WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Woolworths Limited v. Domain AdminkPrivacyProtect.org/Smvs Consultancy Private Limited
Case No. D2010-1046
1. The Parties
The Complainant is Woolworths Limited of Sydney, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Domain Admin PrivacyProtect.org of Moergestel, Netherlands and Smvs Consultancy Private Limited of Mumbai, India (together, the “Respondent”, except where expressly indicated).
2. The Domain Name and Registrar
The disputed domain name <bigwphotos.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 24, 2010. On June 24, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 30, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an email communication of July 15, 2010, stating that it declined to amend the Complaint. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or ”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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 5, 2010.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 13, 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.
A preliminary issue arises for the Panel regarding the identity of the Respondent. Information provided by the Complainant shows that the registrant of the disputed domain name was Domain Admin, PrivacyProtect.org at the time that the Complaint was filed. However, as indicated above, the registrar verification response stated that the registrant was Smvs Consultancy Private Limited. The Center provided the Complainant with an opportunity to amend the Complaint, if it so wished, to include or substitute the latter entity as Respondent. The Complainant declined to do so. The Complaint, not being administratively deficient in this or any other regard, proceeded and the Center chose to notify it to both the original and present registrants for their respective interests. Accordingly, the Panel must decide whether the proper Respondent is the original or subsequent registrant, or both of these entities.
A similar issue was considered by the panel in Research in Motion Ltd v. Privacy Locked LLC/Nat Collicott, WIPO Case No. D2009-0320. This case related to the domain name <backberry.com> which had been registered in the name of a proxy registrant named Privacy Locked LLC. The registrar verification response disclosed a different registrant. As in the present case, the complainant was invited to add the subsequently disclosed registrant as respondent but it declined to do so. It fell to the panel to decide whether the proxy or subsequently disclosed registrant was the proper respondent. After an extensive review of recent and historic practice and procedure on this topic, with reference to other decided cases under the Policy, the panel determined that it would treat both registrants as one and the same; that the Complaint, as directed against the proxy registrant, had been properly brought and that there was no requirement for the complainant to amend the complaint to render it compliant with the Policy and the Rules. The Panel in the present case sees no reason to depart from this pragmatic and sensible approach and accordingly will treat both Domain Admin, PrivacyProtect.org and Smvs Consultancy Private Limited as Respondent in this case without requiring the Complainant to file an amendment to the Complaint.
4. Factual Background
The Complainant is Woolworths Limited, an Australian company with its head office in Sydney, Australia. The Complainant is the largest retail company in Australia and New Zealand by market capitalisation and sales. Its retail outlets include the department store chain BIG W which has over 150 stores located throughout Australia. The Complainant has been using the BIG W name in connection with its stores since 1976 and now employs 17,000 people throughout the chain, generating revenue for the 2008-09 financial year of $4.2 billion Australian dollars. Among many other items, BIG W provides photo processing services, both in store and at its website located at “www.bigwphotos.com.au”.
The Complainant is the owner of a portfolio of registered trademarks for the word BIG W including the following Australian registered trademarks which were all registered on February 23, 1989: no. 505470 (class 1); no. 505471 (class 2) and no. 505474 (class 6).
The disputed domain name was registered on October 16, 2007. The website associated with the disputed domain name displays a click through search engine and web portal featuring a number of links, most of which are commercial in nature, such as, for example, “Print Photo Book,” “Canvas Prints,” “Order Photos Online,” “Photo Calendars” and “Digital Prints.” There is also a link featuring the Complainant’s BIG W mark. Web pages accessed from the links offer products competitive to the Complainant’s offering.
5. Parties’ Contentions
The disputed domain name is confusingly similar to trademarks in which the Complainant owns rights; the Respondent has no right or legitimate interest in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
The Respondent is not known by the disputed domain name, and has not acquired any rights to, or interests in, the Complainant’s trademarks. The Panel is entitled to infer, from the underlying registrant’s choice to use a WhoIs Privacy Service, that the underlying registrant is also not known by the disputed domain name.
