WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SENSIS Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall
Case No. D2006-0793
1. The Parties
The Complainants are SENSIS Pty Ltd., and Research Resources Pty Ltd., Melbourne VIC 3000, Australia; represented by Mallesons Stephen Jaques, Australia.
The Respondent is Kevin Goodall, Coogee, Australia.
2. The Domain Name and Registrar
The disputed domain name <tradingpost11.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2006. On June 27, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On June 27, 2006, eNom 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 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 June 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2006. The Response was filed with the Center on July18, 2006.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on August 14, 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.
4. Factual Background
SENSIS Pty Ltd., (the “First Complainant”) and Research Resources Pty Ltd., (the “Second Complainant”) are companies incorporated pursuant to the laws of Australia. The First Complainant is a wholly owned subsidiary of Telstra Corporation Ltd., one of Australia’s largest companies and its leading telecommunications and information services company. The First Complainant wholly owns Trading Post Group Pty Ltd., which in turn wholly owns Trading Post (TCA) Pty Ltd., which in turn wholly owns the Second Complainant. The Second Complainant is the registered owner of six trademarks for TRADING POST, details of which are as follows:
(a) Trademark No. 736521, registered on June 10, 1997, with IP Australia for QUEENSLAND TRADING POST;
(b) Trademark No. 784855, registered on February 8,1999, with IP Australia for THE TROPICAL NORTH TRADING POST;
(c) Trademark No. 809122, registered on October 5, 2002, with IP Australia for WEEKLY TRADING POST;
(d) Trademark No. 809123, registered on October 5, 1999, with IP Australia for TRADING POST; and
(e) Trademark No. 809124, registered on October 5,1999, with IP Australia for TRADING POST.
The First Complainant has ultimate control over the products and services delivered under those trademarks and the trademarks themselves. The products are a broad range of print publications and online services including the Australian telephone directories, several advertising publications called Trading Post, eight websites including <tradingpost.com.au> and <trading-post.com.au>, telephone information systems and two navigation systems.
The Second Complainant is also the Applicant in two trademark applications that have been accepted by IP Australia for TRADINGPOST in connection with electronic publications, amongst others goods and services.
The Respondent registered the domain name <tradingpost11.com> on November 8, 2005, i.e. after the registration of all of the trademarks.
5. Parties’ Contentions
The Complainants allege that the contentious domain name <tradingpost11.com> should no longer be registered with the Respondent but that it should be cancelled.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Second Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainants maintain that they can prove all three of these requirements and that the appropriate remedy is to cancel the domain name.
In support of their case on the first of these three elements, the Complainants rely on all of the registered trademarks referred to above and in particular on the two specific TRADING POST trademarks. They then say that the domain name <tradingpost11.com> is confusingly similar to those marks, for only the numeral “11” has been added to them, which is not enough to create any distinctiveness.
The Complainants then contend, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the famous TRADING POST marks, the Respondent has not been authorized or licensed to use them and he could not bring himself within any of the provisions of paragraph 4(c) of the Policy.
Thirdly, the Complainants contend that the domain name was registered and is being used in bad faith. They contend that this is so because the Respondent knew or must have known of the existence of the TRADING POST marks and could only have chosen the domain name to attract visitors to his website which offers the same online services as those offered on the Complainants’ website as well as links to the websites of the Complainants’ competitors. Moreover, it is argued, this must have been done for commercial purposes.
The Respondent denies that the Complainants have made out any of the three elements that they must prove. He says, first, that by incorporating a suffix or prefix, a domain name can be distinguished from a trade mark and that this is what he has done in the present case. Accordingly, he submits that the domain name cannot be confusing. It appears that the Respondent is contending both that the numeral “11” and the ‘.com’ suffix achieve this purpose and distinguish the domain name from the TRADING POST trademarks.
Moreover, the Respondent contends, the <tradingpost11.com> website does not look like the Complainants’ website and he has also put a disclaimer on his website; accordingly, the presence of the disclaimer must further remove any confusion there might otherwise be between the domain name and the trademarks.
