WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pick ‘N Pay Retailers (Proprietary) Limited v. Dependable Internet LLC
Case No. D2009-0499
1. The Parties
1.1 The Complainant is Pick ‘N Pay Retailers (Proprietary) Limited of Claremont, South Africa, represented by Adams & Adams Attorneys, South Africa.
1.2 The Respondent is Dependable Internet LLC of Springfield, Missouri, United States of America represented by John L. Davidson, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <picknpay.net> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2009. On April 17, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2009, 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.
3.2 The Center verified that the 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”).
3.3 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 April 27, 2009. Notification took the form of emails directed to the email address for the Respondent provided in the WhoIs record for the Domain Name and to <email@example.com>. A hard copy of the Complaint was also sent by courier to the Respondent. On May 11, 2009 the Center received notification from the courier company used that the Respondent had refused to accept the package sent by the Center.
3.4 In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2009. The Respondent did not submit any response by that date and the Center notified the Respondent's default on May 18, 2009. On May 19, 2009, the Respondent sent to the Center an email. The admissibility of that document is discussed in greater detail later on in this decision.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 26, 2009. 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.
3.6 On May 28, 2009, the Panel having considered the contents of the case file issued a procedural order (the “Procedural Order”) inviting both the parties to serve further submissions in these proceedings and extending the time for the filing of a decision in this matter to June 12, 2009. A copy of the Procedural Order is set out in Annex A to this decision.
3.7 The Respondent did not file any submission as provided for by the Procedural Order. Instead on June 5, 2009, the Respondent's lawyer sent an email to the Center stating that the Respondent had no submission but attached a copy of a letter which was said to provide “a user name and password, so that the present site can be accessed.”
3.8 On June 8, 2009 in accordance with the Procedural Order, the Complainant filed a further submission. Later that day the Respondent's lawyer sent an email to the Center which he characterised as “an emergency motion by which [the Respondent] moves to strike the complaint and all submissions”. The nature of that “motion” is discussed later on in this decision.
4. Factual Background
4.1 The Complainant is a food, clothing and general merchandise retailer. It operates from 753 stores in South Africa and its most recent annual turnover amounted to USD 4.45 billion.
4.2 The Complainant first used “Pick ‘n Pay” in connection with its business in 1967. It is now the owner of over 200 trade mark registrations that incorporate the term “Pick ‘n Pay” in several African countries. These marks include South African Trade Mark no. 1973/5623 filed on November 1, 1973 in class 42.
4.3 The Complainant has also conducted business on line for over a decade from the domain name <picknpay.co.za> and more recently from the domain name <pnponline.co.za>.
4.4 The WhoIs record for the Domain Name states that the Domain Name was registered on October 26, 2007. However, information on the Internet Archive would suggest that a web site was operating from an equivalent domain name from the year 2000.
4.5 The Respondent appears to be a limited liability corporation that gives as its address as PO Box number 2931 in Springfield Missouri.
4.6 On February 23, 2009 the Complainant sent the Respondent an email in which it demanded that the Domain Name be transferred to the Complainant and alleging trade mark infringement. Mr. Rose of the Respondent responded to that email a few hours later with an email that simply read as follows:
“$100,00.00 Firm” [sic]
4.7 As at the date of the Complaint the web page operating from the Domain Name took the form of a banner headline “PICK N' PAY Site Builder PRO” to the right hand side of a cartoon of a woman pushing a shopping trolley. Beneath that was a column of text that read “Shirt” “Paper” and “Chairs” and to the right of this the meaningless text “hlkjhl hklh hkljhlk h kjlkj;lkj lk kljhlkjh; kjh;kjhlkjh”. Beneath that was a line of text that read “Other Link Other Link Other Link”. This web page continues to operate at the date of this decision
5. Parties' Contentions
5.1 In the Complaint the Complainant contends that the Domain Name wholly incorporates the Complainant's PICK ‘N PAY mark. In the circumstances it contends that the Domain Name is identical, alternatively, confusingly similar, to the Complainant's PICK ‘N PAY mark.
5.2 The Complainant contends that the use of the PICK'N PAY mark in a domain name would not be bona fide without the authorization of the Complainant and asserts that no such authorisation has been provided. It also claims that the Complainant obtained its trade mark prior to the Respondent's registration of the Domain Name and that there was no evidence that the Respondent had become commonly known by the name “Pick ‘n Pay” or possessed a trade mark for that term. It, therefore, concludes that the only reason why the Domain Name was registered was for the purpose of selling, renting or transferring the domain name to the Complainant for valuable consideration in excess of its out-of-pocket expenses.
