WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Silpro Pty Limited v. Corey De Silva t/a Silva Service Spit Roast Catering
Case No. DAU2008-0013
1. The Parties
The Complainant is Silpro Pty Limited, of Victoria, Australia, represented by Smoorenburg Pini Patent & Trade Mark Attorneys, Australia.
The Respondent is Corey De Silva t/a Silva Service Spit Roast Catering, of Victoria, Australia, represented by A Tatlock & Associates, Patent & Trade Mark Attorneys, Australia.
2. The Domain Name and Registrar
The disputed domain name <silvasspitroastcatering.com.au> is registered with Distribute.IT t/as ClicknGo.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2008. On July 24, 2008, the Center transmitted by email to Distribute.IT t/as ClicknGo a request for registrar verification in connection with the domain name at issue. On July 28, 2008, Distribute.IT t/as ClicknGo 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 August 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2008. The Response was filed with the Center on August 29, 2008.
The Center appointed John Swinson as the sole panelist in this matter on September 9, 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.
4. Factual Background
The Complainant has been operating a catering business in Melbourne, Victoria, for over 20 years under the name “Silver Spit Roast”.
The Respondent, whose principal is Corey De Silva, commenced a catering business in Melbourne, Victoria, in 2007, under the name “Silva Service Spit Roast Catering”.
The Australian business names register shows that the following business names are currently registered in Victoria: Victorian Silver Spit Roast Caterers (business number VIC B2037339V); Silva Service Catering (business number VIC B2075243M) and Silva Service Spit Roast Catering (business number VIC B2004036N). The first business name is registered by the Complainant, while the last two names are registered by the Respondent.
Searches of the Australian trade marks database shows that the Complainant owns registered trade mark no. 1197520 for SILVER SPIT ROAST word and device mark, registered from September 6, 2007 in relation to food and drink related services.
Searches also show the Respondent is the owner of trade mark application no. 1236944 for SILVA SERVICE CATERING word and device mark, filed on April 23, 2008 in relation to catering services. This mark has been accepted by the Australian Trade Marks Office and is currently subject to a three month opposition period.
The Complainant’s business is located on Montrose, Victoria and provides the following type of catering services (taken from its website at “www.silverspitroast.com.au”):
“Our services include Entree, Main course, Sweets and Coffee.
We provide China dinner plates, Stainless steel cutlery, Serviettes, Buffet table & Tablecloth.
Our professional staff are dressed in appropriate uniforms and prepare serve and clear for you. Leaving you free to enjoy yourself.”
The website operating from the disputed domain name refers to the business of Silva Service Spit Roast Catering. There is a notice which states:
“We are moving to “www.silvascatering.com.au.” Please visit our new site…”
The Respondent is located in Mount Waverley, Victoria, and describes its business on the website as follows:
“We service Melbourne and an extended surrounding area for all your catering needs. Whether your function is a party, a wedding, a corporate function, or whether you want finger food, a main meal, or desserts - Silva Service Catering can provide the catering service you need.”
The suburbs of Montrose and Mount Waverley are approximately 25 km apart.
5. Parties’ Contentions
The Complainant makes the following contentions:
The Complainant commenced a catering services business on November 30, 1982. It has continuously promoted its business under the name “Silver Spit Roast Caterers” for over 20 years.
The Complainant previously traded under the registered Victorian business name of “Silver Spit Roast Caterers”, but accidentally allowed that registration to cease in November 2003. In August 2007, the Complainant became aware of the Respondent, which was trading as Silva Service Spit Roast Catering, and realised that its original business name had lapsed. The Complainant now trades as “Victorian Silver Spit Roast Caterers” (a registered business name in Victoria). The Respondent trades as “Silva Service Catering”, also in Victoria.
The Complainant owns a registered trade mark in Australia for the word and device mark SILVER SPIT ROAST. The prominent feature of this mark is the words “silver spit roast”. The Complainant has also registered the domain name <silverspitroast.com.au> and has common law rights in the SILVER SPIT ROAST trade mark from consistent use of trading under this name.
