WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Sweep v. Douglas Berry
Case No. D2012-0651
1. The Parties
The Complainant is Michael Sweep of Queensland, Australia represented internally.
The Respondent is Douglas Berry of Queensland, Australia, represented by Ledger and Co. Lawyers, Australia.
2. The Domain Name and Registrar
The disputed domain name <brisbaneglass.com> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 28, 2012, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On April 2, 2012, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2012. The Response was filed with the Center on April 26, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on May 9, 2012. 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 disputed domain name was registered on September 9, 2009, with the “registrant name” as Doug Berry, and the “registrant organization” as Crownsun P/L, with an address in Nerang, Queensland, Australia.
The Complainant operates a website at <brisbaneglass.com.au>. The Complainant’s trading name is “Brisbane Glass”. It is a glass and glazing service company, in the capital city of Brisbane in the State of Queensland, Australia. As evidenced by its company registration, the Complainant’s trading name was first registered as such in 1991, with a name change to “Brisbane Glass Pty Ltd” on November 17, 1995. The Complainant also has an application for a registered mark for “BRISBANE GLASS YOUR LOCAL GLASSMAN”, identified as such in the Response (but not by the Complainant itself), and filed on March 21, 2012 (and mistakenly described in the Response as a registered mark).
The Complainant provides screenshots of various websites it says are connected with the Respondent. These include the website located at the domain name <brisbaneglass.com> on February 28 (the year is not indicated, but the Panel has assumed it is 2012). In the screenshot, that website’s homepage is prominently titled “Brisbane Glass Now Pty Ltd”, and includes the statement “Brisbane Glass Now is a 100% Australian owned glass Company that has been trading since 1991”. The Complainant also provided evidence of the website at the disputed domain name on March 23 (again, the year is not indicated). On that date, the website is the same to the look and feel of the website <brisbaneglass.com> as it appeared on February 28, and includes similar text to the earlier site.
The Complainant provides screenshots of other websites related to domain names registered to the Respondent, including <fastglassrepairs.com.au>, <glass1.com.au>, <glassrepairsnow.com.au>, and <nerangglass.com.au>. All the websites associated with those domain names include the same look and feel and substantially identical text.
The company associated with the Respondent, Brisbane Glass Now Pty Ltd, was registered as a company in July 2002.
5. Parties’ Contentions
The Complainant does not have a registered trademark or service mark for its trading name. The Complainant claims that it has common law rights in its trading name. The Complainant also says that the disputed domain name is identical to the Complainant’s trading name and as such is confusingly similar.
The Complainant says that its business is clearly seen by the Brisbane city, commercial and domestic community to be a strong, high profile business that promotes its marks in all forms of media marketing. To support this contention, the Complaint refers to two attachments. One is an email from a person whose signature block indicates that he is a sales representative for “City Glass”. In the email, the sales representative states that he has been dealing with Brisbane Glass for the last 7 years and that “Brisbane Glass is clearly known under the name of Brisbane glass. Brisbane glass is the only company I know that that have been trading as Brisbane glass they have always been operating as Brisbane glass and no other name and this has been the case for many years.” The Complainant attaches another email from a sales representative of another supplier, to similar effect. The second attachment is titled “Brisbane Glass Pty Ltd, intellectual property report 2011”. Although the Complainant states that it does not have a registered trademark for its business name, the title of the report appends a trademark symbol to the name “Brisbane Glass, Your Local Glassman”” with an associated design. The report details the nature of the Complainant’s business between 1991 and 2011, and outlines the nature of the business” “intangible assets including but not limited to, trademarks including domain company and business names, associated with the business trade name of Brisbane Glass.” In relation to its IP assets, the report details the company’s business names and registered domain names (including <brisbaneglass.net> and <brisbaneglass.org>). The report does not identify the Complainant’s registered trademark for “Brisbane Glass Your Local Glassman”, presumably because the lodgement date for that mark was in 2012, whereas the report was dated 2011.
