WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MYOB Technology Pty Ltd v. Domains by Proxy, Inc. / Direction Software Ltd
Case No. D2010-1428
1. The Parties
The Complainant is MYOB Technology Pty Ltd of Burwood East, Victoria, Australia, represented by Davies Collison Cave, Australia.
The Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America and Direction Software Ltd of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <myoblive.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2010. On August 25, 2010, the Center transmitted by email to GoDaddy.com Inc. a request for registrar verification in connection with the disputed domain name. On August 27, 2010, GoDaddy.com Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. The Response was filed with the Center on September 23, 2010.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 4, 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 an Australian registered company, MYOB Technology Pty Ltd. The Complainant is a developer and manufacturer of computer software and related products and provides various related services including business management and administration, financial, bill payment, advisory and consultancy, domain name registration and website hosting services. MYOB is the Complainant's house mark.
The Complainant was first registered as a company on March 18, 1999. A printout of the company particulars taken from the online Australian Securities Investment Commission Index of Corporate and Business Names as at July 5, 2010 is annexed at Annexure F of the Complaint.
The Complainant's operations are currently focused in Australia and New Zealand but it has previously operated subsidiary companies in Canada, the United Kingdom, the United States of America, Malaysia, Singapore and Hong Kong. The Complainant's brand is still applied to products and services distributed in several of these territories.
The Complainant provides information, and markets its MYOB products and related services extensively online. It has a large number of domain name registrations which incorporate the mark MYOB including, by way of illustration, <myob.com>, <myob.net> and <myob.co.uk>. A list of these is set out in paragraph (iv) of the Complaint. Extracts from the Complainant's home page are set out at Annexure G to the Complaint.
The Complainant is the registered owner of a large number of registered trademarks worldwide incorporating the mark MYOB. The Complainant states that the trademark MYOB is derived from and is an initialism abbreviated from the words "Mind", "Your", "Own", "Business". The Complainant's first trademark application for the mark MYOB was in Australia and was filed in August 1994. A list of the Complainant's trademark registrations for the mark MYOB or marks including the mark MYOB are set out at paragraph (vi) of the Complaint. The Panel notes, by way of example, that the Complainant has registered trademark for the mark MYOB in, inter alia, the following jurisdictions: Malaysia, Australia, European Community, New Zealand, Singapore, Hong Kong, PRC, The Philippines, the United States of America, Canada, India, and Sri Lanka. Status reports for the Complainant's Australian and New Zealand trademark registrations including the mark MYOB are set out as Annexure H to the Complaint.
The Complainant also submits that it is entitled to common law rights for the mark MYOB based upon its reputation. To support this submission, evidence is given by the Complainant at paragraphs (ix-xiii) of the Complaint of international sales figures, promotional expenditure, customers and online and advertising presence utilizing the mark MYOB. In particular, the Complainant states that its international expenditure on promoting its goods and services in 2010 will be AUD 9.7 million.
In the absence of any conflicting evidence or submissions from the Respondent, the Panel accepts the truth of the Complainant's factual submissions as to its trademark rights both registered and unregistered.
The Response is filed by the Respondent Direction Software Ltd.
5. Parties' Contentions
(i) The Complainant submits that the disputed domain name is confusingly similar to the Complainant's trademark MYOB.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. It submits that the Complainant has not authorized or permitted the Respondent to use the trademark MYOB in any disputed domain name. It also submits that there is no evidence of a bona fide offering of goods or services by the Respondent in connection with the disputed domain name.
(iii) The Complainant submits that the disputed domain name was registered in bad faith by the Respondent. It submits that it registered the disputed domain name with the sole intention of benefitting from the Complainant's reputation in its mark MYOB. It also relies on correspondence passing between the Complainant and the Respondent Direction Software Ltd.
(i) The Respondent refutes the Complainant's submission that the disputed domain name and the trademark MYOB are confusingly similar. It submits that the domain name is derived from and is an initialism abbreviated from the words "MY Own Business Live" which is the name chosen for a new software product in April 2008.
