WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Epoch Co. Ltd. v. Juggernaut Systems
Case No. D2010-1382
1. The Parties
The Complainant is Epoch Co. Ltd. of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Juggernaut Systems of Rouse Hill, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <sylvanianfamilies.net> (“the Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2010. On August 16, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On August 16, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 August 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2010. The Response was filed with the Center on September 9, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on September 16, 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.
4. Factual Background
The Complainant is Epoch Co Limited, a Japanese corporation founded in 1958 which manufactures toys and other goods for domestic sale in Japan and for export.
The Complainant started selling a collectable series of toys called “Sylvanian Families” in 1985. Since the 1985 launch of the Sylvanian Families’ range, animations and video game software have been commercialized. According to the Complaint, the total number of shipments of Sylvanian Families toys up to the end of 2009, was over 100,000,000 dolls and 6.9 million houses and other miscellaneous goods.
From the outset, the Complainant has marketed products bearing a SYLVANIAN FAMILIES mark in both Japan and North America. Expansion into Western Europe followed in 1987. By the end of 2009, sales of SYLVANIAN FAMILIES products worldwide totaled over ¥1,770 billion. Fan clubs for followers and collectors of SYLVANIAN FAMILIES toys exist around the world, including online at websites such as “www.kiki-sylvanian.net” and “www.sylvanianvillage.com”.
The Complainant’s Trademarks
The Complainant is the proprietor of numerous registrations of the mark SYLVANIAN FAMILIES around the world, including in Australia where the Respondent resides. The word mark SYLVANIAN FAMILIES has been registered in Australia with effect from April 9, 1986, for miniature toy animals and accessories included in international class 28. The Australian trademark registration contains an endorsement stating that the mark shall give no right to the exclusive use of the word “families”.
According to the Complainant, the Complainant’s SYLVANIAN FAMILIES mark has been extensively used in respect of goods in international classes 9 and 16, as well as the class 28 goods.
The Respondent and the Domain Name
The Domain Name was registered on March 13, 2010. At the time the Complaint was filed, it did not resolve to any active website.
The Respondent has not been licensed to use the Complainant’s SYLVANIAN FAMILIES mark, nor is the Respondent associated in any way with the Complainant. The Complainant stated, and the Respondent did not deny, that the Respondent has no trademark registration for SYLVANIAN FAMILIES, and is not commonly known by that name.
The Complainant said in its Complaint that its investigations have shown that the Respondent has a connection to other websites which sell SYLVANIAN FAMILIES products. These were said to include the website at “www.toymadness.com.au” (“the Toy Madness website”). The Complainant produced WhoIs particulars for the <toymadness.com.au> domain name, and also for the domain name <hobbymadness.com.au>. Both resolve to the Toy Madness website. The Whois particulars for <toymadness.com.au> did not show the Respondent as registrant, but did show the Respondent as the technical contact. Jowel Bondoc of the Respondent was shown as the registrant of the domain name <hobbymadness.com.au>.
The Complainant produced a copy of the front page of the Toy Madness website. It contained a large banner bearing the SYLVANIAN FAMILIES mark. Clicking on the banner link took the Internet user direct to a subpage which was specific to the Complainant’s SYLVANIAN FAMILIES products. Pictures of various characters from the SYLVANIAN FAMILIES range were depicted on this subpage, each with a sale price posted immediately above an “add to cart” click-on icon. In addition to SYLVANIAN FAMILIES, the Toy Madness website contained advertisements for many other toys which customers could buy (including “Barbie”, “Disney Princess”, and “Toy Story”).
In the Response, signed by Mr. Jowel Bondoc, the Respondent stated that it is a technology service provider, specializing in web application development and web and printed designs. It said that it develops web-based applications (including websites) for clients in Australia, and it also develops free online services for its local community.
The Respondent stated in its Response that it intended to point the Domain Name to a free community public notice board website for the residents of the suburb of Sylvania, in New South Wales, Australia. The Respondent referred to a television documentary series called “Sylvanian Waters”, which was screened in Australia in 1992. That television programme featured the activities and lifestyle of a particular family which resided in Sylvania.
