WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Jean Heitz v. Truly Natural Products PTY. Limited/ Mr. Cordeiro
Case No. DAU2011-0017
1. The Parties
The Complainant is Mr. Jean Heitz of Germigny L'Eveque, France, represented by Novagraaf, France.
The Respondent is Truly Natural Products Pty. Limited/ Mr. Cordeiro of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <argiletz.com.au> is registered with TPP Domains Pty Ltd. dba TPP Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2011. On June 28, 2011, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the disputed domain name. On July 4, 2011, TPP Domains Pty Ltd. dba TPP Internet 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”), 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 July 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2011. No Response was filed and Notification of Respondent Default was sent to the Respondent on July 27, 2011.
The Panel notes that communications to the email address provided by the Complainant for the disputed domain name appear to have resolved to a third party claiming to be unconnected to the disputed domain name. The Panel is satisfied however that communications addressed to the Respondent at other email addresses (confirmed by the Registrar as well as shown in the public WhoIs) and hard copy deliveries were received by the Respondent and that the Respondent was duly served in accordance with paragraph 2(a) of the Rules.
On July 28, 2011, the Center received an email communication from the Respondent stating “[i] am no way Associated with the domain. So please stop sending me this email as I will not accommodate such accusations. If you feel that the person responsible for the domain (owner) has violated any such laws then sought help from the law rather than spamming me with this intoxicated emails.” The Center acknowledged receipt of this email on the same day indicating the Respondent’s email address at […]@eduardson.com.au has been confirmed by the Registrar as the contact email of the registrant of the disputed domain name.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 1, 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. The Panel noted certain inconsistencies in the Complaint and caused to be issued Panel Order No. 1 dated August 19, 2011. In response to the Panel Order No. 1 the Complainant filed an amended Complaint on August 23, 2011. The Respondent did not file any comments in reply by the due date, August 28, 2011. On September 1, 2011 the Center received an email from the Respondent’s authorized representative seeking an extension of time for filing a Response, stating that they "had been recently briefed in the above matter (due to bereavement)". On September 4, 2011 the Center received a further e-mail from the said authorized representative responding to the Complaint. For the reasons set out below, the Center declined to grant the extension of time and the Panel declines to consider the Respondent's authorized representative September 4, 2011 email.
Paragraph 5(a) of the Rules provides that a response to a complaint must be filed no later than twenty days after the commencement of the administrative proceeding. The Respondent did not comply with that requirement nor did it reply to the Notice of Respondent’s default nor to the opportunity afforded to it by the Panel Order No.1 to reply to the Amended Complaint. Paragraph 5(d) of the Rules provides that the time for filing a response may be extended only "in exceptional cases". The Respondent has been fully advised by the Center of requirements for the filing of a response and has not provided any evidence upon which a finding of exceptional circumstances could be based. The bald statement by Respondent's authorized representative that they had been recently briefed due to bereavement reasons falls far short of a showing of exceptional circumstances why the Respondent, a corporation, did not submit a timely Response, see OMV AG v. SC Mondokommerz SRL, WIPO Case No. DRO2005-0005.
4. Factual Background
According to the WhoIs for the disputed domain name it was registered on August 19, 2008 and the registrant contact name is Mr Steve Cordeiro.
The Complainant is the registered owner of Australian Trademark No. 731367 ARGILETZ registered from April 2, 1997 in classes 3, 5 and 19 in respect of a range of goods which include cosmetic and beauty preparations consisting wholly or partly of clay and clay products. The Complainant is apparently the principal of a French company Argiletz S.A. which markets the products online and through a number of distributors in Australia. The Complainant asserts that the Respondent operates in the same line of business in Australia and cites a website at “www.trulynaturalshop.com” advertising similar products.
