The Complainant is Patties Foods Limited of Victoria, Australia, represented by Clayton Utz Solicitors, Australia.
The Respondents are Studio Support, Peter Lock and Ian Cameron of California, United States of America (“USA”).
The disputed domain names <fourntwentyusa.com> and <4n20usa.com> (the “Domain Names”) are registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2009. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, confirming that it was the Registrar of the Domain Names; that Studio Support was the registrant of the Domain Name <fourntwentyusa.com> and Ian Cameron the registrant of the Domain Name <4n20usa.com>; that the registration agreements were in English and contained submissions by the registrants to the jurisdiction at the location of the Registrar's principal office for court adjudication of disputes concerning or arising from the use of the Domain Names; that in accordance with paragraph 7 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) it would not cancel, transfer or change the status of the Domain Names except as provided in paragraph 3 of the UDRP and the Domain Names would remain on registrar lock during this proceeding. The Registrar also provided the full contact details which it held in respect of the Domain Names.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 17, 2009. The notification of the Complaint appears to have been delivered successfully to the Respondents by email, fax and courier. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 6, 2009. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 7, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 19, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that it was properly constituted.
The Complainant is one of the largest pie manufacturers in Australia. In 2003 the Complainant acquired a business of producing and selling pies under the mark FOUR'N TWENTY. This business has operated since the late 1940s and now produces over 40 million pies per year. The FOUR'N TWENTY mark has been registered in Australia since 1958. Logos containing the name FOUR'N TWENTY have also been registered in the USA and other countries.
In or about 2007, it came to the Complainant's notice that the Respondent, Peter Lock, then trading as “The Mac Shoppe Inc”, had registered the Domain Name <fourntwentyusa.com> and was using it for an unauthorised website prominently displaying the Complainant's trademarks. The Complainant's attorneys sent a cease and desist letter to Mr. Lock on March 29, 2007. He replied by letter of April 3, 2007, informing the Complainant that the website had been taken down and that both Domain Names were available for purchase by the Complainant at a “mutually agreed price”. The website was taken down and the Complainant took no further action at that time.
Subsequently, Mr. Lock sent an email to the Complainant on November 7, 2007, proposing a commercial relationship. The footer of the email contained the Complainant's logo and the indication “Web Ordering: http://www.fourntwentyusa.com (coming soon)”. The Complainant replied on December 22, 2007, asking Mr. Lock to desist from using the Complainant's mark without its permission.
The Domain Names were subsequently directed to a website at “www.aussiepiereseller.com” which resells the Complainant's FOUR'N TWENTY products and some other products. The Complainant's marks and logos are displayed extensively throughout the site. Pages of the site have a footing which states:
“Copyright © 2009 Aussie Pie Reseller
“The Great Australian Taste and Four'N Twenty logo is a registered trademark of Patties Foods Ltd., Australia”.
The Complainant's attorneys sent a further cease and desist letter to Mr. Lock on May 7, 2009.
The Complainant contends that FOUR'N TWENTY is an iconic Australian brand, that it is almost inconceivable that any adult Australian would be unaware of this mark in respect of meat pies, and that eating FOUR'N TWENTY pies at major Australian sporting events is almost a cultural phenomenon.
The Complainant maintains that it has registered and common law rights in the mark FOUR'N TWENTY and that the Domain Names are confusingly similar to this mark. The Complainant points out that the Domain Names contain this mark and submit that the addition of the geographic designation “usa” does not provide any distinctive element.
The Complainant submits that the Respondents do not have rights or legitimate interests in the Domain Names. The Complainant avers that the Respondents have no rights in the Domain Names which antedate the rights which it owns and that it has not licensed or permitted the Respondents to register or use the Domain Names.
The Complainant acknowledges that the Respondents are reselling the Complainant's products, but contends that the Respondents do not satisfy the criteria identified in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) (the “Oki Data case”) under which a reseller may be regarded as having a right or legitimate interest in using a domain name incorporating the mark of the supplier of products which it resells. The Complainant submits that the Respondents' website is not being used to sell only the Complainant's trademarked goods and that it does not accurately disclose the Respondents' relationship with the Complainant.
The Complainant comments that the disclaimer at the foot of the pages of the Respondents' website is inadequate, in that it is too small, in an inconspicuous location, and falls short of disclaiming any type of relationship or endorsement by the Complainant.
