WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coles-Myer Limited v. Domaintrade@hotmail.com
Case No. D2000-1820
1. The Parties
The Complainant is Coles-Myer Limited, a company incorporated in Australia, having its principal place of business at PO Box 2000, Glen Iris, Victoria, Australia.
The Respondent is Domaintrade@hotmail.com. The administrative and billing contact provided for the domain name registered by the Respondent is email@example.com, PO Box 3482, Mexico City, 000 Mexico.
2. The Domain Name and Registrar
The domain name at issue is "coles-myer.com". The registrar of the domain name is Easyspace Limited, Rosemount House, Rosemount Avenue, West Byfleet, Surrey KD14 6LB, UK. The domain name was registered on June 9, 2000.
3. Procedural History
Issuance of Complaint
On December 27, 2000, the Complaint was submitted (hardcopy) to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
Request for Registrar verification
On January 8, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar of Easyspace Limited, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with Easyspace Limited.
Confirm that the person identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
Indicate the current status of the domain name.
By January 8, 2001, Easyspace Limited advised the WIPO Center as follows:
Easyspace Limited had received a copy of the Complaint from the Complainant.
Easyspace Limited is the Registrar of the domain name registration "coles-myer.com".
Easyspace Limited is shown as the "current registrant" of the domain name "coles-myer.com". The electronic and postal addresses of the registrant were given as Domaintrade@hotmail.com, PO Box 3482, Mexico City 000, Mexico.
The administrative contact is: Mrdomaintrade@hotmail.com, Phone: +90.
The technical and zone contact was Easyspace Hostmaster, Phone: http//www.easyspace.com, Facsimile: 44 1932 350 222.
The Uniform Dispute Resolution Policy is applicable to "coles-myer.com".
Easyspace Limited has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
Having verified that the Complaint satisfied the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Polcy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules "), the WIPO Center on January 9, 2001, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by January 28, 2001) or else be considered to be in default. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, in four sets of hard copy and by email.
The Respondent failed to submit a response within the stipulated 20-day period, and on January 31, 2001, the WIPO Center issued to the Respondent a Notification of Respondent Default.
Appointment of Administrative Panel
On February 2, 2001 the WIPO Center invited Andrew Brown, Barrister of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On February 7, 2000, Andrew Brown, Barrister advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On February 7, 2001, the WIPO Center forwarded to Andrew Brown, Barrister by email the relevant submissions and the record. The full copy of the Complaint was sent by courier and received by him on February 12, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by February 21, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any proper Response from the Respondent.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant is the largest retailing organisation in Australasia. It operates chains of department stores, discount stores, supermarkets, food and liquor stores, apparel stores, general merchandise stores and other specialty stores.
The trademark COLES-MYER is registered in Australia in classes 35, 36 and 42.
The Complaint states that the Respondent has set up the domain name "coles-myer.com" so that traffic is redirected to the Australian based website of Woolworths Limited, a competitor of the Complainant. The Complaint also states that Woolworths Limited has confirmed that its consent was never given for this redirection. The advice from the Registrar confirms that "coles-myer.com" is "registrar locked and is currently being used to redirect to http//www.woolworths.com.au".
The evidence presented by the Complainant shows that the Respondent has registered two other domain names of well-known Australian companies:
5. Parties’ Contentions
(a) The Complainant
The Complainant contends in summary that:
(a) The domain name "coles-myer.com" is identical to the registered trademark and well-known name of the Complainant with the exception that there is a hyphen separating the two terms. The hyphen is confusingly similar;
(b) The Respondent has no rights or legitimate interests in the domain name "coles-myer.com". The Respondent is not commonly known by that name, nor is the Respondent using the site in connection with the bona fide offering of goods or services or for a legitimate reason;
(c) The domain name is being used misleadingly to divert customers and to tarnish well-known and respected trademarks, which are owned by the Complainant.
(b) The Respondent
The Respondent has not responded to the Complaint.
