The Complainant is GM Holden Ltd. of Melbourne, Victoria, Australia represented by Piper Alderman, Australia.
The Respondent is Bradley John Lawless of Sydney, New South Wales, Australia.
The disputed domain names <holdenplatinumservice.com.au>, <holdenservice.net.au>, and <servicingholden.com.au> (the “Domain Names”) are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 9, 2010, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain names. On April 28, 2010, Aust Domains International Pty Ltd dba Aust Domains, Inc. 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 April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Response was filed with the Center on May 12, 2010.
The Center appointed William P. Knight as the sole panelist in this matter on May 21, 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 an Australian company which distributes motor vehicles and their parts and related services in Australia under a number of trade marks, including the trade mark HOLDEN. The trade mark HOLDEN is very well-known in Australia, having been used in Australia by the Complainant and its predecessors in title for over a century, and being applied to first motor car wholly manufactured in Australia in 1948. It is not made clear in the Complaint but it is well-known that the Complainant is a wholly-owned subsidiary of General Motors Corporation of Detroit in the United States of America. There are many trade marks registered under the Australian Trade Marks Act 1995 in which the mark HOLDEN is the most significant element, on its own and with other elements, including in class 37 for maintenance, servicing and repair of motor vehicles and maintenance, servicing, repair and installation of parts of and accessories for motor vehicles. All these registrations belong to General Motors LLC, also of Delaware, which is presumably another subsidiary of General Motors Corporation, although this is also not disclosed in the Complaint. The Complainant has operated a website under the domain name <holden.com.au> since early 1998. There is also a website at “www.holdenmotorsport.com” that is connected in some way to the Complainant, although it is registered in the name of someone else. The Complaint states that the domain name <holdenmotorsport.com.au> was also ‘promoted' by the Complainant but this is also recorded in the name of another person, in this case having no apparent connection with the Complainant, presently being used as a ‘parked' website.
The Respondent is an Australian resident whose company, Platinum Automotive Group Pty Limited, carries on a business of motor vehicle servicing. The Respondent registered the Domain Name <holdenservice.net.au> in the name Platinum Automotive Group Pty Ltd (then known as Flawless Enterprises Pty Limited) on July 3, 2007 and registered the Domain Names <servicingholden.com.au> and <holdenplatinumservice.com.au> in his own name on October 5, 2008 and March 10, 2009 respectively.
At the time of the Complaint, only <holdenservice.net.au> was in use, the other two Domain Names being inactive. The <holdenservice.net.au> Domain Name describes and offers the business services of the Respondent relating to HOLDEN motor vehicles.
The Complainant asserts, amongst other matters, that:
1. the Complainant is the “exclusive authorised user” of the Australian HOLDEN trade marks;
2. the Domain Names are confusingly similar to the HOLDEN trade mark in that the dominant component of each is the word “holden”;
3. the Respondent “is not making a legitimate non-commercial or fair use of the domain name [sic], nor is it [sic] using the domain names in connection with a bone fide [sic] offering of goods or services.”
4. the use of the HOLDEN trade mark in each of the Domain Names is not authorized by the Complainant and that there is no relationship of any kind between the Respondent (or, presumably, Platinum Automotive Group Pty Limited.
5. the Respondent's website at “www.holdenservice.net.au” is misleading or deceptive in that, amongst other things:
(a) it represents that there is some association, such as an authorisation, approval or appointment of the Respondent's business by the Complainant as a dealer or service centre for Holden motor vehicles when there is no such association;
(b) it represents that the Respondent's business is exclusively or solely engaged in the service and repair of Holden motor vehicles, when it is not so limited
and that this misleading or deceptive conduct is not sufficiently counteracted in the website by, for example, a disclaimer of such an association.