When the Complainant’s trade mark of SILVER SPIT ROAST is compared to the disputed domain name, the domain name differs by having an incorrect spelling of “silver” and the addition of the word “catering”. “Catering” is a generic and descriptive term which has no significance for the purpose of the comparison. The disputed domain name is confusingly similar to the Complainant’s registered trade mark and trading name.
There is no evidence that the Respondent was making bona fide use of the disputed domain name in connection with an offering of goods and services prior to any notice of this dispute. The Complainant wrote four cease and desist letters to the Respondent between April 22, 2008 and June 19, 2008.
There cannot be bona fide use because the Respondent adopted the Complainant’s mark as a domain name - when the Respondent entered the catering industry in early 2007 he was aware of the Complainant’s reputation and trading name. The Complainant commenced business in 1982 in the eastern suburbs of Melbourne, and the Respondent commenced trade in early 2007 in the same location. The use of “silver” in the Complainant’s name is distinctive and the Respondent has used the term “Silva Spit Roast” on the website even though fully aware of the Complainant’s trading name.
The Respondent may allege he has rights and legitimate interests in the domain name because it contains part of his surname. However the surname of De Silva is reduced to Silva and this cannot be protected as it increases the likelihood of deception or confusion.
After the Complainant approached the Respondent with cease and desist letters, the Respondent discontinued use of the deceptively similar expression of “Silva Spit Roast”. However the Respondent still uses this name in other advertising despite undertakings he has made to the contrary. When conducting a Google search using the search terms “Silver Spit Roast”, the first sponsored link is for the Respondent’s catering business.
The Respondent has applied for a trade mark for SILVA SERVICE word and device, which shows he has no interest in SILVER SPIT ROAST, and the Respondent (whether as an individual or business) is not commonly known by the disputed domain name. If it were commonly known by the domain name, it would only be through improper motive of using that name in trade.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Rather the Respondent’s purpose is to misleadingly divert consumers from the Complainant. The Complainant has received an email from a potential supplier or customer which highlights the similarities between the two businesses. The Respondent has made concessions to the Complainant that there is the likelihood of confusion.
By using the disputed domain name, the Respondent intentionally tried to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation or endorsement of that website.
The Respondent makes the following contentions:
The registered trade mark which the Complainant has rights in consists of a distinctive bulls head device with the words “Silver Spit Roast”. Registration does not necessarily provide trade mark rights in the words alone, especially as no reputation in these words has been shown to exist.
The Complainant’s objection to the Respondent’s trading name of “Silva Service Spit Roast Catering” is misplaced, as the first word is part of the Respondent’s name and Spit Roast Catering is merely a descriptor. As a whole, this has an entirely different connotation from the Complainant’s trade mark.
The Respondent’s trade mark has been accepted for registration over the Complainant’s Australian trade mark registration. There are many other registered and pending Australian trade marks containing the words “Spit Roast”. These terms are merely descriptors.
The Complainant has not provided proof of reputation in the trading name “Silver Spit Roast”. The Respondent denies that it acted in bad faith - in particular it was not aware of the Complainant’s reputation (if any). The Respondent merely chose a name which combines his own personal name with words describing the services to be provided.
The Respondent has acted in good faith in its use of its own name, and is not aware of any confusion between its trading name and domain name, and those of the Complainant.
The Respondent adopted its trading name in early 2007 but was only notified of a dispute from the Complainant on April 22, 2008.
A Google search for “Spit Roast” returns 23,000 results for Australia. When the term “Melbourne” is added to this search there is nearly 9,000 results, which shows the Complainant is not a primary competitor of the Respondent. The disputed domain name was not adopted to compete unfairly with any other trader or to disrupt the Complainant’s business.
The disputed domain name was not registered with the attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. Rather, Internet users would search for “spit roast” services generally.
A Google search for “Silver” and “Spit Roast” and “Melbourne” returns almost 500 results with the Complainant’s name being first and the Respondent’s website not showing at all. This indicates there would be no confusion. The search term “Silva” had to be used to bring up the Respondent’s website.
The disputed domain name is visually and otherwise distinct from <Silverspitroast.com.au>. There is no confusion between these two domain names, and no direct competition between the two businesses.
The Respondent has adopted and used the domain name in good faith. It was advised by legal representation that its use of its trading name does not infringe the Complainant’s trade mark rights.