The Respondent said that the website which was to be established at the Domain Name would include an online copy of a free printed newsletter which would be distributed to the local community through the local library. The website and its print version would publish the latest and upcoming events in the Sylvania community. The Respondent stated that this project was in development, and was intended for release in November 2010.
The Respondent said that there was no intention to use the Domain Name for any commercial purpose, other than for a purpose which related to the project for the local Sylvanian community.
The Respondent said that offers to purchase the Domain Name had been received by email on May 14, 2010 and May 24, 2010, but that it did not respond to those offers since it had no intention to profit from the Domain Name, or to use it for commercial purposes. The Respondent produced copies of the emails dated May 12, 2010 and May 24, 2010. The two emails appear to have been in identical form. Both came from an individual called Ya Jima, from the same Gmail address. In each case, the author said that he or she had noticed that the Respondent owned the Domain Name, and that he or she would like to purchase the Domain Name. The Respondent was asked to let the author know if it would be interested in selling the Domain Name.
In response to the Complainant’s references to the Toy Madness website, the Respondent stated that one of its clients is Toy Madness, an authorized seller of hundreds of varieties of children’s toys, including those manufactured by the Complainant. Toy Madness is not owned by the Respondent, nor does the Respondent have any influence on the products sold through the Toy Madness website, or otherwise on Toy Madness’ business activities. The Respondent merely provides technical support to Toy Madness for its web server. The Respondent also registered Toy Madness’ domain name during the latter company’s start-up phase. The Respondent asserted that it was “pure coincidence” that it utilized the Domain Name while at the same time one of its many clients sells a product manufactured by the Complainant.
The Respondent said it does not own any website which sells any products. It alleged that the Complainant made a false assumption when it assumed that the Respondent had intended to link the Domain Name to the Toy Madness website. Had that been the Respondent’s real intention, the link would have been effective immediately on registration of the Domain Name.
The Respondent said further it is not a reseller of domain names, and has never sold any domain name for a profit. It said that it had no intention to disrupt the Complainant’s business by selling or renting the Domain Name for a commercial purpose, or by using the Domain Name in bad faith.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is essentially identical and/or confusingly similar to the Complainant’s SYLVANIAN FAMILIES mark.
2. The Respondent has no right or legitimate interest in respect of the Domain Name, having regard to the following factors:
(i) The Respondent is not licensed to use the Complainant’s trademarks, and is not associated with the Complainant in any way.
(ii) The Complainant has not been able to find any trademark registrations in the name of the Respondent for SYLVANIAN FAMILIES, and the Respondent has not been commonly known by the Domain Name.
(iii) Even if the Respondent has been selling the Complainant’s products through a website established at another domain name, that could not establish a legitimate interest in the Domain Name. The use of a manufacturer’s trademark by an unauthorized dealer must meet certain criteria to benefit from the protection afforded by paragraph 4(c)(i) of the Policy. Those criteria include not offering competing products, and clearly identifying the nature of the relationship between the domain name registrant and the trademark owner (citing Nikon Inc. and Nikon Corporation v Technilab, Inc, WIPO Case No. D2000-1774; Oki Data Americas Inc. v ASD Inc, WIPO Case No. D2001-0903; and Philip Morris Incorporated v Alex Tsypkin, WIPO Case No. D2002-0946). The Respondent does not meet those criteria.
(iv) The Domain Name is identical or confusingly similar to the Complainant’s mark, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services.
(v) The Respondent’s use of the Domain Name has not been a legitimate noncommercial or fair use.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following contentions:
(i) By using the Complainant’s SYLVANIAN FAMILIES mark in the Domain Name, the Respondent has intentionally attempted to use the reputation of the Complainant, in bad faith.
(ii) The Respondent makes no serious attempt to use the Domain Name for any bona fide purpose.
