The Complainants are Galvin Green AB and Tomas Nilsson of Växjö, Sweden and Rottne, Sweden, respectively represented by Advokatbyrån Gulliksson AB, Sweden.
The Respondent is John Waugh, Buffalo Technology Solutions Pty Ltd of Ringwood Victoria, Australia.
The disputed domain name <galvingreen.com.au> is 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 14, 2010. On April 15, 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 name. 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. On April 15, 2010, the Respondent sent an informal e-mail communication to the Complainant while copying the Center. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on May 20, 2010.
The Center appointed Keith Gymer as the sole panelist in this matter on May 25, 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 Complainants are Galvin Green AB, which is a Swedish company involved in the development, design and marketing of golf wear since the early 1990's, and Tomas Nilsson, who is the owner of the business. Galvin Green AB has outlets throughout Europe and in Canada. It operates a website at “www.galvingreen.com”.
Between them, the Complainants own a number of trade mark registrations incorporating the GALVIN GREEN mark, full details of which were provided with the Complaint, including:
- Community trademark registration 8227076 GALVIN GREEN – We never compromise!, filed April 20, 2009.
- International trademark registration 688001 GALVIN GREEN, filed February 25, 1998 and based on an earlier Swedish national registration dating from 1992.
- Community trademark registration 366658 GALVIN GREEN, filed September 3, 1996.
- Australian trademark registration 1312508 GALVIN GREEN, filed July 30, 2009.
The Respondent, John Waugh, is the designated Registrant Contact for the Domain Name <galvingreen.com.au>, which is nominally registered to Buffalo Technology Solutions Pty Ltd, a company with a business registration number ABN36114805266, which is shown on the Australian Securities and Exchange Commission (ASIC) official database of registered business names as having been deregistered as of November 9, 2008. According the auDA WhoIs records, the Domain Name <galvingreen.com.au> was actually registered as of July 27, 2009.
The following are edited extracts of the Complainants' submissions, and are taken directly from the Complaint:
The Complainants are the owners since many years of the trademark GALVIN GREEN. The trademark is registered in several jurisdictions, among them the following:
- Community trademark registration 008227076 GALVIN GREEN – We never compromise!
- International trademark registration 688001 GALVIN GREEN.
- Community trademark registration 366658 GALVIN GREEN.
- Australian trademark registration 1312508 GALVIN GREEN.
The trademark GALVIN GREEN is registered for and is since the beginning of the 1990's being used for clothing articles and accessories, mainly for use when playing golf.
Galvin Green AB is the leading company in Scandinavia for the development, design and marketing of golf wear. The company, with its owner Tomas Nilsson, has built a business that is globally renowned for its trademarks and products. They have a long-standing reputation for outstanding quality and highly functioning sports clothes for golfers in many countries around the world. GALVIN GREEN, which is the main trademark of the complainants, enjoys a reputation as a well-known trademark in the golfing community all over the world, including among Australian golfers, who tend to travel to competitions and read international golfing magazines. The trademark has a very high level of original distinctiveness. Information on the company and the trademark can be found at the web site “www.galvingreen.com”.
Galvin Green AB works with carefully selected distributors in each country, distributing agents that are reputed golfing retailers. The company is continually expanding its market and is currently exploring the possibilities of entering the Australian market as well.
The domain name <galvingreen.com.au> is identical to the trademark GALVIN GREEN, the denominations “.com.au” being irrelevant additions according to settled dispute resolution practice. Visitors looking for an Australian branch of the Complainants would risk being lead to the site “www.galvingreen.com.au”.
Firstly, the Respondent is a company that has been removed from the Australian company register since November 9, 2008. The Respondent is consequently no longer a legal entity and is not eligible to hold a domain name registration.
Further, there is no evidence of the Respondent's bona fide use of the domain name in connection with an offering of goods or services. The domain name leads to a website marketing computer memories of other brands, products that are also being marketed on the Respondent's website “www.buffalo-technology-solutions.com”. We refer to a screendump, printed on April 13, 2010 [Annexed to the Complaint].
The Respondent is not commonly known by the domain name. The Respondent has made no legitimate non-commercial or fair use of the domain name.
The Complainants have not given any permission to the Respondent to use the Complainant's trademark or to register the trademark as a domain name.
It is the Complainants' impression that the Respondent has applied for and registered the domain name for the purpose of selling it to the Complainants or alternatively for the purpose of disrupting the business of the Complainants.
The Respondent was fully aware of the fact that GALVIN GREEN was someone else's trademark at the time of registration of the domain name. On July 28, 2009, one day after registering the domain name, John Waugh at the Respondent sent an email to the UK representative of Galvin Green, with the following wording:
I am interested in selling your product online.
Have you any objection to that and can you offer me a ditributor pricing. I would be selling it through www.galvingreen.com.au
Look forward to hearing back from you."
The UK representative of Galvin Green answered by telling the Respondent he could not use the trademark of the Complainants as a domain name and requesting a transfer [of the Domain Name].
Shortly after, on July 30, 2009, Galvin Green AB filed an application for the registration in Australia of the trademark GALVIN GREEN, which on March 15, 2010, lead to registration.