(ii) The Respondent refutes the Complainant's submission that there is no evidence of a bona fide offering of goods and services by the Respondent in connection with the disputed domain name. It submits that the first prototype version of the Respondent's software solution was launched using the domain name under its prototype name "Go Live". It was the Respondent's intention to retire this prototype name and transfer to the use of the name "MY Own Business Live" when the first production ready version of the software was launched 18 months later. It relies upon an email of May 22, 2008 set out at Annexure B to the Response to support this contention.
(iii) The Respondent refutes the submission made by the Complainant that the disputed domain name first came to the attention of the Complainant in early 2010. It points out that on May 29, 2008 representative of the Respondent met with representatives of the Complainant in Auckland to explain how it intended to use the disputed domain name. It submits that the communications between the parties are evidence against a finding of bad faith. In particular, it points out that, in the Respondent's view, there is no competition between the activities of the parties.
6. Discussions and Findings
A. Identical or Confusingly Similar
The Panel has found, on the evidence set out above and which is not in contention that the Complainant has trademark rights in the mark MYOB which predate the Respondent's use of MYOB in April 2008 and registration of the disputed domain name on May 14, 2008. The Complainant states that its trademark MYOB was first used in Australia in 1991.
The issue which the Panel has to decide is whether the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that the disputed domain name consists of two elements consisting of the Complainant's trademark MYOB and the non-distinctive term "Live". It submits that the use of the trademark MYOB which is the Complainant's house mark is an essential and distinctive element of its branding and increases the likelihood of consumers confusing the domain name with the trademark MYOB.
The Respondent submits that the disputed domain name is derived from and is an "initialism" abbreviated from the words "my own business live". It appears to accept that the Complainant's trademark MYOB is an initialism abbreviated from the words "mind your own business". There is a distinction in that the words "my" and "live" are not part of the Complainant's unabbreviated use of the name. It submits that the Respondent registered the disputed domain name on May 14, 2008 in order to support its new software product "MY Own Business Live", or "myoblive". It submits that this is evidence that the trademark MYOB and the disputed domain name are not confusingly similar.
The Respondent refutes the Complainant's submission that the disputed domain name consists of two elements, i.e., " MYOB" and "Live". It submits that the disputed domain name is a single element with no distinction made between the " MYOB" element and the "Live" element. Moreover, the Respondent submits that the Complainant is unable to provide evidence of a single instance of customer confusion between the disputed domain name and the trademark.
The Panel's view is that the disputed domain name is capable of being confusingly similar to the Complainant's trademark. The Panel takes the view that it is by no means unarguable that the disputed domain name is confusingly similar to the trademark MYOB to which is added the descriptive suffix "Live". It does, however, consider that the finding is approaching the borderline as to confusion but takes the view that, on balance, the Complainant succeeds in the argument that the disputed domain name consists of the two elements "myob" and "live".
It is supported in this finding by the fact that there appears to have been one instance of actual confusion which is referred to in a letter dated March 11, 2010 to the Respondent from the Complainant's representatives Davies Collison Cave.
The Complainant therefore succeeds in establishing this element.
B. Whether the Respondent has rights or legitimate interests in respect of the domain name
The Complainant submits that there is no evidence that the Respondent has any rights or a legitimate interest in the disputed domain name. It submits that the Complainant has not authorized or permitted the Respondent to use the mark MYOB or to incorporate the mark MYOB in the disputed domain name. Moreover, it is submitted there is no evidence of a bona fide offering of goods and services by the Respondent in connection with the disputed domain name.
The Respondent submits that it has been using the disputed domain name in connection with a bona fide offering for over two years since the first prototype version of the Respondent's software solution was launched using the domain name in June 2008 under its prototype name "Go Live". The Respondent's case is that it intended to "retire" the prototype name and use the name "MY Own Business Live" when the first production ready version of the software was launched 18 months later. In the event, as a result of the dispute with the Complainant, the Respondent decided to postpone the launch of its software.
