WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pelican Products, Inc. v. Terri Curyer
Case No. DAU2011-0021
1. The Parties
The Complainant is Pelican Products, Inc. of Miami, Florida, United States of America, represented by Fisher Adams Kelly Patent and Trademark Attorneys, Australia.
The Respondent is Terri Curyer of Neutral Bay, New South Wales, Australia, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <pelican.com.au> is registered with NetRegistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2011. On August 29, 2011, the Center transmitted by email to NetRegistry Pty Ltd a request for registrar verification in connection with the disputed domain name. On August 31, 2011, NetRegistry Pty Ltd transmitted by email to the Center its verification response confirming that:
(a) the disputed domain name is registered with NetRegistry Pty Ltd;
(b) the Respondent is listed as the registrant and the contact details held by NetRegistry Pty Ltd correspond to those identified in the Complaint;
(c) the .au Dispute Resolution Policy (the “Policy”) applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of 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 September 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2011. The Response was filed with the Center on September 29, 2011.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 12, 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.
On October 21, 2011 first the Complainant and then subsequently the Respondent filed with the Center unsolicited supplemental filings.
4. Factual Background
The Complainant manufactures and sells advanced lighting systems, rugged protector cases and shipping containers. It has trademark registrations in at least the United States of America and Australia for PELICAN:
(a) US Trademark No. 2240096 in respect of “flashlights” and “structural foam containers for storage, protection and carrying of equipment” in, respectively, International classes 11 and 20;
(b) Australian Trademark No. 609322 in respect of “flashlights and parts and accessories therefore included in” International Class 11; and
(c) Australian Trademark No. 609323 in respect of “cases of plastic including dustproof equipment cases in” International Class 20.
The Complainant claims it has been using the PELICAN trademark for more than 30 years. The US Trademark registration claims a first use in commerce in 1976. It was filed in September 1996. The Australian trademark registrations date from August 1993.
It would appear that the disputed domain name was first registered in 1997. It appears from Annex 7 to the Response that the registration was initially held by someone quite unrelated to the present dispute: one Pelican Electronic Developments Pty Ltd. So far as appears from the record, that company appears to have provided services related to sports betting and digital signage.
About June 29, 2010, a company called 888 Pty Ltd became the registrant of record for the disputed domain name. Glen Curyer (“Mr. Curyer”) is or was the sole director of that company. Shortly before becoming the registrant, 888 Pty Ltd had registered the business name ” Pelican Lighting” on 24 June 2010 in New South Wales, Australia. The nature of the business was “sales, advice and comment on lighting products such as lights, torches, remote area lighting, low volt [sic]”. The registration of the business name was presumably the basis on which 888 Pty Ltd satisfied the name eligibility requirement under Schedule C of auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs.
As at April 16, 2011, the disputed domain name resolved to a website which featured the banner heading “Pelican Lighting”, the word “Lighting” was in significantly smaller type than “Pelican”. The home page included links to “Cases” and “Torches”. The bulk of the home page consisted of a comparison of the Fox Fury Nomad Remote Area Lights to the Complainant’s Pelican 9440 remote area lights.
According to the Complainant’s letter of demand to 888 Pty Ltd dated April 29, 2010, the “Cases” link connected to the Complainant’s own website; the “Torches” link, however, linked through to a website selling torches (or flashlights) from brands competing with the Complainant’s products.
There was further correspondence between the Complainant’s representatives and Mr. Curyer of 888 Pty Ltd until at least June 22, 2011.
The Respondent registered the business name Pelican Packing and Travel Tips on July 7, 2011 describing the nature of the business as “travel advice website”.
Subsequently, in July 2011, the Respondent became the third registrant of the disputed domain name.
5. Procedural Issue - Supplemental Filings
The Complainant has requested permission to file a supplemental submission. The Rules do permit panels to request further information and to permit further statements: paragraph 12 of Schedule B of the Rules. Whether or not unsolicited supplementary materials are accepted into the record however falls within the discretion of the Panel. That discretion is typically exercised in favor of acceptance where the Response raises matters which the Complainant could not reasonably have anticipated or where the supplemental filing is filed to correct factual errors.
