WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Interium Pty Ltd v. Prismex UK Ltd and Glen Molloy
Case No. D2003-0135
1. The Parties
The Complainant is Interium Pty Ltd of Victoria, Australia, represented by Hall & Wilcox of Melbourne, Australia.
Although the registrant of the disputed domain name is listed in the Network Solutions WHOIS database as Prismex UK Ltd, the Complainant added Glen Molloy as the second Respondent because the Complainant, having conducted numerous searches, believes that:
(a) there is no company in existence known as "Prismex UK Ltd" or "Prismex UK Limited";
(b) Glen Molloy is the alter ego of "Prismex UK Limited;" and
(c) Glen Molloy is a director of the company Signedge International Pty Limited that controls the disputed domain name and the web site located at <signedge-us.com>, to which site visitors to the web site at the Disputed Domain Name are directed.
Glen Molloy is also listed as the administrative contact for the disputed domain name.
The Response lists the Respondents as Prismex International, Glenn Molloy and Glen Palmer. It says that the Complainant has made a number of incorrect assumptions in reaching the conclusion that Signedge International Pty Limited is the company that controls the disputed domain name.
These Respondents assert that Prismex UK Ltd existed as a company in the UK at the time that the disputed domain name was registered and that Messrs Molloy and Palmer were, at that time, directors of, and shareholders in, this company. The Respondents submit that on or about May 1, 1998, Prismex UK Limited transferred ownership of the rights to use and control the disputed domain name to Messrs Molloy and Palmer trading as Prismex International and have omitted by oversight to advise Network Solutions, Inc. of this change. Prismex UK Limited was dissolved in October 2000.
These Respondents are represented by Freehills Carter Smith Beadle of Melbourne, Australia.
The Panel finds from the evidence submitted that the following parties have control of the disputed domain name and are therefore the correct respondents to this dispute ("Respondents"):
Prismex International of Mt Martha, Victoria, Australia
Glenn Molloy of Eliza Heights, Victoria, Australia
Glen Palmer of Mt Eliza, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <prismex.com> ("Disputed Domain Name") is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2003. On February 24, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On February 28, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that Prismex UK Ltd is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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").
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 March 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2003. The Response was filed with the Center on March 31, 2003.
The Center appointed Alistair Payne as the sole panelist in this matter on April 15, 2003. 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.
On April 16, 2003, the Complainant submitted a request for the Panel to accept a Supplemental Filing. On April 24, 2003, the Panel received the Supplemental Filing for review but reserved its decision in relation to admissibility. The Complainant has argued that the Supplemental Filing should be admitted to allow the Complainant to respond to matters raised by the Respondent which could not reasonably have been anticipated by the Complainant at the time of filing its Complaint. These matters relate to the issue of trade mark rights under paragraph 4(a)(i) of the Policy. However, as will be seen below, having considered the evidence submitted by both parties in their original filings the Panel has found that it is unnecessary to consider the admissibility of the Supplemental Filing as it has determined this issue in favour of the Complainant.
4. Factual Background
The Complainantís principal business is, and has been since July 1995, the sale of illuminated signs under the mark PRISMEX.
The Complainant has a registered Australian trade mark no. 754364 for "PRISMEX" in class 9 (luminous signs and displays, edge lit acrylic sign and display panels, and parts and fittings for these goods falling within class 9) and class 11 (edge lit acrylic panels). This trade mark was registered on February 5, 1998, and is currently in force.
The Disputed Domain Name was registered by Prismex UK Limited, a company incorporated in the United Kingdom on December 12, 1996. The business name "Prismex International" was registered in Victoria, Australia on April 30, 1998, and remains registered.
On or about May 1, 1998, the ownership of the rights to use and control the Disputed Domain Name was transferred from Prismex UK Limited to Glenn Molloy and Glen Palmer trading as Prismex International.
5. Partiesí Contentions
The Complainant submits:
a) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant has, since July 1995, promoted, advertised and sold illuminated signs under the mark PRISMEX in Australia and has made significant export sales.
PRISMEX is an invented word. Due to the reputation which the Complainant has developed and enjoys arising from its promotion and sale of illuminated signs under and by reference to its common law and registered mark PRISMEX, were another trader in illuminated signs to choose to use the mark PRISMEX in relation to such signs, then that trader would be seeking to create a false impression of association with the Complainant. Such a choice could not be made without an illegitimate motive.
