WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Book Exchange Inc. v. Argyle Emporium
Case No. DAU2003-0004
1. The Parties
The Complainant is Advanced Book Exchange Inc., Victoria, British Columbia, of Canada, represented by Bryan Wilson, Canada.
The Respondent is Argyle Emporium, Goulburn, New South Wales, of Australia, represented by its representative Stephen Dunn.
2. The Domain Name and Registrar
The disputed domain name <abebooks.com.au> is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center") on September 18, 2003. On September 19, 2003, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name at issue. On September 5, 2003, Primus Telecommunications t/a PlanetDomain & PrimusDomain transmitted by email to the Center its verification response confirming that the Respondent 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 .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 September 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2003. The Response was filed with the Center on October 3, 2003.
The Center appointed John Terry as the sole panelist in this matter on November 3, 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.
4. Factual Background
The Respondent obtained a registration of the business name "Argyle Emporium" under business name no. BN97818990 on October 31, 2002, and thereafter conducted a business under this name in Goulburn, New South Wales, Australia, of retailing used and collectable books.
On October 17, 2002, the Respondent obtained registration of the domain name <abebooks.com.au> through an accredited registrar of the auDA domain.
The Complainant, as it has demonstrated in its Complaint and supported by sworn evidence, established its business in Canada and adopted the name "abebooks.com" which it has used as a trade mark generally in an international sense. The Complainant has operated a website under the domain name <abebooks.com> through which it advertises and sells books of a specialist character sourced from independent booksellers located around the world. As demonstrated by the evidence of Keith Waters, at the date of the Complaint the Complainant’s website lists over 45 million books sourced from more than 11,000 independent booksellers. The Complainant’s business is described as a "global business", an assertion stated in evidence and not denied by the Respondent. The independent booksellers who provide a source of books for listing via the Complainant’s website are distributed through 44 countries including Australia.
There are "approximately 262 independent booksellers located in Australia" according to paragraph 4 of Mr. Waters’ declaration. Via the website "www.abebooks.com", books may be purchased through an online e-commerce transaction or purchased from the independent listed bookseller. The Complainant’s sales through an e-commerce transaction have extended to 50 countries including Australia with 6.22 million hits per day and 185,000 transactions on average per month. Mr. Waters further states that as of July 15, 2003, the Complainant had attracted 18,828 buyers from Australia with approximately 4,000 transactions per month with buyers located in Australia. Further details are given in paragraph 7 of Mr. Waters’ declaration.
In December 1995, the Complainant registered the domain name <abebooks.com> and launched its website under that domain name in May 1996, and asserts that it has used the trade name and trade mark "ABEBOOKS.COM" in association with its business "throughout the world". This is not denied by the Respondent.
The Respondent is silent as to whether the Respondent had any knowledge or made any enquiry as to whether any domain name involving the word "abebooks", had been registered in any major domain anywhere in the world or had been in use in Australia.
The Complainant’s evidence is extensive and meticulously adduces its business history and the degree of reputation it has acquired in many countries and provides evidence of registration as a trade mark of "ABEBOOKS.COM" in the United States of America and Canada. There is evidence of an application to register in Australia. Exhibit D to Mr. Waters’ declaration is a printout of a relevant website page declared to be on a website owned and operated by the Australian National University Library. A relevant entry on that exhibit is a reference reading
"abebooks.com is a good source for Australian secondhand dealers."
Exhibit H to Mr. Waters’ declaration is a printout from the Respondent’s website as of July 24, 2003, and reads:
"ABEBOOKS.COM.AU an exciting new website launching in mid April.
Booksellers join now and save on normal membership costs.
Contact Tony at abebooks.com.au."
In paragraph 23 Mr. Waters declares that the Complainant has never authorised, licensed or otherwise permitted the Respondent to use "abebooks" or "abebooks.com" as a trade mark or trade name or to use "abebooks.com.au" as a domain name or email address and further attests that the Complainant wishes to use "abebooks.com.au" as a domain name for its own website specifically designed for Australian buyers and booksellers.
More detailed evidence is given in statutory declarations for the Complainant and by Suzanne Connors and Shiva Galbarronasingh. It seems unnecessary to summarise that evidence in this decision. It is sufficient to note that copies were served on the Respondent and the Respondent’s brief response is in the form of an email to the WIPO Arbitration and Mediation Center which does not contradict any of the direct evidence of the Complainant and merely asserts it applied in good faith the domain name for its website business and relies on its registered business name BN97818990 namely "Argyle Emporium".