The disputed domain name is not being used in connection with a bona fide offering of goods or services. Rather, it is being used for the purpose of redirecting visitors to other websites, many of which are in direct competition with the products and services offered by the Complainant. There is no available evidence that the Respondent or the underlying registrant has any rights or legitimate interests in respect of the disputed domain name.
It is self-evident that the disputed domain name has been registered and used in bad faith. In the absence of any explanation from the Respondent, its use of a WhoIs privacy service may be considered to be a factor which points in the direction of bad faith. The Respondent has acted in bad faith through the use of a robots.txt file to prevent investigation into the historical use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith and with the intention of causing confusion with the Complainant’s trademarks in an attempt to divert Internet traffic otherwise rightfully bound for the Complainant. The disputed domain name is currently linked to a domain name monetisation website which is a series of links to various advertisements and third party web pages, all of which are related to photography which is a service offered by the Complainant. The mention on the website of the BIG W mark indicates that the Respondent is aware of the Complainant’s existence and reputation. Absent any contrary indication, the Complainant submits that the disputed domain name was registered with the intention of taking advantage of the Complainant’s reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated to the satisfaction of the Panel that it has rights in the trademark BIG W by virtue of its extensive portfolio of registered trademarks. The disputed domain name is not identical to the Complainant’s mark, although it incorporates this in its entirety together with the generic word “photos”.
It is well recognized in previous cases under the Policy that where the Complainant’s trademark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the trademark (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409). The dominant part of the disputed domain name is the Complainant’s BIG W trademark and not the word “photos”. The top level domain “.com” is disregarded for the purposes of comparison as is customary in cases under the Policy. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Accordingly the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case against the respondent.
The Complainant has asserted that the Respondent is not known by the domain name, and has not acquired any rights to, or interests in, the Complainant’s trademarks. The Complainant has also provided evidence that the website associated with the disputed domain name has been used to publish advertising links relating to third party websites, many of which are in direct competition with the products and services offered by the Complainant. It is well established that this type of use of a domain name, which in effect trades off the Complainant’s reputation and trademark, offering or linking to competing goods and services, is not bona fide and it is clear to the Panel that the Respondent’s use of the disputed domain name in this manner cannot confer any rights or legitimate interests upon it.
In these circumstances the Panel is satisfied that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy. The Respondent has chosen neither to explain its conduct nor to set out evidence of any rights or legitimate interests in respect of the disputed domain name. In these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In light of the Complainant’s evidence the Panel is satisfied that the Respondent registered and used the disputed domain name in bad faith. It is clear to the Panel that the Respondent selected and used the disputed domain name with intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Furthermore, while the Respondent’s use of a WhoIs privacy service would not, on its own, lead to a finding of registration and use in bad faith, the Panel considers that in the circumstances of the present case it is a further indicia thereof. In the Panel’s opinion it is reasonable to infer that, by selecting a WhoIs privacy service, the Respondent was deliberately attempting to conceal its identity from the Complainant and others with a view to continuing with its targeting of the Complainant’s trademark for as long as possible.
Accordingly, the third element under the Policy has been established.
Notwithstanding the finding above, the Panel wishes to note for the sake of completeness that it does not accept the Complainant’s submissions regarding the Respondent’s use of a robots.txt file to conceal the history of use of the disputed domain name. The screenshots from the Internet Archive Wayback Machine provided by the Complainant do not support its submissions. The Complainant’s screenshots state that the item searched for is not in the Archive. They do not show the familiar page stating that the Internet Archive’s crawler has been blocked from the Respondent’s site by virtue of the robots.txt file. In this particular case, the Panel takes the view that the Complainant’s assertions regarding robots.txt do not taint the remainder of its submissions and supportive evidence on bad faith, as these are based upon entirely independent grounds. Nevertheless, the Panel notes that parties would do well to provide very careful and clear support for such a serious allegation, given that the use of robots.txt in this manner implies a specific and overt bad faith action on the part of a respondent.
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, <bigwphotos.com> be transferred to the Complainant.
Andrew D. S. Lothian
Dated: August 25, 2010