WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cattlecare Limited v. Wairua Holdings Pty Ltd t/a Poplar Pastoral Co
Case No. D2001-1373
1. The Parties
The Complainant is Cattlecare Limited of NFF House, 14-16 Brisbane Avenue, Barton, ACT 2600, Australia.
Complainant is represented by Banki Haddock Fiora (Lawyers), Sydney, New South Wales 2000, Australia.
The Respondent is Wairua Holdings Pty Ltd t/a Poplar Pastoral Co, ACN 001 386 161 of Suite 3, 417 Peel Street, Tamworth, New South Wales 2340, Australia.
Respondent is represented by Warren V. Thibault (Solicitor) of Tamworth, New South Wales 2340, Australia.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is <cattlecare.com>. The domain name was registered on July 15, 1999.
The Registrar with which the domain name is currently registered is Dotster, Inc. of 11801 N.E. 99th Street, Suite 1100, Vancouver, WA 9862, Canada.
3. Procedural History
3.1 The Complaint was filed electronically on November 30, 2001, and in hard copy on November 19, 2001, with the WIPO Arbitration and Mediation Center (the "WIPO Center").
3.2 On November 22, 2001, the WIPO Center acknowledged receipt of the Complaint and requested verification of the domain name details from the Registrar.
On November 29, 2001, the Registrar verified:
(i) that the domain name is registered with it;
(ii) that Respondent is the current registrant of the domain name;
(iii) that the Policy applies to the domain name;
(iv) that the domain name is currently in "Active" status;
(v) the contact details of the Administrative and Technical Contact for the domain name.
(vi) that a copy of the Complaint had been served on it.
The Registrar did not notify WIPO Center of the Billing Contact.
3.3 A formal deficiency in the Complaint was rectified on November 29, 2001, and on November 29, 2001, all formal requirements for the establishment of the Complaint, having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the ICANN 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").
3.4 On November 30, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, facsimile and by e-mail to Respondent, Respondent's representative, the Administrative Contact and the Technical Contact.
3.5 The Administrative Proceeding commenced on November 30, 2001, and the Response was due on December 20, 2001.
3.6 A Response was filed on December 17, 2001, by e-mail and on December 21, 2001, in hardcopy.
3.7 Panelist Mr. Desmond Ryan, having filed Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole Panelist on January 10, 2002.
3.8 The language of the Proceeding is English.
4. Factual Background
4.1 The Complaint is supported by an Affidavit of Robert Anthony Barwell, National Coordinator of Complainant ("the Barwell Affidavit"), and extensive exhibits thereto. References hereinafter to "Complaint Exhibit [ - ]" are to those exhibits.
4.2 Complainant is a non-profit corporation limited by guarantee, which was incorporated on January 11, 1996, by the Cattle Council of Australia. The Cattle Council was formed in 1979 and represents and promotes the interests of Australian beef producers.
4.3 Complainant is the owner of Australian certification trade mark No. 669934, registered in respect of "livestock, namely cattle and calves", ("the "Cattlecare" trade mark"). The registration was originally obtained in the name of the Cattle Council of Australia on an application dated August 17, 1995, and was subsequently assigned to Complainant. The "Cattlecare" trade mark is a composite mark comprising the word "Cattlecare" surmounted by a stylised representation of a bull on which is superimposed the letters "QA" and a tick (Complaint Annex 4).
4.4 The "Cattlecare" trade mark is used to certify participation in, and compliance with, an on farm quality assurance program known as the "Cattlecare Scheme". Administration of the program is carried out on behalf of Complainant by Aus-Meat Limited, as is a companion sheep meat program called "Flockcare".
4.5 The Cattlecare Scheme is implemented through a documentation manual called the "On Farm Quality Assurance Manual" which addresses areas of farm management, chemical use and storage and livestock management and handling. In this latter area, it addresses such topics as animal welfare, livestock identification, transactions and movement, carcass quality, bruising and skin or hide damage, transportation, chemical usage, treatment records, stock feeds and meat standards. Element L4 of the Manual relating to carcass quality, bruising and skin or hide damage specifies, inter alia, that "laneways and yards must be free of protruding objects likely to cause injury or bruising – inner rails must be smooth with no sharp projections in rails, posts, gateways or holding yards which may injure animals" (Complaint Exhibit B).
