WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clipsal Australia Pty Ltd v. DIGITCOM Technology
Case No. D2010-1800
1. The Parties
The Complainant is Clipsal Australia Pty Ltd of Baulkham Hills, NSW, Australia, represented by Banki Haddock Fiora, Australia.
The Respondent is DIGITCOM Technology of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain names <clipsal.biz>, <clipsal.info>, and <clipsal.org> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 26, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 26, 2010, GoDaddy.com, 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 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 November 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. A Response was filed with the Center on November 4, 2010.
The Respondent submitted Supplemental Filings to the Center on November 25, 2010 and December 10, 2010.
The Center appointed David Stone as the sole panelist in this matter on December 3, 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 a leading manufacturer of electrical accessories in Australia and Asia, and its products include electrical switches, heating, lighting and safety apparatus. The Complainant has been the owner of the CLIPSAL trade mark registration in Australia since 1945 and currently owns a large portfolio of over 200 CLIPSAL trade mark registrations or applications in 100 jurisdictions. This includes trade mark registrations dating from 1996 for CLIPSAL in the UAE, which is the country in which the Respondent is located. The Complainant additionally owns registrations for a number of domain names including the word “clipsal” including “.com”, “.com.au”, “.co.nz”. and “.co.uk”.
The disputed domain name <clipsal.biz> was registered on August 16, 2008, and the domain names <clipsal.info> and <clipsal.org> were both registered on August 17, 2008. Each of the disputed domain names currently resolves to “www.smarthomeuae.com/new3/index.php” which hosts a retail web site selling home furnishings and electrical goods. The Respondent offers for sale at this web site CLIPSAL branded goods as well as goods made by many other manufacturers.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names are identical to its registered and common law trade mark CLIPSAL.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names, is not using the disputed domain names in connection with a bona fide offering of goods and services, has never been licensed or otherwise permitted by the Complainant to use the CLIPSAL trade mark, and has not carried on business or been commonly known by the name “Clipsal”, or acquired related trade mark or service mark rights, prior to its registration of the disputed domain names.
The Complainant submits that the Respondent registered the disputed domain names, each one consisting solely of the Complainant’s CLIPSAL trade mark preceding a gTLD suffix, because it knew of the Complainant’s reputation for electrical accessories.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. In support of this submission the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet traffic to its web site by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site. The Complainant further contends that the Respondent’s offer to sell the disputed domain names to the Complainant, and its registration of other domain names containing other well-known third party trade marks, is further evidence of bad faith usage and indeed a pattern of such conduct.
The Respondent contends that it has full legal rights to purchase domain names such as the disputed domain names, and that this practice is established amongst other dealers of the Complainant’s goods. The Respondent further contends that the Complainant has misled the Center by permitting other third parties to use the CLIPSAL trade mark in domain names and cites the domain name <clipsal.ru> as an example of this.
The Respondent contends that as it has purchased the Complainant’s products it is permitted to advertise using the Complainant’s name and thereby attract traffic to its web site.
The Respondent finally contends that the Complainant should purchase the disputed domain names from the Respondent and also the Clipsal products which the Respondent has in stock.
6. Discussion and Findings
A. Respondent’s Supplemental Submission
The Panel must first decide whether to consider the Respondent’s November 25, 2010 and December 10, 2010 Supplemental Filings, and what weight to accord them. Paragraph 12 of the Rules unambiguously provides that only the Panel may request further submissions. The Rules make no provision for a party to file an additional submission without leave of the Panel. In general, such submissions are appropriate only if they raise new facts or law not reasonably available or foreseeable at the time of the party’s initial submission. They are not to be used to reply to the respondent’s arguments.
The Panel did not request further filings from either party, and so will not take the Respondent’s Supplemental Filings into account. Much of the Supplemental Filings simply restates arguments that have already been made, and none of the arguments presented relate to facts which could not have been submitted prior to the due date for the Response. Furthermore the Respondent gives no explanation for its late submissions.
However, it should be noted that had the Panel taken the Respondent’s Supplemental Filings into account its decision would not have been different.