On August 6, 2009, the Respondent filed a trademark application for galvingreen, which application is pending but is likely to be rejected due to the prior registered right of Galvin Green AB.
On September 8, 2009, the representative of Galvin Green AB sent an email to the Respondent, requesting a transfer of the domain name and offering to pay for the Respondent's expenses. The Respondent answered by offering to sell the domain name for € 900.
The requested amount of € 900 must be considered to be in excess of the Respondent's out-of-pocket costs directly related to the domain name, as the costs for registering a domain name is considerably lower. The Complainants saw no reason to comply by agreeing to cover the costs for the Respondent's unauthorized trademark application, which was implied in the answer of the Respondent. Even including the cost for a trademark application, the requested € 900 would have been considerably higher than the actual out-of-pocket expenses of the Respondent. Consequently, the Complainants denied paying the requested sum, arguing that registration of the domain name had cost the Respondent € 70 only.
In response, the Respondent sent a lengthy email to the representative. The last two sentences of this email - “…Now how much has it cost you to read this as its your second language, so you see I have a great deal of feeling for the name and I want to see that it gets a life here or with you. Tnank you for your valuable time I appreciate you understanding my situation now.” [sic] - make it clear that the purpose of the email was to incur the Complainants further costs for legal representation and thus causing further disruption.
All the email correspondence referred to is clear evidence of the bad faith of the Respondent.
It is obvious that the Respondent was acting in bad faith by registering the domain name without authorization. Keeping the domain name registration occupied and unavailable to the Complainants, the trademark holders in spite of their obvious desire to gain control of the domain name referring to their trademark, is proof of continued bad faith.
The Respondent did not submit any formal Response to the Complainant's contentions. However, the Panel notes that there is a copy of an email on the case file, apparently sent by Mr. Waugh to the Complainants' trade mark attorney on April 15, 2010 (evidently shortly after he would have first received a copy of the Complaint), and copied to the Center, in which Mr. Waugh states: “You can purchase it from me for 500 euros. I have copyright for galvingreen computer chips pending. Regards John”
In accordance with paragraph 4(a) of the Policy the Complainant is required to prove:
(i) the domain name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name (Note 2); and
(iii) the domain name has been registered or subsequently used in bad faith.
For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the Complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the Complainant's personal name.
For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
The Complainants' have demonstrated registered trademark rights in GALVIN GREEN, including by virtue of Australian trademark registration 1312508.
It is well established for the purposes of the Policy that the domain suffix (“.com.au”) is to be discounted in consideration of the identity or similarity of the domain name.
The Panel therefore finds that the domain name <galvingreen.com.au> is effectively identical to the trademark, GALVIN GREEN, in which the Complainant has rights.
The Complainant has established the requirement of paragraph 4 (a)(i) of the Policy.
The evidence shows that the Respondent registered the domain name, purportedly in the name of Buffalo Technology Solutions Pty Ltd (as Australian registered business number 36114805266) notwithstanding that this company had been officially deregistered as of November 9, 2008, well before the domain name was registered. According to the Australian Securities and Exchange Commission (ASIC) information, “When a company is deregistered, it ceases to exist as a legal entity and all of its outstanding property interests vest in the Commonwealth (if the property was held by the company on trust) or in ASIC.”
As the company was already deregistered at the time Mr. Waugh purported to register the domain name in the company's name, that company plainly could not have any rights or legitimate interest in the domain name, as it had no legal existence.
To the extent that Mr. Waugh was evidently the moving hand behind the masquerade, he cannot breathe life into a defunct entity. It has – and had – ceased to be. It is - and was at the time the domain name registration was made - an ex-company.
The Panel therefore considers that the Respondent manifestly has no genuine rights or legitimate interest in the domain name.
The Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.
The evidence indicates that the Respondent did not register the domain name <galvingreen.com.au> innocently on the basis of any rights of its own, nor in ignorance of the Complainants' rights and reputation in the mark. By its own admission the Respondent had knowingly taken the Complainants' mark and obtained the domain name registration <galvingreen.com.au> with the apparent intention of using it as potential leverage to seek distributorship rights for the Complainants' products in Australia. In doing so, the Respondent has misappropriated the Complainants' rights and goodwill in their mark.
The Respondent has also attempted to obtain registered trademark rights for itself – not for “copyright … in computer chips” but for Class 25 Apparel – exactly the Complainants' products of interest.
Clearly, the Respondent was well aware that it was not the legitimate owner of the GALVIN GREEN mark for such goods.
The evidence shows that the Respondent has sought to obtain valuable consideration in excess of any costs reasonably relating to the acquisition of the domain name; it has sought to use the domain name for its own profit and has obstructed the potential use of the domain name by the Complainants.
The Respondent's conduct would appear to fall squarely within the various examples of Registration or Subsequent Use in Bad Faith given at paragraph 4(b) of the Policy.
The Panel therefore finds that, on the evidence, the domain name has been registered or subsequently used in bad faith.
The Complainant has established the requirement of paragraph 4(a)(iii) of the Policy.
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, <galvingreen.com.au> be transferred to Galvin Green AB.
Dated: June 1, 2010