WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GE Capital Finance Australasia Pty v. Dental Financial Services Pty Ltd
Case No. DAU2004-0007
1. The Parties
The Complainant is GE Capital Finance Australasia Pty, Richmond, Victoria of Australia, represented by Maddocks, Australia.
The Respondent is Dental Financial Services Pty Ltd, Double Bay, New South Wales, of Australia, represented by Mr. Carl Burroughs.
2. The Domain Name and Registrar
The disputed domain name <carecredit.com.au> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2004. On November 12, 2004, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On November 15, 2004, Melbourne IT transmitted by email to the Center its verification response confirming that it had received a copy of the Complaint, that the Respondent was the current registrant, that the Policy applied to the domain name in dispute, that the name would be locked pending the Panel’s decision, confirming that English was the language of the agreement and providing the contact details for the respondent. 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 November 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2004. The Response was filed with the Center by email on December 9, 2004.
The Center appointed Philip N. Argy as the sole panelist in this matter on December 22, 2004. 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.
Whilst it appears from the case file that the Respondent did not strictly speaking comply with Rules 2(h)(iii) and 5(b), by not copying the Complainant with the Response, and by not filing any signed hard copy of the Response, the Panel rejects the Complainant’s contention that the Panel is required by Rule 5(e) to proceed as if the Respondent had not submitted any Response. The Center acknowledged receipt of the emailed copy of the Response on December 9, 2004. There were no components of that Response that were not adequately rendered in electronic form. It is clear that a copy of that response has, albeit late, been furnished to the Complainant. In the circumstances the Panel regards the Respondent’s non compliance with the Rules as relevant to the issue of its bona fides rather than as disentitling the Response to any consideration. Furthermore, Rule 10(b) requires the Panel to afford each party a fair opportunity to present its case - that also requires the Complainant’s contention, that the Response has to be ignored, to be rejected.
4. Factual Background
The following material facts are uncontested:
a) The Complainant is a wholly owned subsidiary of the General Electric Company;
b) The Complainant has a strong reputation in Australia and overseas as a provider of commercial and personal financial services;
c) CareCredit LLC is another subsidiary of the General Electric Company;
d) CareCredit LLC operates websites at “www.carecredit.com” in respect of health, dentistry and veterinary services provided by it in the USA and at “www.carecredit.ca” in respect of health, dentistry and veterinary services provided by it in Canada and it is also the registrant of the <carecredit.com> and <carecredit.ca> domain names.
e) The Complainant is the applicant for the Australian and New Zealand trade marks “CareCredit” in respect of goods and services in classes 9, 16 and 36. Class 36 includes financial services of the kind mentioned above in relation to the Complainant’s affiliate’s businesses in USA and Canada;
f) The Complainant is the registrant of the <carecredit.net.au> domain name;
g) On October 15, 2004, at 2.20 pm the Complainant advised a director of the Respondent, Mr. Carl Burroughs, by email that it was proceeding with the launch of the CareCredit business in Australia but did not require the services of Mr. Burroughs or his company.
h) The Respondent registered the disputed domain on October 15, 2004.
i) On October 22, 2004, the Complainant’s corporate counsel demanding that the Respondent relinquish the disputed domain to the Complainant together with the <carecredit.co.uk> domain name in respect of which another administrative proceeding is pending against the Respondent;
j) There was no business in Australia registered under the name or style “carecredit” as at November 9, 2004.
5. Parties’ Contentions
The Complainant contends that:
(i) it has rights in the trademark “carecredit”;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain;
(iii) the disputed domain has been registered or subsequently used by the Respondent in bad faith;
(iv) for a period during 2004, which pre-dated the Respondent’s registration of the disputed domain, a director of the Respondent, Mr. Carl Burroughs, was involved in confidential discussions with the Complainant with a view to marketing services being provided by Mr. Burroughs or Integrated Dental Marketing Pty Ltd. to the Complainant in respect of a business proposed to be conducted by the Complainant similar to the businesses referred to in paragraph (d) and under the “CareCredit” brand;
The Respondent contends that:
(i) it was created to provide finance and professional advice to the Australian dental profession and ultimately the UK and USA dental professions;
(ii) the concept of the Respondent was created in 2002, on the strength of Mr. Burroughs’ knowledge of the dental profession
(iii) a major part of the Respondent’s business plan is to create a patient finance faculty [sic] called “Smile Card ~ Taking Care of your Credit”;
(iv) The Complainant was introduced to Mr. Burroughs as a potential provider of the wholesale credit for the Respondent’s proposed “Smile Card ~ Taking Care of your Credit” business;
(v) In discussions with the Complainant it was always understood that “Smile Card ~ Taking Care of your Credit” would be the brand under which the Respondent’s business would be conducted.
(vi) The Respondent denies that his initial discussions with the Complainant involved the potential provision of services by the Respondent to the Complainant and alleges that this arrangement was first proposed by the Complainant in the form of a draft agreement which the Respondent had expected to reflect an arrangement of the kind described in paragraphs (iii) to (v);
(vii) the Respondent declined to do business with the respondent on the basis of the proffered agreement and instead sought alternative wholesale finance sources;
(viii) the brand “CareCredit” is not known in Australia, there is no confusion in the marketplace and there is “no other service” other than the Respondent’s own using the brand at present including the Complainant;
(ix) the Complainant did not disclose to the Respondent its intention to use the CareCredit brand in Australia nor the existence of its US trademarks;
(x) the Respondent replied to the 15 October email referred to in paragraph 4(h) by advising the Complainant of the Respondent’s engagement of the services of “another financial institution to launch our credit card”, asking the Complainant not to contact “those Doctors [sic] I introduced to you in good faith” and wished the Complainant every success in its endeavours;
(xi) the respondent alleges that it disclosed to the Complainant a large amount of confidential information relating to the conduct of a business of the kind that it envisaged operating under the brand, including the names of industry contacts.
