WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bianco Footwear Pty Ltd v. WBDWT, Steven Welch
Case No. D2012-1520
1. The Parties
The Complainant is Bianco Footwear Pty Ltd of Collingwood, Victoria, Australia, represented by Actuate IP, Australia.
The Respondent is WBDWT, Steven Welch of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <tonybianco.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2012, the Registrar 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”).
On August 1, 2012, the Respondent emailed the Center to ask if the case had been officially filed and commenced. A second email from the Respondent on that date stated that a particular law firm would be handling the case on behalf of the Respondent and asked for communications to be copied to that firm. The Center responded on August 1, 2012 stating that Respondent would be notified once the administrative proceeding had commenced and that the Response would then be due within 20 calendar days.
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 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2012.
No official Response was filed with the Center. However, on September 3, 2012, the Respondent emailed the Center stating that it had been seeking lawyers to help fight the case and asking to be informed of the deadline to respond. The Respondent also sought an extension of time in order to find adequate representation.
On September 4, 2012, the Center emailed the Respondent reminding it that the Complaint and accompanying notices had been served on August 14, 2012, and that the due date for the Response was September 3, 2012. The Center explained that, if the Respondent wished to make a late Response, the Center would bring it to the attention of the Panel, once appointed, and it would be at the sole discretion of the Panel whether to consider it.
The Center appointed Adam Taylor as the sole panelist in this matter on October 1, 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.
On October 4, 2012, the Respondent emailed the Center again, raising a few points in its defence and asking to be informed “of what you require for us to fight our corner in this case”.
The Center replied on October 8, 2012, stating that the Respondent’s communication was being forwarded to the Panel.
The Panel has now considered the admissibility of the Respondent’s communication of October 4, 2012.
In the view of the Panel, the Respondent’s failure to find legal representation is not a justification for failing to file the Response on time. Indeed, the Respondent had indicated to the Center, even before service of the Complaint, that it had appointed a law firm to represent it. It now appears that, for whatever reason, the arrangement with that particular law firm fell through. If so, it was the Respondent’s responsibility to quickly find a new firm. The Respondent was plainly well-aware throughout of the due date for the Response, this having been set out in a number of emails from the Center to the Respondent. And, although the Center informed the Respondent at around the time of the Response due date that any late Response would be forwarded to the Panel for its consideration, it was over a month before anything further was heard from the Respondent.
In these circumstances, the Panel does not consider that the email of October 4, 2012 – which does not even include a statement of truth or comply with the other formal requirements for a Response – should be admitted as a late Response.
Nor does the Panel consider that the email should be admitted as a supplemental filing. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
As explained above, the Respondent has fallen well short of demonstrating exceptional circumstances which would justify admission of the email of October 4, 2012, as a supplemental filing, particularly given its failure to file a primary submission in the circumstances set out above.
The Panel would add that, even if the October 4, 2012, email had been admitted, it would not have changed the outcome of the case.
4. Factual Background
The Complainant is company incorporated in Victoria, Australia. It operates a fashion footware business which has traded under the name “Tony Bianco” since 1973. Since 2000, the Complainant’s turnover has exceeded $10 million per annum.
The Complainant engages in substantial advertising campaigns including in conjunction with famous Australian actresses and models.
The Complainant’s main website at “www.tonybianco.com.au” has amassed some 2.7 million unique visits over the period May 2009 to April 2012 and the Complainant has achieved over 234,000 “likes” on Facebook.
The Complainant owns a range of registered trade marks including an Australian trade mark for the stylized word “tony bianco” in filed March 27, 1995, in class 25.
The Whois for the disputed domain name bears a creation date of November 18, 1998.
As of October 19, 2010, there was a parking page at the disputed domain name with footwear-related category links.
On March 28, 2012, the Complainant emailed the Respondent asking if the disputed domain name was for sale. The Respondent replied on March 29, 2012, stating that this was a “premium domain” and indicating a price range in the “mid xxx.xxx”.
As of March 30, 2012, the disputed domain name redirected to a website “www.webuydomainswithtraffic.com” which sought domain names for purchase.
On July 23, 2012, the Complainant’s representatives wrote to the Respondent. (The Complainant has not exhibited that letter.)
The Respondent replied on July 24, 2012, saying that “the previous owner did have it resolved to a parking website and was using it in bad faith, however we do not.” The Respondent claimed that it was not in breach of the Anti-Cybersquatting Act or UDRP and stated that it had a legitimate use for the domain name and was not using it in bad faith. The Respondent claimed that, since its acquisition of the disputed domain name, it had resolved to the Respondent’s own business website which displayed no adverts or monetized links with reference to the Complainant’s trade mark. The Respondent claimed to be “domain name investors who purchase domain names which may be of value to in the future to a business or individual”. The Respondent said that it then offered “the opportunity to potential parties to purchase the same”.
The Respondent added that, when acquiring the disputed domain name, it contacted the Complainant to ask if it would be interested in purchasing the disputed domain name “as it would be suitable for their business”. The Respondent claimed not to have received a response. The Respondent stated that “[t]here are other Tony Bianco’s who have been contacted with regards to purchasing this name for their personal websites.” The Respondent said that it would welcome an offer of purchase from the Complainant “if they are interested in acquiring the name before another party does”.