The Disputed Domain Name (excluding the .com suffix) is identical to the Complainantís PRISMEX mark.
(b) The Respondents have no rights or legitimate interests in respect of the domain name
The Respondents have no rights or legitimate interests in the Disputed Domain Name. Messrs Molloy and Palmer have at all material times known of the Complainant, its business and its use of the PRISMEX mark in relation to illuminated signs as they worked at various companies with the inventor of the PRISMEX technology, John Ashall, between 1990 and 1995. Mr. Ashall is a director of the Complainant and has been since July 3, 1995.
Neither Glenn Molloy nor any other person on behalf of Prismex UK Ltd has ever sought the permission of the Complainant to register the Disputed Domain Name and maintain the registration of the Disputed Domain Name. The Complainant has been aware of Signedge International Pty Limited, and of Messrs Molloy and Palmer operating as trade competitors of the Complainant since 2000, but was unaware of the manner in which the Respondents have commenced to use the Disputed Domain Name to resolve to <signedge-us.com> until September 2002.
The Complainant has not made demand of the Respondents for the transfer of the Disputed Domain Name to it prior to filing this Complaint lest the Respondents take or attempt to take steps to defeat the process and procedures which the Complainant invokes in this Complaint.
b) The domain name was registered and is being used in bad faith
The Complainant does not know when the Disputed Domain Name was first used as a domain name of an active web site or as a means of referral by the inquirer to the "signedge-us.com" web site but as the <signedge-us.com> domain name was registered on January 14, 2000, it is likely that the Disputed Domain Name did not resolve to <signedge-us.com> until sometime after this date.
Given the trading history of the Complainant using the mark PRISMEX to describe its products which was well known by the Respondents and that the Respondents did not seek or obtain the Complainantís permission to register the Disputed Domain Name, the Respondents registered the Disputed Domain Name in bad faith.
The Complainant asks the Panel to infer that the Respondentís purpose in registering the Disputed Domain Name was to prevent the Complainant from being able to register it to disrupt the Complainantís business by denying the Complainant the ability to make legitimate use of the Disputed Domain Name, being the name which would most likely be first tried by its customers.
Further evidence of bad faith registration is provided by the attempts by the Respondents to avoid being able to be contacted.
The web site at the Disputed Domain Name directs the inquirer to the "signedge-us.com" web site owned by Signedge International Pty Ltd, a company in direct competition with the Complainant. The Respondents, Glenn Molloy and Glen Palmer are both directors of Signedge International Pty Ltd. Therefore, the Respondents have intentionally attempted to attract for commercial gain Internet users to their "signedge-us.com" web site, or a web site under their effective control, by associating their web site with the Complainantís PRISMEX mark.
The Complainant submits that the Respondentís bad faith intention in seeking to trade off the Complainantís goodwill and reputation, derived from its use of its PRISMEX mark in connection with illuminated signs, is demonstrated by entries appearing in standard search engines looking for the Disputed Domain Name. The Complainant provides the results of its search at "google.com" as an annexure to its Complaint.
a) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Respondents acknowledge that the Complainant has a right in the trade mark PRISMEX in Australia from February 5, 1998, and admit that PRISMEX is confusingly similar to the Disputed Domain Name. However, the Complainant has not proved it had rights in the trade mark prior to February 5, 1998, that it has an exclusive right to control the trade mark PRISMEX in Australia, or that it has rights to that trade mark in jurisdictions outside Australia.
b) The Respondents have no rights or legitimate interests in respect of the domain name
At the date of registration of the Disputed Domain Name, the Respondents, or a predecessor in title to the Disputed Domain Name, had a legitimate interest in the word "PRISMEX" (as they were selling Prismex technology) irrespective of any trade mark rights the Complainant may have acquired in Australia at that time.
The Disputed Domain Name was transferred by Prismex UK Limited to Prismex International which has been conducting business since at least April 9, 1998. The Prismex International business provides technical support and "leads" to entities located outside Australia who manufacture products incorporating Prismex panels. The Respondents have submitted letters from customers confirming the technical support supplied by Prismex International with information and sales leads provided from their web site at the Disputed Domain Name.
