The Complainant is Tigerdirect Inc. of Miami, Florida, United States of America, represented internally.
The Respondent is Jim Sun, Sun's Sons Pty. Ltd. of Brookvale, New South Wales, Australia.
The disputed domain name <tigersdirect.com.au> is registered with Smartyhost Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2010. On March 9, 2010, the Center transmitted by email to Smartyhost Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 12 and March 14, 2010, Smartyhost Pty 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 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 March 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2010. An informal email Response was filed with the Center on April 8, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on April 20, 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.
The Complainant is a global online retailer of computers, computer supplies, and electronics, among other things.
The Complainant has registered trademarks in Australia since 2006, as well as other jurisdictions for TIGERDIRECT, TIGERDIRECT.COM and TIGER in class 35 for the sale of computer hardware and software, parts and accessories for computers, and mail order services featuring computer hardware and software, parts and accessories for computers.
The Complainant has used its marks since 1987. The Complainant asserts that its website ranks as the 247th most visited website in the United States and 885th worldwide.
The disputed domain name was registered on May 5, 2009.
The Complainant provides evidence of the Respondent's website as it was on March 4, 2010. On that day, the disputed domain name reverted to a website with the title on its homepage of “TigersDirect.com.au” and the statement “One of Australian's [sic] Cheapest Online Computer Stores!”. The website advertises various electronic goods for sale, including computer hardware, software, and televisions.
The disputed domain name is confusingly similar to the Complainant's registered mark for TIGERDIRECT. The only difference is the plural signifier “s”. That difference is not enough to avoid confusing similarity. The Complainant refers to the case of Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336, where a registration of a domain name that was a plural version of the then complainant's mark was held to be confusingly similar to that mark. The Complainant also refers to MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940. In that case, the panel stated that “previous WIPO UDRP panels have held that where a respondent has used a trademark in its entirety but has merely made it a plural, it is identical or confusingly similar to the disputed domain name (see Joseph Patelson Music House, Ltd. v. Modern Empire Internet Ltd., WIPO Case No. D2007-0723)”.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no ties to the Respondent, the Respondent is not known by the disputed domain name, and is not making a bona fide offering of goods or services in connection with the disputed domain name. The Respondent has no registered marks in Australia. The Complainant sent the Respondent a “cease and desist” letter on February 16, 2010. In a subsequent telephone conversation with the Respondent, it refused to transfer the disputed domain name and asked if the Complainant would be interested in “franchising” the TigerDirect brand.
The Respondent has registered and used the disputed domain name in bad faith. Due to the widely-known nature of the Complainant's mark, the Respondent must have been aware of it when it registered the disputed domain name. The Respondent owns a retail chain, namely “North Shore Computers” and also maintains a website at “www.nscom.com.au”. The Complainant states its belief that the Respondent registered the disputed domain name to misleadingly divert customers away from “www.tigerdirect.com”. The Complainant also provides evidence of actual confusion, being blogs and Twitter comments relating to the Respondent's website.
The Respondent did not submit a formal reply to the Complaint. However, on April 8, 2010, the Respondent sent an email to the Center, the principal elements of which are summarized as follows:
In that email, the Respondent claims that the disputed domain name was “initiated from our local rugby team Western Tigers (www.tigers.org.au).” The Respondent claims never to have heard of the Complainant and therefore had no intention to use its trademark. The Respondent says that it has tried “to communicate with the Tiger Direct Director but he is not willing to talk but asked us to pass the domain to him”.
The Respondent says that its website at the disputed domain name is an Australian online computer retail store and has no United States customers, and that the Complainant has no business or any customers in Australia. The Respondent says that the Complainant is trying to bully it and that it has spent quite a lot of money and effort to develop its website. The Respondent says that, after receiving an email from the Complainant, it closed its operations as it was not sure of the situation.
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.
These issues are discussed below. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy, as has the Complainant.
The Complainant clearly has rights in a mark for the purpose of paragraph 4(a)(i) of the Policy. The Complainant provides evidence of those marks, attached to the Complaint.