The Complainant states that the Respondent is a competitor who provides the same services and supplies as the Complainant. The Respondent runs its business from an area outside the Brisbane metropolitan area on the Gold Coast, and trades under the name “Glass Now”. Over the last 2-3 years, the Respondent appears to have been expanding its sales area to include the Brisbane city metropolitan area. The Respondent is doing this not under its established trading name of “Glass Now” but from a Google Adwords campaign using the disputed domain name. The Complainant says that this is not the Respondent’s trading name, and that the Respondent has no stores or vehicles flying or promoting this name, and the website that the disputed domain name reverted to, prior to a warning letter sent from the Complainant to the Respondent in December 2009, was originally the Respondent’s true business website of Glass Now.
After the Complainant’s first warning letter in December 2009, the Respondent changed its company name and website to “Brisbane Glass Now’” and “Brisbane Glass Now Pty Ltd” in March 2010. The Complainant says that this site is a “filtering site to confuse and capture customers and clients” into believing that this may be the Complainant’s website.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent, over the last 24 months or so, has purchased a number of domain names, all with very different names to its true business and trading name of Glass Now, including the disputed domain name. All these domain names lead to a website for each, of a different name but all with the same look and design. All have contact details that lead back to the true business and trading name for the Respondent being Glass Now. The Respondent undertakes not marketing for these domains, except for its Google Adwords campaign, and has no branding under those names. The disputed domain name is being used as nothing more than an avenue to increase sales for the Respondent’s business.
The Complainant says that because of its strong profile, there can be no doubt that the Respondent knew of the Complainant’s business so that it has demonstrated bad faith in the registration and use of the disputed domain name. This, as well as communications to the Complainant from the Respondent (attached to the Complaint) shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark, as well as for the purpose of selling the disputed domain name back to the Complainant.
The Complainant provides evidence of various communications between the parties referred to above, some of which further elaborate the Complainant’s case. In summary, these include the following:
December 14, 2009: The Complainant sent an email addressed to “The Directors of Crownsun” (which the Complainant describes as the then “owning company” of the Respondent) requesting that the Respondent termination its registration of the disputed domain name.
July 10, 2011: The Complainant wrote to Brisbane Glass Now Pty Ltd, but addressed to the Respondent (Mr. Berry). The letter reiterated the Complainant’s rights and referred to previous correspondence to the Respondent. The letter states that “you have now sought to change the name of your company [from Crownsun Pty Ltd] to confuse members of the public further as to the association of your company with the business of Brisbane Glass Pty Ltd”. Among other things, the letter requested the Respondent to terminate his registration of the disputed domain name.
July 19, 2011: The Respondent acknowledged the Complainant’s letter of July 10, 2011, by email response from Mr. Doug Berry, and under a prominent logo “1300 Glass Now”. (“1300” numbers are phone number prefixes in Australia that apply to charge the caller a low cost). That logo was identical to the logo appearing on the Respondent’s website on March 27, 2012 (as evidenced in the Complaint), except that on the website the “1300” was replaced with “Brisbane”.
July 29, 2011: The Respondent responded formally to the Complainant’s communication of July 10, 2011. The response noted that the Complainant had not commenced proceedings, that the Respondent has the words ”Brisbane” and ”Glass” in its business name and is therefore entitled to advertise its business using the disputed domain name, and that the Respondent makes it clear to any member of the public who calls its business that it is “Brisbane Glass Now” and not “Brisbane Glass Pty Ltd”. The reply also stated that the Respondent has not attempted to represent itself as having an association with the Complainant.
July 29, 2011: On the same day as the Respondent’s response to the Complainant’s July 10, 2011 letter, the Respondent sent a further letter to the Complainant. That letter made a “without prejudice” offer to transfer the disputed domain name “for a reasonable amount of consideration”.