The Complainant further contends that the Domain Names were registered and are being used in bad faith. It points out that the Respondents obviously knew about the Complainant's rights in the mark when they registered the Domain Names. The Complainant alleges that the Respondents have used the Domain Names to attract Internet users to their website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Complainant also refers to the Respondents' proposal to sell the Domain Names to it as further evidence of bad faith.
The Complainant requests a decision that the Domain Names be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
Under paragraph 3(c) of the Rules, a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. This rule has been interpreted as permitting a single complaint in relation to a number of domain names whose registrant is in effect the same entity, even though different names are used in the contact details held by the registrar or registrars: see, for example General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834.
In this case, the Panel is satisfied that the Domain Names are registered by or for the same entity. The Panel notes that Peter Lock offered to sell both Domain Names to the Complainant in 2007, that both Domain Names are now pointed to the website at “www.aussiepiereseller.com”, and that the business promoted by this website has the same postal address as Mr. Lock, which is also the address given for the registrant of the Domain Name <fourntwentyusa.com>.
The Panel therefore considers that the Complaint has been properly brought in respect of both Domain Names.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark in which it has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondents' default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel is satisfied that the Complainant has registered and unregistered rights in the mark FOUR'N TWENTY.
The Panel further considers that both Domain Names are confusingly similar to this mark. The Domain Name <fourntwentyusa.com> is identical to the Complainant's mark apart from the addition of the geographical designation “usa” and the generic top-level domain suffix. These elements are insufficient to distinguish the Domain Name as referring to an entity other than the Complainant. On the contrary, many Internet users would suppose that this Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote its business in the USA.
The Domain Name <4n20usa.com> is the same, except that the words “four” and “twenty” have been replaced by the corresponding numerals. Many Internet users would regard this Domain Name as comprising an alternative form of the Complainant's mark together with the non-distinctive element “usa” and the top-level domain suffix.
The first requirement of the UDRP is satisfied.
As the Complainant recognises, the principles to be applied in assessing whether a reseller has a right or legitimate interest in a domain name which reflects the mark of the producer of the goods have been identified in the Oki Data case.
In this case, the Respondents' website sells primarily the Complainant's products and does not sell competing products, although it does also offer, less prominently, some additional, widely-known products not supplied by the Complainant. If this were the only point on which the Complainant relied to deny that the Respondents have rights or legitimate interests in the Domain Names, the case would have been of some difficulty.
However, the Panel is satisfied that the Respondents' website does not adequately disclose the Respondents' relationship with the Complainant, and indeed conveys the false impression, through the extensive use of the Complainant's branding, that it is authorised by the Complainant.
The Panel agrees with the Complainant that the indication at the foot of the Respondents' web pages is inadequate as a disclaimer of any connection between the Respondents and the Complainant. Indeed, if it is read at all by Internet users, it may reinforce the confusion by implying that the use of the Complainant's marks on the website is authorised by the Complainant.
The Respondents' use of the Domain Names therefore does not comply with the requirements for a bona fide offering of goods or services identified in the Oki Data case. In the circumstances, the Panel finds that the Respondents do not have a right or legitimate interest in the Domain Names in accordance with paragraph 4(c)(i) of the UDRP.
The Panel further finds that the Respondents do not have rights or legitimate interests in the Domain Names on any other basis. In particular, the Respondents have not been commonly known by the Domain Names and are not making legitimate noncommercial or fair use of the Domain Names.
The second requirement of the UDRP is satisfied.
On the evidence, the Panel finds that by using the Domain Names the Respondents have intentionally attempted to attract Internet users to their website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of their website by the Complainant.
The Respondents were clearly aware of the Complainant's mark and evidently registered and used the Domain Names in order to lead Internet users to suppose that their website was operated or endorsed by the Complainant.
In accordance with paragraph 4(b)(iv) this constitutes evidence of registration and use of the Domain Names in bad faith. The Panel finds that there are no counterveiling circumstances which displace this presumption in this case. The Panel accordingly concludes that the Domain Names were registered and are being used in bad faith.
The third requirement of the UDRP is satisfied.
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 Names <fourntwentyusa.com> and <4n20usa.com> be transferred to the Complainant.
Dated: August 24, 2009