WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pitcher Partners Licensing Pty Ltd v. N/A

Case No. D2008-0989

 

1. The Parties

The Complainant is Pitcher Partners Licensing Pty Ltd, of Victoria, Australia, represented by Russell Kennedy, Australia.

The Respondent is N/A, of Victoria, Australia

 

2. The Domain Name and Registrar

The disputed domain name <pitcherpartners.net> is registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2008. On July 2, 2008, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On July 2, 2008, Tucows, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 15, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the 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 July 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 6, 2008.

The Center appointed John Swinson as the sole panelist in this matter on August 15, 2008. 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.

Requests for Extension of Time lodged by Mr. Gary Khaan

On August 20, 2008, Mr. Gary Khaan of Metal Works sent an email to the Center, asserting that he had only “just received” the Complaint, and requesting up to two weeks to file a response. Mr. Khaan is not named as a party in this proceeding. Mr. Khaan did not state why he had only just received the Complaint, or his connection with the disputed domain name. Accordingly, the Panel refused Mr. Khaan’s request, on the basis that he had not demonstrated any exceptional circumstances in accordance with Paragraph 5(d) of the Rules.

Mr. Khaan then submitted a further request for an extension of time to file a Response. The Panel issued the following Procedural Order on September 1, 2008, which is quoted in full below:

“The Respondent did not file a Response by August 5, 2008. Procedural Ruling No.1 denied a request by Gary Khaan of Metal Works for further time to file a response.

Mr. Khaan, by email dated August 27, 2008 (which is two days prior to the due date for the decision in this dispute) wrote to the Provider as follows (without copying the Complainant):

‘How ever I find it hard to understand why you assert that I am not named or have anything to do with this dispute. Pitcher partners as well as Russell Kennedy are well a where of this fact and yet seamed to have had trouble in sending me the appropriate papers and instead sent them to the young man a Mr Brice Varin whom set up the web page for us and has nothing to do with this dispute or myself, you also state that it was signed for by a Wayne we have no idea who this is, as I do live at 24 Claire Parkdale not Preston this is a mistake by Brice however I’m sure Pitcher Partners where well aware of this, so why where they delivered to Brice ?.

I have also forwarded you an invoice from the web sever as proof that I do have an interest in this web site and hope you will reconsider my application for an extension in fairness so as we may seek professional legal advice.’

It appears from this email that Mr. Khaan has not yet prepared a Response, and intends to seek legal advice in the future.

The WhoIs records for the domain name are as follows:

Registrant:
N/A
21Claire st
Preston, vic
AU

The owner of the disputed domain name is not named. The address apparently set out in the WhoIs record is incorrect. The Panel, in reviewing various street directories, has been unable to locate a Claire Street in Preston, Victoria.

Notification of the dispute was sent to the email address for the technical and administrative contact in the WhoIs records.

Mr. Khaan did receive the Complaint, but it is not certain when he received it.

If a domain name registrant, or his agent, gives a false name or no name and incorrect address details when registering a domain name, or has not updated the email address of the technical and administrative contact, the registrant can not later complain that he did not receive a UDRP complaint sent to the contact details in the WhoIs record.

It is also noted that the Complainant sent a letter in 2007 to a law firm believed to represent Mr. Khaan and others. No response was received to that letter, so it was reasonable to assume that this law firm did not represent Mr. Khaan or others who appear to be involved in the operation of the website at the disputed domain name.

There is nothing on the website to indicate that Mr. Khaan owned the disputed domain name or controlled the website. In any event, and to the extent that Mr. Khaan may be a proper Respondent or interested Party in the present dispute, he appears to have had ample notice (in terms of the Complaint notification requirements under the UDRP) and opportunity to respond.

Paragraph 5 (d) of the Rules provides as follows: “At the request of the Respondent, the Provider may in exceptional cases extend the period of time for filing of the response…”.

At present, no exceptional circumstances have been demonstrated.

Accordingly, on the basis of the above information, the Panel denies the request made by Mr. Khaan.

If Mr. Kaan files a response by Thursday, September 4, 2008 and establishes an appropriate connection with the domain name and sets out compelling reasons for the delay in filing the response, then such response may be considered.

Due to these circumstances, the time for the Panel to issue a decision is extended to September 8, 2008.”