The Respondent owns at least 40 or so domain names which include, or are misspellings of, variations of well-known trade marks including <telstrabigpond.net>, <ticitmaster.com>, <markandspencer.com>, <mcafie.com>, <marstercard.com>, <xb0xlive.com> and <yu8tube.com>. Many of those domain names are being used for parking pages with sponsored links relating to the relevant industry.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant has extensive, long-held rights in the name “Tony Bianco”. The Complainant has therefore acquired significant common law rights in that name in addition to registered rights.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Rights or Legitimate Interests
Due to the fame of the Complainant’s trade mark, the Respondent had actual or constructive notice of the Complainant’s trade mark and the Respondent’s use of that mark could not have been bona fide.
The Respondent is not commonly known by the disputed domain name. There is no evidence of a connection between the Respondent and the name “Tony Bianco” either in relation to the website at “www.webuydomainswithtraffic.com” or to the prior parking page.
The Complainant’s trade mark is so well-known that most consumers would automatically assume that the disputed domain name was associated with the Complainant. The Respondent is intentionally trading on the Complainant’s reputation. The Respondent has engaged in a pattern of such conduct.
The Complainant has not given the Respondent permission to use its trade mark.
Registered and Used in Bad Faith
The Complainant admits that the Respondent was not the initial registrant of the disputed domain name. It appears that the Respondent was the registrant since around November 2007, which significantly post-dates the Complainant’s rights in its trade mark. A printout from the Wayback Machine dated October 27, 2007, indicates that the previous registrant sold or abandoned the disputed domain name at around this time.
In light of the Complainant’s reputation in the mark at the time the Respondent acquired it, and the Respondent’s lack of any plausible actual or contemplated use of the disputed domain name which would be legitimate, the only conclusion in that the Respondent registered and used the disputed domain name in bad faith.
Each of the four non-exhaustive factors in paragraph 4(b) of the Policy is applicable in this case.
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the name “Tony Bianco” arising from its registered trade mark. The Complainant has also established unregistered trade mark rights deriving from its extensive use of that name.
The disputed domain name is identical to the Complainant’s mark, disregarding the domain name suffix.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases, and is relevant here:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c(i) of the Policy, the disputed domain name has been used for a parking page with links to footwear-related websites. In an email to the Complainant dated July 24, 2012, the Respondent denied that it owned the disputed domain name at the time when it resolved to that parking page – see further below. In any event, such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
“Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" … especially where resulting in a connection to goods or services competitive with those of the rights holder…”
In this case, the links on the parking page are indeed competitive with the goods offered by the Complainant.
The only other use of the disputed domain name which is apparent to the Panel is the redirect of the website at the disputed domain name to another website of the Respondent, unrelated to the disputed domain name itself, which sought domain names for purchase. This cannot constitute a bona fide offering either.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
Registered and Used in Bad Faith
It is not clear from the record before the Panel exactly when the Respondent acquired the disputed domain name.
The Internic publicly available WhoIs for the disputed domain name shows a “creation date” of November 18, 1998. The Complainant says that the Respondent acquired the disputed domain much later, in about November 2007. It bases this, not on archive Whois information, but on a notice on an archive version of the website of the disputed domain name as of October 27, 2007, which indicates that the then-registrant (with no apparent connection to the Respondent) was on the verge of selling or abandoning the domain name. The Complainant exhibits a parking page at the disputed domain name dated October 2010, which it attributes to the Respondent.
As mentioned above, in an email dated July 24, 2012, the Respondent denied that it owned the disputed domain name when it was being used for a parking page and claimed that, since its acquisition, the Respondent has redirected it to its own business website (presumably “www.webuydomainswithtraffic.com”). According to the record, the earliest such use of the disputed domain name was on March 30, 2012.
While the evidence placed before the Panel is equivocal, the Panel suspects that the Respondent did indeed acquire the disputed domain name earlier than it claims, and that it did use it for the parking page referred to above, as there is evidence of the Respondent’s extensive use of the other domain names in a similar manner. The Panel further suspects that the disputed domain name was redirected to “www.webuydomainswithtraffic.com” only as a defensive move following the initial purchase approach by the Complainant on March 28, 2012.
However, it is unnecessary for the Panel to reach any conclusion on this point as there is other evidence indicative of registration and use in bad faith.
First, the Respondent’s email of July 24, 2012, rather candidly admits that, “when acquiring” the disputed domain name, it contacted the Complainant to enquire if it would be interested in buying the disputed domain name. It is clear from this that the Respondent was aware of the Complainant at the point of acquisition of the disputed domain name, whenever that may have been.
While the email claims that similar approaches were made to “other Tony Bianco’s”, there is no evidence before the Panel which supports this assertion. Nor is there any other evidence from the Respondent which might support a conclusion that the Respondent selected the disputed domain because it was a personal name rather than by reference to the Complainant’s trade mark.
In these circumstances, the Panel concludes that the Respondent acquired the disputed domain name primarily for the purpose of sale to the Complainant in excess of its out-of-pocket costs in accordance with paragraph 4(b)(i) of the Policy.
The Panel also notes that, in its email of July 24, 2012, the Respondent said that it would welcome an offer from the Complainant “if they are interested in acquiring the name before another party does”. The Panel considers that this was a threat to sell the disputed domain name to a third party unless the Complainant made a substantial offer for the disputed domain name. In the Panel’s view, this threat is a further indicator of bad faith registration and use of the disputed domain name on the part of the Respondent.
Alternatively, the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct in accordance with paragraph 4(b)(ii) of the Policy. As set out in section 4 above, the Respondent owns at least 40 other domain names which include, or are, misspellings of a range of well-known trade marks.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 domain name, <tonybianco.com> be transferred to the Complainant.
Dated: October 15, 2012