The Respondents had commenced preparations to use the Disputed Domain Name in relation to their business prior to receiving notice of the Complaint. The Respondents submitted facsimiles dated December 18, 2002, and January 24, 2003, as evidence of demonstrable preparations to operate a unique web site at the Disputed Domain Name that is distinct from the web sites at "signedge-us.com" and "signedge.biz".
The Prismex technology was collectively invented by John Ashall, a director of the Complainant, and Glenn Molloy and Glen Palmer. The Respondents seek to rely on a letter from a founding director of the Complainant (Garry Buick) in which Mr. Buick acknowledges that the word "Prismex" was invented by Mr. Palmer and states that Prismex is a generic name for a particular type of edge-lighting technology.
Accordingly, the Respondents have a legitimate interest in the Disputed Domain Name and the Complainant does not have an exclusive right to control the name Prismex.
c) The domain name was registered and is being used in bad faith
The Disputed Domain Name could not have been registered in bad faith as it was registered before the Complainant obtained its registered trade mark by persons involved in the invention of the Prismex technology and the invention of the word "Prismex." In the absence of registered trade mark rights the Respondents were entitled to believe, in good faith, that they had an entitlement to register the Disputed Domain Name.
There is no evidence to suggest that any of the circumstances set out in paragraphs 4(b)(i) to (iv) of the Policy are present.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove that (a) it has rights in a trade mark or service mark, and (b) the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.
In relation to this element, the Respondents acknowledge that the Complainant has, from February 5, 1998, a right in the trade mark PRISMEX in Australia and admit that PRISMEX is confusingly similar to the Disputed Domain Name. However, the Respondents submit that the Complainant has not proved it had a right in the trade mark prior to February 5, 1998, that it has an exclusive right to control the trade mark PRISMEX in Australia, or that it has rights to that trade mark in jurisdictions outside Australia.
In the Panelís opinion, this element of the Policy does not require a Complainant to prove it had trade mark rights at the date of registration of the Disputed Domain Name. That issue may be relevant when considering paragraph 4(a)(ii) (and to some extent paragraph 4(a)(iii) of the Policy), but is not in this Panelís opinion relevant to paragraph 4(a)(i). It is undisputed that the Complainant has, from February 5, 1998, held rights in the trade mark PRISMEX in Australia. The Panel is satisfied on the evidence adduced by the Complainant that it has rights in the PRISMEX mark.
Dealing with the issue of trade mark rights in other jurisdictions, as previous panels have held, it is only necessary under the Policy for a Complainant to prove that it has rights to a trade mark and the Policy says nothing about the country where those rights exist (see Douglas Benson Spong and Mara Spong v. Opper Sports, Inc., WIPO Case No. D2002-0381 (June 17, 2002), Funskool (India) Ltd v. funschool.com Corporation, WIPO Case No. D2000-0796 (November 30, 2000), Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786 (November 12, 2002)).
In relation to the issue of whether the Disputed Domain Name is identical or confusingly similar to the Complainantís trade mark, the Respondent admits that this trade mark is confusingly similar to the Disputed Domain Name. Accordingly, the Panel finds that the first element of the Policy has been established.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís 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 Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
From the evidence submitted by the Respondents, the Panel accepts that the Respondents have made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, that is, in relation to their Prismex International business. These preparations to use the Disputed Domain Name began before the Complainant first notified the Respondents of the dispute. It is not for this Panel to determine whether such use of the PRISMEX mark by the Respondents constitutes infringement of the Complainantís trade mark as alleged by the Complainant.
Further, with regard to paragraph 4(c)(ii) of the Policy, the Respondents have held a business name registration for Prismex International since April 30, 1998, and before that Messrs. Molloy and Palmer were directors of and shareholders in Prismex UK Limited, a company incorporated in the United Kingdom. The business name Prismex International appears a number of times in the letters submitted by the Respondents in the annexures to the Response, which date back to 1998. From this evidence the Panel finds that the Respondents are commonly known by the Disputed Domain Name at least in its material part, excluding the .com suffix.
The Panel therefore finds the Respondents have established that they have rights or legitimate interests in the Disputed Domain Name and the Complaint fails at second base.
C. Registered and Used in Bad Faith
As the Complainant has not proved element 4(a)(ii) of the Policy, the Complaint fails. Therefore, it is unnecessary to consider whether the Disputed Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: May 6, 2003