WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gloria Jean's Coffees Holdings Pty Ltd v. Jeremy Paul Cleaver
Case No. DAU2007-0006
1. The Parties
The Complainant is Gloria Jean's Coffees Holdings Pty Ltd, Castle Hill, New South Wales, Australia, represented by Maddocks, Australia.
The Respondent is Jeremy Paul Cleaver, Wangaratta, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <gloriajeans.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 14, 2007. On September 18, 2007, 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 19, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. The Response was filed with the Center on October 19, 2007.
The Center appointed Michael J. Spence as the sole panelist in this matter on October 29, 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.
4. Factual Background
The Complainant franchises a chain of coffee outlets under various marks containing the term “Gloria Jean’s”. The franchise business is extremely successful, with 422 franchises operating in Australia, and the Complainant’s marks are very widely known. The Complainant also operates websites under the registered domain names <gloriajeanscoffees.com.au> and <gloriajeanscoffees.com>.
The Respondent is a sole trader who has his main business located in the State of Victoria. The Respondent appears to conduct a franchise restaurant specializing in Italian cuisine.
5. Parties’ Contentions
The Complainant alleges that the disputed name is identical with its marks and that the Respondent has no rights or legitimate interests in the use of the name. The Respondent has claimed to have “personal reasons” for the registration of the disputed domain name that have “nothing to do with the sale of coffee”. The Complainant also states that there has been a suggestion from the Australian Domain Name Administrator that the Respondent “is in the process of securing an exclusive designer label denim range, which will be available under the Gloria brand”. However, this claim has not been made by the Respondent himself, and the Complainant has been unable to verify the claim. The only clothing manufacturer known to be operating under the “Gloria” label does not operate in Australia. Moreover, at one stage the disputed domain name resolved to a website in which reference was made to “Gloria Jeans Coffees Fortitude Valley” and at an earlier point it resolved to a website concerning an Australian Football Club named “Floppies”. Since August 2005 it has resolved to a website said to be “under construction”.
The Complainant also asserts that the disputed name is being used in bad faith and cites as evidence both the use of the name to refer to a coffee business and correspondence in which the Respondent was apparently willing to enter into negotiations for the sale of the disputed domain name. The tone of that correspondence is said to evince an intention of registering the disputed domain name for the purpose of “selling … the domain name registration to the Complainant for valuable consideration” under paragraph 4(b)(i) of the Policy.
The Respondent alleges that it registered and maintains the disputed domain name “for legitimate purposes” and that he has “never attempted to make any money from the website or caused any negative affect” on the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name contains the entirety of the Complainant’s mark and there is no doubt that it is identical or confusingly similar to the mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed name (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). The Respondent in this dispute has asserted a legitimate interest, but has chosen not to identify, or provide any supporting documentation as to, what exactly that legitimate interest might be.
Nevertheless, the history of the websites to which the dispute domain has resolved, first to an Australian Football Club named “Floppies” and then to an apparent coffee business, is such as to make it unlikely that this Respondent has a right or legitimate interest in the disputed domain name. It is, for example, implausible that the Respondent is attempting (in the absence of provided evidence) to establish relations with the only denim company operating under the brand GLORIA, a company currently not operating in Australia. The failure of the Respondent effectively to rebut the Complainant’s assertion that there is in fact no evidence of such a relationship, renders a legitimate interest in the disputed domain name even more unlikely.
The Panel therefore finds that the Complainant has, on balance, established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name
The history of the use of the disputed domain name also suggests bad faith. First there is no obvious connection between the disputed domain name and a football team named “Floppies”. Second, the disputed domain name was then used to refer to a coffee business. Given the significant reputation of the Complainant’s business and the well known nature of its mark, the Respondent must have known that it would be likely that there would be confusion with the Complainant’s mark if not one or more of their franchises. Moreover, the Panel accepts that the tone of the correspondence between the Complainant and the Respondent suggests an intention of registering the disputed domain name for the purpose of “selling … the domain name registration to the Complainant for valuable consideration” under paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the Complainant has, on balance, established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
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 <gloriajeans.com.au> be transferred to the Complainant.
Michael J. Spence
Dated: November 11, 2007