(iii) The Respondent is blocking the Complainant from registering or using the Domain Name, and is able to interrupt the Complainant’s business by directing potential customers to competitors of the Complainant, or by falsely making those customers believe that there is an association between the Respondent and the Complainant.
(iv) Passive holding of a domain name by a respondent may amount to bad faith use of the domain name (citing Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, and Toshiba Corporation v Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
(v) It would be very easy to assume from the Toy Madness website that the Respondent’s business is connected with the Complainant.
(vi) The Respondent has been well aware of the Complainant and its products, and has been selling them in Australia, albeit from another website. But even if it is the Respondent’s intention to link the Domain Name to that other website, that would still be a bad faith use.
(vii) The Respondent’s behavior shows a clear intent to gain commercially from the misuse of the Complainant’s reputation, or to block the legitimate use of the Domain Name by the Complainant.
The Respondent contends:
1. Part of the Domain Name is a clear reference to a geographical location in Australia. According to the Australian Trade Marks Act 1995, the Complainant cannot have exclusive rights in the name of a geographical location.
2. There is an endorsement on the Complainant’s Australian trademark registration stating that the registration gives the Complainant no exclusive rights to the use of the word “Families”.
3. The Respondent has a right or legitimate interest in the Domain Name, having regard to the project it is undertaking for the residents of Sylvania and the surrounding suburbs in the Sutherland Shire.
4. The Respondent’s intended use of the Domain Name has no relevance to the Complainant’s products. (As the Respondent put it: “there was no intention or substantial proof that the website will sell or exclusively advertise products that are manufactured/ owned by the Complainant”). The facts that the Respondent did not link the Domain Name to a commercial website immediately after the Domain Name was registered, and did not accept the offers to purchase the Domain Name made in May 2010, support the Respondent’s contention that it had no intention to profit from the Domain Name or to use it for commercial purposes.
4. The Respondent has no relevant connection with the Toy Madness website.
5. The Respondent has had no intention to block the Complainant, nor any intention to sell or commercialize the Domain Name (e.g. by providing sponsored advertising links on a website at the Domain Name).
6. The Respondent is not a reseller of domain names, and has had no intention of selling or renting the Domain Name for a commercial purpose. Nor has it had any intention to use the Domain Name in bad faith. The Respondent has never been in a situation where any of its domain names, or its products or services, has violated any registered trademark, either in Australia or elsewhere.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It is the registered proprietor of the word mark SYLVANIAN FAMILIES in a number of jurisdictions, and the Domain Name is identical to that mark (the “.net” suffix is not taken into account in the comparison).
The Respondent has contended that the Complainant cannot have exclusive rights in the name of a geographical location. However there is no merit in that contention, as the Complainant’s registered mark consists of the name or expression SYLVANIAN FAMILIES, and as far as the Panel is aware, there is no suggestion that “Sylvanian Families” is the name of a geographical location. The Respondent’s contention that the Complainant can have no exclusive rights to the use of the word “families” is also without merit. The Complainant has not argued that it has any trademark or service mark rights in that word, which is in any event quite different from the combined expression “Sylvanian Families”.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“…[A] Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Domain Name is identical to the Complainant’s SYLVANIAN FAMILIES mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. The Respondent has not suggested that it is commonly known by the Domain Name, so it cannot have any right or legitimate interest of the kind described at paragraph 4(c)(ii) of the Policy. The Respondent had not been using the Domain Name in connection with any offering of goods or services before it received notice of the present dispute, and nor did it produce any evidence that it had (by the time the Complaint was filed) made any “demonstrable preparations” to use the Domain Name for such a purpose. Those circumstances rule out any possibility of the Respondent having a right or legitimate interest in the Domain Name under paragraph 4(c)(i) of the Policy.
The foregoing matters are sufficient to establish a prima facie case of “no right or legitimate interest”, so the evidentiary onus on this part of the Complaint shifts to the Respondent.
