WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Admerex Limited v. Metyor Inc.
Case No. D2005-1246
1. The Parties
The Complainant is Admerex Limited, Sydney, NSW, Australia, represented by Middletons Lawyers, Australia.
The Respondent is Metyor Inc., Neutral Bay, NSW, Australia, represented by Watson Mangioni, Lawyers, Australia.
2. The Domain Name and Registrar
The disputed domain name <admerex.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005, and in hard copy with payment of the required fees on December 8, 2005. On December 2, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 7, 2005, Network Solutions, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 14, 2005 and in hardcopy on December 21, 2005. The Center verified that the Complaint together with the amendment to 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 December 22, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 18, 2006. The Response was filed with the Center on January 18, 2006.
The Center appointed William P. Knight as the Sole Panelist in this matter on January 24, 2006. 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.
The Center received from the Complainant on January 20, 2006 comments on the Respondent’s Response (“Supplemental Filing”). On January 24, 2006, the Center forwarded the Supplemental Filing by email to the Respondent and informed the Complainant that the Rules do not provide for the Supplemental Filing. The Center advised that the Supplemental Filing would be brought to the attention of the Panel and that, in accordance with paragraph 10(d) of the Rules, it is at the sole discretion of the Panel whether the Supplemental Filing would be considered or not.
4. Factual Background
The Complaint and the Response dispute very little of the facts relevant to this determination. It is undisputed that:
1. the Respondent registered the domain name <admerex.com> (“the Domain Name”) on February 24, 2003;
2. at the date that the Respondent registered the Domain Name, the Complainant was called Global Technology Australasia Limited;
3. on or about May 21, 2003, the Respondent acquired 19.9% of the issued shares in the Complainant; there is no information provided regarding the circumstances of that acquisition, other than that this occurred at or about the time when the previous majority shareholder of the Complainant, Global Technology Limited, disposed of its shares in the Complainant (see Annexure D to the Complaint), but subsequent events would appear to indicate that it was amicable;
4. on or about May 23, 2003, a representative of the Respondent, Mr. Milne, met with the management of the Complainant, and during the course of that meeting suggested that the Complainant should change its name to “Admerex Limited” and use the Domain Name which he already controlled for the Complainant’s website;
5. again, there is no information from either party regarding the circumstances of this offer from Mr. Milne on behalf of the Respondent, other than that the Complainant was fully aware that the Domain Name was registered in the name of the Respondent;
6. the Complainant resolved to change its name to Admerex Limited on June 27, 2003, and this change came into effect on July 10, 2003;
7. Mr. Milne became a director of the Complainant on July 8, 2003, and was given the responsibility for day-to-day management of the Complainant’s business operations;
8. the Complainant commenced using the Domain Name for its corporate website on July 15, 2003;
9. after some time, the parties fell out and Mr. Milne ceased to be a director of the Complainant on January 7, 2005; there has been a continuing dispute between Mr. Milne and a company associated with Mr. Milne and the Complainant;
10. on or about September 12, 2005, the administration password associated with the Domain Name was used to redirect the Domain Name to different hostname servers, as a result of which the Complainant’s corporate website was taken off-line and emails to the Complainant were lost, upon discovery of which the Complainant acquired and now uses the domain name <admerexgroup.com>, in respect of which the Respondent has no claim;
11. the Respondent is not actively using the Domain Name; and
12. on October 26, 2005, the Complainant lodged an application for registration of a trademark ADMEREX under the Australian Trademarks Act 1995 in respect of goods and services in classes 9, 16, 41 and 42.
5. Parties’ Contentions
The Complainant asserts that, as a consequence of these facts, the grounds for a determination in its favor under the Policy exist.
As to the requirement under paragraph 4(a)(i) of the Policy that the Domain Name be identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant relies on its use of the name “Admerex” in Australia since July 2003 in its own name and in a corporate website, and subsequently in the names of other companies in Australia and elsewhere, in “the financial technology market” in providing “credit management and back office financial software solutions and services.” The Complainant provides media releases issued by it in September 2005 which refer to its products and make reference to 43 customers, including several in the United States. The Complainant also refers to its application for registration of the trademark ADMEREX lodged in October 2005.
As to the requirement under paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Complainant argues that the Respondent has never used the Domain Name for any business before or after it offered the Domain Name to the Complainant, and that the Respondent’s conduct in offering and permitting the Complainant to use the Domain Name meant that it “implicitly agreed that the Complainant could assume all rights in and to the use of the Domain Name which had originally been registered by the Respondent.”
