The first Complainant is Mass Nutrition, Inc. and the second Complainant is Todd Rosenfeld of Miami, Florida, United States of America (“United States” or “US”), represented by Richard S. Ross, United States of America.
The Respondent is Tweed Holdings Pty Ltd, formerly known as Mass Nutrition Pty Ltd, of New South Wales, Australia, represented by Edge Legal, Australia.
The disputed domain name <massnutrition.com.au> is registered with Aust Domains International Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2010. On January 21, 2010, the Center transmitted by email to Aust Domains International Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 25, 2010, Aust Domains International Pty Ltd transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with it;
(b) the Respondent is the registrant of the domain name;
(c) the contact details for the Respondent were correct;
(d) the disputed domain name was first registered by the Respondent on June 16, 2006; and
(e) English is the language of the registration agreement.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 27, 2010.
The Center verified that the Complaint together with the amended 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 February 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2010. The Response was filed with the Center on February 23, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 3, 2010. 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.
On March 3, 2010, the Complainants purported to file a Supplemental Filing. On March 4, 2010, the Respondent's representative objected to the receipt of the Supplemental Filing from the Complainants in the record and requested a right of further reply.
Mr Rosenfeld, the second Complainant, is the principal of the first Complainant.
He is the owner of US Service Mark Registration No. 2,558,817 for MASS NUTRITION, arranged in a slightly stylized way, for a range of services in International Class 35 related to wholesale and retail stores for nutrition and sports supplements, vitamins, weightlifting and gym equipment, tanning oils, skin creams and lotions and the like.
This trademark was registered in the United States of America on April 9, 2002, claiming a first use in commerce at least as early as March 27, 1999.
Mr Rosenfeld licenses the first Complainant to use the trademark. Pursuant to this licence, the second Complainant registered the domain name, <massnutrition.com>, on August 28, 2001. Unless it is necessary to distinguish further between the two Complainants, the Panel will simply refer below to the Complainants.
Annex No. 6 to the Complaint is an invoice for the sale by the Complainants to a customer located in South Australia of three units of “Biotest” products for a total price, including delivery, of US$90.05. This transaction occurred on October 24, 2002.
The Respondent was incorporated under the name Mass Nutrition Pty Ltd on February 27, 2006 in New South Wales.
The Respondent registered the disputed domain name on June 16, 2006.
The Respondent changed its corporate name to its present name on June 18, 2008. (The Respondent has not provided an explanation for this change of name.)
With effect from April 29, 2009, a Mr Luke McNally obtained registration for Australian Registered Trade Mark No. 1296451, MASS NUTRITION.COM.AU with some device elements, in International Class 35 for “retail services: retailing of goods (by any means)”.
As with the Complainants' registered trademark, the word “mass” appears in significantly larger lettering than “nutrition”. Unlike the Complainants' registration, in which the two words are arranged in two lines, the Respondent's trademark is arranged horizontally.
The precise relationship of Mr. McNally to the Respondent is not entirely clear. However, he is listed in the whois record for the disputed domain name as the Registrant Contact Name and Technical Contact Name for the Respondent.
The Respondent claims to have invested a substantial amount of money in promoting the “Mass Nutrition” name in Australia by:
- appointing a Trade Marks Attorney to obtain trade mark registration for the ‘Mass Nutrition' logo;
- the establishment and maintenance of a website, which is displayed on the Domain Name;
- significant online and offline marketing, including comprehensive search engine optimization (SEO) strategies: and
- the opening of two ‘brick and mortar' store locations.
The Respondent did not provide details of addresses, dates or sales volumes, promotional expenditures or other quantities to support this claim.
On September 2, 2009, the Complainants challenged the Respondent's registration and use of the disputed domain name by correspondence. When that challenge was resisted, these proceedings followed.