No response has been filed by Mr. Khaan or anyone else relating to the disputed domain name. The Panel is satisfied that any party in interest as the Respondent has had a fair opportunity to present its case.

 

4. Factual Background

The Complainant is a group of accountants, auditors and advisers. The Complainant has five offices in most Australian capital cities, being Sydney, Brisbane, Adelaide, Perth and Melbourne. The services the Complainant provides relate to accounting, taxation, business advisory, succession and estate planning, IT consulting and insolvency.

The disputed domain name contains the term “pitcherpartners”. The Complainant owns an Australian registered trade mark over PITCHER PARTNERS and device (trade mark registration no. 588637). The device is a diamond, with two stripes running part of the way through it.

There are no details available regarding the Respondent, and it would appear that “N/A” is not a real name but an abbreviation for “not applicable”. The Respondent has provided the registrar with an address of “Claire Street, Preston, Victoria”. This address is incorrect, as there is no Claire Street in the suburb of Preston.

The website operating from the domain name contains the heading “Pitcher Partners Legal System”, with tabs under the heading of “the story”, “people”, “news”, “contact” and “blog”. The homepage explains the purpose of the website as follows:

“Why we created this site

This webpage was created to show that Mr. Yeo of Pitcher Partners failed in their obligation to creditors. Their actions and lack of respect for creditors has caused untold financial hardship, loss of a prosperous business, ill health to Mr. K. Filidis resulting in hospitalisation, not to mention loss of faith in the legal system of this country.”

According to notices on the website at the disputed domain name, the copyright in the website is said to be owned by K. Filidis (a director of Con-Pac Systems (Aust) Pty Ltd), with some of the content posted by G. Khaan (owner of Metal Works Pty Ltd).

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The previous relationship between Pitcher Partners, and G. Khaan and K. Filidis is as follows:

- In 2003, Nature’s Own Brands Pty Ltd contracted with Con-Pac Systems (Aust) Pty Ltd for Con-Pac to supply certain equipment. Mr. Filidis was a director of Con-Pac.

- Con-Pac contracted with Metal Works Pty Ltd (owned by G. Khaan) to manufacture and install equipment at Nature’s Owns premises.

- A dispute arose between and Mr. K. Wijeyewardene, who was the sole director of Nature’s Own and Con-Pac, over the supply of equipment and payment.

- During the dispute, Mr. Wijeyewardene placed Nature’s Own into administration.

- Mr. G. Rambaldi and A. Yeo of Pitcher Partners were appointed as joint and several administrators to Nature’s Own.

- The dispute went to court, and Mr. Wijeyewardene was ordered to pay Con-Pac damages of over $165,000.

- During the trial, Mr. Yeo was called to give evidence.

The Complainant first became aware of the disputed domain name on May 24, 2007. A letter of demand was sent by the Complainants around this time to solicitors acting for Mr. Filidis.

The website contained defamatory statements regarding Mr. Yeo and other partners of Pitcher Partners, and contained a misrepresentation of the corporate logo and trade mark. The website contained the slogans “Pitcher Partners In Crime” and “Exploitation Onwards and Upwards”, and identified Mr. Yeo and Pitcher Partners as “bad guys”. The website claimed Mr. Yeo and Pitcher Partners failed in its obligations to creditors, imputing that Mr. Yeo and Pitcher Partners had assisted Mr. Wijeyewardene in avoiding liability for payment of the equipment supplied by Con-Pac. This is not supported by the court’s decision.

The website was taken down on May 25, 2007, but a new version appeared around September 10, 2007. A further letter of demand was sent to solicitors believed to be acting for Mr. Filidis and Mr. Khaan. No response was received. Many of the features of the previous website were carried over to the new website. The new website also has a similar look and feel to the Complainant’s website (with a similar design and colour scheme).

Trade mark rights

The Complainant owns Australian registered trade mark no. 588637 for PITCHER PARTNERS word and device, registered from 19 October 1992 in respect of accountancy services. The Complainant licenses the trade mark to persons trading collectively under the name “Pitcher Partners” in Australia.

Pitcher Partners has acquired substantial reputation and goodwill in Australia in respect of accounting and business advisory services. The Complainant and Pitcher Partners also have unregistered trade mark rights in PITCHER PARTNERS.

