WIPO Arbitration and Mediation Center
Seek Limited v. Arazac Nominees Pty Ltd.
Case No. DAU2006-0010
1. The Parties
The Complainant is Seek Limited, of St. Kilda, Victoria 3182, Australia, represented by Kliger Partners, Australia.
The Respondent is Arazac Nominees Pty Ltd., of Applecross, Western Australia, Australia, represented by Juliana Ng, Australia.
2. The Domain Name and Registrar
The disputed domain name <seekbusiness.com.au> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2006. On September 26, 2006, 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 September 27, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that 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”), the .au 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 October 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response October 26, 2006. The Response was filed with the Center on October 26, 2006. On October 30, 2006, Complainant sought to make a Supplemental Filing of a “Submission in Partial Answer to Respondent’s Response”. By letter dated November 1, 2006, Respondent objected to Complainant’s Supplemental Filing and requested a right of response if the filing was accepted.
The Center appointed Desmond J. Ryan, Mary Padbury and James A. Barker as panelists in this matter on January 4, 2007. The Panel finds that it was properly constituted. Each member of 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. The Supplemental Filing
The essence of the Policy is that it provides a fast and efficient means of resolving disputes and it provides a procedure requiring only the filing of a Complaint and a Response to the Complaint. The Panel has, however, the discretion under paragraph 12 of the Rules to request or permit further filings by a party.
There is a consensus view among Panelists in cases under the UDRP which provides that further statements should be admitted only in exceptional circumstances, such as where new relevant facts emerge after the filing of the Complaint/Response or where relevant court judgment is subsequently delivered, see for example WIPO Case DAU2006-0003 TrueLocal Inc., Geosign Technologies Inc and True Local Limited v. News Interactive Pty Limited. The Panel does not consider that any exceptional circumstances have been shown to exist in this case. Accordingly, the Panel declines to admit Complainant’s further filing. Moreover, if Complainant’s further filing were to be admitted procedural fairness would require that Respondent be afforded an opportunity to reply, further delaying the determination of the matter.
5. Factual Background
The domain name was created on June 25, 2004.
Complainant is a listed company having a market capitalization in excess of one billion Australian dollars. It operates an online employment index which it claims to be the leading online job classified board in both Australia and New Zealand. It claims to include in excess of 120,000 classified advertisements at any given time. Complainant operates its service from its website at "www.seek.com.au". Complainant also is the registrant of a number of other domain names consisting of or including the word “seek”. Its domain names <seeklearning.com.au>, <seekexecutive.com.au>, <seekcampus.com.au> and <seekself-employment> lead to separate but linked websites devoted to particular areas of Complainant’s business.
Complainant is the registered proprietor of a family of “seek” trademarks including registration No. 750657 for SEEK, registered from December 9, 1997, in Class 35 in respect of “advertising services including classified advertising services; internet advertising through the internet classified advertising services”. Complainant has several other registrations consisting of or including the word “seek”, including registration No. 1037471 dated January 13, 2005 for a series of trademarks comprising the words “Seek Education”, “Seek Hospitality”, “Seek Accounting”, “Seek Administration”, “Seek Banking”, “Seek Finance”, “Seek Call Centre”, “Seek Customer Service”, “Seek Construction”, “Seek Training”, “Seek Engineering”, “Seek Government”, “Seek Healthcare”, “Seek HR”, “Seek Insurance”, “Seek Legal”, “Seek Manufacturing”, “Seek Mining”, “Seek Retail”, “Seek Sales and Marketing”, “Seek Science and Technology”, “Seek Trades and Services” and “Seek Transport and Logistics”. Apart from registration 750657, all of Complainant’s trademark registrations are dated subsequent to the creation date of the domain name, June 25, 2004.
Complainant provides no information as to when it commenced to use any of its trademarks or any of its domain names.
Respondent is a private company incorporated in Western Australia, the directors and shareholders of which are Graham Michael O’Hehir and Corinne Anne O’Hehir. Respondent alleges that it uses the domain name in the business of Goodwin Mitchell O’Hehir & Associates a real estate and business agent business. The business name Goodwin Mitchell OHehir was first registered in December 1991 and, since July 2004, has been owned and carried on by GMO (WA) Pty Ltd, a Western Australian company, of which James Ronald Goodwin and Graham Michael O’Hehir are the sole directors and shareholders. According to the Response, Respondent was “introduced into the matrix of GMO as a tool to implement” the exit from the business of a former partner Mr. Owen Mitchell and it was for this reason that the domain name was registered by Respondent and not GMO (WA) Pty Ltd.
