The Complainant is Curtain Communications Pty Ltd., of Victoria, Australia, represented by Minter Ellison, of Australia.
The Respondent is Leann Webb, of Queensland, Australia, represented by Mallesons Stephen Jaques, of Australia.
The disputed domain name <alphakids.com.au> is registered with NetRegistryPty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2008. On November 26, 2008, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On December 1, 2008, NetRegistryPty Ltd. 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 [together with the amendment to 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 December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Response was filed with the Center on December 24, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on February 2, 2009. 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.
The Complainant is an Australian company whose main business is the development and sale of literacy programs. The Complainant provides teacher resource products for children under the name “ALPHAKIDS”.
The Respondent is an Australian business which provides foreign language educational programs to children.
The disputed domain name was first registered on March 30, 2005, as indicated in the Registrar's confirmation of the registration details.
At the date of this decision, the disputed domain name reverts to a website with a prominent heading “AlphaTykes”, and a subheading “Foreign language for littlies”. The website does not refer to “Alphakids” per se, but rather contains statements such as “AlphaTykes is an Australian company with a unique and successful Australian-created teaching concept”.
The Complainant claims to have used ALPHAKIDS as a trademark in relation to books and teaching products since 1997. The Complainant has estimated the total value of the ALPHAKIDS educational product sold or ordered between 1998 and 2007 as over AUD $11 million. The Complainant has spent approximately AUD $50,000 since 1998 on supporting the marketing of the ALPHAKIDS educational product.
The Complainant claims that the disputed domain name is identical to its (unregistered) trade mark ALPHAKIDS. The Complainant also has a pending Australian trademark application for ALPHAKIDS, filed on August 16, 2005.
The Respondent filed an Australian trade mark application for ALPHAKIDS which the Complainant successfully opposed. (In this connection, the Complainant provided a copy of the decision dated October 20, 2008 of the hearing officer, as delegate of the Registrar of Trademarks, refusing registration of the mark applied for by the Respondent.)
The Complainant claims that the Respondent has no rights or legitimate interests in respect to the disputed domain name. The Complainant claims that the Respondent has not provided goods or services in connection with the disputed domain name, and is unlikely to do so given the decision by the hearing officer in the opposition proceedings referred to above.
The Complainant finally claims that the disputed domain name was registered, and is being used, in bad faith. The Respondent linked the disputed domain name to her “Alphatykes” website in April 2008. The Complainant refers to correspondence it sent to the Respondent concerning the Respondent's application to register the trademark ALPHAKIDS. In response, the Respondent stated that she will not be pursuing the ALPHAKIDS brand; would not further be pursing registration; and would assign the disputed domain name to the Complainant. Accordingly, says the Complainant, the Respondent has, in bad faith, attempted to attract Internet users to its website for commercial gain, by using the Complainant's mark.
The Respondent claims that she and the Complainant have been in dispute and involved in Australian Trade Mark Office opposition proceedings for a number of years. There are eight pending trade mark opposition proceedings on foot, which the Complainant did not disclose in the Complaint. The Complaint is a disingenuous ruse to try to give the Complainant a tactical advantage in its dispute with the Respondent.
The Respondent is not a cybersquatter, but a genuine businesswoman who registered the disputed domain name with no knowledge of the Complainant or its products. The Respondent claims that she conducted searches for “alphakids”, before registering the disputed domain name. That included searches of, e.g., the Australian trademark register, business and company names, domain name registers, telephone directories and Internet searches. None of those searches then revealed any relevant results for the Complainant. Accordingly, the Respondent commenced preparations to open a business under that name. Those preparations included the registration of the disputed domain name, as well as trademark applications, and registration of a business name.
Following correspondence from the Complainant, and not wanting to inflame the situation, the Respondent chose to use “AlphaTykes” as the primary name for her new business. Since that time, the Respondent and Complainant continue to be in dispute over the use of the brand “Alphakids” and also the Respondent's use of “AlphaTykes”.
In relation to the allegations against it under paragraph 4(a) of the Policy, the Respondent firstly claims that the Complainant's trademark application confers no rights on it. The Respondent says that the Complainant's claimed common law rights in the ALPHAKIDS mark have not been adequately supported by evidence. The Complainant seeks to rely on the decision of the hearing officer dated October 20, 2008, however the test before that hearing officer was entirely different to the test before the Panel.
The Respondent claims to have rights or legitimate interests in the disputed domain name. The Respondent basis such rights or interests on her investment of time, effort and money to bring her business plans to fruition; as well as in having conducted due diligence searches before registering the disputed domain name. The Respondent claims to use the disputed domain name in connection with a legitimate business. The Respondent also has nine pending trademark applications for “alphatykes”, “alphatots”, and “alphateens”.