5.3 The Complainant further asserts that at all times the website operating from the Domain Name has been dormant. It also refers to the website operating from the domain name <dpnd.net>, which is said to include a hyperlink to the website operating from the Domain Name.
5.4 Copies of the relevant pages of the website operating from the Domain Name are not provided with the Complaint but this appears to be the website of an Internet Service Provider that provides various website hosting and e-commerce services. The page on that website in which the hyperlink is to be found is the page headed “Hosting Plans” that operates from the url “http://www.dpnd.net/hosting.php”. There is extensive small text on that page, but at the bottom is to be found the following text:
“Cart32 is a very flexible solution, however if you need a bit more customized Shopping Cart solution we do have a custom written shopping cart availabe [sic] and our programming staff can tailor this solution to your needs, however a custom solution is always going to incur greater expense. If you would like to see this custom cart in action vist [sic] Ozark Mountain Coffee to view the flexibility of this design. We also offer a database driven catalog that is fully integrated with CART32. You can give the database a test drive at our demo site Pick N Pay”.
The hyperlink operates from the words “Pick N Pay” in the last line of that paragraph.
5.5 The Complainant asserts that the claims in this paragraph are a “facade” that is “aimed at extorting the Complainant out of a sum that is a valuable consideration in excess of its out-of-pocket costs”. In support of that claim, the Complainant asserts that a “Shopping Cart” solution should include the following basic characteristics; i.e. (a) data in relation to products; (b) a module or “basket” that records the products chosen; and (c) a means of capturing a client's payment information. None of these characteristics are to be found at the page operating from the Domain Name.
5.6 Similarly the claim that the application is “fully integrated with [the] CART 32 [Shopping Cart application]” is said to be a misrepresentation in that the webpage operating from the Domain Name does not remotely resemble a website that is integrated with that system.
5.7 So far as bad faith is concerned the Complainant contends that the Respondent “was undoubtedly aware of the existence of the Complainant's well-known PICK ‘N PAY mark when he Domain Name was registered. The reasons given are that the phrase “Pick ‘N Pay” is said not to be “in common use as a trade or service mark in any industry anywhere in the world” and that Google searches against the term “Pick ‘N Pay” show that the virtually all the results returned reveal some sort of connection with the Complainant.
5.8 Reference is also made to the fact that on February 23, 2009 the Complainant sent the Respondent an email in which it demanded that the Domain Name be transferred to the Complainant and alleging trade mark infringement. The Respondent's email response later that day is said to have constituted an offer to transfer the Domain Name to the Complainant for USD100,000. This by itself is said to be sufficient to show that the Respondent registered the Domain Name in bad faith and the Complainant cites the decision of Allianz Ag And Dresdner Bank Ag V. Comofer SL, WIPO Case No. D2001-1398, which is said to be authority for that proposition.
5.9 The Complainant also contends that the Respondent registered the Domain Name to prevent the Complainant from registering the Domain Name. Lastly, the Complainant contends that the passive holding of a Domain Name also amounts to bad faith (citing Teachers Insurance and Annuity association of America v Wreaks Communications Group, WIPO Case No. D2006-0483).
B. Respondent's Submission
5.10 The Respondent did not reply to the Complainant's contentions on time. The Respondent's lawyer did send an email in which he made various factual assertions regarding the circumstances of registration and use of the Domain Name. However, as this Panel stated in Fashiontv.com GmbH v. Mr. Chris Olic WIPO Case No. D2005-0994:
“4.2 In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers, WIPO Case No. D2003-0780 and 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 panels have held that late responses should be disregarded ‘absent good cause'.
4.3 This Panel also addressed the issue of late responses in its decision in HQ UK Limited v. Head Quarters, WIPO Case No. D2003-0942. In that decision the Panel noted that an “exceptional case” was required under paragraph 10(c) of the Rules for extensions of time under the Rules and expressed the view that the circumstances that must be shown for a late submission to be accepted are at least as strict. In that decision the Panel went on to note as follows:
‘Further, the comments of the majority of the panelists in 1099 Pro, Inc. v. Convey Compliance Systems, Inc., WIPO Case No. D2003-0033 would seem to suggest that panels are now likely to take a stricter view on whether a party has shown good cause than might have been the case when the UDRP process was still relatively new'.