6. Discussion and Findings
To succeed in its claim, a complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the respondent is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect to the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must have rights in a name, trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant’s name, trademark or service mark.
A name in which the Complainant has rights can include a company, business or other trading name registered with the relevant authority.
The Complainant is the owner of an Australian registered trade mark that includes SILVER SPIT ROAST. This mark is a combined word mark and device in a rectangle, with the words written in stylised font. The device consists of a picture of a cow’s head. While the cows head device is distinctive, the words “Silver Spit Roast” are written in unique, stylised writing and also form a prominent component of the mark.
This trade mark has been registered since September 6, 2007. While the Policy does not identify the time at which a Complainant must have trade mark rights, it is implicit that the Complainant should have those rights when the Complaint is first filed (see Lance John Picton v. KK Factory Seconds Online / Dean James Mackin, WIPO Case No. DAU2007-0005). There is no requirement that the Complainant’s trade mark rights arose before the disputed domain name was registered (see Valve Corporation v. ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038).
The Respondent argues that there is no similarity between the Complainant’s trade mark and the disputed domain name because of the cows head device. However such elements cannot be reproduced in a domain name, and do not need to be considered when assessing identity or confusing similarity (see Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; but compare Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047, at paragraphs 4.6 and 6.11.)
The Respondent contends that while the Complainant owns registered trade mark no. 1197420, this does not necessarily provide trade mark rights for the purposes of the Policy as the Complainant has not shown that it has a reputation in the words “Silver Spit Roast”.
The Complainant contends that it has rights in the name “Silver Spit Roast”, as it has been trading under this name for over 20 years. In support of this assertion, it provides evidence of advertising it has conducted in an Australian services directory and some evidence of the amount it has paid for such advertising. The documents show that the Complainant has consistently advertised in this directory under the words “Silver Spit Roast” since May 1988. The advertisement provided by the Complainant as an example contains a modified version of the Complainant’s registered trade mark.
There is also evidence that a Mr. and Mrs. O’Shaughnessy carried on a business in Victoria called Silver Spit Roast Caterers from November 30, 1982, however this business name was allowed to lapse in November 2003. The WhoIs information for the Complainant’s domain name (<silverspitroast.com.au>) lists Mr O’Shaghnessy as the registrant contact name. The Panel infers that Mr. O’Shaughnessy controls or represents the Complainant.
The Complainant contends that it inadvertently allowed its Silver Spit Roast Caterers business name to lapse, and once it realized that mistake (almost four years later) it registered “Victorian Silver Spit Roast Caterers” as a business name. The business name extract for this later name claims that business commenced on November 30, 1982. The Panel finds that the Complainant continued to carry on business under the name “Silver Spit Roast” from 2003 to 2007, despite the fact that registration of its business name had lapsed.
The Panel finds that the Complainant has rights in the name “Silver Spit Roast” for the purposes of the Policy, through continued use and promotion of that name for over twenty years.
The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s “Silver Spit Roast” name.
When the “.com.au” suffix is ignored, what is left of the disputed domain name is “silvasspitroastcatering”. As spaces are not permitted in Internet addresses, it is acceptable to read this as Silvas Spit Roast Catering for the purposes of a comparison.
Firstly, there is the addition of the word “catering” in the disputed domain name, which doesn’t appear in the Complainant’s trade mark. The addition of the generic term “catering” which is merely descriptive of the services being provided, is not enough to prevent a finding of confusing similarity.
The descriptive term of “spit roast” is identical in both the Complainant’s trade mark and the disputed domain name. The Panel acknowledges that on their own, the words “spit roast” and “catering” are descriptive of a specific type of catering, and the Complainant does not have a monopoly over these terms alone.
However, the other parts of the trade mark and disputed domain name, being “Silver” and “Silva”, are pronounced identically. In the disputed domain name, an “s” is added to Silva to denote possession. As this is a common addition to words it is not enough to differentiate the domain name from the trade mark. The two words are also visually similar, as the letter “a” is sometimes used to shorten a word ending in “er”.
The Panel therefore finds that the disputed domain name is confusingly similar to a name in which the Complainant has rights.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The Complainant contends that the Respondent does not meet any of the above circumstances.
