WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760
Case No. D2012-0924
1. The Parties
The Complainants are The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) of Richmond, Victoria, Australia, represented by Melbourne IT Digital Brand Services, Australia.
The Respondent is PrivacyProtect.org, Domain Admin, ID#10760 of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <aussiefarmersdirect.com> (the “Disputed Domain Name”) is registered with Bargin Register Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2012. On May 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. The Registrar did not reply to e-mail communications sent by the Center on May 1, May 3, May 7 and May 9, 2012. No response to the Center’s request for registrar verification, or any subsequent communications, was received from the Registrar.
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 May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2012.
The Center appointed John Swinson as the sole panelist in this matter on June 26, 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 Complainants are The Uder Company Pty Ltd (the “First Complainant”) and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) (the “Second Complainant”) of Victoria, Australia. Since 2005, the Complainants have operated a free home delivery service for Australian fresh food products.
The First Complainant owns the Australian Trade Mark Registration No. 1129576 for AUSSIE FARMERS DIRECT (registered August 15, 2006) (the “Trade Mark”).
The Second Complainant has been trading under the name Aussie Farmers Direct since 2005 and is licensed by the First Complainant to use the Trade Mark (as evidenced by a license agreement dated January 19, 2012).
The Complainants have a combined portfolio of at least 40 domain names incorporating AUSSIE FARMERS (e.g. <aussiefarmersdirect.com.au>, <aussiefarmers.com.au> and <aussiefarmers.com>).
The Respondent is PrivacyProtect.org of Queensland, Australia. As the Respondent did not file a Response, little information is known about the Respondent.
According to the publicly available WhoIs database for the Disputed Domain Name, the Disputed Domain Name was registered on May 23, 2008. The WhoIs database records the current registrant of the Disputed Domain Name as the Respondent. The Respondent appears to be a “proxy registration” service that offers a form of domain privacy. As the Registrar has not responded to the Center’s verification request, the identity of the “true owner” of the Disputed Domain Name, if different from the named Respondent, is unknown.
5. Parties’ Contentions
The Complainant makes the following submissions.
1. Multiple Complainants
As the Complainants have a common legal interest in the Trade Mark, they have a common grievance against the Respondent, and as such, they can act as co-Complainants (see MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985 which states “[s]uch situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants”).
2. Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark. The Respondent’s addition of the generic top-level domain “.com” does not distinguish the Disputed Domain Name from the Trade Mark.
3. Rights or Legitimate Interests
The identity of the registrant of the Disputed Domain Name is shielded by the Respondent.
The Respondent's failure to respond to the Complainants’ cease and desist letter (which asserts, inter alia, the Complainant have not granted any authorization to the Respondent to use the Trade Mark) indicates that it lacks rights and legitimate interests in the Disputed Domain Name.
The Complainants seek to amend the Complaint to properly address this ground once the details of the registrant of the Disputed Domain Name are disclosed.
4. Registered and Used in Bad Faith
The following evidences bad faith registration and use of the Disputed Domain Name:
- the Disputed Domain Name is identical to the Trade Mark;
- there is no connection between the Respondent and the Complainants;
- the Respondent did not respond to the Complainants’ cease and desist letter and request for voluntary transferal of the Disputed Domain Name (see e.g. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460);
- at the time of registration of the Disputed Domain Name, the Complainants were actively trading under the name Aussie Farmers Direct and using the Trade Mark;
- the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain, but is misleadingly diverting consumers for commercial gain. The content of the website that the Disputed Domain Name resolves to refers to the Complainants and their Trade Mark, and displays pay-per-click (PPC) links to the websites of the Complainants’ competitors. The operation of a PPC website is not necessarily illegitimate, but will be if another’s trade mark is featured in the URL without authorization as a means of attracting visitors (see e.g. Pearson Education, Inc. v. CTP Internacional; Private Registration at Directi Internet Solutions Pvt. Ltd, WIPO Case D2009-0266);
- the Respondent has offered the Disputed Domain Name for sale; and
- the registrant of the Disputed Domain Name has concealed its identity (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainants even though Respondent has not filed a Response.
Before addressing each of these requirements, the Panel will first address the Registrar’s conduct in this case and procedural issues regarding multiple complainants, the proper respondent and the Respondent’s failure to provide a Response.
A. Registrar Conduct
As has been outlined above, the Registrar has failed to respond to the Center’s original verification request and to three additional emails from the Center thereafter.
The Internet Corporation for Assigned Names and Numbers (ICANN) issued a Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution in December 2008 which suggests that registrars should respond to verification requests within two business days. Here, the Registrar has ignored the request entirely. The Panel views this as unacceptable.
The Panel is aware that in a number of recent UDRP cases, this Registrar has failed to respond to the Center’s requests for registrar verification (see e.g. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Private Whois, WIPO Case No. D2012-0383; Royal Copenhagen A/S v. Private - EXP 2, WIPO Case No. D2012-0637 and KinderCare Learning Centers LLC v. Privacy Protect.org, WIPO Case No. D2011-1890 which outlines the Registrar’s conduct over the two year period from 2009 to 2011).