The Panel has no difficulty in finding that the disputed domain name is confusingly similar to the Complainant's TIGERDIRECT mark. It is well-established that the domain name extension (“.com.au”) is not relevant for the purpose of this comparison. Putting that extension to one side, the only difference between the disputed domain name and the Complainant's mark is that the latter uses the plural “tigers” whereas the Complainant's mark uses the singular “tiger”. That difference is insubstantial. It is also relevant that the Complainant has a registered mark which, as such, is entitled to a presumption of distinctiveness, which the Respondent has done nothing to rebut. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629. In this context, the insubstantial difference between the disputed domain name and the Complainant's mark creates an obvious likelihood of confusion.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The Panel also finds that the Respondent has not demonstrated rights or legitimate interests in the disputed domain name. The Respondent's claims to the contrary are implausible and do not adequately rebut the Complainant's contentions with regard to rights or legitimate interests.
The Respondent says that the disputed domain name was “initiated” from its local rugby team Western Tigers. What the Respondent means by this is unclear. The Respondent provides no evidence of its connection to this rugby team. The Complainant's evidence of the Respondent's website also indicates that the Respondent has not used the disputed domain name because of any connection it has with a rugby team. Even if the Respondent was in some way given the idea to register the disputed domain name from its local rugby team (which the Panel considers unlikely), the origin of an idea does nothing, in itself, to show that the Respondent has rights or legitimate interests. In addition, the term which the Respondent has registered in the disputed domain name (“tigersdirect”) does not closely correspond with the apparent name of its local rugby team (Western Tigers), except for the common noun “tigers”.
The Respondent also makes the claim that it is an Australian online computer retail store and has no United States customers, and that the Complainant has no business or any customers in Australia. But the comparison with a “bricks and mortar” store is misplaced. The Complainant's evidence indicates that it sells its products world wide. The suggestion that the Respondent and Complainant are not in direct competition is therefore not supported by the evidence.
Paragraph 4(c) of the Policy provides that a Respondent might demonstrate rights or legitimate interests in a disputed domain name in a number of ways. The Respondent has demonstrated none of them. There is no evidence that the Respondent is commonly known by the disputed domain name (paragraph 4(c)(ii)), or is making a noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii)). Rather, the evidence suggests the opposite. The Respondent is known as “Jim Sun, Sun's Sons Pty. Ltd”, and has used the disputed domain name in connection with a commercial offering of computer products: the same field of business as the Complainant.
The evidence also does not suggest that the Respondent is using the domain name in connection with “a bona fide offering of goods or services” under paragraph 4(c)(i) of the Policy. The Respondent offers products for sale in the same field of business as the Complainant, using a domain name that is confusingly similar to the Complainant's mark, and the Panel finds that the Respondent has acted in full awareness of the Complainant's marks (see below). A number of previous cases under the Policy have found that the offer for sale of competing products and services, using a confusingly similar domain name, is not a bona fide offering. See e.g. Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052.
The Respondent's denial of being aware of the Complainant's marks, despite relatively obvious evidence to the contrary, suggests that the Respondent is being disingenuous. To the Panel, this casts some suspicion over the Respondent's claims as a whole, and further supports a finding against the Respondent on this ground.
The Respondent claims never to have heard of the Complainant and therefore had no intention to use its trademark. This claim is not credible.
The Respondent has used the disputed domain name in connection with a website offering essentially the same products as those of the Complainant. The Respondent registered the disputed domain name three years after the Complainant registered marks in Australia, and more significantly later than the Complainant's rights arose in other jurisdictions. The mark TIGERDIRECT, being registered, is entitled to a presumption of distinctiveness. The Respondent registered the disputed domain name with only the most trivial difference to that mark. The Complainant has a substantial presence on the Internet and provides evidence that its website receives high volumes of Internet traffic. There is no evidence of the Respondent having rights or legitimate interests in the disputed domain name. The Respondent has also sold computer related hardware and software and, from this, it might be inferred that the Respondent has a greater awareness of computers and the Internet than an ordinary person. It might also be inferred that the Respondent is more likely to have been aware of the Complainant which has a substantial Internet business and competes directly with the Respondent. In these circumstances, the Respondent's claim that it was unaware of the Complainant and the Complainant's mark has little weight.
The circumstances of this case suggest that the Respondent registered and used the disputed domain name intentionally to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Under paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use. See e.g. Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043; Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101.
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 name <tigersdirect.com.au> be transferred to the Complainant.
James A. Barker
Dated: May 5, 2010