WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SanDisk Corporation v. ITBOX PTY. LTD..
Case No. DAU2006-0009
1. The Parties
The Complainant is SanDisk Corporation, Sunnyvale, California, United States of America, represented by Griffith Hack Patent and Trademark Attorneys, Australia.
The Respondent is ITBOX Pty Ltd., of Gordon, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name is <sandisk.com.au>, registered with Enetica Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on September 8, 2006 and in hardcopy on September 21, 2006. On September 12, 2006, the Center transmitted by email to Enetica Pty Ltd. a request for registrar verification in connection with the domain name at issue. On September 26, 2006, after a number of requests from the Center, Enetica Pty Ltd. transmitted by email to the Center a verification response confirming that the Respondent is listed as the registrant and providing the contact details for the registrant. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”) approved by the Board of .au Domain Administration (“auDA”) on August 13, 2001, the .au Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was set as October 17, 2006. The Respondent did not submit any Response. Accordingly, the Center issued a notification of Respondent default on November 17, 2006.
The Center appointed Keith Gymer as the sole panelist in this matter on December 27, 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
The Complainant, SanDisk Corporation, is a United States corporation, headquartered in California. It is a leading supplier of flash memory data storage products and designs, develops, manufactures and markets flash storage card products for a wide variety of electronic systems and digital services. In 2004, it had a reported revenue of US$1.8 billion. It operates a principal website at “www.sandisk.com”.
In Australia, the Complainant reportedly had over AU$50 million sales in 2004 and over AU$70 million in 2005.
The Complainant is the owner of nine registered Australian trademarks that consist of or contain the word SANDISK. These include AU 666596, filed in 1995, and AU 947725, filed in 2003, both of which are for the mark SANDISK alone in plain text.
The Respondent, ITBOX Pty. Ltd.. is an Australian company in the business of selling computer and electronic equipment for home and office solutions. It operates a retail website at “www.itbox.com.au”. It sells SanDisk memory products, amongst a large range of equipment from many suppliers.
According to the Enetica Pty Ltd. WHOIS records, the domain name <sandisk.com.au> was registered in the Respondent’s name through Enectica on February 1, 2005.
5. Parties’ Contentions
The Complaint included numerous assertions regarding the scope of the Complainant’s business and the international extent of its registered rights and reputation and provided a large volume of Annexes in support of these contentions.
In the Panel’s view, the volume of the Annexes submitted in this case was excessive, in large part inappropriate and unnecessary. Proceedings such as those under the Policy are intended to provide a simplified and low cost route for resolution of domain name disputes. Decisions are provided for a low-cost, fixed fee and time which has to be spent wading through substantially irrelevant annexes is unnecessarily wasted. Consequently, it is desirable that the Complaint and any supporting evidence provided in annexes should be focused on the basic facts to be proved:
(i) the existence of a relevant right held by the Complainant [in this case one or two of the Complainant’s Australian rights were obviously sufficient, and the provision of voluminous copies of umpteen other foreign registrations in Annex 8 to the present Complaint and other Annexes with evidence of the Complainant’s international recognition and reputation were obviously superfluous];
(ii) the lack of any relevant rights for the Respondent; and
(iii) factors demonstrating bad faith registration and/or use.
The practice of attaching hard copies of previous (U)DRP decisions is also generally to be avoided (the present Complaint Annexed six such earlier Decisions). Unless there is some unusual issue to be considered (which was not the case here), attaching hard copies of such earlier Decisions are not likely to have any added value. If there are relevant points in such cases, then the Complainant should identify and quote the specific extract from the cited Decision in the body of the Complaint.
Overloading a Complaint with superfluous annexes just adds to the costs all along the line, from preparation of the Complaint, through copying and administration by the Provider to the time needed by the Panel to consider and decide the case. It is therefore much to be preferred all round for a Complaint to be streamlined, to select the most relevant rights and best, most focused evidence and to go with those.
The following extracts are the key points selected by the Panel from the Complainant’s submissions:
The URL “www.sandisk.com”.au redirects to “www.itbox.com.au”, the website of the Respondent. The Respondent utilizes its website at “www.itbox.com.au” to sell a wide variety of computer hardware and software including SanDisk Corporation’s products.