The Respondent then contends that he has a right or legitimate interest in the domain name because it is registered as a business name and also because it is a generic name and there is no evidence that he has offered it for sale. Moreover, he contends, the facts bring the case squarely within paragraph 4(c)(iii) of the Policy, for his website is a charity run by volunteers and one that performs the useful public service of enabling people to trade items amongst themselves, free of charge and with the proceeds being distributed to worthy causes. These facts distinguish his site from the Complainants’ site, as does the fact that the two sites use different colour schemes.
The Respondent also denies that the domain name was registered or used in bad faith. He was aware of <tradingpost.com> (sic), but honestly believed that the domain name was different and capable of being distinguished from it. In any event, he adds, the domain name has not been used in bad faith because the corresponding website has not yet been launched and no money is derived from advertising on it. Moreover, although competitors of the Complainants are promoted on his website, this has been done merely to stimulate competition. He also draws attention to the fact that there has been no “ ploy or act” to confuse anyone and that he is really just running a registered business that is focused on assisting the community.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In doing so, the onus is on the complainant to make out its case and both the Policy and many UDRP decisions have made it clear that a complainant must show that all three elements of the Policy have been made out before any order can be made to cancel or transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the evidence.
For the Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the two Australian trademarks No. 809123 for TRADING POST and No. 809124 also for TRADING POST (referred to collectively as ‘the trademark’). That is so for the following reasons. First, the domain name has taken the whole of the trademark and incorporated it into the domain name; no part of it has been omitted. Secondly, the domain name consists almost entirely of the trademark. Thirdly, all that has been added to the trademark is the numeral “11” and that is not enough either to detract from the similarity between the two expressions or the confusing nature of that similarity. Even with the addition of the numeral, the two expressions are substantially the same and appear so to the reader. The test of confusingly similarity is how an objective bystander would view both the domain name and the trademark and, when that test is applied in the present case, the conclusion is that they would be seen as being virtually the same. That is so because it is a mistake to think that the viewer, reading the text of the domain name, would necessarily read every symbol contained in it. The viewer would read and absorb the substance of the text which consists of the words ‘trading post’. In any event, a reader who concentrated on the entire composition of the domain name, absorbed the presence of the numeral and gave it some significance, would simply conclude that it was referring to the 11th of the trading post domain names and that it was part of the suite of domain names of that genre or group. That was the view of the UDRP panel in Verio Inc v. Sunshinehh, WIPO Case No. D2003-0255, cited by the Complainant, where the registrant had added the figure “1” before the trade mark VERIO to create the domain name. The panel held that “The insertion of the numeral 1 before the trademark adds little. It could be an indication to the Internet browser that this is the first of a number of sites connected with the Complainant”.
The Respondent’s reply on this issue is, first, that by incorporating a suffix or prefix, a domain name can be distinguished from a trademark and that as this is what he has done in the present case, the domain name cannot be confusing. The Respondent’s general proposition may of course be true where the prefix or suffix is, for example, a description of goods or services very different from those of the complainant or those with respect to which the trademark is registered. Whether the Respondent is right in applying that principle to the present case depends, therefore, on whether the suffix or prefix to which he is referring, sufficiently distinguishes his domain name from the trademark.
It is not entirely clear, but it appears that the Respondent is contending that each of the numeral “11” and the expression ‘.com’ is a suffix which is sufficient to distinguish the domain name from the trademark.
The Panel has considered this argument carefully, but cannot accept it in the case of either suffix. As has already been said, to add the numeral “11” to the trademark TRADING POST does nothing to tell the reader that it is not the well-known Trading Post that is being referred to. It merely tells the reader that it is number 11 of the Trading Post platforms with which the reader is familiar, which are more likely than not to be those associated with the well-known and iconic Trading Post brand owned by the Complainants.
Secondly, with respect to the suffix “.com”, it is has long been held that additions of this sort cannot negate what would otherwise amount to confusing similarity. That principle is often stated, but the reason for it is not always given. The reason is that the Policy requires a true comparison to be made between the domain name and the trademark. No proper comparison could ever be made if the suffix of a domain name could itself be a point of distinction between the two expressions, as no domain name can be effective without a suffix which enables the browser to find the destination sought. Thus, to make a true comparison between a trademark and a domain name, the suffix of the domain name is ignored, enabling the real substance of the two expressions to be compared, see Foundation Le Corbusier v. Mercado M, WIPO Case No. D2004-0723.