The Panel agrees with the following comments of the panel in Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, WIPO Case No. D2011-1250:
“A registrar’s failure to reply to a UDRP provider’s verification request can also complicate a Policy proceeding in a number of serious ways, including:
As noted by the Center in its three reminder communications to the Registrar, without affirmative confirmation from a registrar that the disputed domain name has been locked to prevent breach of paragraph 8(a) of the Policy there is the danger that an unscrupulous respondent might engage in cyberflight.
As noted by the Center and Complainant, the provider, parties, and panel cannot be sure of the language of the registration agreement and thus the presumed language of these proceedings.
The Center and Complainant cannot be certain that the registrant is bound by its registration agreement to submit to a legal proceeding in the courts in the jurisdiction in which the registrar is located. (Any ICANN-approved registrar is required to include such a provision; see section 18.104.22.168 of the ICANN Registrar Accreditation Agreement. A registrar’s contractual obligations to ICANN by themselves, however, do not bind a registrant to anything.)”
The Panel acknowledges that as a matter of procedural fairness, a procedural order would normally be issued to give the Registrar an opportunity to respond to the above criticisms. However, in this case the Panel did not issue such an order for the following reasons (see KinderCare Learning Centers LLC v. Privacy Protect.org, supra for similar reasoning):
- the Registrar has engaged in uncooperative conduct over at least a three year period;
- as the Registrar has not responded to previous communications, it seems unlikely that it will be responsive to any further communications; and
- the progress of this matter has already been delayed by the Registrar’s lack of cooperation and the Complainant should not have to wait until the Registrar responds (which it is unlikely to do) for a decision.
In light of the above, the Panel invites and requests that the Center bring this decision and the Registrar’s conduct to the attention of ICANN, to be dealt with appropriately.
B. Procedural Issues
1. Multiple Complainants
The Panel accepts that The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) have common legal interests in the Trade Mark, as the owner/licensor, and as the licensee of the Trade Mark, respectively. As such, the Panel permits both parties to be joint Complainants in this dispute, but for the purposes of the remedy requested, the Panel will refer to the First Complainant as the party requesting transfer of the Disputed Domain Name.
2. Proper Respondent
The use of privacy services to hide the “true owner” of domain name is becoming more common. Where a privacy service has been used, it is the Center’s usual practice to confirm the “true owner” of the domain name (see e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 and Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).
Previous UDRP panels have found that in certain circumstances, it may be appropriate to treat the provider of a privacy service as the proper respondent. Here, as the “true owner” of the Disputed Domain Name has not been disclosed by the Registrar, the Complainant will not be able to amend the Complaint to name the “true owner” of the Disputed Domain Name as the Respondent (as it anticipated it wished to do), and under the circumstances the Panel finds the privacy service must accept responsibility for the Disputed Domain Name as Respondent (see e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753).
3. Failure to Respond
The Panel confirms that the Center has taken the steps required under the Policy and the Rules regarding notification of the Complaint to the Respondent. The Panel is satisfied that the Respondent has been given adequate notice of the Complaint and a reasonable opportunity to file a Response.
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainants (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from the Respondent’s default.
C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainants assert that they have rights in the Trade Mark, and provided evidence of ownership and licensing arrangements. The Panel accepts that the First Complainant owns the Trade Mark and the Second Complainant is licensed to use the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. The “.com” at the end of the Disputed Domain Name is irrelevant in assessing confusing similarity under the Policy and is thus ignored.
In light of the above, the Complainants succeed on the first element of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
In the Panel’s opinion, the following establish a prima facie case:
- the Complainants have not licensed or otherwise authorized the Respondent to use the Trade Mark;
- there is nothing to suggest that the Respondent might be commonly known by the Disputed Domain Name;
- the website that the Disputed Domain Name resolves to appears to be commercial in nature. It is a “link farm” website which directs Internet users to goods and services of competitors of the Complainants. This is not a fair commercial use of the Trade Mark, nor does it constitute a bona fide offering of goods or services; and
- the Respondent’s failure to respond to the Complainants’ cease and desist letter and follow-up email.
Under the circumstances, the Panel finds it unnecessary to provide the Complainants leave to amend their Complaint on this ground.
The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in respect of the Disputed Domain Name, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainants has not been rebutted, and the Complainants succeed on the second element of the Policy.
E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location” (paragraph 4(b)(iv)).
The use of a privacy service, particularly one which does not disclose the “true owner” of the domain name in response to a verification request in a UDRP proceeding, may support an inference of bad faith registration and use (see e.g. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 and Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453). Here, the Respondent has failed to rebut this inference.
The Respondent has registered the Disputed Domain Name (which is identical to the Trade Mark) and used it to direct Internet users to a “link farm” website of advertisements offering goods and services which compete with the Complainants’ goods and services. It can be reasonably inferred that the Respondent is profiting from the website through “click-through revenue”. As such, the Panel is of the opinion that the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see e.g. Encyclopaedia Britannica v. John Zuccarini, WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).
The Respondent’s failure to respond to the Complainants’ cease and desist letter and reminder email further evidences bad faith registration and use (see e.g. Inter IKEA Systems B.V. v. PrivacyProtect.org / LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2012-0309 and HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 which specifically addresses this issue in relation to privacy services:
“Any such bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”)
In light of the above, the Panel determines that the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <aussiefarmersdirect.com> be transferred to the First Complainant.
Dated: July 10, 2012