The Respondent is not an authorized distributor of SanDisk Corporation. Furthermore, the Respondent has not been authorized by SanDisk Corporation to register and use the disputed domain name.
It is submitted that the disputed domain name <sandisk.com.au> is identical to SanDisk Corporation’s SANDISK trademark. Consumers are therefore likely to expect an association with SanDisk Corporation upon viewing the Respondent’s domain name.
It is also submitted that the addition of the designator “.com.au” does not affect a determination that the Respondent’s domain name is identical or confusingly similar to the SANDISK trademark.
It is submitted that, for the reasons outlined below, the Respondent does not have any right or legitimate interest in the disputed domain name.
(a) The Respondent has no connection with SanDisk Corporation. In particular, the Respondent has not been licensed or authorized by SanDisk Corporation to use the disputed domain name.
(b) The Respondent is not an authorized distributor of SanDisk Corporation.
(c) The disputed domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration.
(d) It is submitted that the Respondent has not at any time been commonly known by the disputed domain name. Furthermore, SanDisk Corporation is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.
(e) It is further submitted that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Reference is made to the print-outs of the Respondent’s website at “www.itbox.com.au”, which indicate that the Respondent is conducting a business related to the offering of various traders’ goods via the Respondent’s website. While the goods offered through the Respondent’s website include SanDisk Corporation’ products, the website also offers a range of other computer hardware and software products. It is therefore by no means necessary to operate such an on-line retailing website with a domain name containing SanDisk Corporation’s SANDISK trademark.
(f) It is submitted that the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from SanDisk Corporation’s website. It is submitted that the Respondent is exploiting confusion amongst consumers as to the association or affiliation of the Respondent with SanDisk Corporation and thereby attempting to generate business by luring SanDisk Corporation’s customers to the Respondent’s own website.
It is submitted for the reasons outlined below, that the Respondent registered the disputed domain name in bad faith.
(a) It is submitted that the Respondent registered the disputed domain name in order to divert Internet traffic intended for SanDisk Corporation to the Respondent’s website. The Respondent has not and has never been commonly known by the name SANDISK. The Respondent operates an on-line retail platform through which it sells various brands of computer software and hardware. It is submitted that it is not necessary for the Respondent to register a domain name containing the SANDISK trademark if it is merely selling SanDisk Corporation’s products. Rather, it is submitted that the Respondent’s choice of domain name was clearly intended to create, amongst consumers, the impression that the Respondent is affiliated or otherwise associated with SanDisk Corporation.
(b) It is submitted that the Respondent intended to divert potential customers of SanDisk Corporation to the Respondent’s own website and that therefore the Respondent is disrupting SanDisk Corporation’s business.
(c) It is submitted that SanDisk Corporation enjoys a world wide reputation in its SANDISK trademarks. Similarly, it is submitted that it may be inferred from the Respondent’s registration of a domain name containing SanDisk Corporation’s well known SANDISK trademark that the domain name <sandisk.com.au> was registered in bad faith. Furthermore, it is submitted that the Respondent was clearly aware of the SANDISK trademark as it is selling SanDisk Corporation’s products bearing the SANDISK trademark.
It is also submitted, for the reasons outlined below, that the Respondent is using the disputed domain name in bad faith.
(a) It is submitted that the Respondent, by using the well known and highly distinctive SANDISK trademark in its domain name, is intentionally attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with SanDisk Corporation’s SANDISK trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. It is submitted that the Respondent’s intention to divert Internet traffic in bad faith is evident from its conduct in using, without authorization, SanDisk Corporation’s well known SANDISK trademark in its domain name. Furthermore, it is submitted that the Respondent was clearly aware of the SANDISK trademark as it is selling SanDisk Corporation’s products bearing the SANDISK trademark.
(b) It is further submitted that it is by no means necessary for the Respondent to use the SANDISK trademark in the disputed domain name in order for the Respondent to be able to operate its business. The Respondent may also not assert that the use of the SANDISK trademark in its domain name is necessary as it refers to the products it is selling through its on-line retailing platform. The Respondent sells a variety of computer hardware and software, which are unrelated to SanDisk Corporation. It is not necessary for the Respondent to include the SANDISK trademark (or any other trademark for that matter) in a domain name used to point to an on-line retailing platform selling a variety of different traders’ goods. In any event, it is submitted that even if the Respondent were to restrict itself to only selling SanDisk Corporation’s goods, this would not be sufficient to give the Respondent a right to use SanDisk Corporation’s SANDISK trademark in its domain name.