Entry of the domain name on an Internet address line resolves to GMO’s website at “www.buyabusiness.com.au”.
Respondent claims GMO to be Western Australia’s leading firm of business brokers. It was established in 1988 and currently sells around 130 businesses per year with a combined value of around AU$70,000,000. Respondent claims to have “made proper use of the domain name” in connection with its business since 2004.
Complainant states that it first became aware of the domain name and Respondent’s website in late July 2006. On July 25, 2006 Complainant’s solicitors issued a letter of demand to Respondent demanding cessation of use of the domain name and cancellation or transfer of it to Complainant. Respondent’s solicitors replied on August 7, 2006 denying liability and refusing to provide the undertakings sought. Respondent offered to post a notice on its site disassociating it from Complainant if Complainant provided evidence of any Internet user being genuinely misled.
6. Parties’ Contentions
Complainant contends that it has acquired an enormous reputation in its house mark SEEK and its variations and that therefore consumers would assume any online business using the word “seek” in relation to classified advertising services would assume an association with Complainant. Complainant asserts that it has never encountered objections to registration of its SEEK family of marks on the basis of lack of distinctiveness and as the domain name comprises the word “seek” in combination with the descriptive word “business” the domain name is identical or confusingly similar to Complainant’s trade mark SEEK. Complainant cites the decisions in Yahoo! Inc v. Jorge O.Kirovsky, WIPO Cases D2000-0428 (<yahoofree.com> and <yahoochat.net> confusingly similar to YAHOO!) and Swatch AG v. Stefano Manfroi, WIPO Case No. D2003-0802 (<swatchnews.com>, <swatchresearch.com> and <swatchdiscovery.com> found confusingly similar to SWATCH).
Complainant further contends that Respondent has not demonstrated any right or legitimate interest in the domain name, is not known by the name and is not entitled to use it as a trademark in the light of Complainant’s registered and common law rights. Complainant contends that the domain name has been selected to imitate the names and format of Complainant’s family of domain names. It contends that Respondent does not use “seekbusiness” as a mark on its website and has not, in correspondence with Complainant, provided any explanation for its selection of the domain name.
It is Complainant’s contention that Respondent has selected the domain name in a deliberate attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s name or mark.
Respondent contends that the domain name is not identical or confusingly similar to Complainant’s trade mark SEEK or any other name or mark in which it has rights and, in particular, that Complainant does not have any rights in “seekbusiness”. respondent contends that the word “seek” is a generic word and any rights which Complainant may have in that word are at least weak. Respondent points to many other registered domain names which include the word “seek” including <seekajob.com>, “seekjob.com>, <seekbiz.com>, <seeklawyer.com> and <seekalawyer.com>. Respondent points to the websites at <seekajob.com> and <seekjob.com> which appear to offer services in direct competition with Complainant and to be targeting Australian users. Respondent contends that its use of the word “seekbusiness” is apt to describe Respondent’s activities as a business broker. Respondent states that Complainant has only recently commenced to operate under its domain name <seekcommercial>, a service relating to the sale of businesses. Respondent asserts that Complainant has no established reputation as a business broker and there is no evidence of any confusion arising out of the use of the domain name. Respondent further contends that the domain name <seekbusiness.com.au> is now “supported by” a registered business name. Respondent also points to other trademarks on the Australian trademark register registered in respect of corresponding or similar services as those offered by Complainant, namely, “Seek Finance”, “Seek Real Estate”, “bizseek” and “Seek Ideas”.
Respondent claims that it is not a cyber squatter, is making a legitimate and proper use of the domain name and through GMO can show many years of business activity and the achievement of a high level of reputation, both in Australia and internationally, in the field of business broking. Respondent contends that its use of the domain name to redirect traffic to its principal website is a legitimate use. It distinguishes the Yahoo and Swatch cases cited by Complainant on the basis that neither of the words “Yahoo” or “Swatch” is a word in common parlance in the context in which they are used.
Respondent states that it has used the domain name since 2004 and did not register it for the purpose of selling it or to prevent the Complainant from reflecting its trade mark and corresponding domain name. Respondent contends that Complainant is a late arrival in the field of self employment and sale of business and does not have any established reputation in that sector, and accordingly, Respondent’s use of the domain name is use in good faith.
