WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seek Limited v. Independent Mortgage Brokers Pty Ltd
Case No. DAU2006-0012
1. The Parties
The Complainant is Seek Limited, of St. Kilda, Victoria, Australia, represented by Kliger Partners, Australia.
The Respondent is Independent Mortgage Brokers Pty Ltd, C/o Angelo Dounis, of Earlwood and Surrry Hills, New South Wales, Australia, represented by Angelo Dounis, Australia.
2. The Domain Names and Registrars
The disputed domain names:
are registered with NetRegistryPty Ltd.
The disputed domain name:
is registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2006. On October 13, 2006, the Center transmitted by email to NetRegistryPty Ltd and Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain names at issue. On October 13, 2006, NetRegistryPty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names <seekfinance.net.au>, <seekhouse.com.au>, <seekinsurance.com.au>, <seekproperty.com.au>, <seekrealestate.com.au> and providing the contact details for the administrative, billing, and technical contact. On October 17, 2006, Primus Telecommunications t/a PlanetDomain & PrimusDomain transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <seeksuper.com.au> and providing the contact details for the administrative, billing, and technical contact. 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 November 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2006. The Response was filed with the Center on November 16, 2006.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 8, 2007. 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 due date for Decision was subsequently extended by the Panel to February 28, 2007.
4. Factual Background
The Complainant operates an online classified employment advertising business. It operates in Australia, the United Kingdom and New Zealand. It is listed on the ASX and has a market capitalization in excess of $1 billion. The Complainant claims that it “has invested significant resources in building what has come to be one of the most recognized brands in the Australian and New Zealand marketplaces.” That brand consists in the word “SEEK”, often in combination with other terms. The Complainant owns domain names such as:
It also owns trade marks such as:
SEEK CUSTOMER SERVICING
SEEK TRADES & SERVICES
SEEK AND YOU SHALL FIND
These trade marks are predominantly registered for Classes 35 (advertising services etc) and/or 41 (education and training etc).
The Respondent is using the disputed domain names in the following ways. <seekfinance.net.au> is used for a website matching potential borrowers with various types of lender. <seekproperty.com.au> redirects the user to the <seekfinance.com.au> website. <seekhouse.com.au> and <seekrealestate.com.au> redirect the user to a website with the domain name <isold.com.au>, a website that operates a classified advertising service for domestic real estate. <seekinsurance.com.au> is not currently in use. <seeksuper.com.au> redirects the user to a website with the domain name <aussiesuperannuation.com.au> that provides information on various types of superannuation insurance.
The Respondent is the registered proprietor of the trade marks:
SEEK AND YOU SHALL FINANCE
These marks are all registered for Class 36 (financial, real estate, and insurance services etc). In addition the Respondent applied for the trade mark SEEK INSURANCE in Class 36, but has allowed this application to lapse.
The Respondent is also the registered proprietor of the Business Name “Seek Real Estate”.
5. Parties’ Contentions
The Complainant asserts that the Respondent’s domain names are confusingly similar to its common law and registered trade marks and that the addition of words after the word “seek” does not prevent a finding of confusing similarity.
The Complainant asserts that the Respondent has no rights or legitimate interest in the use of the following domain names because it does not carry on business under that name and/or it merely uses the name as a redirect to a different site: <seekhouse.com.au>, <seekinsurance.com.au>, <seekproperty.com.au>, <seekrealestate.com.au> and <seeksuper.com.au>. It claims that the trade mark registrations of the Respondent are insufficient to constitute a legitimate interest. The Complainant makes no explicit case that the Respondent has no rights or legitimate interests in respect of the domain name <seekfinance.net.au>.
Finally, the Complainant points as evidence of bad faith in the registration of the disputed domain names to the following: (i) the registration of multiple domain names which incorporate the Complainant’s trade marks, (ii) the use of graphic devices in the presentation of the domain name <seekfinance.com.au> to highlight the Complainant’s mark SEEK, (iii) an email message expressing the intention to enter the classified advertising business and offering to enter into a joint venture with the Complainants, which offer is asserted to be effectively an offer to sell the domain name for profit.
The Respondent denies that the disputed domain names are identical or confusingly similar to the Complainant’s marks. It points out that its trade mark registrations pre-date some (though not all) of the Complainant’s trade mark registrations. It points out that the Complainant did not object to those registrations because they were in a class outside the Complainant’s commercial interests. It points out that several other domain names and trade mark registrations include the word SEEK. It highlights the danger that finding confusingly similarity in this case might give the Complainant an unnecessarily wide monopoly over domain names containing this potentially descriptive word.
The Respondent asserts that it either conducts business under the relevant names or has made legitimate preparations to do so. It argues that its registered trade mark rights constitute a legitimate interest in at least some of the domain names.
Finally, the Respondent asserts that all the disputed domain names were registered in good faith, emphasizing that “the Respondent is not a competitor of the Complainant, has never offered his domain names for sale and has never disrupted or intended to disrupt the Complainant’s business”. Further, the Respondent emphasizes that it has a right as the registered owner of marks incorporating some of the disputed domain names “to enter into discussion, joint venture, sell or license his intellectual property. [sic]”
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names <seekfinance.net.au> and <seekinsurance.com.au> are effectively identical to the Complainant’s registered trade mark ATMN 1037471. In assessing whether a domain name and a trade mark are identical, top level domains are to be ignored (The University of Windsor v. Modern Empire Internet Limited, WIPO Case No. D2006-1238). Similarly, the absence of a space between the word “seek” and the words “finance” and “insurance” does not preclude a finding that the domain names are identical to the marks. Users of the internet know that domain names cannot contain such spaces.
