Domain Name Dispute - Nandos.com
The WIPO (World Intellectual Property Organization) Adminstrative Panel of the Arbitration and Mediation Center has again assisted a South African connected company in a domain name dispute against a cybersquatter. WIPO (an accredited dispute resolution service provider), earlier this year ordered the transfer of safmarine.com, back to the South African company, Safmarine.
The latest case involves the domain names nandos.com and nandoschicken.com, which were held by Mr Fareed Farukhi of California. Farukhi was not the original registrant of nandos.com, but was the original registrant of nandoschicken.com. His defence to the charge that his conduct was "... a carefully planned and calculated step to take unfair advantage of the international repute and goodwill of (Nandos) trade marks" is quite interesting.
Mr Fareed claimed that his ethnic origins are in Southern India, where in the Kannada language "nandos" means "ours" or "mine" and his intentions were to set up a web-portal for the sub-continent.
A full copy of the WIPO Panel Decision can be found at its web site http://www.wipo.org (case no D2000-0225).
A summary of the matter using quotes from the decision follows:
Nandos International Limited "... has registered and used the trade marks 'Nandos' and 'Nandos Chickenland' and had traded using those trade marks individually or in combination, since 1989. It has acquired a reputation internationally in the use of these marks in connection with prepared chicken over the years. It had attempted to gain ownership of the domain names now claimed for some time, but had been unable to do so due to the prior registration of someone else. In May 1998, the Complainant’s previous Internet Service Provider, VWV Interactive, attempted to obtain the domain name from one John Allday and Jude Aluce, but was unsuccessful in doing so because of the amount of money demanded by the registrants, which the Complainant considered exorbitant. In 1999, when the Complainant had changed its Internet Service Provider to the Digital Mall, and in the light of developments in domain name case law, another attempt was made to obtain that domain name. The Complainant then discovered that the domain name had been transferred to the Respondent, and that the Respondent had also registered as a domain name. The domain names now claimed are currently not associated, and have never been associated, with any Internet web site. There has been no indication that the Respondent has ever used the registered domain names. On enquiry Respondent indicated that he wanted to license the use of, or sell, the domain names to the Complainant."
"There is no doubt that the Complainant is well known internationally as a purveyor of prepared chicken."
"...the Panel holds that the domain name registered by the Respondent is confusingly similar to a trade mark in which the Complainant has rights."
The Respondent "... does not claim that or has any bearing on his name; nor does he claim that he had used or made any demonstrable preparations to use, the domain names in dispute, or any name corresponding to the international use with which the names are associated. The evidence clearly indicates that he did not register the domain names with the acquiescence of the Complainant. The only claim of right which the Respondent makes is that the word ‘Nandos’ in an Indian language means ‘mine’ or ‘ours’. The effect which the registration of the domain names is performing, assuming that the claim of the Respondent is true, is to block anybody’s else registering or using them internationally even though he is the owner of the same or a similar trade mark. Protection ought to be given to persons who have interests in trade marks or service marks and are genuinely trading with those marks as against those who wish to make a profit by cybersquatting or passing off through domain names goods or services as the goods or services of the genuine trade mark holder. The Panel is of the view that the Respondent has no rights or legitimate rights to the domain names in dispute."
" ... , the most damaging evidence against the Respondent is the fact that after obtaining the right to the domain name , he himself registered the domain name . He claims that he obtained that domain name for the purpose of his future business in India. If it was merely a coincidence that he obtained the domain name , when he had never heard of Nando’s, the trade mark of the company with the international reputation for food retailing, especially in packaged chicken, it is extraordinary that he should, again as a coincidence, register the domain name . The registration of is strong evidence that the Respondent had knowledge of the business operations of the holder of the "Nando’s" and "Nando’s Chickenland" trade marks. Registration or holding of both domain names by the Respondent, in the view of the Panel, clearly shows that he intended either to sell the names to the Complainant or to a third person who would do so, or that he wanted to engage in a business which would associate its products with those of the Complainant’s trade marks."
"What the Respondent has so far done is to hold on to the domain names until an objective which he has, is attained. That objective is, in the finding of the Panel, in bad faith."
"... the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." (Paragraph 4(a)(iii) of the The Internet Corporation for Assigned Names and Numbers (ICANN) Policy – Uniform Domain Name Dispute Policy for Assigned Names and Numbers of October 1999).
"...the Panel finds that the Complainant has trade marks to which the Respondent’s registered domain names are identical or confusingly similar; that the Respondent has no rights or legitimate rights in respect of the domain names; and that the domain names were registered and used mala fide. The Complainant has asked that the domain names should be transferred to the Complainant. The Panel grants this request and orders that the said domain names, and be transferred to the Complainant."
This decision was given on 23 May 2000. The complaint was submitted to WIPO on 29 March 2000.
This WIPO dispute resolution forum exists for certain Internet domain name disputes. Note that the forum ONLY has jurisdiction in respect of .com, .net and .org domain name registrations. Domain name .co.za disputes do not fall within the jurisdiction of WIPO.
For more information regarding domain name disputes, see the article "Domain name disputes"
Spoor & Fisher