4.4 Indeed, as was more recently pointed out by the panel in the case of Museum of Science v Jason Dare, WIPO Case No. D2004-0614, ‘many panels have disregarded late filed responses making clear that it is important to apply the Rules as written, absent a good reason, otherwise parties will feel free to disregard deadlines and Respondents will regularly submit late responses'.
4.5 It is for the party seeking to submit a late submission to provide justification for doing so. So has the Respondent shown good cause or exceptional circumstances in this case?
4.6 The Respondent claims that it has ‘encountered difficulty in locating the materials provided as evidence hereto under the ‘bad faith' criterion within the 20 days permitted by the Policy'. Further it argues that the delay was not material since the Response was filed prior to any consideration of the Complaint by the Panel and that the harm on the Respondent should the Response not be considered by the Panel outweighs any harm to the Complainant should the Response be taken into consideration.
4.7 Whilst the lack of impact on the Complainant is an important factor, in the view of the Panel this is not sufficient. The Respondent must also give reasons for the delay and the greater the delay the more compelling those reasons. The Panel believes that a mere assertion by the Respondent of ‘difficulties' in obtaining evidence, without any explanation of what those ‘difficulties' were, is not sufficient. Further the materials proffered by the Respondent as ‘evidence … under the ‘bad faith' criterion' are limited (i.e. a two page domain name transfer agreement and a receipt) and it is certainly not apparent on the face of these documents why they would be ‘difficult' to locate. In the circumstances, the Panel has decided to disregard the Response when considering this matter.”
5.11 The reason initially offered by the Respondent's lawyer for its late response was that the previous emails “appear as nothing more than the rest of the junk email originating from Africa or elsewhere”. He also added the following post script:
Do not write me back arguing that the prior emailings were sufficiently authentic appearing to put Mr Rose on notice. I get emails every day from state and federal authorities that can be affirmed as authentic. You[r] communications lack that capacity, especially because they lack return addresses and proper links and include attachments that often result in blockage by spam programs”.
5.12 The Panel does not accept that either of these statements provides a good reason for permitting a late submission in this case. The case file records show that on April 27, 2009 an electronic copy of the Complaint was sent to the email address recorded in relation to the Domain Name. This was the same address to which the Complainant had sent its letter of February 23, 2009 and to which the Respondent had managed to respond in hours. The Complainant had also sent to the firstname.lastname@example.org email address. No delivery failure receipt was received from either address. Further, a hard copy of the Complaint was couriered to the Respondent. Therefore, it is clear that the Center complied with its obligations of notification under paragraph 2(a) of the Rules and the proceedings were properly commenced under the Policy (see, in this respect Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886).
5.13 Further, when the hard copy package was delivered on May 12, 2009 the Respondent refused to accept the package. It is difficult to understand why the Respondent would have refused to accept the package unless it already knew what was in that package as a result of the earlier emails. In short, it appears that the Respondent deliberately refused to accept these materials under the misguided assumption that somehow it could avoid the consequences of these proceedings. For the Respondent to have acted in this way does not reflect well upon it and this is a point to which the Panel will return later on in the decision.
5.14 Nevertheless, the Panel prior to seeing a copy of the purported Response decided to conduct a search of the internet archive in relation to the Domain Name. As a result of that search it appeared that a website had been operating from the Domain Name for several years. In the circumstances, the Panel in the Procedural Order invited the parties to submit further submissions in relation to this issue. However, the Respondent chose not to file any such submission.
C. Complainant's Supplemental Submission
5.15 In contrast to the Respondent, the Complainant did file a supplemental submission. In that submission the Complainant argued that the Respondent's late purported Response should not be accepted in these proceedings. For the reasons already given, the Panel has reached the conclusion that the late purported Response should not be considered and therefore it is not necessary to set out these submissions in any detail. It is sufficient to note that the Complainant contended that the fact that the Respondent had responded to the Complainant's initial letter before action shows that the Respondent's lawyers “junk mail” claims were an “outright falsehood”. It also referred to further failures of the Respondent to act in accordance with the Rules and Policy.
5.16 On the issue of what date the issue of bad faith registration should be assessed in this case, the Complainant contended that whatever the date of registration it could show bad faith. In this respect it referred to its trade mark rights that were said to go back “over 33 years” and pre-dated registration. It contended that the Respondent had failed to discharge “the burden of proof to show that its motive for ‘taking possession' of the [Domain Name] was not in bad faith” and that a conclusion that it registered to create an association with the Complainant in order to divert customers to the Respondent's website was “inescapable”.
