HOSTAFRICA v. Domain Support
Claim Number: FA2208002010138
Complainant is HOSTAFRICA (“Complainant”), represented by Ethan McPherson of HOSTAFRICA, South Africa. Respondent is Domain Support (“Respondent”), represented by Grant Carpenter, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bonamanzi.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on August 29, 2022; Forum received payment on August 29, 2022.
On August 29, 2022, NameSilo, LLC confirmed by e-mail to Forum that the <bonamanzi.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 September 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2022 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@bonamanzi.com. Also on September 7, 2022, 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.
A timely Response was received and determined to be complete on September 27, 2022.
On October 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, HOSTAFRICA, is the registrar of the previous owner’s at-issue domain name.
Complainant suggests rights in the domain name, due to the previous owner’s twenty-year use of the domain name and such owners operation of a business with the same name as the domain name.
Respondent has no legitimate interests in the <bonamanzi.com> domain name. Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to an inactive webpage.
Respondent registered and uses the <bonamanzi.com> domain name in bad faith. Respondent registered the domain name with the intent to offer it for sale. The domain name does not resolve to an active webpage.
B. Respondent
Complainant contends as follows:
Respondent, Domain Administrator, is in the business of buying and selling generic domains.
The <bonamanzi.com> domain name was initially registered on July 17, 2003.
Respondent contends that Complainant has not claimed rights in a trademark or service mark, and has further failed to specify in what manner the domain name is confusingly similar. Respondent also contends that Complainant, as the registrar of the domain name, lacks standing to bring the Claim.
Respondent contends that Respondent has rights and legitimate interests in the at-issue domain name because Respondent acquired the domain name in conjunction with Respondent’s legitimate business and the at-issue domain name is made up of generic terms. Respondent argues that Complainant has failed to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent contends that Respondent did not register or use the at-issue domain name in bad faith. Respondent lacked knowledge of Complainant or the previous registrant until the instant proceedings. Complainant fails to argue that Respondent had actual knowledge of Complainant’s rights in the mark. Finally, Complainant has engaged in reverse domain hijacking.
Complainant fails to show it has rights in any trademark.
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.
It is well-settled that trademark registration is not a requirement of Policy ¶ 4(a)(i) so long as the complainant can show clear secondary meaning in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). However, here Complainant fails to even assert trademark rights in any mark. Although Respondent claims that that the domain name is or was associated with a business, tradenames are not protected under the Policy. See Diversified Mortgage, Inc. v. World Financial Partners, FA 118308 (Forum Oct. 30, 2002) (finding that the Policy makes clear that its rules are intended only to protect trademarks, and not mere trade names). Notably, the business name that Complainant connects with <bonamanzi.com> was related to the pervious domain name owner not Complainant. Given the foregoing, the Panel finds that Complainant lacks rights in a mark for the purposes of the Policy.
The Panel declines to analyze Respondent’s rights or legitimate interests, or bad faith, regarding the at-issue domain name since having failed to show rights in a mark under Policy ¶ 4(a)(i) Complainant cannot prevail. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking against Complainant. Even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”) In the instant case, Complainant suggests that its reason for filing the Complainant was to correct an administrative error regarding renewal of the at-issue domain name. While Complainant, who is unrepresented by counsel, may not know that correcting administrative errors is not a function of the UDRP, Complainant’s misconception does not lead to a finding that Complainant brought the Complaint in bad faith. Nor does Complainant’s amount of effort or degree of acumen brought to bear in drafting the Complainant, without more, convince the Panel that Complainant acted in bad faith in its filing. Therefore, Respondent’s request for a finding of reverse domain name hijacking is denied. Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and for the reasons stated herein Respondent’s request for a finding of reverse domain name hijacking is also denied.
Accordingly, it is Ordered that the <bonamanzi.com> domain name REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: October 6, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page