The Complainant argues that such use of the <holdenservice.net.au> Domain Name is (and, briefly, the same use of the <servicingholden.com.au> Domain Name was) misleading Internet users and is use in bad faith, by intentionally attempting to attract, for commercial gain, Internet users to the Respondent's website. In support of this proposition, in part, the Complainant relies upon an email sent to the solicitors for the Complainant by the solicitor for the Respondent included in correspondence from the Respondent's solicitor seeking to settle the Complainant's claims.
The Complainant further shows that the Respondent and his company have registered at least 21 further domain names including the famous marks of other motor vehicle manufacture, including Audi, Bentley, BMW, Chrysler, Daewoo, Ford, Honda, Land Rover, Mazda, Mercedes, “Mini”, Nissan, Porsche, Saab, Suzuki, Toyota and VW. From the websites under some of these domain names, it is clear that the Respondent and his company provide service and repair for all these makes of motor vehicle, and claims to be a “specialist” in each.
In its Response, the Respondent states as follows:
The full domain holdenservice (or Holden Service) is not trademarked by the complainant. The complainant does however have a number of trademarks (77 of them in fact), the bulk of which include the image of the lion which we are clearly not using. Where the word ‘Holden' appears alone in a trademark, it relates specifically to the trademark classes:
3, 6, 7, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 27, 28, 36, 41, 42
Definitions of each of these classes can be found at “http://www.ipaustralia.gov.au/trademarks/apply_classes.shtml”.
The use of holdenservice.net.au as our domain name does not infringe on their trademark under any of the aforementioned classes.
The website shown to customers also clearly identifies the Platinum Automotive Group and therefore does not create any confusion.
Platinum Automotive Group is a long standing establishment with over 19 years experience servicing Holden cars. This domain was registered in 2008. Since that time, we have invested heavily in web development, search engine optimisation (SEO) and search engine marketing (SEM) and as a result of this, the website is now a significant driver of business to our real world operation.
As outlined above, the domain was registered some time ago and we host a real website and market the website to attract customers to our real world business. Moreover, the website logo clearly states we are ‘Platinum Automotive Group' (see schedule A) ensuring there is no confusion or passing off.
To further enhance our claim, we want to make it known that the website currently residing at the domain in question is currently a major tool in attracting new business for the Platinum Automotive Group (as a result of all our efforts to date). Simply transferring ownership would have a significant negative impact on our business and adversely effect [sic] our ability to earn an income which carries with it other legal implications.
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
It is convenient before dealing with the substantive issues between the parties to consider two preliminary issues raised by the Complaint, which it is proper to consider, even though they have not been relied upon by the Respondent. These are:
1. who is the proper Respondent to these proceedings; and
2. should correspondence from the Respondent's solicitor marked “Without Prejudice” and/or in which settlement is proposed be considered in this determination?
The Complaint makes clear that:
(a) it is made against the Respondent only;
(b) the only Domain Name that is in use is <holdenservice.net.au> and that this is registered in the name Platinum Automotive Group Pty Ltd (at the time of registration known as Flawless Enterprises Pty Limited) on July 3, 2007;
(c) the Respondent is the registered owner of the Domain Names <servicingholden.com.au> and <holdenplatinumservice.com.au> registered on October 5, 2008 and March 10, 2009 respectively but, in each case, the “Eligibility Name” is entered as “Platinum Automotive Care;” and
(d) the Respondent is the sole director and secretary of Platinum Automotive Group Pty Ltd and is one of the two shareholders in that company.
It would appear clear, on this evidence, that the <servicingholden.com.au> and <holdenplatinumservice.com.au> domain names belong beneficially to the company Platinum Automotive Group Pty Ltd, as it would appear that they were registered by the Respondent in his capacity as a director of the company and for the benefit of its business.
As a consequence, it might appear that the proper respondent to these proceedings should be the company and not the Respondent personally or, at least, that the company should have been included by the Complainant as a respondent. Of course, to the contrary, it might be said that the company is the creature of the Respondent, and only doing his bidding.