The Respondent relies upon the internal email dated May 22, 2008, which states that the Respondent "will switch to the My Own Business Live brand". Having considered that evidence and taking into account the different histories of the Complainant and the Respondent in using the disputed domain name and the mark, it appears to the Panel that both parties had a legitimate interest in using the disputed domain name. It is clear that the Complainant derived its use of the mark MYOB from the abbreviation "Mind", "Your", "Own", "Business" whilst the Respondent intended to use "MY Own Business Live" for the purpose of its software and that this was the genesis of the disputed domain name. In light of the Respondent's evidence, the Panel takes the view that the Complainant has failed to establish that the Respondent lacks a legitimate interest in respect of its use of the disputed domain name.
This finding is sufficient by itself to dispose of the Complaint in favour of the Respondent. However, for the sake of completeness, the Panel goes on to consider the issue of bad faith.
C. Registered and Used in Bad Faith
Both parties exhibit correspondence between their representatives relating to the dispute. The starting point is the demand letter dated March 11, 2010 addressed to the Respondent Direction Software Ltd from Messrs Davies Collison Cave, the Complainant's trademark attorneys. Reliance in the letter is placed upon the existence of the Complainant's trademark MYOB. The letter is responded to by an email dated March 22, 2010 from Mr. Bob T. Kelpy, Vice President-Operations and General Counsel of the Respondent. In summary, Mr. Kelpy states that the use of the disputed domain name by the Respondent is not deceptive and that its software product is different from that of the Complainant. He also points out that the Respondent's properties and brands are focused towards the North American and European markets rather than Australia and New Zealand. He agrees to make "small adjustments" to the Respondent's website in order to minimize brand confusion.
There then follows a further email exchange between Mr. Kelpy and Mr. Sears of Davies Collison Cave. In particular, an email communication of April 9, 2010 from Mr. Kelpy states that he feels confident that the changes they have made to the Respondent's website will remove the Complainant's concerns, but he is concerned with recent press reports with regard to the use of the term "MYOB Live" by the Complainant in respect of a new product. Overall, the correspondence is cordial.
The last item of correspondence exhibited is an email from Mr. Ian Boylan, General Counsel of MYOB to Mr. Mark Simon of the Respondent pointing out that the Complainant considers that it would be successful in a UDRP claim to cancel the disputed domain name and offering to purchase the domain name "at reasonable cost" which is put at a figure of USD 2,500.00. The email concludes that unless a deal can be concluded on that basis, the Complainant "will have little option but to proceed with the UDRP". According to the Respondent, there was no further communication with the Complainant.
The Complainant submits, in paragraph (c)(xiii) of the Complaint that the disputed domain name was registered for the purposes of commercial gain by suggesting an affiliation, sponsorship or endorsement of the products of the Complainant. In the Panel's view, there is no evidence to support that submission. Rather, based on the submitted evidence, the position appears to be that a decision was made by the Respondent in May 2008 to launch the "Go Live" brand and then in due course switch to the "MY Own Business Live" brand. This would be consistent with the use by the Respondent of the disputed domain name. There is no evidence that the use of the brand MY OWN BUSINESS LIVE"MY Own Business Live" coupled with registration of the disputed domain name was done for the purposes of commercial gain against the Complainant.
Moreover, the Respondent had already included the statement on each page of its website that "MYOB is a registered trademark of MYOB Technology Pty Ltd. Direction Software Ltd has no legal association with MYOB Technology Pty Ltd".
In these circumstances, the Panel finds that there is no evidence of bad faith on the part of the Respondent and that accordingly, the Complainant fails in establishing this element of the Policy1.
For all the foregoing reasons, the Complaint is denied.
Clive Duncan Thorne
Dated: October 15, 2010
1 The Panel notes here that the UDRP was designed to provide quick relief against clear cases of cybersquatting, and that the present case does not fall under that category. As such, any issues relating to trademark infringement, if any, fall outside the scope of an administrative proceeding such as the UDRP. Parties may of course raise any such issues at a competent court which may more fully examine relevant evidence.