When that is done in the present case and the comparison is made between the trademark TRADING POST and the domain name <tradingpost11.com>, ignoring the “. com” suffix, it is clear that the two are confusingly similar.
The Respondent also argues that the “www.tradingpost11.com” website, to which his domain name resolves, does not look like the Complainants’ website and that he has also put a disclaimer on his website, further distinguishing it from the Complainants’ site. However, it is now clear that, for the purpose of determining whether a complainant has made out the first requirement under paragraph 4(a) of the Policy, such a comparison with the website itself may not be made. This has been established by a long line of UDRP decisions and is reflected in the statement contained in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions1, where the following commentary appears:
“1.2 Is the content of a web site relevant in determining confusing similarity?
Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.
Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic D2000-1698 <guiness.com>, Transfer
Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd., D2001-0110 <ansellcondoms.com>, Transfer
Dixons Group Plc v. Mr. Abu Abdullaah D2001-0843 <dixons-online.net>, Transfer AT&T Corp. v. Amjad Kausar D2003-0327 <attinternet.com>, <attuniversal.com>, Transfer.”
Moreover, the words of paragraph 4(a) (i) of the Policy make it plain that the comparison is to be made between the domain name and the trademark and, by inference, nothing else. Accordingly, the Panel finds that the confusing similarity of the domain name and the trademark in the present case is not negated or weakened by the appearance or content of the website to which the contentious domain name resolves.
For all of these reasons and as both Complainants have rights in the trademark, the Panel concludes that the domain name is confusingly similar to the trademark and that the Complainants have accordingly established the first of the three elements that they must prove.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Respondent contends that he has a right or legitimate interest in the domain name because it is registered as a business name and also because it is a generic name and there is no evidence that he has offered it for sale. Moreover, he contends, the facts bring the case squarely within paragraph 4(c)(iii) of the Policy, for his website is a charity run by volunteers and one that performs the useful public service of enabling people to trade items amongst themselves, free of charge and with the proceeds being distributed to worthy causes. He maintains that these facts distinguish his site from the Complainants’ site, as does the fact that the two sites use different colour schemes and therefore look different.
The Respondent has therefore, in effect, taken both courses open to him, as he relies on the specific criterion set out in paragraph 4(c)(iii) and he also relies on other circumstances that he contends show that he has a right or legitimate interest in the domain name.
Turning first to the specific paragraph he relies on, paragraph 4(c)(iii), the Respondent says that by registering the domain name and setting up his website, he was making a legitimate noncommercial or fair use of the domain name, as he was using it to establish a community service where people could in effect barter their excess goods by using the website as an exchange or market where they did not have to pay to use it. Moreover, he contends that as any profits will go to charity, the service he will provide must by definition be non-commercial and without intent for commercial gain.
He goes on to say that there are several facts showing that he has not tried to divert consumers misleadingly or to tarnish the trademark at issue. These facts are, he claims, that the names of the domain name and the trade mark are unique and that his site and the official Trading Post sites look different, in part because they are in different colours and because his own site does not have a colour scheme. He also seeks to rebut any notion of misleading internet users by pointing to a disclaimer on his website to that effect. Moreover, they have entirely different motives, the Complainants’ being to make profit and his being a social motive to benefit the community.
For its part, the Complainant says that the Respondent is not using the domain name for a legitimate noncommercial purpose or a fair use and that the reality is that he is using it to divert consumers away from the Complainants’ site in a misleading manner by offering on his own website products and services in a manner which is inappropriate and discordant with the Complainants’ TRADING POST trade marks.
It is clear that there is a conflict on all of these points between the Complainants and the Respondent. In this respect, the present case shows the difficulty in UDRP proceedings of resolving conflicting issues of fact. In resolving such conflicts, the two principles that must be applied are, first, that the onus of proof is and remains on the Complainant and, secondly, that being civil proceedings the standard of proof is the balance of probabilities.
Applying those principles to the facts of the present case, the Panel concludes that the Respondent has not brought himself within the provisions of paragraph 4(c)(iii) of the Policy. That is so for the following reasons.
Noncommercial use of the domain name?