On September 1, 2008 the Complainant, through its French trademark attorneys, wrote to the Respondent demanding transfer of the disputed domain name. On September 7, 2008 the Respondent, by a letter signed by Mr. Cordeiro replied that as a seller of Argiletz's products in Australia it had registered the disputed domain name in good faith to protect from "squatting" and would be very happy to transfer it to the Complainant. On December 8, 2008 Mr. Cordeiro sent to the Complainant's attorneys a copy of a letter dated December 5, 2008 which he said was to be sent to the registrar for the disputed domain name asking that it be transferred to the Complainant. The transfer failed to eventuate. The Complainant's attorneys contacted the registrar which stated that it could not transfer the domain name without instructions from the Respondent. Over the ensuing 15 months the Complainant's attorneys sent more than 10 letters of demand and reminder to the Respondent and on October 4, 2010 an employee of the Complainant wrote directly to the Respondent seeking the transfer. On November 22, 2010 the Respondent sent a letter to the Complainant's Australian trademark attorneys over the signature of Mr. Cordeiro stating:
"We dispute your client's claim and will be seeking legal advice to the matter after the festive season".
The dispute domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not linked with the Complainant and has not been given any authorization to use the trademark ANGILETZ, nor is it commonly known by that name.
As evidence of the Respondent's bad faith in registration and use of the disputed domain name the Complainant points to the Respondent's letter of September 7, 2008 as showing that the Respondent claims to be a reseller of the Complainant's products and is therefore fully aware of those products and of the Complainant's rights in its trademark. In further support of its contention that the Respondent has acted in bad faith the Complainant refers to the Respondent's failure to transfer the disputed domain name, despite its promise to do so and despite many further requests and reminders.
The Respondent did not file any formal Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant's ownership of the Australian registered trademark No. 731367 establishes that the Complainant has rights in the trademark ARTILETZ. The disputed domain name consists of the word "Argiletz" with the addition only of the second level domain ".com.au". It is well established that such addition does not serve to distinguish the disputed domain name from the trademark.
The Panel therefore finds that the disputed domain name is identical to the trademark ARGILETZ in which the Complainant has clearly established rights.
B. Rights or Legitimate Interests
The Respondent's letter of September 7, 2008 and further letter of December 5, 2008, in which it asserts that it registered the disputed domain name to protect it from cybersquatting and that it was happy to transfer the domain name to the Complainant, indicate that at that time it knew and recognized the Complainant's rights in the trademark ARGILETZ and the disputed domain name. It shows that at that time it recognized that the Respondent had no rights or legitimate interests in the disputed domain name otherwise than as a trustee for the Complainant or its company. Its subsequent failure to deliver on its promise to transfer the disputed domain name casts serious doubt on its claim to have registered it in good faith. The Complainant has established, on evidence including evidence of the Respondent's own statements, that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent's failure to explain or rebut the Complainant's prima facie showing serves further to reinforce this conclusion.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
As discussed above the Respondent claims to have registered the disputed domain name in good faith and in order to protect it from cybersquatting in the interests of itself and the Complainant. The Respondent's failure to live up to its promise to transfer the disputed domain name to the Complainant casts very serious doubt on the Respondent's claimed good faith intentions. Were it necessary to do so the Panel would find that the Respondent was acting in bad faith at the time of registration. However, such a finding is not necessary under the Policy since the applicable Policy in the .au domain requires only a finding of either bad faith registration or bad faith subsequent use.
In September 2008 the Respondent promised to transfer the disputed domain to the Complainant and provided the Complainant with a copy of a letter purporting to show that it had instructed the registrar for the disputed domain name to do so. Subsequent events suggest that the latter was either not sent or withdrawn. This and the Respondent's continued procrastination over a period of two years and final statement that it disputed the Complainant's claim, amounted to conduct in bad faith in the light of its earlier promise.
There remains the question of whether or not this conduct amounted to use of the disputed domain name in bad faith. The disputed domain name does not point to an active webpage. In that sense therefore there has been no active use of the disputed domain name. However, it has been well established from the very early days of the operation of the Policy that such passive holding of a domain name, taken in conjunction with other evidence of bad faith conduct, amounts to use in bad faith within the terms of paragraph 4(a)(iii) of the Policy – see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that the disputed domain name is being used in bad faith. The Panel further notes that there is strong indication that the Respondent's initial registration of the disputed domain name was also in bad faith.
For all 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 <argiletz.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: September 6, 2011