The Respondent contends that it has a right or legitimate interest in respect of the Domain Name because it intends to establish at the Domain Name a free community public notice board website, for the benefit of the residents of the Sydney suburb of Sylvania. It denies that it has any intent for commercial gain, or to misleadingly divert consumers looking for the Complainant’s website. In effect, the Respondent seeks to bring itself within the safe harbor of paragraph 4(c)(iii) of the Policy – respondent making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not produce any evidence to support its contention that it is planning an online public service for the residents of Sylvania, even though the Domain Name had been registered almost six months before the Response was filed and the Respondent said in its Response that the project was “currently in development”. If the Respondent did in fact register the Domain Name for the purpose claimed in the Response, and the project was in fact “in development” when the Response was filed, one would have expected the Respondent to be able to produce at least some evidence of its claimed plans; none was provided.
Nor did the Respondent offer any reason for undertaking an online project for the residents of Sylvania. The Respondent did not say that it or Mr. Bondoc is based in Sylvania, or has some connection with the suburb. Why Sylvania? Why add the word “families” if a public notice board was intended? Why choose a domain name for an online community notice board which would apparently exclude those living alone? No answers were provided to those (seemingly obvious) questions.
In the event, it is not necessary for the Panel to decide on the truthfulness or otherwise of the Respondent’s statements about his intentions, for the Panel to come to a conclusion on this part of the Complaint. Paragraph 4(c)(iii) of the Policy requires that a respondent must be making the relevant use of the disputed domain name at the time the proceeding is commenced. Paragraph 4(c)(iii) commences with the present tense “you are making a legitimate noncommercial or fair use of the domain name ”. See also the decision of this Panel in Lonely Planet Publications Pty Limited v Mike Tyler, WIPO Case No. D2004-0670: the respondent’s relevant right or legitimate interest must subsist at the time the complainant files its complaint. A respondent’s unsupported statement that it intends to establish a particular kind of noncommercial website at a disputed domain name at some future time, even if it is believed, is insufficient to establish a right or legitimate interest in that domain name under paragraph 4(c)(iii) of the Policy.
Having regard to the foregoing considerations, the Respondent has failed to persuade the Panel that it has any right or legitimate interest in respect of the Domain Name. The Complainant accordingly succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complainant also succeeds on this part of the Complaint, for the following reasons.
The Domain Name is identical to the Complainant’s mark, and the Respondent has not denied that it knew of the Complainant or its range of SYLVANIAN FAMILIES toys when it registered the Domain Name. Indeed, those toys have been featured on a website (the Toy Madness website) to which a domain name owned by Mr. Bondoc of the Respondent (the <hobbymadness.com.au> domain name) has resolved. Nor did the Respondent deny the Complainant’s contention that its SYLVANIAN FAMILIES collectible toys have a “huge and loyal following of collectors as well as new devotees.”
In those circumstances, the Respondent could not have failed to appreciate that any website established at the Domain Name would be likely to attract Internet users looking for a website operated or endorsed by the Complainant, which would supply or feature the Complainant’s “Sylvanian Families” range of toys. If the Respondent appreciated that likelihood, the Respondent must also be taken to have intended it.
The Respondent’s explanation in its Response for its choice of the Domain Name was unconvincing. Why would anyone want to go to the time and trouble of establishing and maintaining an online notice board for the citizens of a particular suburban area, without receiving any remuneration for so doing? Even if somebody would want to do that, why choose Sylvania? Why not one or more of the hundreds of other suburbs in the cities of Australia? (On the face of the record, the Respondent had no particular connection with Sylvania, and therefore no apparent motivation to provide the residents of that area with a free online service dedicated to their particular needs or interests). And why focus specifically on “families” in Sylvania?
In circumstances where the Respondent knew that any website at the Domain Name would attract site visitors looking for websites featuring the Complainant’s SYLVANIAN FAMILIES toys, and where the Complainant had referred in its Complaint to commercial links between the Respondent and an online retailer who was selling those same toys, those questions clearly needed to be addressed in the Response; they were not.
