WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Technosystems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd.
Case No. DAU2007-0001
1. The Parties
The Complainant is Technosystems Consolidated Corporation, Invention Submission Corporation t/a InventHelp, of Pennsylvania, United States of America represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Hugh Godman, Royal Computer Proprietary Ltd. of Victoria, Australia, represented by Guy & Hinton Solicitors of Melbourne, Victoria, Australia.
2. The Domain Name and Registrar
The Disputed Domain Names <inventhelp.com.au> and <inventhelpaustralia.com.au> are registered with Distribute.IT Pty Ltd t/a ClicknGo.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 20, 2007 and in hard copy on March 9, 2007. On February 21, 2007, the Center transmitted by email to Distribute.IT t/a ClicknGo a request for registrar verification in connection with the domain names at issue. On March 13, 2007, Distribute.IT t/a ClicknGo transmitted by email its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for the .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the .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 March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for a Response was April 2, 2007. The Response was filed by email with the Center on April 2, 2007, and the Center acknowledged receipt of response the same day. Supplemental filings were received from the Complainant on April 26, 2007, and an acknowledgement was sent by the Center the same day. On May 9, 2007, the Respondent communicated with the Center by email regarding the supplemental filings, the receipt of which was acknowledged the same day by the Center.
The Center appointed Alistair Payne, John Swinson and Warwick A. Rothnie as panelists in this matter on May 9, 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.
On May 22, 2007, the Panel issued Administrative Panel Procedural Order No. 1 accepting the Complainant’s supplemental filings and allowing the Respondent an opportunity to reply to same. Accordingly the due date for the Decision was extended until June 19, 2007. On June 1, 2007, the Respondent filed a reply to the Complainant’s supplemental submission with the Center.
4. Factual Background
The Complainant is Technosystems Consolidated Corporation and Invention Submission Corporation t/a InventHelp. Technosystems Consolidated Corporation is the parent of Invention Submission Corporation t/a InventHelp. InventHelp claims to be the largest inventor services company in the world.
On June 3, 2003, the Complainant registered the domain name <inventhelp.com>. The Complainant registered the service mark INVENTHELP with the United States Patent and Trade Mark Office on December 21, 2004. The Complainant is the registered owner of the Australian trade mark, No. 1037137, INVENTHELP as a result of an assignment dated August 21, 2006. Australian Trade Mark No 1037137 was registered with effect from January 12, 2005, in class 35 with respect to “providing business assistance to inventors”.
The Respondent is the registered owner of the two Disputed Domain Names according to a Whois search conducted on February 6, 2007. Hugh Godman is the sole director and shareholder of Royal Computer Proprietary Ltd. The Respondent has also applied to register three trade marks in Australia based on the expression “INVENTHELP”:
(a) 1117850 in class 42 in respect of:
“Technical product development and product design”
filed on 8 June 2006;
(b) 1117851 in class 35 in respect of:
“Consulting services in the fields of new products, product development and product design, the consultancy services being: business research, commercial information consultancy, data searching in computer files, demonstration of goods, direct mail advertising, compilation of information into computer databases, dissemination of advertising matter, marketing research, sales promotion”.
filed on 8 June 2006; and
(c) 1143944 in class 41 in respect of:
Academies, arranging and conducting of colloquiums, conferences, seminars, symposiums and workshops, correspondence courses, educational examination and services, exhibitions for cultural or educational purposes, information education, providing on-line electronic publications, publication of books or texts, teaching, practical training, tuition.
filed on 31 October 2006.
5. Parties’ Contentions
The Complainant asserts that the Respondent’s registration and use of the Disputed Domain Names violates its rights in the trade name INVENTHELP which it has been using since 2004 to conduct business throughout the world.
The Complainant contends that due to the daily use of the trade name that it has become identified with the Complainant’s services. It further submits that the website located at the domain name <inventhelp.com> is viewed by 85,000 customers a month including more than 2,500 Australian customers. The Complainant is also the registered owner of two trade marks and a domain name in connection with the name “Invent Help” as outlined above. The Complainant asserts that the Respondent has not been commonly known by the Disputed Domain Names as it utilizes the names “Royal”, “Royal Ideas” and “Inventions”.
The Complainant states that its advertising and business documents have featured the service mark INVENTHELP since February of 2005. In addition to this, the companies’ business stationary displays the name “InventHelp” and correspondences with its clients refer to the company as “InventHelp”.