5.17 Lastly, the Complainant referred to a letter of June 3, 2009 and claimed that the Respondent had sought in that letter to sell the Domain Name to the Complainant for an increased price of USD 19,000.
D. Respondent lawyer's “emergency motion”
5.18 The Respondent's email of June 8, 2009 was stated to be an “emergency motion” to strike out the Complaint and all submissions. It also sought leave to file further papers in this respect within 20 days. Two reasons were given for this. One was that the Complainant had referred to settlement negotiations which were said to be not “admissible”. The other was that the Complainant's assertions were said to be false. In particular, it claimed that “[the Respondent] made no settlement demand prior to June 2, 2009” and claimed that the Complainant's assertion that the Respondent has demanded USD 19,000 for the Domain Name was false. It enclosed a copy of the Respondent's lawyer's letter of June 2, 2009. That letter contained the following text:
“To resolve matters, Dependable offers you the following choices or options:
Place $9,500 in escrow with Mr. Spears, against which Dependable will bill $1,000, for administrative cost and inconvenience, and its actual hourly re-programming costs, with the balance to be re-funded to your client. Customary invoices will be supplied to you and Mr. Spears.
Place $19,000 in escrow with Mr. Spears, which will be paid to Dependable on August 15, 2009, at which time you will get your domain
6. Discussion and Findings
6.1 The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these issues in turn. However, before it does so it is convenient to address the Respondent's “motion” to strike out the Complainant's submissions.
A The Respondent's “Motion”
6.3 The Rules and Policy do not provide formal rules for “motions” or “procedural applications” under the Policy. Nevertheless, the Panel is granted a broad discretion granted to it under paragraph 10 of the Rules as to the conduct of proceedings under the Policy bearing in mind the expedited and limited nature of those proceedings. Paragraph 10(d) also expressly provides that it is for a panel to decide “the admissibility, relevance, materiality and weight of any evidence”.
6.4 Notwithstanding the content of the Respondent's “motion”, the Panel sees no reason why it should not take into account the contents of the Complainant's submissions as to the Respondent's settlement offers. The fact that the majority of Panels are prepared to take into account settlement offers of this sort has long been clear. Paragraph 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) states that “[e]vidence of offers to sell the domain name in settlement discussions is admissible under the UDRP” and describes this as a “consensus view” among panelists. The issues and relevant decisions are discussed in greater detail in the decision of this Panel in McMullan Bros., Limited, and others v. Web Names Ltd WIPO Case No. D2004-0078, (a case which is cited in paragraph 3.6 of the WIPO Overview).
6.5 For the reasons given in the McMullan Bros decision, the WIPO Overview summary may overstate matters slightly. For example, if parties have entered into settlement discussions in circumstances where it is clear that the parties had agreed that their discussions should not come before a panel, then a panel is likely to be reluctant to allow those discussions to be used. However, there is no suggestion of any such agreement in the current case.
6.6 The Panel is also unconvinced by the Respondent's allegation that the Complainant's contentions as to settlement are false. This appears to the Panel to be not so much an issue of “strike out” and more a question of what weight if any is to be given to the Complainant's contentions in this respect. In any event, the Panel is far from convinced that the Complainant's evidence is somehow false or otherwise improper.
6.7 First, the Respondent contends that the Complainant did not make any settlement offer prior to June 2, 2009. However, the Respondent does not seem to deny that Mr. Rose sent the Complainant's lawyers an email of February 23, 2009 that contained the text: “$100,00.00 Firm” [sic]. This email was appended to the Complaint and the Respondent has long had an opportunity to set out its case in this respect. In the absence of any credible alternative explanation, the Panel accepts the Complainant's contention that this can only sensibly be understood as an offer to transfer the Domain Name.
6.8 Indeed, Mr. Rose's email of February 23, 2009 is difficult to reconcile with the statement by the Respondent's lawyer that the Respondent made no settlement offer prior to June 2, 2009. It suggests that if any party is not being entirely honest in the conduct of these proceedings, then it is the Respondent.
6.9 Second, the Respondent contends that the settlement offer contained in the Respondent's lawyer's letter of June 2, 2009 was not an offer to sell the Domain Name for USD 19,000. However, it is difficult to read the second of the two “options” offered to the Complainant in that letter in any other way. The Respondent's point is perhaps slightly different, in that the overall thrust of the letter is that that the figures sought to take into account the “recoding” work that the Respondent would need to undertake if the Domain Name were to be transferred. This is a point to which the Panel will return in the substance of the decision. For present purposes, the Panel does not accept that the Complainant's assertions in this respect were in any way dishonest or improper.