4.6 Accreditation and the right to use the "Cattlecare" trade mark is afforded to cattle producers whose properties and management regimes comply with the Scheme. Complainant does not endorse or certify products for use under the Scheme, but asserts that it has received numerous enquiries from manufacturers of cattle handling and fencing equipment requesting endorsement, and that it receives enquiries from cattle producers as to whether any such products are endorsed. Complainant asserts that it is considering product endorsement for the future (Barwell Affidavit paragraph 24).
4.7 Complainant asserts and supports with documentary evidence, that since its launch in 1996 the "Cattlecare" trade mark has acquired a significant reputation in Australia and some overseas countries through advertisements, and articles in magazines and rural newspapers, television programs and workshops. The program is endorsed and supported by many major Australian meat processors and distributors and government and industry bodies associated with the meat industry (Barwell Affidavit paragraph 38).
4.8 From October 1998 until the latter part of the year 2000, the Cattlecare Program and trade mark was promoted on the Aus-Meat Limited web site at <www.aus-meat.com.au> and is now promoted through Complainant's web site at <www.cattlecare.com.au>.
4.9 Complainant's exhibits (Complaint Exhibits E to K inclusive), show that in addition to the use of the composite "Cattlecare" trade mark, Complainant has extensively used the word "Cattlecare" per se in advertising and promotional material on its web site and Aus-Meat's web site, and that that word has been extensively used also by others both in Australia and elsewhere, to refer to, and indicate participation in, the Cattlecare Scheme. The Scheme is widely referred to in literature accessible on the Internet. A "Google" search of the word "Cattlecare" combined with "Australia" produced over 250 hits relating to the Scheme (Complaint Exhibit G).
4.10 As with the Complaint, the Response is supported by an affidavit from an officer of the Respondent, Marie Curtis Keighley ("the Keighley Affidavit") and several exhibits thereto. Reference hereinafter to the "Response Exhibit [ - ]" are references to those exhibits.
4.11 Respondent, so far as is relevant to this matter, carries on business as Poplar Pastoral Co. That business was established by Mrs Keighley with her husband in 1983. Respondent operates a merino sheep stud and an extensive business in the manufacture and marketing of hardware components for rural fences, gates and stockyards. These hardware products are marketed throughout Australia, New Zealand and the United States of America, and in 1993 the Keighleys travelled to California and exhibited a display of gate hinges and fasteners at an agricultural exposition. The first sales in the United States were made in February 1994 (Response Exhibit AA).
4.12 Respondent asserts (Keighley Affidavit paragraph 6) that whilst they were in the United States, they were approached by a number of American cattle producers who produced cattle in dairy feed lots. Respondent asserts that they were advised by these producers that "they were concerned about cattle care because the cattle were ultimately sold off to the beef trade for meat production, and they wanted a range of fasteners and hinges that would reduce hide damage". Keighley asserts that they "started designing hinges suitable to the American market which were described in terms of ‘Cattle Care’ ".
4.13 Response Exhibit A is a drawing of a gate latch which appears to have been annotated at various times. It bears across the top the annotation, "4 Cattle Care in Dairy Feedlots USA Tulare 1993. Feb. Expo.", however, the drawing appears not to have been made until December 1993, since it bears the copyright notice © E.H. Keighley Dec. '93. A further annotation is dated February 1994. There are other undated annotations.
4.14 Respondent registered the domain name in 1999, and shortly thereafter produced a catalogue which invited readers to "visit our web site on www.cattlecare.com" and included an advertisement for an article denominated as "Reversible Cattle Care Slam Catch" and the words "Patent Pending". Under "Some helpful hints", it states that "Cattle Care Slam Catches are safe, efficient, anti-bruising, quick action fasteners installed within the metal gate frame". There appears to be no other reference in the catalogue to the expression "Cattle Care".
4.15 On July 30, 1999, Respondent made an application for registration of an industrial design under the title "Reversible Cattle Care Slam Catch". The words "Cattle Care" were subsequently deleted from the title at the request of the Registrar of Designs (Keighley Affidavit paragraph 19).
4.16 Respondent asserts (Keighley Affidavit paragraphs 14 and 15) that before registering the domain name, it had no knowledge of the existence of Complainant or of its registered trade mark, and that it chose the name simply because of experience with American cattlemen.
4.17 Complainant asserts that it became aware of the domain name in June 2000, when it sought to register the domain name <cattlecare.com> for itself.