6. Discussion and Findings
The principles to be applied in deciding the outcome of this proceeding are contained in paragraph 15(a) of the Rules:
"A Panel shall decide a Complaint on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable."
The burden for the Complainant under paragraph 4(a) of the ICANN Policy is to show that:
Domain name is identical to registered trademark
The Panel finds that the domain name "coles-myer.com" is identical to the Complainant’s registered trademark in Australia. The addition of the hyphen is an immaterial difference. The Panel so decides.
No legitimate rights or interests
The Complainant has demonstrated the extent to which the Coles-Myer name is recognised and associated with its retail operations. It is clear that the Complainant has not permitted the Respondent to use the COLES-MYER trade mark or apply for or use any domain name incorporating that trade mark.
Paragraph 4(c) of the Policy sets out three circumstances in which a registrant may prove to the satisfaction of the Panel, a right or legitimate interest in the domain name at issue. These are as follows:
(i) Before any notice to the registrant of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The registrant (as an individual, business or other organisation) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
(iii) The registrant is making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The evidence available to the Panel eliminates the possibility that the Respondent has acquired a right or legitimate interest in the domain name at issue under any of the three specified circumstances and there is no evidence that the Respondent has ever used the trade mark COLES-MYER or that is has ever previously offered bona fide goods or services under that trade mark or name.
The Complainant has therefore proved this element to the satisfaction of the Panel.
Registering and using a domain name in bad faith
Paragraph 4(b) of the Policy sets out four circumstances, any one of which, if present, will support a finding of registration and use of a domain name in bad faith.
(i) Circumstances indicating that the registrant has registered or 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 the registrant’s documented out of pocket costs directly related to the domain name; or
(ii) The registrant has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark and corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) The registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The following factors lead the Panel to conclude that the domain name has been registered and is being used in bad faith.
(a) The domain name in issue devolves to the website "http://www.woolworths.com.au" being the website of Woolworths Limited, a competitor of Coles-Myer Limited. The Complainant states that no consent was ever given by Woolworths Limited, the owner of the website "woolworths.com.au" for this redirection. Further, that this use is causing disruption to the business of both the Complainant and Woolworths Limited and is causing confusion to customers. The Complaint states that the site was set up so that traffic is redirected to the Woolworth’s website. It appears that this redirection has always been in place.
The actions of the Respondent in registering the domain name for the purpose of redirecting visitors to the site of a competitor of the Complainant, amounts to bad faith registration and use. These actions have a close similarity to the circumstances of bad faith, which are listed in paragraph 4(b)(iii) of the Policy – namely registering the domain name primarily for the purpose of disrupting the business of a competitor. Here the Respondent is not a competitor of the Complainant. Indeed no one knows the identity of the Respondent. However the actions of the Respondent are equally in bad faith. Even though not a competitor, the Respondent is causing disruption to the business of the Complainant and confusion amongst members of the public.
(b) There is a pattern of similar activity by this Respondent in respect of two other websites involving trademarks of well-known Australian retailers i.e. "just-jeans.com" and "rebel-sport.com". Previous panels have regarded evidence indicating a respondent owning other domain names which correspond with well-known third party trade marks as prima facie evidence satisfying sub-paragraph 4(b)(ii) of the Policy that the Respondent "has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark and the corresponding domain name, provided that you have engaged in a pattern of such conduct": Inter-IKEA Systems BV v Technology Education Centre, WIPO Case No. D2000-0522; Indy Mac, Inc v Financial Insurance Associates, WIPO Case No. D2000-0535.
The Complainant has therefore proved this element to the satisfaction of the Panel.
The evidence presented by the Complainant, which has been uncontested by the Respondent throughout this proceeding, leads the Panel to decide that the Complainant has proven pursuant to paragraph 4(a) of the Policy:
(a) That the domain name is identical to the trademarks of the Complainant;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith.
Accordingly, the Panel orders that the registration of the domain name "coles-myer.com" be transferred to the Complainant.
Dated: February 16, 2001