The proposed Supplemental Filing does provide further information about the Respondent’s activities which arises out of the Response or responds to matters claimed in the Response which could not reasonably have been anticipated before the Response was filed. The Respondent’s supplemental filing seeks to provide further information in rebuttal. In these circumstances, the Panel admits both proposed Supplemental Filings into the record.
6. Discussion and Findings
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark to which it has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark, and, if so, the disputed domain name must be shown to be identical or confusingly similar to the proven trademark.
The Complainant has clearly proved ownership of the registered trademarks for PELICAN referred to in section 4 above. The Complainant also contends that its trademark, PELICAN, is a well-known trademark. In support of this contention, the Complainant claims it has been using its trademark for over 30 years. It also says it operates in 12 countries, with 22 offices and 6 manufacturing facilities. It says it has sales in over 50 countries, with sales exceeding USD 300 million annually. It says it has more than 20,000 unique visitors to its website at “pelican.com” each month.
This information must be treated with some caution since, as the Respondent points out, in at least some parts of the world, particularly the European Union, the Complainant appears to use “PELI” rather than PELICAN.
The disputed domain name is identical to the Complainant's registered trademark, disregarding the “.com.au” 2tld which is a functional component of the domain name system: See e.g. MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016: Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006-0013.
The Respondent points to:
(a) the status of the word “Pelican” as an ordinary English term;
(b) the limited nature of the goods covered by the Complainant’s registered trade marks;
(c) the existence on the Register of Australian Trade Marks of 13 other trademarks for PELICAN;
(d) the registration with the Australian companies’ regulator of some 1,294 entities with the word “Pelican” in their name,
to rebut the conclusion that the disputed domain name is identical or confusingly similar to the Complainant’s proved trademarks.
The Respondent’s arguments on this question are predicated on a misunderstanding. On this part of the inquiry under the Policy, what is required is simply a comparison of the disputed domain name itself to the Complainant's proven trademarks: see, e.g., Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007. This is different to the question under trademark law, which can require comparisons of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the Policy.
Accordingly, the Complainant has established the first requirement under the Policy.
B. Rights or Legitimate Interests
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) in Schedule A of the Policy. The circumstances set out in paragraph 4(c) in Schedule A of the Policy are examples only, however, and are not an exhaustive numeration in ways in which rights or legitimate interests can be shown.
While paragraph 4(c) in Schedule A of the Policy states that these are circumstances where a respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO, Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0)), paragraph 2.1. While the WIPO Overview 2.0 deals with interpretation of the UDRP, this principle is equally applicable under the Policy: Nemetschek North America, Inc., OzCAD Pty Limited v. CAD Australia Pty Limited, WIPO Case No. DAU2008-0014.
Insofar as the Respondent is individually concerned, the Complainant states that it has not licensed her to use its trademarks. Nor does she have a legal or commercial relationship with the Complainant which would give her a right to use the Complainant’s trademark in the disputed domain name. Those factors are often sufficient to raise a prima facie case against a respondent.
The Complainant, however, goes further. It seeks to color the Respondent’s position with the conduct of the prior registrant, 888 Pty Ltd. It says:
(a) the Respondent and the sole director of 888 Pty Ltd, the previous registrant, share the same surname;
(b) the address of 888 Pty Ltd, or at least its “Pelican Lighting” business, is the same as the Respondent’s address;
(c) before the transfer of the disputed domain name to the Respondent, 888 Pty Ltd used it to promote the sale of goods competing with the Complainant’s goods;
(d) before the transfer of the disputed domain name to the Respondent, the sole director of 888 Pty Ltd, Mr. Curyer, offered to sell the disputed domain name to the Complainant for USD 35,000;
(e) the Respondent registered her business name for Pelican Packing and Travel Tips shortly after the correspondence between Mr. Curyer and the Complainant’s representatives broke down;
(f) after the transfer of the disputed domain name to the Respondent, Mr. Curyer sent a further email to the Complainant’s representatives in effect holding himself out as the holder.
