Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is The Elephant Sanctuary in Hohenwald. Complainant’s address is P.O. Box 393, Hohenwald, TN 38462, U.S.A. The Respondent in this case is Riddle’s Elephant Breeding Farm and Wildlife Sanctuary, Inc, and lists its mailing address as P.O. Box 715, Greenbrier, AR 72058, U.S.A.

The domain names at issue are "elephantsanctuary.org" and "elephantsanctuary.com," which are registered with Registrars.com in San Francisco, California, United States of America.

A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 8, 2000.

On September 14, 2000 a Verification Response was received from Registrars.com which served to: (1) confirm that Registrars.com was in receipt of the notification of the domain name dispute; (2) confirm that Registrars.com is the registrar of the domain names; (3) confirm that Respondent is the current Registrant of the domain names; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrar’s WHOIS database for the Registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; and (5) indicate that the domain names are under registrar-lock pending conclusion of this proceeding.

On September 25, 2000, the WIPO Case Administrator requested that the Complainant amend the Mutual Jurisdiction Section of the Complaint to specify which mutual jurisdiction the Complainant has chosen to submit to. The Complaint was appropriately amended by Complainant on September 27, 2000. On October 2, 2000, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a three member Panel were paid by the Complainant on time and in the required amount.

A Notification of Complaint and Commencement of Administrative Proceedings was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier, facsimile, email), dated October 3, 2000. The Notification set a deadline of October 22, 2000 by which the Respondent could make a Response to the Complaint. Respondent submitted its response by email on October 20, 2000. A hard copy of the response was received by the WIPO Center on October 23, 2000.

On November 20, 2000, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel. Taking into consideration the panelist nominations made by the parties, the WIPO Center appointed Elliot E. Polebaum and Nicolas Ulmer to serve as Panelists and Roderick Thompson to serve as Presiding Panelist. All three Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on November 20, 2000, was December 3, 2000.

Both Complainant and Respondent are apparently involved in elephant management and handling, and offer among other things, "sanctuaries" for elephants.

The Complainant is the owner of a U.S. trademark registration for "ELEPHANT SANCTUARY" for apparel, which Trademark was registered on March 9, 1999.

Respondent is the current Registrant of the domain names "elephantsanctuary.org" and "elephantsanctuary.com," which were registered on January 31, 2000.

A. Complainant

The UDRP Rules require that the Complaint "specify" the trademarks on which it is based and "for each mark, describe the goods or services, if any, with which the mark is used." Rule 3(b)(viii). Here, Complainant refers to its trademark in "ELEPHANT SANCTUARY" without identifying the goods or services to which the mark applies. This fails to comply with the Rule and leaves a potentially misleading implication that Complainant has a trademark for the provision of sanctuary services to elephants.

The Complainant provided evidence of its trademark for "ELEPHANT SANCTUARY" for apparel by attaching the registration for the trademark as Exhibit 4 to its Complaint. Thus the Complainant has provided evidence of the registration of a trademark for "ELEPHANT SANCTUARY" for apparel. There is no allegation or documentary evidence provided by Complainant of any use of the "ELEPHANT SANCTURARY" mark on other goods or services.

Complainant claims that Respondent has registered a domain name that is identical to the trademark registered by Complainant. Additionally, Complainant contends that it has used its name extensively in interstate and international commerce since its founding in 1994. Complainant also asserts that Respondent is well aware of the existence of the Complainant and its trademark. Thus, Complainant claims that Respondent made false representations in its domain name application by asserting that its registration "will not infringe upon or otherwise violate the rights of any third party."

Complainant contends that Respondent intended to register "elephantsanctuary.org" and "elephantsanctuary.com" in bad faith in order to divert Internet users who were looking for Complainant. Complainant asserts that Respondent is trying to take advantage of the higher public profile and greater fund-raising capabilities of Complainant.

According to the Complaint, Internet users have been diverted from finding Complainant. Complainant receives several phone calls a week from individuals who complain that they attempted to find Complainant’s web site who found Respondent’s instead. Complainant claims that the registration is in bad faith because Respondent is attempting to profit from the good faith and public attention paid to Complainant and its trademark.

In addition to the allegations regarding the domain name, Complainant points out that the parties differ in their views on elephant management and handling. Complainant claims that Respondent has publicly stated negative things about the Complainant, including false and derogatory statements to press entities and individuals who have visited Respondent’s breeding facilities.

B. Respondent

Respondent asserts that the trademark registered by Complainant applies only to apparel and not to the provision of sanctuary for elephants. Respondent claims that the trademark could not be for sanctuary services as it would therefore be a generic term. Additionally, Respondent contends that if it is possible to acquire trademark rights in the term Elephant Sanctuary in connection with providing sanctuary for elephants, Respondent's rights would be senior to those of Complainant because Respondent has been using that term in connection with its services since 1991. Therefore Respondent feels that it did not make false representations in its domain name registration application by stating that the registration would not infringe on the rights of any third party.

Respondent indicates that it provides sanctuary for elephants and therefore has a legitimate interest in the use of "elephantsanctuary" as its domain name. Respondent asserts that it obtained the disputed domain names for its own use in connection with its own non-profit enterprise.