(c) It is submitted that the Respondent’s use of the SANDISK trademark in the disputed domain name is intended to exploit confusion amongst consumers in order to solicit custom to the Respondent’s retail website.
Accordingly, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not offer any response to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy the Complainant is required to prove:
(i) the domain name is identical or confusingly similar to a name (see below Note 1), trademark 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 (Note 2); and
(iii) the domain name has been registered or subsequently used in bad faith.
For the purposes of the Policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant’s personal name.
For the purposes 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the registered proprietor for a number of Australian Registered Trademarks incorporating the name SANDISK. Most relevant for the purposes of the Complaint are registrations AU 666596, filed in 1995, and AU 947725, filed in 2003, both of which are for the mark SANDISK alone in plain text. Both these registrations predate the apparent date of registration (in 2005) by the Respondent of the domain name at issue.
It is well established for the purposes of the Policy that the domain suffix (com.au) is to be discounted in consideration of the identity or similarity of the domain name at issue.
The Panel therefore finds that the domain name <sandisk.com.au> is effectively identical to the trademark SANDISK, in which the Complainant has rights.
The Complainant has established the requirement of Paragraph 4 (a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted above, the Complainant has made a number of contentions regarding the Respondent’s alleged lack of any rights or legitimate interests in respect of the domain name at issue.
The Respondent has not challenged any of the Complainant’s submissions, nor has it proffered any arguments or evidence of its own to support a claim to have such rights and legitimate interests itself.
The evidence shows that the Respondent is not itself known by the domain name, but rather that the domain name has been used as a tool to redirect web users from “www.sandisk.com.au” to “www.itbox.com.au”, the Repondent’s website for retailing a large range of IT equipment from many original manufacturers, and not just the Complainant’s products. There appears to be no attempt at accurate disclosure of the Respondent’s relationship (or lack thereof) with the Complainant.
Some previous panels have held that a reseller or agent may have an arguable claim to legitimate interests where a proprietor’s mark has been used in a website address exclusively for dealing in that proprietor’s products. That is not the situation in this case. The present Panel notes that, in any event, for over 100 years the Paris Convention (Article 6 septies) has recognized the right of the proprietor of a mark to object to the unauthorised registration by an agent or representative.
The Respondent is, apparently, simply exploiting for its own general commercial purposes, the reputation and goodwill of the Complainant in the SANDISK mark, without the authority or consent of the Complainant. Such use of a domain name is not consistent with a bona fide offering of goods under the Policy.
The Panel therefore finds that, on the evidence, the Respondent has no rights or legitimate interests itself in respect of the domain name at issue.
The Panel finds that Complainant has established the requirements of Paragraph 4(a)(ii) of the Policy.
C Registered and Used in Bad Faith
As noted above, it is clear from the evidence that the Respondent has not registered the domain name <sandisk.com.au> innocently on the basis of any rights of its own, nor in ignorance of the Complainant’s rights and reputation in the mark SANDISK. Rather the Respondent has knowingly taken the Complainant’s mark and obtained the domain name registration <sandisk.com.au> with the deliberate intention of making use of it in the form of a web address to redirect web surfers to its own website for its general IT equipment sales business. In doing so, the Respondent has misappropriated the Complainant’s rights and goodwill in the SANDISK mark for the Respondent’s own commercial advantage.
The Respondent’s conduct would appear to fall squarely within the example of Registration and Use in Bad Faith given at Paragraph 4(b)(iv) of the Policy whereby:
“by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Panel therefore finds that, on the evidence, the domain name has been registered and subsequently used in bad faith.
The Complainant has established the requirement of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and having regard to the fact that the Complainant is apparently eligible to hold a “.com.au” domain name registration under the auDA Domain Name Eligibility and Allocation Policy Rules, Schedule C, Paragraph 1(e), based on the Complainant’s ownership of Australian Trademark Registration 666596 and others, the Panel orders that the domain name <sandisk.com.au> be transferred to the Complainant.
Dated: January 10, 2007