6.10 In short, the Panel sees no good reason to disregard the contents of the Complainant's submissions or to provide the Respondent with further time to file further evidence and papers in relation to this issue. It will, therefore, proceed to address the substance of the case before it.
B. Identical or Confusingly Similar
6.11 This aspect of this case is very straight forward. The Complainant has identified one amongst a large number of trade marks that it owns that incorporate the text “pick ‘n pay”. The specific trade mark that it has identified comprises that text alone. The Domain Name can only be sensibly understood as the text “pick n pay” or “pick ‘n pay” with the spaces and apostrophe removed combined with the “.net” TLD. Neither spaces nor apostrophe's are characters that currently can be incorporated in a domain name. The Domain Name is, therefore, virtually identical to the Complainant's mark.
6.12 The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.13 This is one of those cases where the issue of rights or legitimate interests and bad faith can be considered together.
6.14 The archive material before the Panel in this case suggests that the Respondent or its predecessor in business has used the term “picknpay” as part of a domain name in connection with some form of check-out or inventory system on the Internet in respect of which the Domain Name is suggestive. The Domain Name was registered on October 26, 2007 but material available in the Internet archive suggests that this was merely the continuation of a use and activity that could be traced back to 2000. The Complainant in contrast asserts essentially that such use is a sham and that the Domain Name has in reality been registered with the Complainant's brand in mind and/or with a view to selling the Domain Name to the Complainant.
6.15 If the Complainant is factually correct, then the Respondent has no legitimate interest in the Domain Name and the registration and subsequent holding of the Domain Name was in bad faith. If, however, the Domain Name was registered in October 2007 with a view to the continuation of a genuine business activity from the Domain Name with no intent to take advantage of any association between the Domain Name and the Complainant's trade mark, then the Respondent is likely to had a legitimate interest in the Domain Name and will not have registered it or used it in bad faith.
6.16 The Complainant has cited various cases in its Complaint, but none of them take the basic analysis much further. It cites Allianz Ag And Dresdner Bank Ag V. Comofer SL, WIPO Case No. D2001-1398 as authority for the proposition that an offer to sell a domain name for a figure in excess of out-of-pocket expenses is “sufficient to show that the Respondent registered the [Domain Name] in bad faith”. However, this is not what that case says. In the Allianz case the disputed domain names were registered the day after a merger announcement could only be sensibly be understood as a reference to the proposed merged entity and the Respondent then sought at least USD 1 million for the domain names. The inference that the domain names were registered for sale to the complainant was therefore overwhelming. The panel certainly did not say that a mere offer to sell a domain name for a figure over and above the out-of-pockets costs under any circumstance evidenced bad faith.
6.17 The Panel accepts that there may be occasions where the sum sought by the registrant is such that the natural inference to be drawn from this is that the registrant is seeking to take advantage of the trade mark significance of the term. It may in turn then be possible also to infer that this was the intention of the registrant at the time of registration. However, these are inferences that may or may not be justifiable on the facts of the case as a whole.
6.18 Further, the Complainant cites Teachers Insurance and Annuity association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 as supposed authority for the proposition that the passive holding of a domain name amounts to bad faith. Again this misstates what that case says. Teachers Insurance is simply one in a long line of cases following the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that have recognised that passive holding does not preclude a finding of bad faith use. It does not say that passive holding is equivalent to bad faith use. In any event, in this case there has been more than passive holding. There has instead been use for a website that is either genuine or is a sham. The key issue is which is correct.
6.19 The primary reason why the Complainant contends that the Respondent's use of the Domain Name is in bad faith, is the content of the basic web page operating from the Domain Name. The Panel accepts that the content of that webpage is non-functional and contains in places nothing more than random typing. This is not the web page that one could ever reasonably expect any company to be genuinely using in connection with its business.
6.20 There are other factors in this case that are troubling and are suggestive of bad faith registration. They include the cursory response to the letter before action sent by the Complainant sent by Mr. Rose on February 23, 2009. That response showed a casual disregard of the serious allegations made in the Complainant's lawyer's letter. It was and is the sort of response that was likely to reinforce the worst suspicions of a trade mark owner and was likely to provoke a trade mark owner into bringing proceedings under the Policy.
6.21 Next there is the Respondent's reaction to these proceedings. As has already been explained, the Panel believes that it is more likely than not that the Respondent did receive the Complaint by email and that it refused to accept receipt of the hard copy Complaint in a misguided attempt to frustrate the operation of these proceedings.