Under paragraph 4(a) of the Policy, the Complainant has the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed 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 (“UDRP”). However, there are some important distinctions. For present purposes, the main distinction is that the bad faith requirement under paragraph 4(a)(iii) of the Policy is disjunctive rather than conjunctive. That is to say, it would be sufficient for a complainant under the Policy to prove either registration or use in bad faith, but it would not be necessary to prove both.
The Panel discusses each element in turn.
Before doing so, however, the Panel notes that the Policy and the Rules do not formally provide for supplemental filings. Paragraph 12 of the Rules provides that a Panel may request or permit, at the Panel's sole discretion, further statements or documents from either party. While paragraph 10(c) of the Rules enjoins the Panel to conduct the proceeding with due expedition, paragraph 10(b) directs the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.
The Complainants' Supplemental Filing is substantially responsive to matters arising from the Response. The material addresses errors in the Response or matters otherwise at least arguably not appropriately to be addressed until it was known how the Respondent put its defence. Accordingly, the Panel will admit the Supplemental Filing into the record. For the reasons discussed below, however, it is not necessary for the Respondent to be given an opportunity for a counter-statement in this case.
There are two elements to this requirement under the Policy. First, the Complainants must show that they have rights in a “name, trademark or servicemark”. Secondly, they must show that the disputed domain name is identical or confusingly similar to the rights established.
It is important to note in the present context that this is a different inquiry to that prescribed by trademark law. It requires only the comparison of any relevant rights proved by the Complainants to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the Policy, but may arise under the other paragraphs. See e.g., Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.
The Complainants have clearly proved ownership of US Trademark No. 2,558,817 for MASS NUTRITION. The Panel considers that these US rights are sufficient for the purposes of the Policy. As the learned panel stated in UEFA v. Funzi Furniture WIPO Case No. D2000-0710:
If the onus on the Complainant was to establish exclusive rights across all categories of goods and services and across all territorial boundaries, the object of the Policy (namely to combat bad faith registration and use of domain names) would be defeated. The purpose of paragraph 4(a)(i) of the Policy is simply to ensure that the Complainant has a bona fide basis for making the Complaint.
See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions para. 1.1.
The learned panelist's remarks were made in the context of a dispute under the Uniform Domain Name Dispute Resolution Policy. However, the underlying principle is equally applicable to disputes under the Policy.
The disputed domain name is identical to the Complainants' registered trademark, 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: See e.g. MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016: Jenna IP Holding Company LLC v. Mobile Alive Pty Limited WIPO Case DAU2006-0013. Even if the Panel were to have regard to the slightly stylized presentation of the Complainants' registered trademark, the Panel would still find the disputed domain name confusingly similar to the Complainants' registered trademark. Accordingly, the Complainants have established the first requirement under the Policy.
The Complainants also claim common law rights in both the United States of America and Australia on the basis of use. Any rights based on use do not add materially to those arising from the registered US trademark under this head. However, it will be necessary to consider the claimed use rights below.
Having satisfied the first requirement of the Policy, the Complainants must next demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. It is now well established that, in view of the difficulties of proving the negative, the Complainants must show at least a prima facie case that the Respondent does not have rights or legitimate interests in the domain name and, if demonstrated, it will fall to the Respondent to rebut this showing.
It is not in dispute between the parties that the Respondent has no connection with the Complainants and is not authorized by them to use the disputed domain name.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name as:
- the disputed domain was acquired by the Respondent after the Complainants obtained their rights and with the sole intention of creating a likelihood of confusion with the Complainants' rights;
- the Respondent was not commonly known by the disputed domain name or MASS NUTRITION: and/or
- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is solely using it to divert customers from the Complainants' business.
The original incorporation of the Respondent under the name Mass Nutrition Pty Ltd does not assist the Respondent in this context. Registration of a corporate name does not confer rights in the name which would override accrued registered or common law rights. As the Complainants point out, the Respondent (or perhaps more accurately, those behind it) does not expressly deny knowledge of the Complainants' trademark or business when the Respondent was incorporated.