In relation to the Complainant's allegation of bad faith, the Respondent repeats that she had no prior knowledge of the Complainant before registering the disputed domain name, and there were no reasons why she should have been so aware. There is otherwise no evidence that the Respondent has acted in bad faith. The Respondent submits that the dispute between the parties involves many issues that would be more suitable to be resolved in court. The Respondent refers to the decision in Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183, where the Panel noted that “[t]he Policy was never intended to serve as a vehicle for adjudication of traditional trademark disputes.”
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name 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 of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or was subsequently used in bad faith.
The Policy is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP). Accordingly, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy (as have both the parties).
It is well-established that a trademark application does not itself give a complainant rights in a mark for the purpose of paragraph 4(a)(i) of the Policy.
The Complainant instead claims that it has rights in ALPHAKIDS as a common law mark, based on substantial use in commerce. The Complainant provides no direct evidence of such use. Rather, the Complainant refers to the decision of the hearing officer, as delegate of the Trademark Registrar, referred to above. In that decision, the hearing officer found that the Complainant's evidence in support of the opposition proceedings indicated that, among other things:
- the Complainant had conducted business since 1991 in the development and sale of literacy programs;
- the expression ALPHAKIDS as a trademark had been adopted and used by the Complainant since 1997 in connection with its business, and such use had been continuing and ongoing;
- the Complainant had expended substantial resources to market its ALPHAKIDS program, books and materials, and had attained significant sales and turnover;
- the Complainant's ALPHAKIDS products are very well-known in the educational market in Australia, and the Complainant's associated mark has acquired a strong reputation;
- the Complainant's evidence of prior existing use and established reputation was corroborated by a person of extensive experience in the educational publishing industry.
Against this, the Respondent says that the Complainant's claim to a common law mark is not supported by evidence in the Complaint itself. The Panel does not accept this argument. The Panel has no reason to think that the findings of the hearing officer, exercising statutory decision-making functions under the Trade Marks Act 1995, incorrectly or insufficiently described the evidence then presented by the Complainant. As such, it would be duplicative and unnecessary for the Complainant to physically reproduce that evidence in this case.
The Respondent also says that the test before the hearing officer was “entirely different” to that currently before the Panel. For that reason, the Respondent says that the hearing officer's decision should have no bearing on the Panel's decision in this case. However, as noted above, the Panel has no reason to gainsay the findings of the hearing officer in relation to the evidence then presented. That decision clearly distinguished the evidence presented by the Complainant from the tests applied to that evidence. That evidence, as outlined above, strongly suggests that the Complainant has a common law mark for the purpose of this element of the Policy.
Having established that it has rights in a mark, it is clear that the disputed domain name is relevantly identical to that mark. The disputed domain name is only different because it includes the “.com.au” extension. It is well-established that that extension is to be disregarded for the purpose of comparison under paragraph 4(a)(i) of the Policy.
As such, the Panel finds that the Complainant has established this first element.
Paragraph 4(a)(ii) requires the Complainant to establish that the Respondent has “no” rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has made a prima facie case against the Respondent. However, the Panel considers that the evidence presented in this case does not, on balance, support a finding that the Respondent has no rights in the disputed domain name. Evidence presented by both the Complainant and the Respondent indicate that both have been involved in opposition proceedings, concerning the Respondent's application for various marks that include the term “alpha” combined with words associated with children, including “alphakids”, “alphatots” and “alphatykes”. The Respondent provides some evidence of her website which is consistent with her stated business objective of marketing foreign language programs to children. The Respondent claims to have conducted a number of searches for the term “alphakids” before notice of this dispute. The Respondent also provides evidence of having registered a business name for “Alphakids”. While this evidence is limited, it weighs against a finding that the Respondent has engaged in cybersquatting – which is the target of the Policy.
This does not mean that the Respondent's evidence is strong. The Respondent provides little other supporting evidence of her business, despite claiming to have been in an expanding business since mid-2006, and employing a number of staff. Given the findings in the opposition proceedings of the Complainant's reputation in Australia, and the fact that both the Complainant and Respondent operate in the broad field of education for children, the Respondent's choice of domain name might be no small coincidence. The Respondent provides no explanation as to why she chose the term “alphakids” in particular. The Respondent also provides no direct evidence of doing due diligence searches for the term “alphakids” before registering it in the disputed domain name.
Nevertheless, in the circumstances of this case, a finding that the Respondent has “no” rights would involve making findings about what is essentially a trademark or passing-off dispute. This involves larger issues which are inappropriately resolved under the Policy. See, e.g., Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.
For these reasons, the Panel finds that the Complainant has not established this element.1
For the reasons set out above, it is unnecessary for the Panel to reach a finding on this element.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: February 16, 2009
1 The Panel does not, however, preclude the possibility that certain matters raised in the Complaint may warrant subsequent re-examination by an administrative panel in the event that the Complainant was to prove successful in a trademark or passing-off dispute with the Respondent, and to subsequently seek leave to re-file a Complaint under the Policy on that basis.