Be that as it may, it is clear that the company, Platinum Automotive Group Pty Ltd, is effectively party to these proceedings in that it has been notified of the proceedings, in the person of the Respondent, and the Respondent, as sole director and secretary, represents the company in that capacity. Furthermore, no objection to this issue has been raised by the Respondent. As a result, no injustice is done by allowing the proceedings, and the disposition of the Domain Names, to proceed without the company being formally joined to the Complaint.
The Complaint attaches evidence of correspondence passing between the solicitors of the Complainant, none of which is marked “without prejudice” and certain correspondence from the Respondent's solicitor, including emails not claiming any privilege and a letter marked “without prejudice except as to costs.” The Complainant argues that a certain conclusion may be drawn from one of the emails which follows the letter so marked.
This issue remains somewhat vexed. On the one hand, it is acknowledged that the doctrine of privilege that excludes from consideration as evidence statements made by or for a party to a dispute in the course of settlement negotiations may not be of general application under the Uniform Dispute Resolution Policy at large, as it is not of universal application and will not be the practice in many jurisdictions from which panels are called. Furthermore, these are administrative, and not judicial, proceedings under which penalties may not be administered and most remedies such as damages and costs may not be awarded, which are inexpensive and speedy, and which do not provide a forum for interlocutory arguments concerning admissibility and relevance. These and other considerations are well stated in the decision of McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078, which remains among the more thorough review of the considerations against the application of the doctrine.
On the other hand, the essential purpose of the doctrine of without prejudice privilege, which is “to enable parties engaged in an attempt to compromise litigation to communicate with one another freely and without the embarrassment which the liability of their communications to be put in evidence subsequently might impose upon them ... [t]he law relieves them of this embarrassment so that their negotiations to avoid litigation or to settle it may go on unhampered” (from the leading authority on this issue under Australian law, the judgment of Dixon CJ, Webb, Kitto and Taylor JJ of the High Court of Australia in Field v. Commissioner for Railways for New South Wales (1957) 99 CLR 285 at 291), is equally applicable to proceedings under the Policy, especially bearing in mind that, whilst initiating these proceedings is inexpensive, the cost of legal representation to enable the parties to best make use of them is not.
Furthermore, many of the reasons advanced for not applying the doctrine of without prejudice privilege to communications between the parties to a dispute to which the Policy applies are, in fact, circumstances in which the doctrine itself provides that it does not apply (the following is adapted from Mediation Law and Practice, David Spencer and Michal Brogan, Cambridge University Press, Melbourne and New York, 2006, pp 324-5). The doctrine does not extend to exclude from consideration:
1. communications that are not objectively part of the negotiations for settlement. This prevents an abuse of process by a party seeking to have certain evidence sterilised by the process of negotiation;
2. statements that are unqualified admissions concerning objective facts. A party cannot prevent the admission of this sort of evidence because it is essential that the panel have the best evidence before it when it seeks to make a determination;
3. statements that are not concerned with the same subject matter as the negotiation. This is to prevent the unfair sterilisation of evidence that is not related to the substantive issues being negotiated.
4. statements going to the gist of the complaint, such as an offer to sell the disputed domain name, which is conduct at the heart of the Policy;
5. communications creating an offer and acceptance, that is an accord and satisfaction, or settlement agreement, which a panel should not override unawares;
6. communications that are or disclose criminality;
7. communications the disclosure of which will prevent the panel being misled;
8. communications themselves constituting or evidencing tortious conduct, such as deceit.
There is no attempt here to provide a comprehensive statement of the doctrine, nor to suggest that it will apply in all cases, but in a case such as this under a country code Top Level Domain dispute resolution policy, where the country in question adopts the doctrine of without prejudice privilege and both Parties are from that country, the doctrine must have more weight. Another consideration will be unfairness, for example if the party alleged to have made an admission is unrepresented.