Respondent disputes Complainant’s contention that it registered the domain names in an effort to divert traffic from Complainant’s site. Respondent's web site home page read across the top, "Riddle’s Elephant Farm and Wildlife Sanctuary." Respondent asserts that if it wished to divert users seeking Complainant's web site, it would not use the surname "Riddle" so prominently on its home page. Respondent claims that it chose the domain names "elephantsanctuary.com" and "elephantsanctuary.org" to indicate to visitors what the Respondent is a sanctuary for unwanted elephants.

In response to allegations of defamation by Complainant, Respondent asserts that because of Complainant’s differing views on elephant management, and particularly because of the success and attention garnered by Respondent, Complainant has been publicly attacking Respondent for some time.

Citing the absence of reasonable arguments within the Complaint with respect to each of the required elements of proof, and claiming that the Complaint contained inflammatory and defamatory statements, Respondent asserts that Complainant has brought its Complaint in bad faith and in an abuse of the administrative proceeding.

Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panelist shall 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 directs that the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,

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

(iii) that the domain name has been registered and used in bad faith.

Paragraph 4(a)(iii) of the UDRP requires that the Complainant show that the domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy outlines the circumstances that may serve as evidence of bad faith. One such circumstance is use of the name to attract Internet users to the site by creating a likelihood of confusion as to source, sponsorship or affiliation. As noted above, Complainant claims that Respondent registered the domain names in order to divert Internet users who were looking for Complainant. Complainant claims that the registration is in bad faith because Respondent is attempting to profit from the good faith and public attention paid to Complainant and its trademark.

Respondent disputes Complainant’s contention that it registered the domain names in an effort to divert traffic from Complainant’s site. Respondent asserts that the site clearly indicates that it is associated with Respondent. In fact, Respondent indicates that the words "Riddle’s Elephant Farm and Wildlife Sanctuary" appear across the top of the web page. Given this clear identification of the entity that hosts the web page, the Panel finds that it is unlikely that an Internet user would be confused as to the source or sponsorship upon arrival at the web site.

Additionally, Respondent states that it intended to use the site to indicate its services as an elephant sanctuary, not in order to divert traffic away from Complainant’s organization. While Complainant alleges that Respondent desires to divert traffic because Complainant receives more press coverage and has greater fund raising capabilities, Complainant did not provide any evidence to prove that such an allegation is true. In its Response Respondent states that it receives significant press coverage itself. Additionally, Respondent’s arguments that Respondent registered the names in order to indicate its services as an elephant sanctuary are entirely plausible and seem to accurately depict the actual use of the site, which in turn conforms to Respondent’s long-standing activity.

Thus this Panel finds that Complainant has failed to carry its burden of proving that the domain names were registered and used in bad faith.

The Complainant did not allege that Respondent had no rights or legitimate interest in the name.

Paragraph 4(c) of the UDRP sets out circumstances that demonstrate the Registrant’s rights or legitimate interests in the name. One such circumstance is the use of the domain name by the Respondent in connection with a bona fide offering of goods or services prior to notice of the dispute. In this case, Respondent appears to have been using the domain names to provide information on its elephant sanctuary services prior to the filing of this dispute. Therefore this panel finds that Respondent has a legitimate interest in the use of the disputed domain names.

Given the conclusion that Complainant has not met its burden in relation to showing the existence of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii) and 4(a)(iii) of the ICANN Policy, it is not necessary for the Panel to determine whether the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Because there is some contention over whether there is a trademark for ELEPHANT SANCTUARY as it relates to providing sanctuary services to elephants and then which party would have senior rights to the trademark, it is best not to reach an unnecessary finding on this issue.

Paragraph 15(e) of the ICANN Rules provides, "If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

Respondent claims that Complainant has brought its Complaint in bad faith and in an abuse of the administrative proceeding. Because this Panel has found that Complainant failed to prove at least two of the three essential elements, and has failed even properly to allege one of these elements, it is reasonable to consider whether the Complaint was brought in bad faith. Asserting a claim that does not prove to be meritorious under the UDRP is not by itself indicative of bad faith. Complainant is the owner of a trademark registration for "ELEPHANT SANCTUARY" for apparel that is identical to the domain names in issue. It is, however, apparent that the parties have a history of rivalry and disputes, and Respondent alleges that the Complaint was filed for purposes of harassment. Respondent does not, however, offer sufficient independent grounds for a finding of bad faith. It is not clear to the Panel that the Complaint was brought in bad faith. The Panel thus finds that Respondent has not shown that the Complaint was brought with bad faith within the meaning of paragraph 15(e).

This Panel has limited jurisdiction dedicated to deciding domain name disputes under the narrow criterion specified in the UDRP. This administrative proceeding is not the appropriate forum for raising broader disputes such as the appropriate method of animal handling. The decision of this Panel, however, has no effect on whether either Complainant or Respondent may have some other valid legal claims.

This Panel decides that Complainant has not shown that the Respondent has no legitimate interests in the domain name. Additionally, Complainant has not shown that the domain names were registered and used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain names <elephantsanctuary.org> and <elephantsanctuary.com> remain with the Respondent.

Roderick M. Thompson
Presiding Panelist

Elliot E. Polebaum Nicolas Ulmer
Panelist Panelist