The Complainant asserts that the Disputed Domain Names are identical or confusingly similar to trade marks and service marks in which the Complainant has statutory and common law rights. Reference is made to, among others, GE Capital Finance Australasia Pty v. Dental Finance Services Pty Limited, WIPO Case No. DAU2004-0007, to highlight that the designator “.com.au” does not prevent a finding of similarity between a domain name and a trade mark.
The Complainant believes that the Respondent has no right or legitimate interest in the Disputed Domain Names and confirms that the Respondent has not been authorized by the Complainant to register the trade mark INVENTHELP as a domain name. The Complainant further states that there is no relationship between the two parties.
The Complainant submits that the Disputed Domain Names have been registered and are being used in bad faith. The Disputed Domain Name <inventhelpaustralia.com.au> redirects an Internet user to the Disputed Domain Name <inventhelp.com.au> where no inventor services are actually provided by the Respondent. The Disputed Domain Name <inventhelp.com.au> advises Australian users to avoid engaging the services of non-Australian inventor services companies. It also recommends that an inventor avoids companies who do not have an actual postal address on its internet sites. This website then identifies the Respondent as the party who has setup the website and provides its contact details including a postal address. The Complainant maintains that this gives the impression that the Respondent offers inventor services and the contact details given direct an inventor to the Respondent’s “Royal Ideas and Inventions” division where inventor services are offered. These services are in competition with the Complainant’s business. The Complainant contends the Respondent is using the Disputed Domain Names to confuse, mislead, attract and divert potential customers of its inventor services. It maintains that this is done for the Respondent’s own commercial gain which cannot be said to be a legitimate or fair use of the Disputed Domain Names.
In addition to this, the Respondent purchased the Google Australia keyword “Invent Help”. When Google is searched for this phrase a link is shown for the Respondent’s website <royalinventions.com.au>. The Complainant believes that this keyword was purchased with the same aim of diverting business away from its inventor services.
The Complainant utilizes a “Basic Information Package” brochure (the “Brochure”) to sell its services. The Complainant submits that the Respondent has infringed its copyright in this Brochure and further displayed bad faith by its use of the same terminology in its website located at the domain name <royalinventions.com.au>. Examples cited are the words and phrases “packaging the invention”, “resume” and “reference tool” which can be found in the Respondent’s “Submission to Industry” section of this website. The Complainant further contends that the Respondent has copied a section of its Brochure verbatim in the same website <royalinventions.com.au> under the heading “What we Do”.
On September 11, 2006, the Complainant’s legal representatives wrote to the Respondent informing of its unauthorized use of the trade mark “InventHelp”. Despite the Respondent’s claim that a reply would be given to this letter, the Complainant maintains that no response was received up to the date the Complaint was made. In an email dated October 30, 2006, the Respondent stated that additional legal advice was being sought in relation to the matter and that it would revert to the Complainant in due course. The next day the Respondent filed a third application for the trade mark INVENTHELP in Australia.
On December 12, 2006, the Respondent had a telephone conversation with a representative of the Complainant. During the conversation the Complainant contends that the Respondent asked for the Complainant to make an offer to settle the dispute. An initial amount of AUS$10,000.00 was proposed by the Complainant but this was rejected by the Respondent who made a subsequent request for the sum of AUS$50,000.00. The Complainant believes that the above is further evidence of bad faith on the part of the Respondent.
The Complainant provides evidence in its supplemental submission of its established presence in Australia. In this evidence, the Complainant asserts that it first used the “InventHelp” name in its sales office in Melbourne, Australia on April 3, 2005.
The Complainant also contends that it operates from over 60 sales offices throughout the world and that its first office opened in Sydney in February of 1991 under the name “Invention Submissions Corporation”. This name changed to “InventHelp” in April of 2005. The Complainant asserts that it began advertising on Australian radio stations and in the Australian Yellow Pages under the name “Invent Help” in June of 2005. The Complainant further asserts that there has been more than 14,000 “InventHelp” sponsored links used on Australian computers between March 2004 and April 2007. The Complainant provides evidence that there were over 40,000 clicks by Australian computers on those links.
The Complainant also rebuts the Respondent’s argument that it only acquired the Australian trade mark “Invent Help” by assignment on August 21, 2006. Evidence is provided to show that Australian Trade Mark No. 1037137 was initially registered by the independent contractor who was providing services on the Complainant’s behalf and operating in Sydney.
