World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AOT Group Limited v. Park Ward House Pty Ltd / Geoffrey Ballard

Case No. DAU2011-0018

1. The Parties

The Complainant is AOT Group Limited of Melbourne, Australia represented by Blake Dawson, LLP, Australia.

The Respondent is Park Ward House Pty Ltd / Geoffrey Ballard of Dubbo, Australia.

2. The Domain Name and Registrar

The disputed domain name <wwwneeditnow.com.au> is 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 July 5, 2011. On July 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 name. On July 12, 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 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 July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2011.

The Center appointed Andrew F. Christie as the sole panelist in this matter on August 9, 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 Complainant established its company in 1987, and is one of the largest wholesale distributors of Australian, New Zealand and South Pacific travel products and services in the world. The Complainant registered the trademark NEED IT NOW in Australia on June 29, 2009, and in New Zealand on June 30, 2009. It has been using the trademark NEED IT NOW since at least 2003 in connection with the provision of travel services. It offers for sale discounted accommodation for over 100,000 properties, and it operates an online business which markets and sells accommodation and related services at its website using the domain name <needitnow.com.au>.

The disputed domain name was registered on August 10, 2009. As of June 26, 2011, the disputed domain name resolved to a website “www.ratestogo.com”, at which travel and accommodation deals are offered.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain name is virtually identical to the trademark NEED IT NOW in which the Complainant has rights. The Respondent has intentionally chosen a domain name that is based on the Complainant’s trademark and is using that domain name in a misleading and deceptive way which is disrupting both the Complainant’s business and the reputation and goodwill it has in the trademark.

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name because (i) it does not have any registered trademarks, applications for trademarks, or trade names in Australia corresponding to it, (ii) it cannot demonstrate that the disputed domain name is used or will be used in connection with a bona fide offering of services, as the webpage to which it resolves is not related to the disputed domain name in any way and the owner of that website has confirmed in writing that it has no connection with the Respondent, (iii) consumers will be misled into believing the services offered at the “www.ratestogo.com” webpage originate from or are associated with the Complainant, (iv) it is not, and has never been, a licensee of the Complainant and there is no evidence it is commonly known by the disputed domain name, (v) as the disputed domain name has only been registered since August 10, 2009, and resolves to an unrelated webpage, the Respondent has not acquired a reputation in the disputed domain name, and (vi) it is disrupting the Complainant’s business by misleadingly diverting consumers to an unrelated website operated by a third party.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent (i) has registered and used the disputed domain name with the primary purpose of disrupting the business or activities of the Complainant, (ii) has intentionally attempted to attract Internet users to the “www.ratestogo.com” website to which the disputed domain name resolves, and to webpages linked to it, thereby creating a likelihood of confusion with the Complainant’s NEED IT NOW trademark as to the source and/or affiliation of the webpage to which the disputed domain name resolves and the services offered on the “www.ratestogo.com” website, (iii) is not authorized to use the Complainant’s trademark, (iv) would be aware, given the size and reputation of the Complainant, that it is highly likely Internet users may mistakenly insert the disputed domain name when conducting a search for the Complainant, then be diverted to the “www.ratestogo.com” website and think the site is associated with the Complainant’s services, and (v) has not responded to a written request for the Respondent to transfer the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates wholly the Complainant’s registered trademark NEED IT NOW, and adds only the prefix “www”. The addition of this prefix does not lessen the inevitable confusion of the disputed domain name with the Complainant’s registered trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not provided any evidence that it has been commonly known by the disputed domain name. According to the present record the Respondent has used the disputed domain name to resolve to a website operated by a third party which provides similar services to the Complainant. This is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

The Complainant has conducted a travel product and services business across Australia, New Zealand and the South Pacific for many years under its trademark NEED IT NOW. This Panel is persuaded that the Respondent, being located in Australia, was likely aware of the Complainant’s trademark when it registered the disputed domain name. Moreover, this Panel is persuaded that the Respondent has used the disputed domain name with the intention of attracting Internet users to a website operated by a third party by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <wwwneeditnow.com.au>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Dated: August 23, 2011

 

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