WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crosby Furnishings Pty Ltd v. Diablo-Group Pty Ltd.
Case No. DAU2011-0013
1. The Parties
The Complainant is Crosby Furnishings Pty Ltd1 of Narre Warren, Victoria, Australia, represented by Tolhurst Druce & Emmerson Lawyers, Australia.
The Respondent is Diablo-Group Pty Ltd. of Melbourne, Victoria, Australia.
2. The Domain Names and Registrar
The disputed domain names <blindonline.com.au>; <blindsonlineaustralia.com.au>; <blinds-online.net.au>; <blindsonline.net.au> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain names. On May 11, 2011, Aust Domains International Pty Ltd dba Aust Domains, 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 Complainant filed an amended Complaint on May 17, 2011.
The Center verified that the Complaint together with the amended 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 May 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2011.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on June 29, 2011. 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 facts relevant to the findings and decision in this case are that:
- The Complainant manufactures window blinds and window furnishing and sells those goods to the Australian public by reference to the trademark BLINDSONLINE.
- The Respondent is a competitor in business to the Complainant in Australia.
- There is no other relationship between the parties.
- At the time the Complaint was filed, websites corresponding with at least some of the disputed domain names seemingly posed websites connected with the Complainant but carried redirections to Respondent’s websites.
- The Complainant petitions the Panel to order transfer of the disputed domain names from the Respondent to the Complainant.
5. Parties’ Contentions
The Complainant asserts trademark rights in the name BLINDSLONLINE and states that the disputed domain names are either identical or confusingly similar to the trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered or subsequently used the disputed domain names in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the auDRP, the Complainant must prove that:
(i) the domain names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain name has been registered or subsequently used in bad faith.
A. Trademark rights / identity or confusing similarity
Paragraph 4(a)(i) of the .auDRP requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a name or trademark, followed by an assessment of whether the name or trademark and the domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy2.
The Complaint sets out at paragraph 17: “The director and sole shareholder of the Complainant is (together with his wife) the owner of Australian Trade Mark number 122184 which incorporates the stylized word BLINDSONLINE.COM.AU.” Paragraph 18 of the Complaint goes on to state that: “The Complainant has also applied for registration in respect of other trade marks incorporating the stylized words BLINDSONLINE.COM.AU (Australian Trade mark numbers 1394046 and 1394115). Those applications are currently under examination by the relevant registration authority, The Trade marks Office of IP Australia.”
Details of the two pending applications taken from IP Australia’s public database are annexed to the Complaint. The Panel notes that both applications were filed and are proceeding in the name of another legal entity, Blindsonline.com.au Pty Ltd. There is no explanation in the Complaint of a relationship, if any, between that company and the Complainant and so the Panel would have had reservations about according rights in the relevant trademarks to the Complainant, were the trademarks registered. However, as the Complaint acknowledges, the two trademarks are pending registration and the consensus view of former panels applying this Policy is that trademark rights do not accrue from pending applications for registration.
Also annexed to the Complaint is a copy what is said to be the Certificate of Registration for Australian Trademark No. 122184. That number does not correspond with the current numbering system for Australian trademark registrations which are all 7 digit. The Panel is not assisted by the fact that the electronic copy of the Certificate is out of focus and the registration number thereon cannot be read. Whether the Center received it that way or not is unclear but, as it happens, immaterial for the following reason.
A panel is permitted to make limited research of its own to ascertain pertinent factual matters, such as the details of a trademark registration on which a party replies. From a public database of Australian trademark records, the Panel was able to discover that the correct registration number is 1225184. Australian Trademark Registration No. 1225184 is not in the name of the Complainant. Nor is it, as claimed, in the names of individuals. It belongs to Blindsonline.com.au Pty Ltd. In the result, the Complainant has not established rights in a trademark through registration.
The Policy also recognizes unregistered, or so-called “common law”, rights in a trademark acquired through use and reputation. Complainant asserts such rights in the name BLINDSONLINE.