The Complainant maintains that it was impossible for the Respondent to have been unaware of its global presence in the inventor services market and accordingly that it would have a presence in Australia. In this regard, the Complainant provides evidence to the effect that, in January 2006, advertisements for both the Respondent and the Complainant were contained on the same page and column of the Australian Yellow Pages. The Complainant points out that this copy of the Australian Yellow Pages predates the Respondent’s registration of the Disputed Domain Names.
The Respondent asserts that it had a presence in Australia using the INVENT HELP mark before the Complainant acquired any rights or interest therein in Australia. The Respondent contends that it has a legitimate right and interest in the Disputed Domain Names as it is the registered owner of the Victorian Business Names “Invent Help” registered on October 2, 2005 and “Invent Help Australia” registered on July 31, 2006.
The Respondent rejects the assertion that it is acting in bad faith as it intends to use the Disputed Domain Names to run a modular online education business. Australian inventors will enroll for training seminars and workshops online. No details in relation to these modules are disclosed as the Respondent believes that they are of a commercially sensitive nature. The Respondent further states that the Google Australia keyword “Invent Help” was purchased to further this training and product development business and as such was pursuant to a legitimate interest.
The Respondent asserts that by the time it was first made aware of the potential dispute on September 11, 2006, it had taken significant steps towards establishing this training and educational business. The Respondent further maintains that it did not act quickly in the launching of its business as it needed comprehensive preparation and other business ventures took first priority. The Respondent states that on July 27, 2006 it met with a web hosting and design company to design an online Invention guide module. At the date of the Response this had not been completed.
The Respondent further contends that it did not register the Disputed Domain Names in bad faith as it did not know of any use, rights or presence of the Complainant or any other business in Australia that utilized the name “Invent Help”. It further submits that the Complainant did not own any rights in any trade marks, registered business names or ccTLD’s in Australia at the date of registration of the Disputed Domain Names. The Complainant subsequently acquired rights in its trade mark INVENTHELP on August 21, 2006 by assignment. The Respondent further asserts that it made an error in its search of the Australian Trade Mark Online Search System carried out in September 2005 and as a result was not aware of the previous owners of the trade mark INVENTHELP which was assigned to the Complainant.
The Respondent denies that it registered the Disputed Domain Names to divert business away from the Complainant and submits that the Complainant is relatively unknown in Australia. The Respondent further submits that the Complainant’s first presence in Australia was by virtue of the trade mark assignment of “Invent Help” on August 21, 2006. The Respondent further denies that the Disputed Domain Names are used with the intention of diverting Internet users from the Complainant’s services as the assertions made on the websites are not directed specifically at the Complainant.
The Respondent also rejects the claim that it made a demand for AUS$50,000 from the Complainant in a telephone conversation dated December 21, 2006. It submits that this amount was discussed during negotiations in respect of a settlement to secure the sale of its “Invent Help” business and intellectual property rights to the Complainant as a result of the Complainant’s letter dated September 11, 2006.
The Respondent refuted the Complainant’s submissions that copyright infringement had occurred due to the Respondent’s use of terminology from the Complainant’s Brochure in its website located at the domain name <royalinventions.com.au>. The Respondent asserts that the terms used are generic within the industry and are not exclusively linked to the Complainant. The Respondent submits that its website located at the domain name <rii.com.au> used there terms since 1997, in connection to its Royal Ideas and Inventions division.
The Respondent submits that the Complainant has filed unsolicited Supplemental Filings and that the evidence provided should have been contained in the Complaint. The Respondent confirms that it had no knowledge of the presence of the Complainant in Australia when it registered the Disputed Domain Names and also confirms that it intends to use the Disputed Domain Names to conduct a legitimate business.
6. Discussion and Findings
If the Complainant is to succeed, he must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered or subsequently used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of these three elements.
A. Identical or Confusingly Similar
At the date of the Complaint, the Complainant had registered rights in the trade mark INVENTHELP in Australia. The Panel notes the Complainant’s reference to GE Capital Finance Australasia Pty v. Dental Finance Services Pty Limited WIPO Case No. DAU2004-0007 and also refers to A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., v Party Night Inc., WIPO Case No. D2003-0172 and the established principle that the inclusion of a generic top level domain such as “.com” or a ccTLD “.com.au” is not taken into account when evaluating identity. The Disputed Domain Name <inventhelp.com.au> is otherwise identical to the Complainant’s trade mark.