B. Analysis of the Complaint
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
a. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the trade mark CLIPSAL.
The disputed domain names consist of the Complainant's trade mark in full together with the top level domain suffixes “.biz”, “.info” and “.org”. As previously held by numerous UDRP panels such suffixes only indicate that the domain names are registered under the gTLDs and do not render the domain names distinctive from the Complainant’s trade mark.
Furthermore, it has been held in many previous UDRP cases that incorporating a trade mark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to the trade mark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are identical or confusingly similar to the trade mark in which it has rights. The Complainant has therefore established element 4(a)(i) of the Policy.
b. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy. Three circumstances are identified: (i) bona fide prior use; (ii) common association with the disputed domain name and (iii) legitimate noncommercial or fair use.
Considering circumstance (i) first, it is common ground between the parties that the Respondent is a reseller of the Complainant’s goods. A UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 provides useful four part guidance on what constitutes a bona fide offering of goods via a disputed domain name. These are that (a) the Respondent actually offers the Complainant’s goods, (b) the web site at the disputed domain name must only sell the Complainant’s goods (i.e., not those of its own or the Complainant’s competitors), (c) the web site at the disputed domain name must accurately disclose the Respondent’s relationship with the Complainant, and (d) the Respondent must not try to corner the market for registering the disputed domain name.
The Complainant has provided evidence that the Respondent fails to satisfy requirement (b) as it is offering at least 31 brands of products on its web site at the disputed domain name and these include products of the Complainant’s competitors. The Complainant has also argued that the Respondent has failed to satisfy requirement (c) by not accurately disclosing the status of its relationship with the Complainant on the web site at the disputed domain name. The Complainant cites for example R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 where the panel found that the domain name <quaifeusa.com> misled users into thinking that the web site was the official United States of America web site for the complainant Quaife, an English company. The case of Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 provides a further example where the panel found the respondent’s use of the disputed domain name did not constitute a bona fide offering of goods or services based on the fact that the web site at the domain name at issue that was identical or confusingly similar to the complainant’s trade mark did not include a disclaimer explaining the relationship between the parties. Similarly, in this case no such disclaimer can be seen on the web site screen shots provided by the Complainant. For these reasons the Panel finds that the Respondent is not making a bona fide offering of goods or services.
The Complainant has provided evidence that it owns an extensive portfolio of CLIPSAL trade marks, and domain names featuring “Clipsal”, and claims that prior to the registration of the disputed domain names the Respondent had no association with the name “Clipsal”. The Respondent has not put forward any arguments to the contrary, other than the fact that it is a reseller of the Complainant’s products. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the disputed domain names by virtue of a common association with the domain names.
It is not contested by the Respondent that the Respondent’s web site at the disputed domain names is used to sell goods and is therefore commercial in nature. The Panel therefore finds that the Respondent is not making legitimate noncommercial or fair use of the domain names.
For these reasons the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
c. Registered and Used in Bad Faith
The Complainant has alleged that the Respondent has registered and used the disputed domain names in bad faith on two grounds.
First, it alleges that the Respondent has attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the CLIPSAL trade mark as to the source, sponsorship, affiliation, or endorsement of the web site, under paragraph 4(b)(iv) of the Policy. The Respondent admits that it intentionally registered the disputed domain names for the purpose of attracting traffic to its web site. Coupled with the absence of any disclaimer on the Respondent’s web site setting out the relationship between the parties, and the number of other domain names registered by the Respondent that contain third party trademarks, the Panel finds that this constitutes registration and use in bad faith on the part of the Respondent.
Secondly, the Complainant has provided evidence that the Respondent attempted to sell the disputed domain names to the Complainant. The letter in question asks the Complainant to propose a price based on the goodwill of the domain names, rather than its documented out-of-pocket costs related to them, and as such in this Panel’s view constitutes evidence of bad faith under paragraph 4(b)(i) of the Policy.
For these reasons the Panel finds that the Complainant has established element 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 names <clipsal.biz>, <clipsal.info>, and <clipsal.org> be transferred to the Complainant.
Dated: December 16, 2010