The disputed domain name is confusingly similar to the trade mark as it copies the essential feature of the Complainant’s registered trade mark (the words PITCHER PARTNERS) and is identical to the Complainant’s common law trade mark.

The identity of the Respondent is not known to the registrar or the Complainant. When the Complainant first learned of the disputed domain name, it was registered in the name of Kangaroo Kung Fu Production of “2 kissmyass st, assville. vic”. The Respondent has supplied fictitious details to the registrar, and the Respondent’s current address is also factious.

The administrative contact for the disputed domain name is Mr. Brice Varin. His contact email address is <pitcherpartners@hotmail.com>. The Complainant has not allowed Mr. Varin to use Pitcher Partners as part of his email address. This demonstrates Mr. Varin and the Respondent are attempting to pass themselves off as being associated with the Complainant.

Rights or legitimate interests

The Complainant and Pitcher Partners have not permitted the Respondent to use the name or trade mark PITCHER PARTNERS in the disputed domain name or on the website. The Respondent is not using the name in connection with a bona fide offering of goods or services, and is not commonly known by the disputed domain name.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark of the Complainant. This can be seen by the defamatory imputations in the website and the infringement of the Complainant’s trade mark.

Registration of a domain name that is identical or confusingly similar to the a complainant’s trade mark is evidence that the registrant does not have any rights or legitimate interests. The right of free speech does not require use of the Complainant’s trade mark in the domain name. The Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to the website and trading off the Complainant’s goodwill in its trade mark.

The Respondent has done nothing to make it clear that the disputed domain name will lead to a website that criticizes or protests against the Complainant. Also, the content of the website goes beyond a legitimate and fair criticism due to the defamatory imputation and misrepresentations.

Bad faith

Mr. Filidis and Mr. Khaan who are involved with the website were clearly aware of the Complainant in 2004. The Respondent registered the disputed domain name without permission or licence, and knowing that it was identical to the Complainant’s trade mark.

The Respondent’s purpose in registering the disputed domain name was to divert traffic intended for the Complainant’s website. Many Internet users looking for Pitcher Partners will arrive at the Respondent’s website by mistake, as it directly reflects the Complainant’s trade mark.

The Respondent’s purpose in printing defamatory and misleading statements on the website was to damage and disrupt the Complainant’s business. These statements and the website tarnish the trademark of the Complainant which is strong evidence of registration and use of a domain name in bad faith.

The fact that the Respondent supplied fictitious information concerning its identity is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in Paragraph 4(a) of the Policy):

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

A. Identical or Confusingly Similar

The Complainant owns an Australian registered trademark for PITCHER PARTNERS (word and device). The words “Pitcher Partners” is a substantial component of this trade mark. This mark has been registered in Australia since 1992.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s PITCHER PARTNERS trade mark, as it mirrors the Complainant’s registered trade mark minus the device. The addition of the “.net” suffix, and the removal of the space between the two words does not change this.

Accordingly, the first element has been satisfied.

B. Rights or Legitimate Interests

Paragraphs 4(c)(i) to (iii) of the Policy lists three ways in which a respondent can demonstrate rights or legitimate interests in a disputed domain name.

The Panel agrees based on the evidence of record, with the Complainant’s assertions that the Respondent is not commonly known by the disputed domain name, and is not using the name in connection with the bona fide offering of goods and services (as required by paragraphs 4(c)(i) and 4(ii)).

As outlined above, the website operating from the disputed domain name is being used to publish certain information and comment regarding a dispute between two Australian companies. This type of use is clearly noncommercial and is relevant to paragraph 4(c)(iii) of the Policy, which states:

“you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”

In relation to this point, the Complainant raises the following issues which it alleges tell against a legitimate noncommercial or fair use:

1. the disputed domain name is identical to the Complainant’s trade mark.

2. the website at the disputed domain name distorts and infringes the Complainant’s trade mark.

3. the website at the disputed domain name goes beyond legitimate or fair use, as it contains clearly defamatory and/or misleading statements.

Paragraph 4(c) of the Policy places the onus on the Respondent to rebut the Complainant’s assertion of lack of rights or legitimate interest in the domain name. As set out in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, to succeed under paragraph 4(c)(iii), the Respondent must establish:

1. the Respondent’s use is legitimate noncommercial or fair use of the domain name;

2. this use is without intent for commercial gain;

3. this use is without intent to misleadingly divert consumers; and

4. this use is without intent to tarnish the trademark of the Complainant.

