WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chief Architect, Inc. v. Nigel Varley / CAD Australia Pty Limited
Case No. DAU2011-0004
1. The Parties
The Complainant is Chief Architect, Inc. of Coeur d’Alene, Idaho, United States of America, represented internally.
The Respondent is Nigel Varley (the “first Respondent”) / CAD Australia Pty Limited (the “second Respondent”) of Avalon, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <chiefarchitect.com.au> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 4, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On February 7, 2011, Melbourne IT Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 16, 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.
On March 28, 2011, the Panel issued a Procedural Order requesting the Complainant to confirm or correct various statements contained in the Complaint. On March 29, 2011, the Complainant responded with corrections to various matters that had been attributed to the Respondent but which, in fact, pertained to the Complainant.
4. Factual Background
The Complainant has been engaged in the business of creating architectural computer aided design (“CAD”) software products and services related to home design for over 20 years. The Complainant markets its products and services under the trademark CHIEF ARCHITECT. This trademark was registered in Australia in April 1999. The Complainant’s websites average over 500,000 visitors per month, and its software is sold worldwide with millions of customers. Each year the Complainant spends millions of dollars on development, advertising, marketing and promotional materials with the “Chief Architect” brand in connection with offering its software products and services.
On July 1, 2004, the Respondent entered into a Dealer Agreement (the “Agreement”) with the Complainant to sell the Complainant’s software products in Australia. The Complainant terminated the Agreement on February 7, 2005. This Agreement was between the second Respondent (the “Dealer”), signed by the first Respondent as Managing Director of the second Respondent, and Advanced Relational Technology Inc (“ART”), which was the name of the Complainant at that time. There is a Protection of Rights clause in the Agreement that states: “Dealer acknowledges that the structure and organization of the Products and Services are and shall remain proprietary to ART and that ART retains any and all exclusive ownership of the Products and any and all patents, trademarks, copyrights, service marks, trade secrets, confidential or proprietary notices […] Dealer is not granted any rights to patents, trademarks, copyrights, service marks, trade secrets, confidential, or proprietary notices, (whether registered or unregistered), or any other rights, with respect to the Products and Services. Dealer shall not use, seek or obtain registration, or any other right, in any Trademark or Web address (URL) in any jurisdiction; whether in its own name or otherwise that is similar or confusingly similar with the Trademarks and products of ART.” Further, there is a clause which states that upon termination of the Agreement: “Dealer shall immediately cease using the Trademarks […]”, and “Dealer shall cease all representation that it is an ART Dealer or in any way associated with ART, including removal of ART information from its website(s).”
On April 19, 2008, and again on April 24, 2008, the Complainant transmitted by email a “cease and desist” notice regarding the Respondent’s use of the disputed domain name. On March 2, 2010, the Complainant transmitted by email to the Respondent an enquiry about transferring the disputed domain name to the Complainant. On February 2, 2011, the Complainant transmitted by email to the Respondent an offer to purchase the disputed domain name for USD 500.
There is no record of a response to any of these emails from the Respondent.
According to the publicly available WhoIs information, the first Respondent, Nigel Varley, is the “Registrant Contact Name” and the “Tech Contact Name” for the disputed domain name. The second Respondent, CAD Australia Pty Limited, is the “Registrant” of the disputed domain name. The disputed domain name was first registered on September 30, 2002. It resolves to a website with the title “Chief Architectural Software a business servicing Australian/New Zealand architectural/building industry”. This website contains the statement “If you are looking for specific software from the makers of 'Chief Architect' you will be able to find their most popular range of retail software sold in Australia here” and then a link to a website at “www.cad.com.au”, which sells a range of CAD software for the building, design and architecture industries. According to the publicly available WhoIs information, the “Registrant” for the domain name <cad.com.au> is the second Respondent and the “Registrant Contact Name” and the “Tech Contact Name” for the domain name <cad.com.au> is the first Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical and confusingly similar to the Complainant’s trademark CHIEF ARCHITECT because the relevant part of the disputed domain name wholly incorporates the Complainant’s name and trademark.
The Complainant contends that the Agreement between the Complainant and the Respondent to sell the Complainant’s software products in Australia contained several clauses that made it clear that the Respondent could not use the Complainant’s trademark in the event of the Agreement being terminated (which occurred on February 7, 2005).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because (i) the Complainant sent the Respondent a “cease and desist” email regarding the misuse of the Complainant’s trademark CHIEF ARCHITECT and later offered to purchase the disputed domain name but the Respondent did not reply to either, (ii) the Respondent is using the disputed domain name to sell competitive architectural software products and services, and in certain cases it redirects to another website at the domain name <cad.com.au> which is owned by the second Respondent, (iii) the Respondent’s use of the disputed domain name is to capture customers of the Complainant who are seeking Chief Architect, Inc. products and services and this is neither a legitimate nor good faith use of this domain name, (iv) the Respondent knowingly acknowledged the Complainant’s trademark when it entered into an Agreement with the Complainant in July, 2004, and was given notification and clarification on the usage of the trademarks once the Agreement was terminated, (v) the Respondent does not hold any trademark registrations which are identical, similar, or related to the Complainant’s trademark, (vi) the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, and (vii) the disputed domain name is not the one that the Respondent would choose in the context of providing goods or services other than to create an association with the Complainant’s trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because (i) the Respondent has registered and maintains the registration of the disputed domain name for the purpose of attracting customers based on the popular CHIEF ARCHITECT trademark brand, and that the Respondent sells competitive architectural software products and services by capitalizing on the popularity of the Chief Architect brand, (ii) the Respondent has a history of using domain names in bad faith, and lost an identical case in 2008 against a home design software CAD company, and (iii) by refusing to transfer the disputed domain name, the Respondent has expressly demonstrated its lack of regard for the rights and goodwill that the Complainant has acquired in its well-known CHIEF ARCHITECT trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark CHIEF ARCHITECT, together with the extension “.com.au”. Once the extension is ignored, the wholly dominant feature of the domain name is the Complainant’s trademark CHIEF ARCHITECT. This Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has provided evidence of an Agreement between the Complainant and the Respondent that states that the Respondent is not granted any rights to any of the Complainant’s trademarks, and that upon termination of the Agreement the Respondent must immediately cease using the Complainant’s trademarks. The Complainant has terminated the Agreement, and the Respondent has not subsequently asserted any rights or legitimate interests in the disputed domain name. Accordingly, this Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to sell architectural products and services in competition with the Complainant, and that the Respondent is not an authorized dealer, distributor or licensee of the Complainant. This has not been contested by the Respondent. It is therefore reasonable to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this Panel finds, pursuant to paragraph 4(b)(iv) of the Policy, that the Respondent has used the disputed domain name in bad faith.
D. Complainant’s Eligibility
The Complainant has requested transfer of the disputed domain name. Given that the Complainant owns an Australian registered trademark that is identical to the disputed domain name, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name.
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 name <chiefarchitect.com.au> be transferred to the Complainant.
Andrew F. Christie
Dated: April 1, 2011