In considering whether the other disputed domain names are confusingly similar to the Complainant’s common law and registered trade marks, four considerations must be emphasized. First, the term “seek”, as an ordinary descriptive word, is, as the Panel in EAuto LLC v. EAuto Parts, WIPO Case No. D2000-0096 put it, “on the weaker side of the range of distinctive marks”. Second, the reputation of the Complainant and its trade mark registrations is in two very specific sectors, those of on-line classified advertising and training. Third, the addition of words to a mark in a domain name do not preclude a finding of confusing similarity. However, the Panel decisions to which the Complainant refers on this point, Yahoo!Inc v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 and Swatch AG v. Stefano Manfroi, WIPO Case No. D2003-0802 both involved fanciful marks. Adding words to a mark that is itself “on the weaker side of the range of distinctive marks”, must more easily distinguish a domain name from the mark than adding words to a very distinctive mark would do. Fourth, the Complainant states that it chose not to object to the Respondent’s own registration of trade marks including the word “seek”, because it was clear that that they were operating in areas “outside the commercial interests of the Complainant”. Presumably the registrations were thought to be less likely to confuse than they might have been in the hands of a competitor.
Nevertheless, notwithstanding these considerations, the Panel finds that the disputed domain names <seekrealestate.com.au>, <seekproperty.com.au>, <seeksuper.com.au> and <seekhouse.com.au> are confusingly similar to the Complainant’s SEEK family of marks. The Panel notes that, in different ways, both a business providing classified advertisements for real estate and a business providing superannuation insurance information online are activities close to the business of the Complainant. The former of these businesses is in a parallel area of classified advertising and the latter is an area related to employment, the core focus of the Complainant’s business. It is highly likely that an internet user finding these domain names, for example in a list of results produced by a search engine, would assume that they were sites maintained by the Complainant because of the confusing similarity of the domain names and the SEEK family of marks.
The Panel therefore finds that the Complainant has established the first element of Paragraph 4(a) of the Policy in relation to all the disputed domain names.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Where the disputed domain names correspond to marks that are ‘on the weaker side of distinctive marks’, this burden tends to be higher than it might otherwise be. While the application of the criteria in Paragraph 4 depends upon a
close reading of the facts of each case, it seems inherently more likely
that a respondent has a legitimate interest in using a more descriptive
domain name. This seems to have been decisive in a recent three-member panel decision involving the same Complainant, Seek Limited v. Arazac Nominees Pty Ltd., WIPO Case No. DAU2006-0010.
In relation to the domain name <seekfinance.net.au>, the Complainant has made no explicit case that the Respondent has no legitimate interest. Moreover, the Respondent has been carrying on activities under this domain name and a corresponding trade mark. These activities were carried on using trade marks to the registration of which the Complainant, by its own admission, chose not to object. Indeed, the Respondent claims that its registered trade marks SEEKFINANCE and $EEKFINANCE pre-date the corresponding trade mark registrations of the Complainant, though not its business under the SEEK mark.
In relation to the domain names <seekhouse.com.au>, <seekinsurance.com.au>, <seekproperty.com.au>, <seekrealestate.com.au > and <seeksuper.com.au>, the Complainant has pointed out: (i) that the use of some of these names has been to link to another website, which type of use has been held in some panel decisions to be insufficient to constitute a legitimate interest (for example, Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186), (ii) that, although the Respondent was the proprietor of trade mark registrations or pending applications corresponding to each of the disputed domain names, the registration of trade marks corresponding to a domain name may, of itself, be insufficient to constitute a legitimate interest (for example, Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0024 ), (iii) that the Respondent had not begun to conduct business under the domain names <seekinsurance.com.au> or <seeksuper.com.au>.
Nevertheless, it is incumbent upon the Complainant in this case to do more than simply to point out that the purported rights or legitimate interests of the Respondent are of a type that have, in some particular instances, been held to be insufficient. There are, as the Respondent pointed out, many potential grounds upon which the panel decisions concerning use to link to another website, and those concerning trade mark registrations and applications, may be distinguished from the facts at issue here. Although some of the evidence is ambiguous, and there a number of matters in dispute, the Respondent provides a plausible explanation for its use or intended use in business of a number of the disputed domain names. Moreover, the Respondent gives a plausible explanation as to why it had not yet begun to conduct business under the domain names <seekinsurance.com.au> and <seeksuper.com.au>. In cases such as this involving domain names that correspond to marks on ‘the weaker side of distinctive’, the Panel is conscious of its limited ability to test the evidence of either party and the need, therefore, for the Complainant appropriately to discharge its burden of proof on the submitted papers.
The Panel on balance finds that the Complainant has not satisfied the second element of Paragraph 4(a) of the Policy in relation to the disputed domain names.
C. Registered and Used in Bad Faith
In light of the Panels finding under the preceding paragraph, it is unnecessary to consider the application of the third element of Paragraph 4(a) of the UDRP Policy
The Panel’s decision should not however be read as an endorsement of the activities or intent of the Respondent; merely that the Complainant has not succeeded in establishing to the Panel’s satisfaction that the Respondent lacks rights or legitimate interests under the second element of the Policy. It is, of course, open to the parties to pursue the matter further in an appropriate Court should they wish to do so.
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Dated: February 28, 2007