6. Discussion and Findings
It is trite that the Complainant bears the onus of proving that each of paragraphs 5A (i) to (iii) have been made out. For the reasons that follow, the Panel finds that the Complainant has successfully discharged that onus.
A. Identical or Confusingly Similar
The Complainant has only to show that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. Under auDA’s published Domain Name Eligibility and Allocation Rules for the Open 2LDs (http://www.auda.org.au/policies/auda-2002-07/) an application for an Australian registered trade mark is treated as conferring sufficient rights to support the grant of a domain name licence (but that domain name will not be renewable unless the application proceeds to acceptance). Accordingly, and unlike the case of the UDRP where a mere application for a trademark would not be sufficient, that is the threshold of rights that a complainant must reach under the auDRP if it wishes to challenge on the basis of a trade mark. The Complainant’s accepted application for registration of the “CARECREDIT” trademark in Australia is entirely sufficient to show that it has the requisite level of rights in the trademark “CARECREDIT” for the purposes of paragraph 4(a)(i) of the Policy. The additional material showing rights in corresponding foreign marks held by affiliates of the Complainant cannot support the Complainant’s assertions as the Panel cannot assume either that the international marks are known in Australia or that, even if they were, that the reputation would enure to the benefit of the Complainant. The position, of course, would be quite different if the Complainant had started trading so that there was some reputation to support its assertions. Then the foreign businesses’ use of the CARECREDIT trademark might have some corroborative operation.
As the second level domain designator “.com.au” has no material role in assessing similarity or identicality, save for exceptional cases, the Panel has no difficulty in finding that the domain name <carecredit.com.au> is identical to the trademark “carecredit” in which the Complainant has rights.
B. No Rights or Legitimate Interests
The Panel accepts the Respondent’s contention that at all times during its discussions with the Complainant it was clear that it’s proposed business would use “Smile Card ~ Taking Care of your Credit” as its major brand or tagline. That emphatic submission combined with the Respondent’s denial of relevant knowledge of the Complainant’s “carecredit” business elsewhere amounts to a disavowal of any right or interest in respect of the disputed domain name. Were it not for that the Panel might have been slow to conclude that the discussions prior to October 15, 2004, at least on the Complainant’s case, could not have given rise to a plausible interest in the domain name on the part of the Respondent if it were to have some role in marketing the Complainant’s “CareCredit” business products.
There is nothing in the Respondent’s contentions about its proposed “Smile Card ~ Taking Care of your Credit” business that, even if accepted by the Panel, could satisfy any part of paragraph 4(c) of the Policy. Essentially this is because the Panel cannot see sufficient nexus between the Respondent’s brand and the domain name it chose to register. That the words “care” and “credit” would be selected as the sole elements of the Respondent’s brand to form its proposed domain name seems inherently unlikely to the Panel, particularly given that the Respondent also registered <smilecard.com.au> as a domain name
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <carecredit.com.au>.
C. Registered or Subsequently Used in Bad Faith
Unlike the position under the UDRP, under the Policy a complainant need only prove that the registration OR subsequent use of a domain name was in bad faith.
The Respondent’s registration of the <carecredit.co.au> domain name on the very day that the Complainant advised the Respondent that its services would not be required to assist the marketing of the Complainant’s “CareCredit” business is too much of a co-incidence to accept the Respondent’s good faith protestations. If the Respondent’s allegations were true its response to the Complainant’s 15 October email might have been expected to be rather different. In particular, it’s hard to imagine any bona fide reason for the Respondent’s reply not to have mentioned its registration of the <carecredit.com.au> domain name if it really felt entitled to take that course.
In an administrative proceeding of this kind, where evidence cannot easily be tested, the Panel is unable to find that the Complainant had definitely told the Respondent of its intention to commence trading under the CareCredit brand in Australia, and the 15 October email does not do so. The best it does for the Complainant is expressly refer to “our CareCredit business” in USA. Similarly, the 22 October letter from the Complainant’s legal counsel is self serving in its assertion that such a communication was made, since its language is plainly calculated to attract the operation of the Policy (and the corresponding UK policy in respect of the Respondent’s registration on October 18, 2004, of <carecredit.co.uk>).
To the extent to which the Complainant relies on paragraph 4(b) of the Policy the Panel does not find paragraph 4(b)(i) made out because, as the Respondent notes, it has made no attempt to sell the domain name at all, let alone for an amount exceeding its registration costs. The Panel is inclined to accept that paragraph 4(b)(ii) is made out given the timing of the Respondent’s registrations of both the disputed domain and the corresponding UK domain. For the same reason the Panel regards paragraph 4(b)(iii) as made out. Paragraph 4(b)(iv) is not made out because the disputed domain name resolves to a site which appears to be the Respondent’s “Smile Card” site and, despite it being only “under construction”, the risk of confusion with the Complainant does not quite reach the Panel’s view of “likely”.
Independently of the operation of subparagraphs 4(b)(ii) and (iii) of the Policy, the Panel also formed an adverse view of the Respondent’s bona fides based on the intemperate language of the Response, the Respondent’s failure to furnish a copy of the Response to the Complainant and its failure to file signed hard copies with the Center, despite being twice requested to do so. Rule 14(b) expressly requires a panel to draw such adverse inferences from the non-compliance as it considers appropriate, and this Panel has no hesitation in doing so in the circumstances of this proceeding.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of <carecredit.com.au> be transferred to the Complainant provided that the Complainant is otherwise eligible to hold that domain name.
Philip N. Argy
Dated: January 7, 2005