It is well established under the doctrine that the mere use of the expression “without prejudice”, or some similar rubric, cannot of itself make the material within the communication the subject of the doctrine. However, this does make clear a claim by the party using it that it seeks to rely upon the doctrine. Conversely, the absence of such a claim does not automatically render the communication unprivileged. The heart of the issue is whether the communication, or the part of it in question, was genuinely directed or incidental to the settlement of the relevant dispute, and does not fall under one or more of the exceptions referred to above.
In this case, the statement sought to be relied upon in the Complaint was made in an email from the Respondent's solicitor which was not marked “without prejudice”, but it followed the earlier letter of the Respondent's solicitor that was so marked, and was clearly in the course of the same correspondence. Furthermore, the statement in question was clearly made in order to convince the Complainant of the reasonableness and merit of the proposed or actual conduct of the Respondent which was sought to persuade the Complainant to settle the dispute by accepting that conduct. That conduct did not include any offer, and the Respondent never requested, any form of payment for transfer of any of the Domain Names.
In these circumstances, the Panel takes the view that it would not be proper or fair to take this communication into account, and does not do so.
Even if the communication were not privileged, the Panel considers that it may be unfair to take it into account. Not only is it not clear from the Complaint that all the correspondence between the parties has been included in the evidence, the statement of the Respondent's solicitor as to the reason the compromise proposed was a fair bargain does not necessarily reflect the reasons for the Respondent's original selection of any of the Domain Names, going to the issue of bad faith, in the sense provided by the Policy, as the Complainant contends.
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in their request for transfer of the Domain Names from the Respondent:
1. The Respondent's Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2 The Respondent has no rights or legitimate interests in respect of the Domain Names; and
3. The Domain Names were registered or are subsequently being used in bad faith.
The Panel finds that the Complainant has registered trade mark rights in HOLDEN. The Panel is satisfied that the Domain Names are confusingly similar to the Complainant's HOLDEN trade marks in that the dominant component of each of the Domain Names is the word “holden”, the words “service” or “servicing” in each of Domain Names does no more than describe the business of the Respondent and his company and cannot serve as a distinguishing element.
The position of the word “platinum” is less clear, being the significant word in the company name of the Respondent's company. However, the word “platinum” is very commonly used as a laudatory epithet and is a very weak distinguishing element weighed against the power of the very well-known (in Australia) HOLDEN trade mark.
The first element of the Policy is satisfied.
It is not disputed that the Respondent is not licensed by the Complainant nor by any of the Complainant's related bodies corporate to use the HOLDEN trade mark in the Domain Names. The Respondent does not pretend to be known by the name HOLDEN. However, under the Australian “.net.au” and “.com.au” domain naming policies, the Respondent is entitled to register a domain name which includes a word “otherwise closely and substantially connected to” the Respondent, so the question of whether the Respondent has a legitimate interest in any of the Domain Names is a much more difficult one.
There is no doubt, it would appear from the Complaint and the Response, that the Respondent is providing service and repair for the Holden motor vehicles of the Complainant.
However, the Complainant's assertions in the Complaint that the Respondent's website under the Domain Name <holdenservice.net.au> and, briefly, <servicingholden.com.au> is misleading in that it suggests that the Respondent's business is approved by the Complainant and devotes itself exclusively to the service and repair of Holden motor cars is, without some form of clear disclaimer, on consideration of the website as a whole, compelling.
The analogous issue of whether a reseller of a complainant's products has a legitimate interest in registering and using a domain name which includes the complainant's trade mark in respect of the supply of such products, where there is no contractual relationship between the respondent and the complainant, has been dealt with in a number of prior panel decisions. The consensus of those decisions is that the respondent must meet four criteria, as collected from an earlier decision by the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 as follows:
1. Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
2. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).
3. The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
4. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.