4.18 As at July 10, 2000, Respondent's homepage, accessible at the domain name included a reference to the domain name, and an advertisement for the reversible slam catch referred to in paragraph 4.14 above. Accompanying this was the statement: "Our products are made to strict quality and safety standards, and we are especially proud of our newest cattle yard gate latch which has been designed to strict Australian quality assurance standards – hence the name of this site - <cattlecare.com>". On that page also, there is an American flag, underneath which is the statement: "All prices on this site are in U.S. dollars and dimensions are in inches", and below that, an Australian flag, and the words: "The Australian version of this site is under construction and will be available soon" (Complaint Exhibits N and O).
4.19 On September 7, 2000, Complainant's solicitors forwarded a letter of demand to Respondent alleging passing off and misleading and deceptive conduct contrary to the provisions of the Australian Trade Practices Act, and demanding undertakings to refrain from such conduct in the future, and assignment of the domain name to Complainant. Respondent replied through its solicitor on September 14, 2000, denying Complainant's allegations, refusing to transfer the domain name and denying that his client suggests that the gate latch was designed to strict "Australian Quality Assurance Standards". The letter also asserts that Respondent was not aware of Complainant until it received the letter of demand and states that the term "cattlecare" is being used by Respondent "solely to make it easy for cattle producers to find on the web information relating to its hinges".
4.20 As at September 26, 2000, Respondent's web site had been amended so that in the advertisement referred to in paragraph 4.18 above, the words "Designed to strict Australian Quality Assurance Standards" had been changed to "Designed to Care for your Cattle".
4.21 Further correspondence took place between the solicitors for Complainant and Respondent without resolution of the matter, and as at July 9, 2001, Respondent's web site at the domain name continued to refer to the Cattle Care Slam Catch and to offer a full range of Respondent's products including gate and fence hardware, Wairua Superfine Merinos, Ezelap Sharpeners and Poplar Fencing and Yard Accessories.
5. Parities Contentions
5.1 Complainant's contentions may be summarised as follows:
(i) The domain name is identical to Complainant's name and common law trade mark "Cattlecare". The domain name is also confusingly similar to the "Cattlecare" trade mark.
(ii) The word "Cattlecare" has acquired an overwhelming secondary significance, as indicating a connection with Complainant and its quality assurance program. Complainant points to the fact a search of the Australian Trade Marks Office records shows that there are no other marks pending or registered, comprising the word "Cattlecare" or the part words "cattle "and "care" (Affidavit of Margaret Claire Shearer).
(iii) Respondent's web site is directed not only at users in the USA, but elsewhere, and specifically to users in Australia and New Zealand.
(iv) The word "Cattlecare" denotes exclusively participation in, and compliance with, the Cattlecare Scheme, and may only be used with the authority of Complainant. The Respondent is not authorised or endorsed by Complainant, and Respondent has no right or legitimate interest in the use of the word "Cattlecare" in its domain name.
(v) Respondent's registration and use of the domain name is in bad faith. Respondent's only use is of the word "Cattlecare" in the domain name, and the words "Cattle Care Slam Catch" in relation to one of its products, and neither of these uses is in good faith. Respondent's use of the domain name cannot be justified on the basis that it is merely descriptive, as Complainant's site offers a full range of Respondent's products, many of which have no relation to cattle or to caring for cattle.
5.2 Respondent's submissions may be summarised as follows:
(i) The domain name is not Complainant's trade mark and is not confusingly similar to it. The "Cattlecare" trade mark is a composite mark comprising not only the word "Cattlecare" but also the representation of a bull, the letters "QA" and the device of a tick.
(ii) Respondent contends that Complainant is not the owner of the common law trade mark "Cattlecare" per se, and that the word "Cattlecare" being a combination of two words in common usage, cannot be the subject of a trade mark.
(iii) The domain name is an "American" domain name, and that the Respondent's business operated from the web site is predominantly restricted to US producers. Respondent further contends that the name was "raised by Americans at Field Days".
(iv) Respondent contends (Response paragraph 5.1(d)) that it has used the words "Cattlecare" to describe its products since 1993, well before the registration of the "Cattlecare" trade mark. Respondent cites in support Response Exhibit A, referred to in paragraph 4.13 above.
(v) Respondent was not aware of the Cattlecare Scheme or the Complainant's trade mark at the time it registered the domain name (Response paragraph 3(o)).
(vi) The words "cattle" and "care" are words in common use, and have been used by others in advertisements for farm equipment (Response paragraph 3(r)).
