The Complainants are Nemetschek North America, Inc. and OzCAD Pty Limited of Australia, represented by Neal & McDevitt, United States of America.
The Respondent is CAD Australia Pty Limited of Australia.
The disputed domain name <vectorworks.com.au> is registered with Melbourne IT trading as Internet Names Worldwide.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2008. On July 30, 2008, 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 July 31, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it;
(b) the Respondent is listed as the current registrant and the Respondent's contact details;
(c) the .au Dispute Resolution Policy (the “Policy”) applies to the domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2008.
The Center appointed Warwick A. Rothnie, Staniforth Ricketson and Dan Hunter as panelists in this matter on October 10, 2008. The Panel finds that it was properly constituted. Each member of 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 October 16, 2008, the Panel issued Procedural Order No. 1 inviting the parties to provide any further evidence about the date of registration and registration status of a business name identified in the Whois record as the basis for the Respondent's eligibility to register the domain name in the “.com.au” domain. Procedural Order No. 1 required any further evidence to be submitted by 9:30 am (in Geneva) on October 22, 2008 and correspondingly extended the projected time for the decision to October 29, 2008.
On October 21, 2008, the Complainants filed a further email in response to Procedural Order No. 1 (discussed below). No reply was received from the Respondent.
According to the Complaint, the First Complainant (“Nemetschek”) has been developing and supplying CAD software since 1985 and the Second Complainant is its exclusive distributor for Australia.
Amongst other things, Nemetschek has registered the trademark VECTORWORKS in the United States of America, Australia and Japan and as a CTM. Depending on the jurisdiction, the trademarks were first registered between June and August 1998 in respect of computer software or computer aided design software.
The Complaint states that Nemetschek is a global leader in this field and VECTORWORKS is a famous mark as a result of its use.
The Respondent registered the domain name on February 2002.
The domain name currently resolves to a website, a print out of which is included in Annexure E to the Complaint. From this printout, it appears that the Respondent is, or is part of, the CAD International group and a distributor of computer aided design software and services. The products advertised on the website include AutoCAD, IntelliCAD and RealCAD. A “thumbnail” image and notice, after the listing of these products states that “Vectorworks® by Nemetschek North America is no longer supported by CAD International.” It goes on to state “…. Call for contact details for this product … or contact your local reseller via http://www.netetschek.net/international”.
The Whois details for the domain name indicate that the domain name was registered on the basis of a business name registered in New South Wales, Australia, Registration No. BN97874313, for “vectorworks australia”.
Searches of the Australian Securities & Investments Commission's online National Names Index on that name and registration number return the result “Organisation number invalid”. As a result, the Panel issued Procedural Order No. 1, as indicated above. Nemetschek's response indicated that it had not been able to find any record of the registration date of the business name.
Under paragraph 4(a) of the Policy, the Complainant has the onus of proving that:
(i) the domain name is identical or confusingly similar to a name1, trademark or service mark in which the complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name2; and
(iii) the domain name has been registered or subsequently used in bad faith.
These requirements are similar to those applicable under the Uniform Domain Name Dispute Resolution Policy but, relevantly, the “bad faith” requirement is disjunctive rather than conjunctive.
The Panel discusses each element in turn.
There are two elements to this requirement: do the Complainants have rights in a name, trademark or service mark and, if so, is the domain name confusingly similar to those rights?
As noted in section 4 above, the First Complainant has clearly proved rights to registered trademarks for VECTORWORKS in Australia and a number of other jurisdictions. That is sufficient to satisfy this requirement of the Policy.
The domain name is identical to these registered trade marks, save for the addition of the second level extension domain, “.com.au” which is a functional requirement of the domain name system. Its inclusion in the domain name therefore may be disregarded and, accordingly, the domain name is identical or confusingly similar to Nemetschek's proven trademarks: see e.g. MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016; BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
It is now well established that, in view of the difficulties of proving the negative, the Complainant must show at least a prima facie case that the Respondent does not have rights or legitimate interests in the domain name and, if so, it will fall to the Respondent to rebut this showing.
The Complainants state that they have not licensed, authorized or otherwise permitted the Respondent to register or use the domain name. The Complainants also claim that the Respondent has not used nor been known by the domain name. Moreover, the Complainants point out that the Respondent is using the domain for a website at which the Respondent offers for sale CAD software products of Nemetschek's competitors, conduct which is not legitimate use under the Policy.
If accepted, all of these factors would establish at least a prima facie case in favour of the Complainants which, the Respondent having failed to file a Response, has not been rebutted.
The Whois record for the domain name indicates, however, that the Respondent claimed to have registered the business name, “vectorworks Australia”, in New South Wales. Under Australian law, registered business names do not usually trump trademark rights. See e.g. Caterpillar Loader Hire (Holdings) Pty Ltd (t/as Willoughby's Caterpillar Loader Hire Service) v. Caterpillar Tractor Co (1983) 1 IPR 265.
Moreover, under auDA's Domain Name Eligibility and Allocation Policy Rules for the Open 2lDs (Policy No. 2008-05), a domain name registrant's entitlement to a domain name depends on the registrant continuing to satisfy the eligibility requirements for the relevant Second level domain: see Schedule A paragraph 5. In the case of the “.com.au” Second level domain, this requires that the domain name be an exact match, abbreviation or acronym of the registrant's name or trademark or otherwise closely and substantially connected to the registrant: Schedule C paragraph 2. Those requirements are not satisfied where it appears from the evidence available to the Panel that the business name providing the foundation for the Respondent's registration is not in fact registered.
As noted above, the business name “vectorworks Australia” from which the Respondent purports to derive entitlement to the domain name does not appear to be registered now (assuming it was registered previously). Accordingly, the Respondent does not appear to satisfy the eligibility requirements. Moreover, the Respondent has not sought to rebut the Complainants' allegations or the inferences that it has no rights or legitimate interests in the domain name.
Accordingly, in these circumstances, the Panel finds that the Complainants have discharged their onus and demonstrated that the Respondent does not have rights or legitimate interests in the domain name.
As noted above, the Respondent uses the domain name for a website from which it offers for sale and presumably sells software products competing with the Complainants' products offered under Nemetschek's registered trademarks. Such conduct has been repeatedly found to be bad faith use under the UDRP Policy and the Policy: see e.g. Swarovski Aktiengesellschaft, AG v. Paul Giles d/b/a Banjos bead house, WIPO Case No. DAU2008-0001, SanDisk Corporation v. ITBOX Pty Ltd, WIPO Case No. DAU2006-0009.
In this connection, the Panel also notes that paragraph 4(b)(iv) of the Policy provides as an example of registration or use in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on that web site or location.
The Panel acknowledges that the Respondent's website includes a rudimentary form of redirection for customers who may be looking for the Complainants' products. However, that appears only in the last of a listing of 7 products.
In these circumstances, noting that it is sufficient under the Policy to show either registration or use in bad faith, the Panel finds that the Respondent is at least using the domain name in bad faith. Accordingly, the third requirement under paragraph 4(a) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that (as requested by the Complainants) the domain name <vectorworks.com.au> be transferred to the Complainant OzCAD.
Warwick A. Rothnie
Date: October 29, 2008
1 “For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant's personal name.”
2 “For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.”