As regards the Disputed Domain Name <inventhelpaustralia.com.au>, the Panel believes that a geographic descriptor cannot be simply used by a respondent in an effort to disguise the similarity between a domain name and another parties’ trade mark. The Panel refers to the case of Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 in which the panel found that the insertion of a geographical descriptor did not detract from the fact that the domain names at issue were confusingly similar to the complainant’s otherwise identical mark. The Panel therefore finds that the Disputed Domain Name <inventhelpaustralia.com.au> is confusingly similar to the Complainant’s trade mark.
Accordingly the Panel finds that the Complaint fulfills paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertions that there is no relationship between the parties. The Respondent is not a licensee of the Complainant and has not otherwise received authorization to use INVENTHELP.
The Respondent has not provided evidence to the satisfaction of the Panel to support a case that it is commonly known by the Disputed Domain Names or that it is making a fair use or legitimate non-commercial use of the Disputed Domain Names. The Respondent contends that it intends use the Disputed Domain Names in connection with a legitimate modular online education business. The Respondent says that it cannot provide evidence of this because of the alleged sensitivity of the information contained in the plans for this business. Without evidence, the Panel cannot accept this. The Panel finds that the registration of various business names and trade marks does not prove that the Respondent has a right or legitimate interest in the Disputed Domain Names as these were not registered in connection with an apparent bona fide offering of goods or services.
In this latter connection, the Panel notes that Trade Mark Application No. 1117851 is in class 35 for services the same as, or very similar to those provided by the Complainant. While the Respondent contends that these applications were filed without the benefit of legal advice, that does not in itself provide a basis for concluding that the description does not accurately describe what the Respondent intended to do – all the more so when, having the benefit of legal advice, that application has not been withdrawn.
This leaves the Panel with no reason to consider that the Respondent has a legitimate right or interest in the Disputed Domain Names as it appears in all material respects that they were in fact used for the purposes of diverting Internet users to the Respondent’s Inventor services division, Royal Ideas and Inventions, and to discourage Australian inventors from using the Complainant’s services.
Accordingly, the Panel finds that the Complainant fulfils paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, that can be taken as evidence by the Panel of bad faith on the part of the Respondent.
The INVENTHELP name and mark has been associated with the Complainant in the United States of America and elsewhere and was established by the Complainant before the Disputed Domain Names were registered by the Respondent in Australia. The Respondent repeatedly asserts that it was unaware of the Complainant’s presence in Australia. A degree of skepticism must attach to this claim in light of evidence that advertisements for the Complainant’s services have appeared in the Australian Yellow Pages in the very same column as the Respondent’s competing advertisements.
In addition to this, the Respondent contends that the Australian Trade Mark Online Search System it carried out in September 2005, did not reveal that the prior trade mark INVENTHELP had been registered previously. No evidence is advanced by the Respondent to support this assertion and whether this arises from a search error or not, it does not assist the Respondent’s case.
The Respondent does not disavow any knowledge of the Complainant, only of whether or not the Complainant was operating in Australia.
Further, it appears that the Disputed Domain Name <inventhelpaustralia.com.au> redirects an Internet user to the Disputed Domain Name <inventhelp.com.au> where users are advised to avoid engaging the services of non-Australian inventor services companies. This website then identifies the Respondent as the “wholly Australian Owned Company” who setup the website and provides its contact details. It is obvious to the Panel that this website was clearly intended to discredit the Complainant and divert potential users of the Complainant’s services to the Respondent’s competing services.
Accordingly, the Panel is of the view that at the time the Respondent registered the Disputed Domain Names, on the balance of probabilities, the Respondent was more than likely to have been aware that the Complainant, as a major worldwide competitor to its business. The Panel therefore finds that the Respondent has acted in bad faith under paragraph 4(b)(iv) of the Policy as the Disputed Domain Names were intended to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation and endorsement of that website.
Accordingly the Panel finds that the Respondent has acted in bad faith contrary to paragraph 4(a)(iii) of the Policy in relation to both the registration and the use of the Disputed Domain Names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <inventhelp.com.au> and <inventhelpaustralia.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Dated: June 19, 2007