February 24, 2012: The Complainant wrote to the Respondent restating its rights and alleging further details of the Respondent’s infringements of its rights. The Complainant referred to its longstanding goodwill in the name “Brisbane Glass”. The letter states that, but using the name “Brisbane Glass”, the Respondent has misleading represented that it is an authorized distributor or supplier of the Complainant’s products. The Respondent’s statement that it makes it clear to members of the public that it is not associated with the Complainant is evidence of actual confusion.
March 8, 2012: The Respondent replied to the Complainant’s correspondence of February 24, 2012. The Respondent stated that it was prepared to transfer the disputed domain name for AUD $35,000.
The Respondent denies the allegations made in the Complaint. The Respondent says that the Complainant does not have any universal rights in the words “Brisbane” and “Glass”. The disputed domain name is therefore not confusingly similar to a trademark in which the Complainant has rights. The Complainant is not able to register a trademark that contains the words Brisbane and Glass because those words are too common. This, the Respondent says, is evidenced by the fact that Brisbane is the capital city of Queensland and the word ‘glass’ is regularly used in conjunction with other glazing service providers.
The Respondent denies that the disputed domain name is identical to the trademark application (for “Brisbane Glass Your Local Glassman”), which the Respondent mistakenly identifies as a registered mark.
The Respondent states that it has not attempted to copy the Complainant’s logo, colors, and otherwise infringe on the Complainant’s trademark, because the disputed domain name contains common words that are commonly associated with other glazing service providers. It is therefore impossible for the disputed domain name to infringe on a trademark that is not and cannot be registered, and should therefore not be held to be confusingly similar to the Complainant’s trademark.
The Respondent says the Complainant has asserted the disputed domain name is similar to its trademark for “Brisbane Glass Your Local Glassman” (although the Panel can see no such reference in the Complaint). The Respondent says the words “Brisbane” and “Glass” are regularly used by other glazing service providers, and provides evidence of a number of websites to this effect. These include websites for businesses called “UBD Glass”, “H & D Glass Services”, “Australia Glass”, “A.B Dicker Glass and Glazing”, “Brisbane Glass Repairs”, ‘Glass Pool Fencing Brisbane”, and “Brisbane Frosted Glass”. The Respondent says that the associated domain names show that the Complainant’s trademark (sic) should be restricted to “Your Local Glassman” when determining whether the disputed domain name is confusingly similar.
The Respondent states that the Complainant does not have a registered mark for “Brisbane Glass”. The Respondent says that it would be oppressive to the Respondent to hold that the disputed domain name is confusingly similar to a trademark or service mark that is “virtually non-existent” as it cannot be registered due to the common, descriptive nature of the words “Brisbane” and Glass’”.
In relation to its rights or legitimate interests, the Respondent says that it is using the disputed domain name for legitimate purposes that include advertising. For support, the Respondent refers to the decision of the panel in Anachusa Ltd. V. Ashantiplc Limted / Ashantiplc Ltd, WIPO Case No. D2011-0005. In particular, the Respondent refers to the finding of that panel that “UDRP Panels have repeatedly found that the use of common words and phrases utilized as domain names to advertise relevant subject matter is legitimate.”
The Respondent also refers to the decision of Can I Do Better Internet Corp. v. Blastapplications, WIPO Case No. D2011-0005. (That case concerned a trademark registered in the United States of America which, unsurprisingly, pointed out the registration of the mark vested a right of use in the registrant, and that right of use included use in a domain name.)
The Respondent says that the disputed domain name has no direct association with the Complainant and its trademark (sic) for “Brisbane Glass Your Local Glassman”. The Respondent also says that it does not attempt to send Internet users to another domain in an attempt to gain an unfair commercial advantage, and that this demonstrates that the Respondent has a right or legitimate interest. The Respondent refers to the decision in Galderma S.A. v. Domains by Proxy, Inc. / Aegis Holdings Group, Inc., WIPO Case No. D2011-0146.