As to the requirement under paragraph 4(a)(iii) of the Policy that the Domain Name has been registered and is being used in bad faith, the Complainant makes no submission with respect to registration in bad faith (other than as mentioned below with respect to the Complainant’s Supplemental Filing). The Complainant argues that subsequent bad faith is shown by Respondent, after Mr. Milne had ceased to be a director of the Complainant, using the administration password to redirect the Domain Name, causing some difficulty to the Complainant, as a consequence of which it acquired a new domain name. The Complainant asserts that the Respondent should have formally transferred the Domain Name to the Complainant in July 2003 or subsequently. The Complainant states that the Respondent, under the influence of Mr. Milne, has used the Domain Name in this way in order to bring pressure to bear upon the Complainant with respect to the resolution of unrelated disputes between the Complainant and Mr. Milne and a company associated with him.
The Respondent agrees that the Domain Name is confusingly similar to the Complainant’s name, but disputes that the Complainant has established any common law rights in respect of the name “Admerex.”
The Respondent states that the Domain Name was first registered by Mr. Milne in the 1980s, when Mr. Milne operated a company in the United States of America known as Advertising Mercantile Exchange Inc “which operated and sold advertising services under the name of Admerex Inc.” This claim is not substantiated in any way.
The Respondent also states that it has registered the domain names <admerex.org> and <admerex.net>.
The Respondent denies any impropriety.
C. Supplemental Filing
The Panel has reviewed the Supplemental Filing of the Complainant solely in order to determine its admissibility or otherwise. Had the Supplemental Filing raised significant new matters which were likely to be material to the determination, the Panel would, in its discretion, have admitted the Supplemental Filing but allowed the Respondent an opportunity to file an answer to it. However, the Supplemental Filing is largely argumentative, adding nothing of factual substance to the Complaint. There is nothing in it that requires a response from the Respondent for the purposes of this determination. The Supplemental Filing is accordingly rejected.
The Supplemental Filing erroneously argues that paragraph 4(a)(iii) of the Policy requires that the Domain Name has been registered or is being used in bad faith. This is not the case. It is possible that the Complainant was referring to the .au Dispute Resolution Policy, in which this is the position.
6. Discussion and Findings
The burden lies upon the Complainant to establish the following elements under paragraph 4(a) of the Policy:
A. The Complainant has rights in a trademark with which the Domain Name is identical or confusingly similar
Whilst the Complainant has supplied little information of its use of the trademark ADMEREX relevant to the establishment of common law rights, it would appear to be sufficient for the purposes of the Complaint. Of course, such use commenced after the date of registration of the Domain Name. The Complainant’s trademark application is noted, but comes even later, and it remains an application.
B. Rights or legitimate interests in the Domain Name
A finding that the Complainant has rights in the trademark ADMEREX is not inconsistent with a finding that the Respondent has rights or legitimate interests in the Domain Name. The Respondent may have such rights with respect to different goods or services from those in respect of which the Complainant has established rights, or in a different country.
The Respondent claims to have used the word “Admerex” since the 1980s. No other explanation is provided as to why the Respondent registered the Domain Name in February 2003. Whatever is the truth of the matter, the Respondent chose the word “Admerex,” an invented word, at a time before any association or knowledge of the Complainant is shown, and the Complainant only changed its name after the name was suggested by Mr. Milne to the Complainant, before he became a director of the Complainant, and the Respondent permitted the Complainant to use the Domain Name.
Since the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element, discussed below, it is not necessary to make a finding under the second element of the Policy.
C. Registered and used in bad faith
There is no information regarding the circumstances of the registration of the Domain Name, at a time some months before the Respondent acquired a significant shareholding in the Complainant, to justify a finding of bad faith at the time of registration.
Furthermore, there is no information adequate to form any conclusion as to the circumstances of the permission given by the Respondent to the Complainant to use the Domain Name, and whether there was any contract, or the terms, express or implied, of that contract or of any bare licence to use the Domain Name given by the Respondent.
Therefore, the Panel finds that the third element of the Policy has not been satisfied.
This is not the forum to determine any other rights or obligations between the parties, and no determination of any kind is given, or could be given, in respect of any contractual or other legal or equitable duties or obligations of Mr. Milne or the Respondent, and Mr. Milne’s conduct whilst a director of the Complainant or his or the Respondent’s conduct afterwards.
This decision is not in any way meant to prejudge or influence any eventual national court proceeding between the parties, which would be conducted under different procedural and substantive rules.
For all the foregoing reasons, the Complaint is denied.
William P. Knight
Dated: January 31, 2006