The Complainant’s trademark is composed of words wholly descriptive of the goods and their mode of sale. Although not a UDRP case, in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd  HCA 11; (1978) 140 CLR 216, the High Court of Australia was asked to consider a dispute between two rival businesses using similar trading names, both names being descriptive of their services. So far as relevant to the matter before the Panel in these Administrative Proceedings, the Court noted that:
“The kind of business which each of these Centres carries on is conveyed by their corporate names, a fact which, as will appear, is of itself of considerable importance. … The use by the Sydney Centre of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. … There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. … The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition3 asks at paragraph 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? In answer, the consensus view of former UDRP panelists is that:
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. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted. (emphasis added)
The Complainant states that it has “sold blinds and other window furnishings in Australia under the name BLINDSONLINE for almost 5 years.” Five years’ use of a purely descriptive trademark is unlikely to generate common law rights absent exceptional proof of use.
In this case, the Complainant provides a schedule of total sales of goods under the trademark for the period 2006-2010. A single consolidated figure is given; there is no breakdown of sales year by year. Nevertheless, judged by ordinary commercial standards, the total sales are impressive.
In addition, the Complaint carries information about advertising and promotion of the trademark in print, over the radio and on television. It is fair to say that the only significant promotion of the trademark occurs from August 2008 onwards.
Accordingly, the Panel has before it the borderline question of whether or not it can be said that the trademark has garnered sufficient reputation in at least a section of the Australian market over what is less than a three year period.
Taking into account the total sales, the advertising spend, the information that the Complainant’s website has in excess of 8000 hits per month and the fact that the trademark has been promoted on national television in home and lifestyle programs, the Panel finds that the Complainant has done just enough to show common law rights in the trademark BLINDSONLINE for the purposes of paragraph 4(a)(i) of the Policy4.
The remaining question is whether the disputed domain names are confusingly similar to the Complainant’s trademark. For the purposes of testing confusing similarity (and for any other purpose in the remainder of this decision), the Panel will treat the common law trademark BLINDSONLINE as the relevant trademark.
The ccTLD “.com.au” or the gTLD “.net.au” in the disputed domain names <blindonline.com.au>; <blindsonlineaustralia.com.au>; <blinds-online.net.au>; <blindsonline.net.au> can be treated as trivial and so ignored in making the relevant comparisons.5 The disputed domain names are then either identical to the trademark, or differ from the trademark simply by the addition of the country name “Australia”, or the addition or subtraction of other non-distinctive matter such as the pluralisation entailed by the letter “s” or the use of hyphenation. Those alterations do nothing to avoid confusion.
The Panel finds the disputed domain name <blindsonline.net.au> to be legally identical to the Complainant’s trademark and finds the disputed domain names <blindonline.com.au>; <blindsonlineaustralia.com.au> and <blinds-online.net.au> to be confusingly similar to the Complainant’s trademark.
The Panel accordingly finds that the Complainant has established the first element of the Policy in respect of all disputed domain names.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests6.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services(not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not.
The Complainant has stated that there is no relationship between the parties. Instead, it is alleged that the parties are competitors in the same market in Australia. Moreover, the Complainant provides evidence that the Respondent offers the same goods for sale online at the websites “www.blindswarehouse.com.au” and “www.cheapablinds.com.au”.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. There is no evidence of a bona fide offering of goods or services of any kind and since the Respondent failed to reply to the Complaint in any substantive manner, it also failed to discharge the onus which fell to it under paragraph 4(c) and so the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names7.
The Complainant has satisfied the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the .auDRP, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to 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.
The Complainant alleges that the Respondent’s conduct falls under paragraphs 4(b)(ii), (iii) and (iv) of the Policy.
The Panel need only consider the claim under paragraph 4(b)(iv) of the Policy. The Panel has already found the domain names to be either identical or confusingly similar to the Complainant trademark. The Panel also finds that the Respondent has intentionally used the disputed domain names to attract Internet users to a website or online location (being in this case Respondent’s own websites) for commercial gain. The Panel finds that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has satisfied the third and final element 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, <blindonline.com.au>, <blindsonlineaustralia.com.au>, <blinds-online.net.au>, <blindsonline.net.au>, be transferred to the Complainant.
Debrett G. Lyons
Dated: July 14, 2011
1 The Complaint commences with the statement: “The Complainant in this Administrative Proceeding is Crosby Furnishings Pty Ltd and its director and sole shareholder, Andrew Crosby”. Had that been the intention, Andrew Crosby should have been named as a co-Complainant.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
4 The Panel has additionally borne in mind paragraph 1.2 of the auDRP which states that: The purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name.
5 See, Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
6 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.