WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wesfarmers Limited v. Jpac Systems

Case No. D2003-0047

 

1. The Parties

The Complainant is Wesfarmers Limited of Perth, Western Australia, Australia.

The Respondent is Jpac Systems, a business name owned by Bruce Allen of Nedlands, Western Australia, Australia.

 

2. The Domain Name and Registrar

The domain name in issue is <wesfarmers.org> (hereafter the "domain name").

The domain name was registered with Melbourne IT, on January 25, 2001.

 

3. Procedural History

The Complaint in this case was filed in email form on January 27, 2003, and in hardcopy on the same day. The Complaint was filed against Bruce Allen, the registered owner of the business name "Jpac Systems." Since the WHOIS record for the domain name is in the name "Jpac Systems" the Arbitration and Mediation Center issued a Complaint Deficiency notice on February 6, 2003, noting that an Amendment as to Respondent must be made to the Complaint. As a result an Amended Complaint was filed on February 10, 2003, naming "Jpac Systems" as the Respondent. No Response was filed by either Bruce Allen or Jpac Systems.

The Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules");

- Payment for filing was properly made;
- The Complaint initially failed to comply with the formal requirements in minor respects, but the Amended Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- No Response to the Complaint was filed;
- The Respondent was appropriately notified of default;
- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its Mark

The Complainant, Wesfarmers Ltd, is a large diversified industrial corporation with divisions dealing in agribusiness, finance, energy, insurance, and other businesses. It is one of the largest concerns of its type in Australia.

The Complainant registered the name "Wesfarmers" as a trade mark in 1931. It has traded under that name from that time. It has 10 Australian registered trade marks for "WESFARMERS" and its cognates in multiple classes. It operates a website which resolves from the domain names <wesfarmers.com>, <wesfarmers.com.au>, <wesfarmers.info> and <wesfarmers.biz>.

B. The Respondent

No Response was filed. From the Complaint and the WHOIS record it appears that the Respondent is some type of information technology organization.

C. The Use of the Domain Name

At the time of the Complaint the domain name did not resolve correctly. The Respondent has advertised the domain name for sale for $1000, but does not appear to have made any other use of it.

 

5. Partiesí Contentions

A. The Complainantís Assertions

The Complainant asserts that the Respondentís domain name is identical or confusingly similar to the Complainantís mark. Specifically, the Complainant asserts:

(1) Due to the extensive marketing and promotion of the Complainantís marks it has established a significant reputation in any domain name that includes the word "wesfarmers" including the domain name in question here;

(2) A great deal of the Complainantís business is conducted through the Internet, and as a result a great potential exists for confusion between the Complainant and the Respondent;

(3) The domain name is identical to or deceptively similar to each of the Complainantís trade and service marks.

The Complainant asserts that the Respondent has no legitimate interests or rights in the domain name. Specifically, the Complainant asserts:

(a) The Respondent conducts business in the IT industry under the name and style "Jpac". The Respondent is not known commonly or otherwise by the name "wesfarmers", and the Respondent has no legitimate business name registrations, corporation names, or trade or service marks in the name "wesfarmers."

(b) The Respondent has not made any legitimate non-commercial or fair use of the domain name. After registering the domain name, the Respondent established a website with agricultural pictures on it. The Respondent maintained the site for approximately one year, whereupon the site was discontinued some time in 2002. Prior to the Respondent removing his website it invited visitors to the site to consider purchasing the domain name, and indicated that offers should start at US$1000.

(c) The Complainant also makes a number of assertions going to the domestic Australian law on passing off, misleading and deceptive conduct, and trade marks; none of these assertions are relevant here.

The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts:

(1) In the state of Western Australia where the Respondent resides, the Complainant is one of the largest and most influential companies. The Complainant and its trade marks are well known by almost every Western Australian citizen. At the time the Respondent registered the domain name the Respondent knew very well that there was no prospect that it could use the name to conduct any legitimate or bona fide business in Western Australia or Australia.

(2) The Respondent registered the domain name for the express and overt purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, for valuable consideration in excess of the Respondentís out of pocket costs directly related to the domain name. Immediately or a short time after the Respondent registered the domain name, the Respondent displayed a web page at <wesfarmers.org> offering the domain name for sale. In doing so, the Respondent has intentionally attempted to attract commercial gain. In the months and years following registration of the domain name by the Respondent, Internet users visiting the Respondentís website may have been confused because the website displayed pictures of an agricultural setting and offered the website for sale, thereby creating the likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website.

(3) When informed by the Complainantís lawyers that its conduct infringed trade mark and other rights of the Complainant, the Respondent informed the Complainantís lawyers that the sole purpose of registering the domain name was that the Respondent intended to sell the domain name to the Complainant one day. The Respondent expressed the view that the Complainant should have registered the domain name and that the Respondent was (by registering the name) putting itself in a position where the Complainant would have to acquire the domain name from the Respondent.

Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.

B. The Respondentsí Assertions

No Response was filed.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.org> namespace. Paragraph 4(a) of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, to which Respondentís domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).

1. The Complainant has Rights in a Trade or Service Mark, to which Respondentís Domain Name is Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its various "WESFARMERS" marks registered in Australia, in multiple classes and in respect of multiple products and services. I conclude that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is the Complainantís word mark, together with the <.org> top level domain signifier. By now it is well established that the TLD signifier does not change the meaning of the name, and hence I conclude that the domain name is, for the purposes of the Policy, identical to the Complainantís marks. The Complainant has shown that it has rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

2. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, and the Respondent has made no assertions in response.

However, I consider it both necessary and instructive to analyse whether any of the defences provided in Paragraph 4(c) of the Policy might apply. Paragraph 4(c) provides the following examples to the Respondent:

"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

There is no evidence that any of the scenarios of Paragraph 4(c) apply here to the Respondent. Its initial use of the domain name appears to be calculated to attract mistaken users who type the domain name into the address bar of web browsers, in an effort to attract a potential purchaser. The display of agricultural pictures is not evidence of anything at all. There is simply no bona fide offering of services under the domain name. Nor is there any evidence of the Respondent being commonly known by the name, or making any other fair use of the domain name.

As a result I conclude that, even having considered the possible application of Paragraph 4(c), the Respondent has no rights or legitimate interests in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the UDRP.

3. The Respondent Registered and is using the Domain Name in Bad Faith

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainant makes a number of submissions in relation to this point (see section 5, above) the strongest of which is the claim that the Respondent is seeking to sell the domain name to the Complainant. This claim is based on the bad faith exemplar scenarios outlined in paragraph 4(b)(i) and (ii), which reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

Either of these scenarios is sufficient to mandate transfer of the domain name, and it appears that either or both apply to this case. On the undisputed assertions of the Complainant, the Respondent clearly sought either to sell the domain name to the Complainant for a significant sum, or stop the Complainant from registering the domain name. Of the two, the first seems the most likely motivation, though either activity falls clearly into the exemplar of Paragraph 4(b) As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

I therefore conclude that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4(a) of the Policy.

Pursuant to Paragraph 4(i) of the Policy and Rule 15 of the Rules, the requested remedy is granted.

I hereby order that the domain name <wesfarmers.org> be transferred to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: April 7, 2003