The Respondent offered no explanation for linking the <hobbymadness.com.au> domain name to the Toy Madness website, and it did not clearly disavow an intention to use the Domain Name for commercial purposes: the Panel notes that the Respondent said in its Response that “there was no intention to use [the Domain Name] for any commercial purpose, other than for the purpose which relates to the project for the local community”. Elsewhere in the Response, the Respondent argued that “there was no intention or substantial proof [the Panel’s emphasis] that the website will sell or exclusively advertise products that are manufactured / owned by the Complainant.” The latter statement, when read carefully, leaves open the possibility that the Respondent intends to use the proposed website at the Domain Name to sell products manufactured by the Complainant’s competitors, and / or to market other companies’ products in addition to those of the Complainant.
In the Panel’s view any such use of the Domain Name must be caught by paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent will be intentionally attempting to attract Internet users to the website at the Domain Name by creating a likelihood of confusion with the Complainant’s SYLVANIAN FAMILIES mark, as to the source, sponsorship, affiliation, or endorsement of the website. And the proposed commercial use of the website to be established at the Domain Name (whether in the form of linkage to another website, generating pay-per-click advertising revenue from sponsored links to third party commercial websites, or otherwise) implies an intent to derive commercial gain. It does not matter for the purposes of paragraph 4(b)(iv) if some entity other than the Respondent is the party deriving the commercial gain – see in that regard Express Scripts Inc. v Windgather Investments Limited / Mr. Cartwright, WIPO Case No. D2007-0267, and the decision of this Panel in Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857.
Having regard to the foregoing considerations, the Panel is satisfied on the evidence submitted by the parties that the Respondent probably registered the Domain Name for the bad faith purpose described at Paragraph 4(b)(iv) of the Policy. The Complainant has therefore made out its case of bad faith registration of the Domain Name.
The Complainant must also prove bad faith use of the Domain Name, and that is made more complicated by the fact that the evidence is that, as at the time of the filing of the Complaint and the Response, the Domain Name had not been pointed to any active website.In those circumstances the Complainant alleged that the Respondent has been guilty of bad faith use by its passive holding of the Domain Name, in accordance with the principle established in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, and applied since by numerous UDRP panels.
The Panel notes that since the Response was filed, the Domain Name has been pointed to an active website. However neither party has asked the Panel to consider this website, and the Panel’s responsibility is to decide the Complaint “on the basis of the statements and documents submitted and in accordance with the Policy” (Rules, paragraph 15(a)). In those circumstances, the Panel will approach the matter by looking first at the evidence produced with the Complaint and the Response and reaching a provisional conclusion on the basis of that evidence, and then considering the new website to see if it appears to call for any different conclusion (or is such that the parties ought to be afforded an opportunity to make further submissions on it).
The Position on the Basis of the Evidence Submitted with the Complaint and the Response
The Panel in Telstra Corporation noted that a finding of bad faith use by passive holding of a disputed domain name will depend on the facts of the particular case. Relevant considerations will include the strength of the complainant’s mark, whether the respondent has provided false contact details for the disputed domain name, and whether the panel can conceive of any plausible active use of the domain name by the respondent which would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or as an infringement of the complainant’s trademark rights.
In Horn Abbot International Limited v Ian McMillan, WIPO Case No. D2005-0198, this Panel considered the application of Telstra Corporation in circumstances where no website had been established at the disputed domain name, and the respondent stated his intention to use the domain name for a use which the Panel could not dismiss as implausible. The Panel in Horn Abbot regarded the core question as being whether, taking all the circumstances into account, it was possible to conceive of a plausible active use of the domain name by the respondent which would be legitimate. On the facts of the case, the Panel considered that he could conceive of a plausible legitimate use of the domain name by the respondent, namely the use to which the respondent said he intended to put the domain name (notwithstanding that the question of whether the respondent’s statements about his intentions for the domain name were to be believed was a difficult one). The complaint was denied.