The Respondent denies that the disputed domain name was chosen in order to exploit the Complainant’s trademark. The Respondent says that it has, since 1991, provided glazing services to the Brisbane, Gold Coast and South East Queensland areas. The disputed domain name was chosen in an effort to further promote the Respondent’s glazing services in the Brisbane area. In 2000, the Respondent started Glass Now Pty Ltd, and promoted its business since 2006 using Good Adwords. The Respondent notes that its company name was changed from Crown Sun Pty Ltd to Brisbane Glass Now Pty Ltd – the registration the Respondent provides in evidence indicates that this occurred in 2002.
The Respondent also denies that it acted in bad faith, as the disputed domain name was registered in connection with advertising. The Respondent states that the Complainant waited more than two years to make a complaint under the Policy; the words “Brisbane” and “Glass” are associated with other glazing service providers; and those words are so common that it is highly unlikely that the Respondent was targeting the Complainant directly when the disputed domain name was registered. The Respondent refers to various other decisions under the Policy for support in these respects. These include the case of Ipiranga Produtos de Petroleo S.A. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2011-0163, in which the then Panel found that there was no evidence that the then respondent targeted the Complainant or its mark, even though the then respondent had not denied that it was aware of the complainant.
The Respondent denies that it registered the disputed domain name to sell or otherwise transfer it to the Complainant. The Complainant had threatened to commence legal proceedings against the Respondent, and the Respondent’s offer for sale was made in an effort to resolve the dispute in a manner that was commercially viable.
6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These three elements are discussed as follows, immediately following discussion of a procedural issue regarding the proper name of the Respondent.
A. Name of the Respondent
Under the Rules, the Respondent “means the holder of a domain-name registration against which a complaint is initiated.” The Complaint was filed against “Douglas Berry” and the Response was submitted in the name of “Glass Now”. However the Registrar has confirmed that the name of the holder of the disputed domain name is “Doug Berry”.
There appears to be no dispute in this case that Doug / Douglas Berry is the principal and representative of the company Glass Now Pty Ltd, and that this is how the Complaint has been made. There also appears to be no dispute that “Michael Sweep” is the principal and representative of Brisbane Glass Pty Ltd, and this is how the Response has been made. Accordingly, for the purpose this dispute, the Panel accepts that Douglas Berry and the corporate entity “Glass Now Pty Ltd” are joint Respondents-in-fact, and that Michael Sweep and the corporate entity “Brisbane Glass Pty Ltd” and joint Complainants-in-fact.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it “has rights” in a trademark or service mark. It is well-established under the Policy that a Complainant may demonstrate such rights by putting forward evidence of unregistered or common law rights in a mark. The Complainant claims that it has unregistered rights in the mark BRISBANE GLASS, arising from the Complainant’s long use and association of that mark with the glazing services it has provided in the Brisbane area.
What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview). The consensus of prior panels is relevantly set out under the heading: 1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?: Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.” (emphasis added)
The Complainant has provided substantial evidence, going back to 1991, of its business operations and advertising under the name Brisbane Glass. Much of this evidence is provided in the Complainant’s ‘intellectual property report’ attached to the Complainant. This report provides evidence of the Complainant’s business, and examples of the Complainant’s marketing and get-up using that name over more than 20 years.
There is no doubt that the Complainant has been using the term “Brisbane Glass” as part of its business name for a substantial period of time, in conjunction with a design for which it also provided evidence. The Complainant also provides email attestations from two suppliers (presumably, suppliers to the Complainant) who state that the Complainant has been “operating as” Brisbane Glass.
This evidence however does not go a long way towards demonstrating that the name “Brisbane Glass” is a distinctive identifier associated with the Complainant. Whether that name is distinctively associated with the Complainant requires, in effect, some relative comparison. The Respondent provides evidence that there are a number of businesses that use the terms “Brisbane” and “Glass” in their business names. Not all of these examples strongly support the Respondent’s case. The issue is not whether the terms “Brisbane” and “glass”, taken separately, are commonly used – there is no doubt that they are.