(vii) Complainant is an Australian company trading in Australia in a field different from Respondent, and cannot complain of Respondent's use of its "American" web site. Respondent refers to the decision of the learned panel in Furrytails Ltd v. Andrew Mitchell - Case FA101-00009652
6. Applicable Dispute
6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution Policy adopted by the Registrar. The Registrar's current policy under its domain name registration Service Agreement is the Policy.
6.2 To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
7. Discussion and Findings
Identical or Confusingly Similar Trademarks
7.1 The "Cattlecare" trade mark is a composite mark of which the word "Cattlecare" forms only part. However, it clearly constitutes the name by which the trade mark would be known and described. It is inevitable that in oral description of the mark, it would be known as the "Cattlecare" mark. Considered in the context of use as a domain name, it is the only part of the mark capable of such use. The Panel is therefore of the opinion that the domain name is confusingly similar to the "Cattlecare" trade mark.
7.2 Complainant's claim to trade mark rights is not, however, confined to the "Cattlecare" trade mark as registered. It has produced extensive and well documented evidence of widespread use, acknowledgement and acceptance of the word "Cattlecare" per se as primarily identified with Complainant and the Cattlecare Scheme.
7.3 The Panel is therefore also of the opinion that the word "Cattlecare" per se is a trade mark in which Complainant has rights and the domain name is identical to that trade mark.
Legitimate Right or Interest
7.4 Respondent claims that it has a legitimate right to use the descriptive words "cattle" and "care" and that it has been using the expression "Cattlecare" in respect of its products since 1993.
7.5 Respondent is a pastoral enterprise engaged in the supply of components to the pastoral industry and to the cattle industry in particular. It is located in the city of Tamworth, which is in the heart of one of Australia's most important cattle raising districts. Nevertheless, Respondent contends that it had not heard of Complainant or of the Cattlecare Scheme, until it received Complainant's letter of demand. The Panel finds this hard to accept.
7.6 The Policy does not make provision for investigation by way of discovery or for the examination and testing of the credibility of witnesses. The Panel must therefore make its determination solely on the written evidence and submissions before it. The Panel has before it in this case, sworn evidence from each party, and extensive documentary exhibits.
7.7 The Cattlecare Scheme was well established and widely publicised prior to June 1999. In paragraph 14 of the Keighley Affidavit, Mrs. Keighley states that: "Before we registered the domain name <cattlecare.com> in America, we did not know of the existence of the company Cattlecare Limited, or indeed its registered trade mark ‘Device Bull QA with device tick Cattlecare’." It is to be noted that Mrs. Keighley does not say that she was not aware of the Cattlecare Scheme, or of the use of the word "Cattlecare" as the name of that Scheme. Her sworn statement does not therefore support the assertion contained in the Response.
7.8 In the light of this, and in the light of the extensive dissemination of information about the Cattlecare Scheme and Respondent's position in the rural industry, the Panel cannot accept the contention in paragraph 3(o), that Respondent was not aware of the Cattlecare Scheme or Complainant's trade mark, at the time it registered the domain name.
7.9 As to Respondent's contention that it has been using the expression "Cattlecare" or "Cattle Care" since 1993, Respondent has exhibited to the Keighley Affidavit several documents and items of correspondence relating to Respondent's dealings in the United States. In Exhibit A, use of the words Cattle Care appears in the annotation referred to in paragraph 4.13, and in Exhibit B, in what appears to be a handwritten file note or internal memorandum, there appears the sentence – "Very interested in cattle care in C.A. feed lots".
7.10 As to the annotation in Exhibit A, that exhibit contains several annotations which were clearly made at different times, and it is therefore difficult to assign a date to the annotation in question. The reference in the annotation to "Tulare 1993 Feb. Expo." is at odds with the date of the drawing which is given as December 1993.
7.11 The first date from which Respondent's use of the expression "Cattlecare" has been documented is the date of registration of the domain name on July 15, 1999, and its use in the catalogue (Response Exhibit BB), published shortly thereafter. Since that time, Respondent appears to have used the word "Cattlecare" in, and with reference to, its domain name, and in relation to its Reversible Slam Catch. From about September 2000, this latter use appears to have been changed to use of the two words "Cattle" "Care".
7.12 The Policy provides in paragraph 4(c), three examples of circumstances which, if proved, demonstrate the Respondent's rights or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances set out in sub-paragraphs (ii) and (iii) of paragraph 4(c), do not appear to be applicable to this dispute.
7.13 Paragraph 4(c)(i), provides that Respondent can demonstrate rights or legitimate interests if, before any notice to it of the dispute, it used, or made 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.