First, considering all of the evidence, the Panel is unable to conclude that the Respondent is making a noncommercial or fair use of the domain name. The essentially commercial nature of the Respondent’s enterprise is shown by the fact that on his own evidence he registered the domain name as a business name under the business names laws of New South Wales. Moreover, when one goes to the website, one sees that it is not devoted to the free exchange of bartered goods without commercial overtones as the Respondent alleges. Indeed, it is exactly the opposite. The website is almost entirely devoted to various commercial operations, the main categories of which are jobs, auctions, tenders and cars, access to which is obtained bv a series of links to established business in these respective fields. The heading ‘Jobs’ is a link to “www.seek.com.au” which is a prominent commercial employment agency; the heading ‘Auction’ is a link to the famous online auction site “www.ebay.com.au” which sells goods on commission; the heading ‘Tender’ gives access to Tender Center, a purely commercial operation which sells goods and real estate on tender and clearly for commission and which even offers franchises in the same business; and the heading ‘Cars’ connects to “www.drive.com.au” which is a commercial site that offers paid advertisements for selling motor vehicles. These sites are all commercial, none of them is entirely free and in none of them or on the site itself is there any suggestion that any part of the proceeds is to go to charity.
Nor is there any suggestion on the site that it has any community involvement or process for the selling of goods through the site or the distribution of the proceeds to deserving causes.
Moreover, Annexure N to the Complaint shows that on January 5, 2006, the home page of the website carried advertisements for Capital Brake Services Pty Ltd., Fraser Motorcycles Newcastle Pty Ltd., Newcastle Caravans & Homes Jayco and Nova Auto Innovations, further illustrating the commercial nature of the site.
The Panel should add here that it does not find any effective difference in the colouring of the two websites. It is true that there is little colour on the home page of the Respondent’s site, but once the user goes to the links on each site there is no substantial difference between the two sites.
The Respondent says that the site is not yet operational and, by implication, that at a later stage it would be possible to see the site fully operational as a community and non-commercial site of the sort he contemplates. That may be so, but the Panel must act on what is there now and what is available for inspection to determine whether, at the present, the Respondent is using the domain name for a noncommercial purpose. An examination of all of the available material enables the Panel to conclude that the Respondent is not making a noncommercial use of the domain name, for it is apparent that its whole purpose is a commercial one. In this regard the Panel finds it significant that the website carries no notice or announcement that the site will in the future be used for noncommercial and community purposes.
Fair use of the domain name?
Moreover, the Panel is also unable to find that the use of the domain name is a “…fair use of the domain name, without intent for commercial gain to misleadingly divert consumers…”
The Panel has already held that the Respondent is essentially using the Complainants’ trademark in his domain name for what are clearly commercial purposes and such a use cannot be fair. But the matter goes far beyond that, for the TRADING POST trademark is so well known in Australia that it can only be described as famous. The Complainant has adduced unchallenged evidence to the effect that the Trading Post print publications have been produced since 1966 and the online service since 2004, that the print publications are read by almost a million people every month, that over a million users visit the online site each month, where they have access to 240 million advertisements and that the used car service alone attracts 38,300 users every day. Moreover, the Complainants produce a range of Trading Post publications throughout Australia, which are heavily promoted at great expense by advertising and sponsorship. The public reach of the Trading Post online services is extended by links to an extensive range of telephone directories and other online guides and maps.
The evidence therefore shows that the TRADING POST trademark is very prominent in Australia, so much so that it is now iconic and part of Australian popular culture.
That being so, it is inconceivable that anyone registering a domain name including the name Trading Post would be doing so without the Trading Post newspapers and their more recent online versions very much in mind. The Panel, therefore, must conclude that the Respondent chose the name deliberately, because the trademark is famous and to attract users who would assume that the site was in some way connected with the official Trading Post publications and sites. Such a use cannot be described as fair and it is essentially misleading.
The website does, of course, contain a notice that the Respondent claims is a disclaimer and which he says has the effect of warning people that the site is not an official Trading Post site. The Panel does not accept that argument.
The terms of the notice are as follows:
“This site is FREE TO USE. Any users who cannot spell, are easily misled or confused, are mentally challenged or have excuses disguising their inability in distinguishing differences - TRADINGPOST11.COM is not the same as, is unrelated to and does not endorse nor receive endorsement from TRADINGPOST.COM.AU.”