Applying these principles to the <holdenservice.net.au> Domain Name, it is clear to the Panel that criteria 1 and 2 are satisfied, but that 3 and 4 are not. The prominent use on the website under this Domain Name of compendious expressions such as “Holden Service and Repair Specialist”, “Platinum Automotive Group - Servicing Holden”, “Your Specialist Servcing [sic] Holden in Sydney”, “Servicing Holden Excellence” and “Professional Organisation Servicing Holden” strongly suggest some form of accreditation from the Complainant, the absence of which is not disputed by the Respondent, and, in particular, that the service and repair of the Complainant's motor vehicles is the pre-eminent concern of the Respondent's business (although there is a curious slip-up on the Contacts page, which refers to “BMW Service”). This is not true.
Furthermore, the multiple registrations of domain names, not only including the Complainant's trade mark but those of many other motor car manufacturers, strongly leads to a conclusion that the Respondent is seeking to divert the business of Internet users away from the authorised service centres of the Complainant and other manufacturers.
The Panel would be inclined to agree with the learned panel in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 that such conduct may in appropriate cases be unobjectionable. However, in this case, the Respondent's case must fail as the true relationship between the Respondent and the Complainant is not made clear on the <holdenservice.net.au> website.
The Panel accordingly concludes that the Respondent does not have a right or legitimate interest in the <holdenservice.net.au> Domain Name.
At this point, under this heading, the same conclusion cannot be drawn from evidence in respect of the <servicingholden.com.au> and <holdenplatinumservice.com.au> Domain Names.
In this case, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the <holdenservice.net.au> Domain Name are equally relevant to the issue of registration or use in bad faith, in the sense that those expressions are used in the Policy. The Panel does not accept the Respondent's argument that its use of the word “service” and the fact that it is clear from the website under this Domain Name that it is Platinum Automotive Group Pty Limited that is providing the service in some manner differentiates this Domain Name and the website under it from the Complainant's marks and business operations. Therefore, the Panel concludes that the <holdenservice.net.au> Domain Name was registered and is being used in bad faith.
The <servicingholden.com.au> and <holdenplatinumservice.com.au> Domain Names are not in use, although the former was briefly used in the same manner as the <holdenservice.net.au> Domain Name in an effort to placate the Complainant.
In respect of all three Domain Names, the Complainant effectively asserts that there emerges a pattern of conduct of abusive domain name registrations from the numerous other registrations of domain names by the Respondent and his company using well-known marks. Apart from this, there is no evidence relevant to the issue of use in bad faith in the Complaint in respect of these unused Domain Names.
The list of circumstances demonstrating bad faith in paragraph 4(b) of the Policy is non-exclusive. Previous decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) by analogy can give some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Club Méditerranée S.A. v. Clubmedical WIPO Case No. D2000-1428; and Time Inc v. Chip Cooper WIPO Case No. D2000-1342.
There are a number of decisions which support the proposition that, in appropriate cases, the multiple registration of domain names incorporating well-known trade marks may evidence registration in bad faith; see, for example, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010 and Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046. Although these generally are directed to the probability that the registrant is interested in selling these domain names to the owner of those marks or to benefit from pay-per-click diversion of Internet users, there is no reason why other circumstances may not evidence another type of misuse for commercial gain.
Even if the Respondent is not, with these unused Domain Names, profiting from the attraction of Internet users seeking the Complainant's authorised service centres, given the overwhelming likelihood that the Respondent chose the domain names because of their identity to the HOLDEN trade mark of the Complainant, and would use them in the same manner as he has the <holdenservice.net.au> Domain Name (and his and his company's other domain names incorporating notorious marks of other manufacturers), it can be assumed that the Respondent registered them with the intention of deriving a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy.
In these circumstances, the panel concludes that the <servicingholden.com.au> and <holdenplatinumservice.com.au> Domain Names were registered in bad faith.
The Complainant has requested that the Domain Names be transferred to it. 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, <holdenservice.net.au>, <holdenplatinumservice.com.au> and <servicingholden.com.au> be transferred to the Complainant.
William P. Knight
Dated: May 23, 2010