The situation with the Respondent's registered trade mark No. 1296451 is different.
While it is registered, the use in Australia of a trademark in respect of the goods or services for which it is registered cannot infringe another registered trademark in Australia: Trade Marks Act 1995 (Cth) s. 122(1)(e), (f) and (fa).
The Respondent's reliance on the registered trademark is potentially affected, however, by the Complainants' claim to sales and common law rights mentioned above in at least two respects.
First, to the extent that the Panel is being invited to disregard the trademark registration in Australia or treat it as invalid, the Panel would decline that invitation. Parliament has specifically provided that revocation of a registered trademark is a function for the Courts, requiring judicial determination. See Trade Marks Act 1995 (Cth) s 88. The nature of the inquiry on revocation is also not suited to the present type of proceedings, except perhaps in the clearest of cases.
Australian courts have held that the owner of a trademark in Australia is the first person in time to apply to register the trademark or to use it as a trademark, whichever comes earlier. The fact that someone uses or has registered a trademark overseas is not in itself disentitling, however, historically Courts have “frowned on such borrowings”. See e.g. Malibu Boats West Inc v Catanese (2000) 51 IPR 134. (That position may be affected by the introduction into the Trade Marks Act 1995 of s 62A, which provides a ground of opposition (and hence revocation) where an application has been made in bad faith.) Further, the sale of products overseas to an end-user in Australia may not be use in the course of trade in the sense required by trade mark law: See e.g. Re Yanx Registered Trade Mark (1951) 82 CLR 199.
Determination of these issues requires far more evidence than is presently before the Panel.
Secondly, however, the Respondent's registered trademark would not protect it from actions at common law for passing off or for misleading or deceptive conduct contrary to s 52 of the Trade Practices Act 1974 (Cth): see s 230 of the Trade Marks Act 1995 (Cth). As noted above, the Complainants do claim such rights in this proceeding.
The foundation of rights at common law in Australia depends on the Complainants demonstrating that they have a reputation in the relevant indicia in the relevant jurisdiction. Usually (but possibly not always), this will require demonstration of a reputation arising from use. Typically, this will be established by evidence of sales and advertising or other promotional activity in the jurisdiction. See e.g. Hansen Beverage Company v Bickfords (Australia) Pty Ltd  FCAFC 181 at  –  per Tamberlin J, Siopis J agreeing: McCormick & Company Inc v McCormick  FCA 1335 at  per Kenny J.
In support of their claims to common law rights in Australia, the Complainants point to the evidence of a single sale to a customer located in South Australia in 2002. The Response put this claim squarely in issue. In their Supplemental Filing, the Complainants contend that they have been using the trademark continuously in Australia and throughout the world through their online website since its creation in 2001.
The fact that a website is accessible from Australia is not in itself sufficient to establish that it is being “used” in the relevant sense here or has developed a reputation with the Australian public: 1-800 Flowers Inc v Phonenames Ltd  F.S.R. 697 at 704–706 affirmed  F.S.R. 191; Ward Group Pty Ltd v Brodie & Stone plc  FCA 471 per Merkel J.
The evidence of a single sale in October 2002 to a single customer falls well short of what is required to demonstrate a reputation at common law in a relevant part of Australia. There is no evidence before the Panel of how many “hits” there have been from Australian customers on the Complainants' website or otherwise purchasing products or services from the Complainants. There is also no evidence of advertising or other promotional activities actually conducted in Australia or otherwise directed at potential Australian customers.
In these circumstances, the Panel cannot find that the Complainants have demonstrated sufficient reputation in Australia to found common law rights which would provide a basis for superior entitlement to the disputed domain name to the Respondent's claim based on the Australian registered trademark.
Accordingly, the Complainants, on the record in this proceeding, have not made out the second requirement under the Policy.
As the Complainants have failed to show that the Respondent has no rights or legitimate interests in the disputed domain name it is unnecessary and inappropriate to address the third requirement under the Policy.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: March 15, 2010