As to the opening words of the notice, the site is of course free to use, like most sites on the internet. It is not, however, free to use those services promoted on the site where a commission or a fee is payable, such as to advertise a car for sale and even when a service is free, the use of the service is paid for by the other party, such as an employer engaging staff through <seek.com>. These fees and charges make the site essentially a commercial one.
As to the parts of the notice which disclaim a connection with <tradingpost.com.au>, the Panel does not accept that they constitute a real disclaimer of the sort that rebuts a prima facie connection with an official site. The nature of the language used in the present example contains an implication that it is obvious that there is no connection, which would certainly discourage some users from taking the disclaimer seriously. More importantly, the disclaimer is printed in faint grey type and is at the bottom of the home page and appears to the viewer only after the links on the site have been presented. So subdued is the disclaimer that a visitor to the site has access to the competitor links and may conceivably use them before being confronted by the disclaimer.
Next is an analogous situation to that found in Pliva Inc v. Eric Kaiser, WIPO Case No. D2003-0316 where the panelist observed:
“Nevertheless, on the home page itself, the disclaimer is still below the place where a customer would click to order Respondent’s product. There are at least two reasons why this disclaimer is not effective. First, it comes after a full page of marketing where the “Antabuse” name appears many times. Second, the disclaimer appears only towards the bottom of the home page, after the customer’s ordering option.” See Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224 and cases cited therein for a relevant discussion of the disclaimer issue.
Accordingly the Panel is unable to accept that the disclaimer has the effect of negating or diminishing the misleading effect of using such a prominent name as Trading Post in a domain name.
Other matters relied on to show a right or legitimate interest
As reliance on paragraph 4(c)(iii) of the Policy is thus not available to the Respondent, it remains to be seen if the other matters on which he relies are sufficient to establish a right or legitimate interest in the domain name.
It will be recalled that the Respondent argues that he has a right or legitimate interest in the domain name because it is registered as a business name, it is a generic name and there is no evidence that he has offered it for sale. The fact that the domain name is also registered as a business name actually strengthens the notion that the Respondent must have intended to use the domain name as a business and weakens the notion that he ever intended to use it for a noncommercial purpose. But it cannot give any right or legitimacy to the domain name itself, for it has been held in many UDRP cases that the registration of the domain name itself cannot generate a legitimacy that is not otherwise there. Nor can the Panel accept the argument that the domain name is simply a generic expression; it is clear that it comes from two generic words, but in combination they have taken on a special and distinctive meaning unique to the Complainants. Thirdly, evidence that a registrant has offered a domain name for sale is often used to show that the registrant has no right or legitimate interest in the domain name. But it does not follow that the absence of any such evidence means that the registrant must be taken to have such a right or interest. It is therefore open to conclude, as the Panel concludes on the evidence in the present case, that the Respondent has no rights or legitimate interests in the domain name, although he has not offered it for sale.
Accordingly, none of these additional matters establishes that the Respondent has a right or legitimate interest in the domain name.
The Complainants, on the evidence, have made out other specific matters going to show that the Respondent has no such right or interest. As the Panel is anxious to show the Respondent that it has considered all issues, it will mention these final matters here.
These matters are as follows. The Respondent does not have any association with the Complainants and accordingly no rights or legitimate interests could have been conferred on him by either of the Complainants. Nor have they licensed or permitted him to use the trademarks. The Respondent has not registered any trademarks containing the words TRADING POST, as is established by the Annexure O to the Complaint. The Respondent is not using the domain name for a bona fide offering of goods or services and does not contend that he is, thus putting him beyond the coverage of paragraph 4(c)(i) of the Policy. Finally, the domain name does not include any part of the Respondent’s name and the Respondent is not known by the domain name, thus also putting him beyond the coverage of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name and the Complainants have thus made out the second of the three elements that they must prove.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that the Complainants have made out their case under paragraphs 4(b)(iii) and (iv) of the Policy.
With respect to paragraph 4(b)(iii), the Panel finds, first, that the Respondent registered the domain name knowing full well of the existence and fame of the trademarks. It is difficult to believe that he registered it for any reason other than to attract potential users to his website.
The Respondent maintains that he registered the domain name because it was the name of the business name that he had already registered. This however is a non sequitur, for he clearly registered the business name because of the fame of the name itself.