5. Parties’ Contentions
The Complainant in detail referred to the evidence served and contended that they have had extensive prior use of "ABEBOOKS.COM" internationally and including activity in Australia by which it had acquired significant reputation prior to any relevant activity by the Respondent. Significantly the Complainant contended that an inference of lack of good faith should be drawn because the Respondent’s domain name <abebooks.com.au> bears no relevant relationship to its business name "Argyle Emporium" and it is no defence for the Respondent to assert, as it has done, that its business name is some acronym for "Argyle Book Emporium". In detail the Complainant sets out the factors applicable under the Policy and Rules to support its assertion that the panel should find for the Complainant and order transfer of the domain name.
The Respondent contended that it considered it was justified in its course of action because it had registered the business name "Argyle Emporium" and used that business name in relation to retailing of used and collectable books.
The Respondent further contended that it was entitled to own and use the present domain name because it has complied with the requirements for registration and considered such activity to be "in good faith".
6. Discussion and Findings
This matter falls for determination under the .au DISPUTE RESOLUTION POLICY ("auDRP"). The Panel finds that the present domain name is governed by the auDRP and in particular the requirements in Schedule A which is an adaptation of the Uniform Dispute Resolution Policy ("UDRP") of the Internet Corporation for Assigned Names and Numbers ("ICANN").
Pursuant to Rule 2.1 of the auDRP, all domain name licences issued in the open second level domain from August 1, 2002, are subject to a mandatory administrative proceeding under the auDRP. The present domain name having been registered October 17, 2002, is thus governed by the auDRP.
This is a mandatory administrative proceeding pursuant to paragraph 4 of the Policy and the Complainant has the onus of establishing its case under several sub-paragraphs which will be discussed in turn.
Applicable Disputes – Paragraph 4(a)
Regarding sub-paragraph 4(a)(i), the Panel is satisfied that the Complainant has clearly proved through its evidence that the domain name <abebooks.com.au> is substantially identical or confusingly similar to "ABEBOOKS.COM" in which the Complainant has established rights in Australia and internationally well before any reputation, if any, that might be supposed to have been derived by commencement of the Respondent using a website.
It has been well established that substantial similarity between the domain name and the trade mark of the Complainant is sufficient, see for example GlobalCenter Pty Ltd v Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
Furthermore, other Panels have held in a number of cases that the concluding portion of the present domain name ".com.au" is an element that should be disregarded, see for example National Office of Information Economy v Verisign Australia Limited, LEADER Case No. 02/2003. In the present case the only difference between the present domain name and the trade mark and domain name of the Complainant is the addition of the ".au" suffix.
The present Panel follows these decisions and finds 4(a)(i) is met.
Regarding sub-paragraph 4(a)(ii), the evidence of the Complainant establishes a clear prima facie case that the Respondent has not at any time established any rights or legitimate interests in respect of the present domain name. Not only is the present domain name not the registered business name of the Respondent "Argyle Emporium" but it bears no relationship that is credible. Furthermore mere registration of a business name in New South Wales confers no right or usage but is simply an administrative pre-requisite to any use.
Many Panel decisions have proceeded on the basis that once the Complainant makes out a prima facie case that the Registrant does not have rights or legitimate interest in the domain name, the evidentiary burden sifts to the Registrant, see for example The Vanguard Group, Inc. v Lorna Kang WIPO Case No. D2002-1064.
In the present case it is found that a very strong prima facie case has been made out by the detailed and careful evidence of the Complainant and there is nothing in the assertions from the Respondent to rebut this case and therefore the requirement of sub-paragraph (ii) is made out. Other Panels have held and indeed for the purpose of the Policy auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a Registrar’s determination that the Respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
Regarding sub-paragraph 4(a)(iii), and for reasons set out below, the Panel finds that the present domain name was registered in bad faith and although the Respondent does not adduce any assertions or evidence of subsequent use the Panel finds there has been no use other than in bad faith.
Sub-paragraph (iii) requires only that either there was use in bad faith of the domain name or that its registration was procured in bad faith. The evidence establishes that the present domain name was registered October 17, 2002, but use did not commence until September 2003 (see declaration of Ms. Connors, paragraphs 13 and 14). This was well after notice of the present dispute was served on behalf of the Complainant on the Respondent in December 2002. At the time of commencement of use the Respondent was well aware of the business and reputation claimed by the Complainant yet it persisted in moving towards use of the present domain name. The Panel finds such use to be in bad faith.