Rather, the issue is whether the combination “Brisbane Glass” is distinctively associated with the Complainant. In this respect, the Complainant’s evidence is not strong, having regard to the evidence as a whole. The Complainant has no registered mark for the term “Brisbane Glass” and has not applied for a mark including that term alone. While an application for a mark, or lack of one, is not directly material to these proceedings, it may indirectly suggest that the Complainant itself lacks confidence that “Brisbane Glass” is a sufficiently distinctive identifier of its business. By comparison, the Complainant has sought to register a mark for “Brisbane Glass Your Local Glassman”. The Respondent provides evidence of other businesses in the area that use the combination of the words “Brisbane” and “glass” in their business names or advertising, including ‘‘Brisbane Glass Repairs” and “Brisbane Frosted Glass”. The Respondent provides evidence of a simple Google search undertaken on April 26, 2012, for the words “Brisbane glass”. The results refer to various businesses, in addition to the Complainant and Respondent, including “ArcherGlass”, “Australia Glass Brisbane”, and “Glass Replacement Brisbane” among others.
The combination of two generic terms can be a distinctive identifier, particularly where the combination is not a natural or obvious one – that is, where the two words would not commonly be associated with each other, or which require at least some imagination to combine. However, it is more difficult to establish where the combination is naturally or commonly associated, without proof of secondary meaning. See e.g. Rollerblade, Inc v. CBNO, WIPO Case No. D2000-0427 (<rollerblading.com>); PetWarehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (<petwarehouse.com>); High-Class Distributions S.r.l. .v. Onpne Entertainment Services, WIPO Case No. 2000-0100 (<highclass.com>); Tough Traveler, Ltd. v. Kelty Pack, Inc., WIPO Case No. D2000-0783 (<kidcarrier.com>).
Further, this is a case in which each of the parties is Australian. Paragraph 15 of the Policy charges the Panel to decide the complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The Panel therefore considers it appropriate to have regard to decisions of the Australian Courts in reaching a conclusion on this issue. Relevantly, in Clark Equipment Co v. Registrar of Trade Marks (1964) 111 CLR 511 (High Court), Kitto J noted (at 513) that “the name of a place or of an area, whether it be a district or a country, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area…”. This does not mean, however, that a complainant under the Policy can never relevantly establish unregistered rights in a mark comprising both a place name and a descriptive term: see. e.g. Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932 (involving the mark SYDNEY MARKETS). However in the Sydney Markets case, there was no evidence of other traders using a similar phrase is a mark or name and, importantly, there was no evidence that the then respondent had a legitimate connection with that name (it was noted that the respondent worked in the field of information technology).
On balance, the Panel therefore considers that there is insufficient evidence that the term “Brisbane Glass” is a distinctive identifier of the Complainant. It is perhaps a natural combination for those providing glass-related services in the Brisbane area. This is supported by the evidence of other suppliers which use that term. There was little evidence or argument from the Complainant that the combination of those terms was neither natural nor obvious. Indeed, it appears to the Panel that the attractiveness of those terms as a business identifier arises from their natural association to the supply of glass in the Brisbane area.
Under the Policy, the burden is on the Complainant to establish its case. As the Complainant has not sufficiently demonstrated that it has rights in “Brisbane Glass” as a trademark, the Complaint cannot succeed.
C. Rights or Legitimate Interests, Bad Faith
Because of the Panel’s finding above, it is not necessary for it to address the issue of whether the Respondent has rights or legitimate interests, or has acted in bad faith. There is little dispute in this case that the Respondent was aware of the Complainant when he registered the disputed domain name. Questions of legitimate interests or bad faith would therefore turn on whether the Respondent deliberately registered the disputed domain name to take unfair advantage of the Complainant’s business name. However, in these particular proceedings, and because it cannot affect the Complainant’s case, the Panel has not considered them further.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Date: May 23, 2012