The reality is that Trading Post in all of its manifestations was and is a household name in Australia and it must have been chosen as a domain name with the intention of trading on it and attracting internet users because of its fame. Those internet users, attracted to the domain name, would otherwise have been potential customers of the Complainants and to divert them in this way can only be described as disrupting the business of the Complainants.
The evidence is that the Complainants link their official website “www.tradingpost.com.au” to “www.autotrader.com.au”, which is an online classified advertising service for motor vehicles. The Respondent links his website to “www.drive.com.au” which is also an online advertising service for motor vehicles. With respect to tenders, jobs and real estate the Complainants also link their site to suppliers of these services and the Respondent links his site to their direct competitors. It would be difficult, therefore, to contemplate a more obvious case of an attempt to disrupt a trademark owner’s business, for that is clearly what the Respondent is doing and what the Panel finds he intended to do.
Moreover, the fields that are dealt with in this way form such a significant proportion of the content of the Respondent’s website that it must be concluded that within the words of paragraph 4(c)(iii), the domain name was registered ‘… primarily for the purpose of disrupting the business of …” the Complainants.
With respect to paragraph 4(b)(iv), the Panel finds that the Respondent’s actions constitute bad faith in both registration and use within the meaning of paragraph 4(b)(iv) of the Policy. The reasons why that element has been made out are as follows.
First, as has already been established, the Respondent was undoubtedly attempting to attract internet users to his website. Looking at the website, it is impossible to accept that this was being done for any reason other than commercial gain in one form or another. Secondly, by using the Complainants’ trademark in the domain name it created a likelihood of confusion with that mark. That is so because the Respondent was attracting consumers drawn to the ‘Trading Post’ name by using the name, making a token amendment to it by adding the numeral “11” and by that means creating a misleading name. Thirdly, the confusion that was and is likely to be created is confusion about the affiliation of the various services on the Respondent’s website and as to whether they are the Complainants’ official Trading Post services or are in some way associated with it. Clearly, consumers who are using the domain name are there because they are seeking services that people know are available from Trading Post; when they see the same services that they expect to find on a Trading Post site being promoted on the Respondent’s website, they will naturally assume that those services are promoted or provided with the Trading Post imprimatur, when in fact they are not. Clearly this is all a deliberate attempt to promote the notion in the minds of consumers that they have arrived at a Trading Post website and hence a deliberate attempt to trade off its goodwill.
The Panel finds that these circumstances create confusion with the Complainants’ trade marks as to the sponsorship, affiliation and endorsement of the Respondent’s site and the services on it and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another .The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP Panels on analogous facts ; see for example : Identigene,Inc. v. Genetest Laboritories WIPO Case No. D2000-1100; MathForum.co v.Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank v. F.S.B. v. Jim Kato, FA 190366 (Nat.Arb.Forum). For example, the comments of the panelist in Identigene, Inc. v. Genetest Laboritories (supra) are apposite:
“Complainant has alleged and the Panelist finds that Respondent’s use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv).” InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; America Online Inc. v. Cyber Network LLP, WIPO Case No. D2000-0977”.
There are many UDRP decisions to the same effect.
In any event, as well as coming squarely within paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, the registration and use of the domain name are in bad faith having regard to all of the circumstances of the case. In this regard, the panel adopts the Complainants’ use of the analogous comment of the panelist in Harrods Limited v. Gill, WIPO Case No. D2003-0243:
“…given the reputation of the Trade Mark (Harrods), it is difficult to see how the Trade Mark could have been registered and used in good faith. Accordingly, the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith”.
In Australia, the Trading Post is at least as well known as Harrods is in the United Kingdom and accordingly it is extremely difficult to conceive that the domain name in the present case was registered and used in anything other than bad faith within the meaning of the Policy.
Here again it must be said that the Respondent’s purported disclaimer is of no effect to rebut the false impression created by the use of the trademark in the domain name, the construction of a misleading website and the offering of services similar to and in direct competition with those of the Complainants.
For these reasons, the Panel finds that the Respondent both registered and used the domain name in bad faith and that the Complainants have therefore made out the third element that they must prove.
The Complainants have made out their case and have requested an order that the domain name be cancelled. 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 <tradingpost11.com> be cancelled.
The Honourable Neil Anthony Brown QC
Dated: August 22, 2006