What is the position in this case? In the complainant’s favor, is the strength of its mark. The Panel accepts that the Complainant’s SYLVANIAN FAMILIES mark would be instantly recognized by millions of Internet users around the world. It is a mark of such note that any unauthorized use of it as a domain name immediately raises the question of whether the registrant has been guilty of opportunistic bad faith, of the kind discussed in decisions such as Veuve Clicquot, Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co. WIPO Case No. D2000-0163.
There is no suggestion of the Respondent registering false contact details in this case, so the critical question on the “passive holding” issue is whether the Panel can conceive of any plausible use of the Domain Name, by the Respondent, which would not be illegitimate. The Panel has come to the conclusion that he cannot. First, the Respondent is a commercial organization. It has no apparent reason to set up and maintain a free online community notice board. Secondly, the Respondent has no apparent connection with Sylvania, or with the families who reside in that Sydney suburb. Without compelling evidence of such a connection, the Respondent’s statements as to its intentions for the use of the Domain Name are simply not plausible, especially given its apparently close commercial relationship with at least one online toy retailer.
Yes, the Panel can conceive of the possibility of a community-spirited resident of Sylvania setting up a not-for-profit online notice board for residents in the area, and using the word “Sylvania”, or “Sylvanian” in his or her chosen domain name (although why such a person would use the expression “families” in the domain name would be more difficult to explain). But the Panel does not find it plausible that the Respondent, a business organization with no apparent connection with Sylvania, would do that.
If the proposed use put forward by the Respondent is rejected as implausible, or lacking in bona fides, the Panel cannot conceive of any other use to which the Respondent might plausibly put the Domain Name, which would not involve some element of trading off the Complainant’s very substantial goodwill in its SYLVANIAN FAMILIES mark. In the words of the panel in s. Oliver Bernd Freier GmbH & Co. KG v Su Chin Tsai, WIPO Case No. D2009-1202, “it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group PLC v Sonoma International LDC, WIPO Case No. D2002-0131).” The Respondent has acknowledged that it has in mind using the Domain Name for commercial purposes (at least in conjunction with its claimed online notice board project), and any commercial use of a website at the Domain Name (whether or not involving the sale of the Complainant’s products or those of its competitors) will necessarily benefit to some extent from the increased Internet traffic which the use of the Complainant’s mark in the Domain Name could be expected to generate. In the Panel’s view, the strength of the Complainant’s mark is such that any commercial use of a website at the Domain Name (being a use which is not authorized by the Complainant) would be likely to fall foul of Paragraph 4(b)(iv) of the Policy, and could not be legitimate.
Does the Website now established at the Domain Name Change Affect the Foregoing Conclusions?
The short answer to that question is “no”. While the website does purport to provide a “free community notice board for the Sylvania Community of the Sutherland Shire”, it is described as being still “under construction”, and it contains what appear to be commercial advertisements for a number of businesses, many of which do not appear to be in Sylvania, or even in the Sutherland Shire (for example, under a heading “Red Specials”, discount products are offered at retail outlets in the Sydney CBD, which the Panel understands would be over 20 kilometers from Sylvania, and at one retail outlet in the northern Sydney suburb of St. Ives, which would be some 30-40 Kilometers from Sylvania). Underneath the telephone number provided for one business, appear the words: “Is this information incorrect?”
The Panel has considerable doubt about the bona fides of this website, but even if it were a genuine website for the families of Sylvania, the commercial use the Respondent is making of the site is the very kind of commercial use (in conjunction with the online notice board project if that is really what it is) which the Panel has found would be caught by paragraph 4(b)(iv) of the Policy. Accordingly, reference to the website now established at the Domain Name does not affect the provisional conclusions reached by the Panel on the basis of the evidence submitted by the parties. The Respondent has not sought to make submissions on the website, and on the view of the case to which the Panel has come, there is no need to invite the Complainant to comment on 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 Name, <sylvanianfamilies.net>, be transferred to the Complainant.
Dated: September 30, 2010