There is no firm rule that use of an exact trade mark of another as a domain name for a legitimate complaints website is not legitimate use of the domain name. (See Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019).

There are currently two alternative approaches taken by panels in cases of criticism or protest websites. The first approach focuses on the domain name (as opposed to the content of the website), and whether the words used in the domain name make it clear that it is a protest site, for example, by adding the word “sucks” to a trade mark (see for example, Lloyds TSB Bank Plc v. Paul Brittain, WIPO Case No. D2000-0231). The second approach looks at the content on the website to see if it is a genuine complaints site. If so, paragraph 4(c)(iii) may be satisfied (see TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536).

The Panel prefers the second approach. See the majority decision in Legal & General Group Plc v. Image Plus, WIPO Case No. D2002-1019.

Paragraph 4(c) of the Policy sets out three non-limiting examples of circumstances which, if established to the satisfaction of the Panel, rebut a Complainant’s assertion that the domain name owner has no rights or legitimate interests in respect of the domain name. Here, the Respondent has not submitted a Response, and so has not established any of the paragraph 4(c) factors.

Even if the Respondent had submitted a Response, for the reasons listed below, the Panel is doubtful that the Respondent would have been able to show that its use of the disputed domain name was legitimate noncommercial or fair use of the domain name without intent to misleadingly divert customers.

The Panel also doubts whether the Respondent’s use of the disputed domain name is or was without intent to tarnish the Complainant’s trade mark. Some previous panel decisions state that any criticism of a complainant on the respondent’s website proves that the respondent’s intent is to tarnish the complainant’s trade mark, and so paragraph 4(c)(iii) cannot be relied upon (see Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279). The Panel does not necessarily approve of this approach in all cases. However in this case, there are particular circumstances which indicate an intention on the part of the Respondent to tarnish the Complainant’s trade mark.

The Respondent’s website contains a similar layout and color scheme to the Complainant’s official website located at “www.pitcher.com.au”. It also replicates the Complainant’s registered trade mark, yet changes the device slightly, so there is an upside down cross in the square, rather than two parallel lines. The Panel infers that the Respondent deliberately designed the website in this way, in order to create confusion and tarnish the reputation of the Complainant’s trade mark.

The title of the website located at the disputed domain name is “Pitcher Partners - Home page” which is clearly incorrect and misleading.

Accordingly, the second element has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains four criteria which can be used to demonstrate bad faith on the part of the Respondent. None of these appear to be relevant to this case: the Respondent has not sought to sell or rent the disputed domain name to the Complainant; it does not appear the Respondent has engaged in a pattern of registering domain names to prevent owners from reflecting their trade marks; while the Respondent may be disrupting the Complainant’s business, the Respondent is not a competitor of the Complainant, and the Respondent is not operating the website for commercial gain.

However, paragraph 4(b) does not comprise an exhaustive list of the circumstances, which shall constitute evidence of registration and use in bad faith (see Compagnie Generale des Matieres Nucleaires v. Greenpeace International WIPO Case No. D2001-0376).

The Complainant has demonstrated bad faith on the part of the Respondent, for the following reasons:

- the Respondent has twice provided false contact details to the registrar and continues to hide its true identity.

- the Respondent was clearly aware of the Complainant’s trade mark at the time it registered the disputed domain name.

The Panel agrees with the Complainant that these acts constitute bad faith in accordance with the Policy. The fact that Respondent has provided a false address, while not an express ground of bad faith under paragraph 4(b), has been widely recognized by Panels as an indication of bad faith: see Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Kurtsan Ilašlari A.S. v. Ismail Ahmet Tokcan/Nedim Aya, WIPO Case No. D2006-0168; and many others.

In addition, by choosing a domain name which is identical the Complainant’s trade mark and business name, and setting up the website in a similar format the Complainant’s official website with a modified version of the Complainant’s registered trade mark, and using a misleading title for that website, the Panel decides that the Respondent used the disputed domain name in bad faith.

Accordingly, the third element has been met.

 

7. Decision

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, <pitcherpartners.net> be transferred to the Complainant.


John Swinson
Sole Panelist

Dated: September 8, 2008