Having made out the requirements for sub-paragraph (iii), it is unnecessary for the Complainant to establish the domain name itself was registered in bad faith.
However, the evidence shows that the Respondent’s business is in the identical area to that of the Complainant. The Respondent does not state whether there was any knowledge before registration of the present domain name of the business or domain name <abebooks.com> and does not state whether any enquiry was made to determine the freedom to use under applicable laws including laws relating to trade marks passing off and consumer protection laws such as those arising out of the Trade Practices Act 1974, and equivalent State legislation in individual States in Australia.
The Respondent’s contention that it saw fit to rely on its New South Wales registered business name is no answer because such a registration in law provides no rights of usage. It is no answer for the Respondent in paragraph 4 of its observations simply to assert that it applied for the present domain name "in good faith" and the fact it complied with all relevant criteria for registration of the domain name itself is no answer.
The alternative in sub-paragraph (iii) for the Complainant namely establishing registration in bad faith is found to be made out by the Panel as a prima facie case and is not rebutted by the Respondent. Furthermore, it is hardly credible that the Respondent did not know of the Complainant or its trade mark and name ABEBOOKS.COM.
The Panel finds that the three threshold requirements of paragraph 4(a) are made out and the Complainant has amply discharged the onus of proof on it.
Rights and Legitimate Interests – Paragraph 4(c)
Under paragraph 4(c) non-limiting examples are given of circumstances which, if found to be proved, demonstrate the Registrant has legitimate rights or interests.
Sub-paragraph 4(c)(i) applies where the Registrant, before notice of the dispute, demonstrated bona fide use of or demonstrable preparations to use the present domain name in connection with an offering of goods or services. The Respondent has demonstrated no such use or demonstrable preparations prior to notification of the dispute in December 2002.
Sub-paragraph 4(c)(ii) applies where the Respondent can show it had been commonly known by the domain name. There is no evidence that the Respondent is known at all, let alone commonly known, by its domain name as it has merely recently established a website under the disputed domain name which materially differs from its registered business name, "Argyle Emporium".
Sub-paragraph 4(c)(iii) can apply where the Respondent establishes it 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 name, trade mark or service mark at issue.
The Panel finds that the recent establishment of a website by the Respondent is of a commercial character and that use is not fair use. The Respondent is silent as to its intentions and motives. To the Panel it is not credible that the Respondent had any activity under which it could rely under sub-paragraph (iii).
Evidence of Registration or Use in Bad Faith – Paragraph 4(b)
Sub-paragraph 4(b) of the Policy is illustrative only of circumstances which, if found to be present, are considered evidence of registration and use of a domain name in bad faith. It is unnecessary to consider the particular examples as the Panel has found a clear case for the reasons stated above. However in the interests of completeness, the panel finds that:
The Complainant by its evidence of Ms. Connors, paragraph 23, adduced evidence that the Respondent offered to sell the disputed Domain Name to the Complainant subject to a payment of US$250,000 and other onerous conditions. The Panel finds this is an example of bad faith for the purposes of paragraph 4(a)(iii) by virtue of paragraph 4(b)(i). Numerous panels have found that the fact that a Respondent did not make an exorbitant offer to sell the disputed domain name until after contact by the Complainant is immaterial. See for example PA Consulting Services Pty Ltd v. Joseph Barrington-Lew, WIPO Case No. DAU2003-0002 and Lusomundo – Sociedade Gestora de Parcipaçoes Sociais, S.A. and Lusomundo Audiovisuais, S.A. v. InmoSoria and Andres Ceballos Moscoso, WIPO Case No. D2000-0523.
The Complainant has made further persuasive submissions that it has established a case under paragraphs 4(b)(ii), (iii) and (iv) and further relies upon the failure of the Respondent to make good faith enquiries relying on such prior panel decisions that this is evidence of bad faith. See for example Victoria’s Secret v. Brown, Case No. FA0101000096561 and Esat Communications Pty. Ltd. v. Kingford Promotions Pty Ltd, LEADER Case No. 03/2003.
Having established to the Panel’s satisfaction a clear case under other heads, it is unnecessary to deal further with these alternative and additional issues.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <abebooks.com.au> be transferred to the Complainant.
The Complainant is entitled to be registered for the present domain name because it has applied to Register in Australia the trade mark ABEBOOKS.COM (application 941828) and thereby qualifies under Allocation Policy Rules for Open Second Level Domains (2LDs), Schedule C – Eligibility and Allocation Rules for com.au.
Dated: November 13, 2003