7.14 The domain name was registered on July 15, 1999. Notice of dispute of the registration of the domain name was not sent to Respondent until September 7, 2000, following Complainants becoming aware of the domain name in June 2000. The precise date when Respondent commenced to use the domain name is not known, but it is clear that it was in use in connection with the offering for sale of Respondent's products by July 10, 2000. Thus in terms of the date of use, Respondent has satisfied the conditions of paragraph 4(c)(i) of the Policy. The question remains however, whether that use was in connection with the bona fide offering of goods or services. It is not disputed that Respondent is genuinely in the business of offering for sale rural hardware components. Can such offering for sale by reference to the use of the domain name be described as bona fide? In other words, is the bona fides of the use of the domain name imported into the question of whether or not the offering for sale by reference to the domain name is bona fide?
7.15 Respondent cites, without discussion, the Furrytails Case supra, in support of its position. That case does not, however, contain an analysis of the reasoning underlying the learned panelist's finding that Respondent's conduct constituted a bona fide offering of goods or services for sale in the circumstances of the case. There are many other panel decisions in which the question of the bona fides of the use of the domain name has been considered in the context of paragraph 4(c)(i). In First American Funds Inc v. Ult.Search, Inc. WIPO Case D2000-1840, a decision of a three member panel, the majority found for the Respondent. All members of the panel were, however, agreed that it was necessary to consider the bona fides of the use, as well as the bona fides of the offer for sale. In his dissenting opinion, distinguished Panelist Scott Donahey, said "I agree with my distinguished colleagues when they effectively say that for use to be considered bona fide, the use must be one in good faith under paragraph 4(a)(iii) of the Policy". See also R.T. Quaife Engineering and anor. v. Bill Luton, WIPO Case D2000-1201, Scholastic Inc., v. Applied Software Solutions Inc., WIPO Case D2000-1629, Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case D2000-0253, and many others.
7.16 The majority in the First American Case supra said, "Although the Policy draws a clear distinction between the requirement of showing absence of legitimate right or interest in paragraph 4(a)(ii), and the showing of bad faith registration and use in paragraph 4(a)(iii), in reality it is difficult to separate the consideration of the one from the other. Absence of any right or interest on the part of Respondent may be of assistance in determining bad faith registration and use, and bad faith registration and use may be of assistance in determining the legitimacy of the claimed right or interest".
7.17 For the reasons discussed above, the Panel does not accept that Respondent was totally unaware of Complainant's extensive use of the word "Cattlecare". It may not have been aware of the precise nature of the "Cattlecare" registered trade mark, and in view of the administration of the Cattlecare Scheme by Aus-Meat Limited, it may not have been aware of the existence of Complainant as such, but it could not fail to have been aware of the Cattlecare Scheme. The use in its initial web site of the expression "designed to strict Australian Quality Assurance standards" is evidence that this was the case. There is no evidence of any other Australian Quality Assurance standard to which it could have referred. The Panel concludes, on the balance of probability, that in adopting the domain name, Respondent was motivated by a desire to benefit from the widespread reputation of the name "Cattlecare". That it may have believed it could do this, because the separate words "cattle" and "care" are common descriptive words, and that its "dot.com" was "American" is both misconceived and irrelevant.
7.18 The Panel therefore concludes that Respondent's adoption and use of the domain name was not bona fide and did not constitute use of the domain name in the bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
7.19 The Panel therefore finds that Respondent has failed to rebut Complainant's prima facie showing of lack of legitimate right or interest.
Use and Registration in Bad Faith
7.20 Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use of a domain name can be evidenced by use of the name intentionally to attract, for commercial gain, Internet users to the web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site. In view of the widespread publicity and use of the trade mark "Cattlecare" prior to Respondent's adoption of the domain name, likelihood of confusion with Complainant's mark is inevitable. This likelihood is further accentuated by the fact that the mark is owned and used by a non-profit quasi autonomous non-government organisation in the public interest and in the furtherance of the interests of a large group of cattle producers and meat processors.
7.21 The Panel concludes that Respondent's confusing use of the domain name was done intentionally and for commercial gain, and that use is continuing.
7.22 The Panel is therefore of the opinion that the domain name was registered and is being used in bad faith.
8.1 The Panel decides and orders that:
(i) The domain name is confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the domain name;
(iii) The domain name was registered and is being used in bad faith; and
(iv) The domain name shall be transferred to Complainant.
D. J. Ryan
Dated: January 24, 2002