6.22 Neither action is what one would expect of a business that believes it has legitimately registered the Domain Name. Matters were not helped by the somewhat intemperate initial claim by the Respondent's lawyer that the materials sent by the Complainant's lawyers and the Center to the Respondent were the equivalent of “junk mail”.
6.23 These concerns are further compounded by the fact that the Respondent chose not to file a further submission in accordance with the Procedural Order. The Respondent knew following the Procedural Order that the Panel was minded to take no notice of the contents of its lawyer's email and had been accused of engaging in sham activity. Nevertheless, the Respondent decided not to take advantage of the second chance provided to it to explain the circumstances surrounding the registration and use of the Domain Name. The Respondent was not obligated to file such a submission, but this is strange behaviour from an entity that believed that its activities were legitimate.
6.24 To this is to be added the Respondent's lawyers claims that no settlement offer was made by the Respondent prior to June 2009. For the reasons already given this appears to be demonstrably untrue.
6.25 In short, neither the Respondent nor the Respondent's lawyer's have covered themselves in glory by reason of their behaviour in these proceedings.
6.26 However, a panel cannot find against a respondent simply because of its behaviour in proceedings. Further, the Complainant's statement that the Respondent had failed to discharge “the burden of proof to show that its motive for ‘taking possession' of the [Domain Name] was not in bad faith”, misunderstands the way in which the Policy operates. As already stated it has long been established that it is the Complainant that bears the burden of proof under the Policy and in this case there are a number of substantial difficulties. In particular:
(i) The term “pick ‘n pay” albeit used extensively by the Complainant in South Africa, nevertheless can be understood as a colloquial form of “pick and pay” in ordinary English. It is not an unnatural term to have chosen to use in connection with a “Shopping Cart” website application.
(ii) Notwithstanding the Panel's acceptance that the webpage operating directly from the Domain Name provides is not what one would expect from an ongoing business, there is material that suggests that for some time the Respondent may have to some degree genuinely offered IT services from other pages operating from that Domain Name that include or at least suggest a shopping cart functionality. The Complainant was given the opportunity to comment on that material by the Procedural Order but did not do so.
(iii) Whilst the most resent registration of the Domain Name dates back to 2007, the Respondent appears to have used the Domain Name or its equivalent to some degree since at least 2000. There is no evidence that at any time prior to the approach made by the Complainant's lawyers that the Respondent approached the Complainant to sell it the Domain Name or otherwise sought to take advantage of any trade mark significance of the Domain Name.
(iv) Although the Complainant contends its mark is so well-known that it is famous, there is no real evidence that this fame extended to the United States where the Respondent is based. The Complainant is the owner of a number of domain names incorporating the PICK ‘N PAY mark, but these would appear to be in the South African “.za” ccTLD. The Complainant has put in evidence a Google search against the term “pick ‘n pay” conducted on March 19, 2009 on the South African page of Google. However, no explanation is provided as to why this provides any evidence that the Respondent should have known about the Complainant and its mark at the time of registration, let alone intended to take unfair advantage of the reputation of the Complainant's mark.
6.27 Ultimately, in the opinion of the Panel the Complainant has failed to make out its allegations that the Respondent has registered and held the Domain Name with a view to sale to the Complainant.
6.28 That is not to say that the Panel is convinced that the sums of USD 100,000 and then USD 19,000 represent the true costs of reprogramming the web pages operating from the Domain Name as the Respondent's lawyer seems to suggest. The Respondent's conduct has been such that it has little faith in any statement made by the Respondent or its legal advisers in this matter and thinks it far more likely that the Respondent has on becoming aware of the Complainant's interest in the Domain Name sought to capitalise on that fact by selling it for as much as it thinks it can get from the Complainant. Nevertheless, that is not the same as having registered and held the Domain Name for that purpose.
6.29 Similarly, the Panel is unconvinced by the Complainant's claim in its supplementary submission that the Complainant's numerous African trade marks that pre-date the registration of the Domain Name leads to the “inescapable” conclusion that the Respondent registered the Domain Name to create an association with the Complainant in order to divert customers to the Respondent's website. The issue is not whether or not the Complainant can point to marks that pre-date the Domain Name registration (which it undoubtedly can) but whether it can be shown that the Respondent was aware of those marks and registered the Domain Name to take advantage of their reputation.
6.30 In conclusion, the Panel concludes that the Complainant has failed to make out the requirements of paragraphs 4(a)(i) or (ii) of the Policy.
7.1 For all the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Dated: June 12, 2009