Bona fide use
It is not contested that the first notice of the dispute was given to the Respondent on April 22, 2008. The Respondent commenced its business in 2007 and was using the disputed domain name in connection with the offering of catering services prior to first notice of the dispute. The question is whether such use was bona fide. Many prior panel decisions have held that use is not bona fide where a respondent knowingly and intentionally adopts another person’s trade mark as a domain name in order to trade off the reputation in that trade mark.
The Complainant has a lengthy history trading under the name “Silver Spit Roast”, or slight variations of it, in the same type of business and same geographic location as the Respondent. In the Panel’s view, the Complainant has made out a case that it has a reputation in the name “Silver Spit Roast” in Melbourne, but, in the light of subsequent findings, the Panel is not prepared to infer that the Respondent registered the disputed domain name because of this reputation.
Commonly known by domain name
The Respondent also contends that he is using a trading name which combines his personal name with the services to be provided. The Respondent’s principal’s last name is De Silva, and he has incorporated “Silva” into the disputed domain name. The Respondent also states that this was done to incorporate notions of the term “silver service”. As mentioned above, “spit roast catering” are generic descriptive terms, so if Silva was the Respondent’s last name, he may have legitimate rights in that name.
On balance, the Panel infers that the Respondent registered and used the disputed domain name because it included part of the name of Corey De Silva, and because the disputed domain name was a play on the notation of “silver service”.
The Panel therefore finds that the Complainant has not succeeded on the second element.
C. Registered or Used in Bad Faith
The Complainant must prove on the balance of probabilities that the domain name was registered in bad faith or that it has subsequently been used in bad faith.
Registration in Bad Faith
Paragraph 4(b) of the Policy enumerates four circumstances which evidence a respondent’s registration or use of a domain name in bad faith. The first three of those relate to registration:
“The following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person.”
The Complainant operates its website from a domain name which reflects its trade mark. There is no evidence that the Respondent registered the disputed domain name to prevent the Complainant from using its mark in a domain name.
There has been substantial correspondence between the Complainant and the Respondent in relation to potential confusion between businesses. The Respondent has appeared willing to alter its business in order to try and prevent confusion occurring. While this can sometimes be viewed as evidence of bad faith, in this Panel’s opinion, in these circumstances it tends rather to provide evidence of the Respondent’s good faith and demonstrate that he was not intentionally trying to disrupt the Complainant’s business.
The disputed domain name is long and complex, with an unexpected double “s”. The Panel concludes that this is not a case of typo-squatting. It is in this Panel’s view unlikely that the Respondent registered the disputed domain name with the hope that Internet users would end up at the Respondent’s website when trying to type in the Complainant’s domain name.
In the Panel’s view, the Respondent did not register the disputed domain name in bad faith.
Use in Bad Faith
Paragraph 4(b) of the policy provides that the following circumstance shall be evidence of use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Panel is unable to find that the Respondent is using the disputed domain name in bad faith. The website operating from the disputed domain name is very different to the Complainant’s website, and focuses on the term “Silva Service” rather than “Silver Spit Roast”. Also, the website contains a link which redirects users to a new website located at <silvascatering.com.au>.
As mentioned above, the terms “spit roast” and “catering” are widely used generic terms. There are many spit roast catering businesses in Victoria and throughout Australia. In a number of Google searches performed by the Panel across these terms, the Complainant’s website was always returned as a top result, while the Respondent’s website was always much lower in rankings. When a search for “Silver Spit Roast” was conducted, the Respondent’s website did not feature at all in the first thirty results.
The Complainant points to a Google sponsored link that returns an advertisement for the Respondent when a search is conducted for “Silver Spit Roast”. However, it is not clear whether this is because the search terms (and thus the purchased keywords) include “spit roast” or “Silver”.
While the Complainant may have shown one example of confusion between customers, the Panel does not agree that there is a likelihood of confusion between the Respondent’s website and the Complainant’s trade mark and business, or that, on balance, the Respondent sought to create such confusion with the Complainant for commercial gain when it registered the dispute domain name.
The Panel finds that the third element has not been established.
For all the foregoing reasons, the Complaint is denied.
Date: September 22, 2008