7. Discussion and Findings
In order to succeed Complainant must establish:
(i) that the domain name is identical or confusingly similar to a name, trademark or service mark in which it has rights; and
(ii) that respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or has subsequently been used in bad faith.
The onus is on Complainant to establish each of the above circumstances. It is to be observed that the auDRP provisions differ from the corresponding provisions of the UDRP in that Complainant’s rights may be based on its name as well as its trademarks and service marks and that it can rely on either bad faith registration or subsequent use in bad faith to satisfy paragraph 4(a)(iii) of the Policy.
A. Identical or Confusingly Similar Mark
The domain name consists of Complainant’s trademark SEEK with the addition of the descriptive word “business”. Prima facie therefore the distinguishing element of the domain name comprises wholly the Complainant’s trademark. However, as Respondent points out Complainant’s mark must be classified as one which is “weak”. Respondent cites Hotels Unis De France v. Christopher Dent, WIPO Case No D2005-1194 in support of the proposition that the domain name is not necessarily confusingly similar to a trademark where the common element comprises descriptive words. However, in that case the trademark as registered comprised in addition to the words “Exclusive Hotels” graphic matter and the additional words “Charm and Character”, so that was not a case where the domain name incorporates the whole of the claimed trademark.
This is a case in which each of the parties is Australian and the domain name is registered in the .au domain. Rule 15 of the Rules charges the Panel to decide the complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The Panel therefore considers it appropriate to have regard to decisions of the Australian Courts in reaching a conclusion on this issue. There is a number of decisions of the Australian Courts which have considered whether or not a mark which wholly includes another mark is deceptively similar to that other mark. In two recent cases the Full Court of the Federal Court of Australia ruled that the marks in question were not confusingly similar Mid Sydney Pty Ltd v. Australian Tourism Co Ltd 1998 IPD 42.561 (“The Chifley Tower” found not confusingly similar to “The Chifley”) and SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 48 IPR 593 (“The Sapient College” found not confusingly similar to “Sapient”). On the other hand there is a number of cases which have been decided the other way, see for example JohnFitton & Co’s Ltds Application (1949) 66 RPC 110, (“Easy Jest” found confusingly similar to “Jest”) and Baron Phillipe de Rothschild SA’s Application (1988) IPD 10096 (“Cadet” found confusingly similar to “Mouton Cadet”). Each case must therefore be considered on its own facts.
In the present case the Panel has concluded, although with some hesitation, that Complainant’s mark and disputed domain name are confusingly similar. It does so on the basis that notwithstanding the inherent weakness in Complainant’s mark, the word “seek” is clearly the dominant operator in Respondent’s “seekbusiness” domain name and it would not be unlikely that internet users would find the word “seekbusiness” to be a subset of Complainant’s SEEK trademark.
B. Rights or Legitimate Interests
Respondent registered the domain name and, so it asserts, commenced to use it in 2004. There is no evidence that at that time Respondent knew of the existence of Complainant or of any reputation which it may have established. Complainant’s evidence as to its reputation speaks only of the situation as it existed at September 2006. Respondent’s first notice of the subject matter of the dispute was contained in a solicitor’s letter of July 25, 2006. By that time, accepting Respondent’s assertion, it had been using the domain name for a period of approximately two years for the purpose of directing internet traffic to the website of its closely associated business GMO.
The only use which Respondent has made of the domain name is for the purpose of linking to its associated company’s website. There is a question therefore as to whether or not this use was a bona fide use. Respondent has made a plausible explanation as to why the domain name was registered in the name of Respondent rather than its principal GMO business. The domain name is an apt one for use in relation to the business which GMO carries on. Complainant and Respondent are located on opposite sides of the continent and Complainant has adduced no evidence to show that, in 2004, Respondent knew or ought to have known of the reputation or trademark rights of Complainant in the common word “seek” in relation to an area of business different from that in which Respondent operated.
The Panel therefore finds that Complainant has failed in this case to show that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In the light of the Panel’s finding under paragraph B above, it is unnecessary to consider this further circumstance. The Panel notes however, that it does not consider that Complainant has produced sufficient evidence to indicate that in 2004 Respondent’s registration of the domain name was in bad faith nor that its continued use of the domain name since that date is in bad faith.
For all of the above reasons, the Complaint is denied.
Desmond J. Ryan AM
James A. Barker
Dated: January 18, 2007