “a,” and “i” from Complainant’s BOTHALIA mark, and add the descriptive word “journal”, a hyphen, and the generic top-level domain (“gTLD”) “.com.” These differences do not differentiate the domain names from the BOTHALIA mark.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed <bthla-journal.com>, <bthla-journal.org>, or <bthla-journal.net> domain names. Respondent’s use of the disputed domain names, to host a website identical to Complainant’s websites and to host inactive websites, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant further alleges that Respondent registered and is using the disputed domain names in bad faith. Respondent’s use of the disputed domain name, to pass itself off as complainant, demonstrates that Respondent has acted in bad faith under Policy ¶ 4(b)(iv). Further, Respondent’s failure to make an active use of the other two websites demonstrates bad faith according to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were created on November 12, 2014.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the unrebutted and reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain names and the Complainants mark are confusingly similar, that the Respondent has no rights or legitimate interests in or to the disputed domain names, and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it has established rights in the BOTHALIA mark based on registration of the mark with the South African trademark authority. See Compl., at Ex. A. However, the Complainant provides evidence of its application, not of its registration. As such there is no evidence in the record that shows that the registration has actually been perfected.
On the other hand, Complainant has demonstrated common law rights in and to the BOTHALIA mark. Complainant claims that it has used the BOTHALIA mark continuously in connection with a journal production since 1921. While Complainant has not provided clear evidence of such use, the Panel finds Complainant’s contention sufficient to demonstrate that Complainant has common law rights in the BOTHALIA mark according to Policy ¶ 4(a)(i). If the Respondent had filed a Response, it may have become reasonable to decide differently, but as the Panel makes its determinations here based on the reasonable and unrebutted allegations of Complainant, the Panel finds it reasonable to accept Complainant’s statements in this regard.
Complainant also contends that Respondent’s <bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net> domain names are confusingly similar to the BOTHALIA mark in which Complainant claims to have rights. Respondent’s domain names differ from the BOTHALIA mark through the removal of the letters “o,” “a,” and “i” from Complainant’s BOTHALIA mark and through the addition of the descriptive word “journal”, a hyphen, and the gTLD “.com.” First, as a general rule the presence of a gTLD is not relevant to an analysis of confusing similarity. Next, a respondent’s misspelling of a mark has been held to not prevent a finding of confusing similarity. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark); Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). In addition, punctuation such as a hyphens do not distinguish a mark from a disputed domain name. Accordingly, the Panel concludes that Respondent’s disputed domain names <bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net> are confusingly similar to the BOTHALIA mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the disputed <bthla-journal.com>, <bthla-journal.org>, or <bthla-journal.net> domain names. Although WHOIS information indicates that Respondent identifies itself as “BTHLA JOURNAL,” previous panels have held that a Respondent is not commonly known by a disputed domain name, despite WHOIS information, because no other information was submitted to support the respondent being commonly known by the disputed domain name. See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Complainant further contends that Respondent’s use of the disputed domain names, to host a website identical to Complainant’s website and to host parked websites, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to be using the <bthla-journal.org> domain name to host a website almost identical to Complainant’s website and displays the BOTHALIA mark with the subheading, “A Journal of Botanical and Life Sciences Research.” Compare Compl., at attached Ex. C with Compl., at attached Ex. F. Complainant believes that Respondent’s intention in registering the disputed domain names is to collect subscription and submission fees from the authors who believe that they are submitting articles to Complainant’s reputable journal. A respondent’s attempt to pass itself of as the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. Respondent’s attempts to appear as Complainant for commercial profit is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant next argues that Respondents <bthla-journal.com> and <bthla-journal.net> domain names are inactive and currently under development. See Compl., at Ex. D. Prior panels have frequently concluded that failing to make an active use of a disputed domain name does not convey rights or legitimate interests in that domain. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain names.
Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant believes that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent uses the <bthla-journal.org> domain name to host a website almost identical to Complainant’s website and displays the BOTHALIA mark. Unsuspecting internet users, believing Respondent’s website to be the website of a legitimate research journal, pay money to submit research papers. See Compl., at Ex. I. Panels have found that a respondent using a disputed domain name to commercially profit from the confusion of internet users has acted in bad faith under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). The Panel concludes that Respondent’s registration and use of the disputed <bthla-journal.org> domain name is in bad faith under Policy ¶ 4(b)(iv).
Bad faith may also be found where a respondent has failed to make active use of a disputed domain name; as in the case of <bthla-journal.com> and <bthla-journal.net>. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Accordingly, the Panel finds that Respondent’s inactive use of <bthla-journal.com> and <bthla-journal.net> demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
The Complainant fails to allege that the Respondent had actual notice of its trademark rights prior to registering the disputed domain names. Usually, this would be a fatal flaw to a Complainant’s complaint. However, given the totality of the circumstances, the Panel finds that the Respondent had actual notice of Complainant’s rights in and to its trademark. After all, the Respondent registered three confusingly similar domain names, not just one. The likelihood that this was done as a mistake or under some confusion is extremely low. Further, the Respondent’s failure to challenge the allegations made herein further supports the conclusion that it had actual notice of Complainant’s trademark rights.
Therefore, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the<bthla-journal.com>, <bthla-journal.org>, and <bthla-journal.net> domain names be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: August 18, 2015
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