In these circumstances, the Complainant contends that the transfer of the disputed domain name to the Respondent was merely a pretext after notice of the dispute seeking to immunize the disputed domain name from 888 Pty Ltd’s conduct.
The Respondent does not assert any right or license from the Complainant. To the contrary, she contends that she has no need of any license.
First, the Respondent states that she is not (and the Panel infers never has been) a manager, shareholder, director or in any way in control of 888 Pty Ltd.
Secondly, it would appear that the Respondent and Mr. Curyer have been related in the past, but are now going through a separation as the Respondent states that she acquired the disputed domain name as part of a negotiation to separate their financial assets, businesses and other assets.
In her Supplemental Filing, the Respondent states that the premises at the address shared by the Respondent and 888 Pty Ltd are a two storey building. Her residence is on the second floor, with a commercial operation on the ground floor. It would appear that both Mr. Curyer’s business and the Respondent conduct operations from the ground floor, at least at present.
Thirdly, the Respondent points out “Pelican” is a common English or dictionary word. As noted above, she points out that the Complainant’s registered trademarks are very narrow in scope. She also notes that there are at least 13 other trademarks registered in Australia and 1,241 other businesses registered in Australia with “Pelican” in their names. The Respondent says that she acquired the disputed domain name without any notice of the dispute between the Complainant and 888 Pty Ltd and questions why the Complainant is bringing the Complaint so long after the disputed domain name was registered in 1998. The Respondent then says that she intends to use the disputed domain name in areas wholly unrelated to the very limited fields falling within the scope of the Complainant’s registered trademarks; that is, in connection with travel services.
The Panel accepts that the knowledge, conduct and intentions of Mr. Curyer, or 888 Pty Ltd, cannot be attributed to the Respondent merely because she has, or has in the past been in, a relationship with Mr. Curyer. As the learned Panelist in National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491 (Dusty Brown) said:
The Panel agrees with the Respondent that, in most instances, the actions of a prior registrant would be irrelevant in assessing that of the present registrant. This assumes that both registrants are strictly dealing with each other in a totally disinterested, arms-length fashion. Other than consummating a given transaction, neither entity has any other interest in or dealings with the other. Clearly, this is not the case where a continuing relationship of any sort exists between the prior and present registrants. Where such a relationship exists, the question arises whether, under the facts at issue and given the nature of the relationship, the actions of the prior registrant should be imputed to the present registrant such that the conduct of both entities, from the perspective of assessing the propriety of that action, is viewed collectively, i.e., as one single entity, one single actor.
However, the learned Panelist continued:
If UDRP Panels could not impute conduct where appropriate between transacting registrants - as here, then any prior registrant could very easily and successfully shield its names from transfer, and, by doing so, thwart the action of the Policy. Specifically, a prior registrant, after receiving notice of a dispute, involving a trademark owner claiming rights in various names then owned by that registrant, and in contemplation of an eventual UDRP proceeding, could simply assign ownership of those names to a related third party, such as, e.g., a friend, spouse, business colleague or a “friendly” organization. The receiving party, in anticipation of a UDRP complaint being filed against it by the trademark owner, would then simply act totally consonant with the Policy as long as that party owned the domain names. This, in turn, would essentially force a Panel, were it to focus solely on the present registrant’s conduct to the exclusion of that of the prior registrant, to refuse transfer of those names to the trademark owner for want of a UDRP violation. Immediately after such a decision resulted, the present registrant would simply transfer those names back to the prior registrant and thus re-establish the prior status quo, with the trademark owner ultimately denied the benefit of those names to its detriment and that of the public. Such an outcome, which would effectively frustrate and eviscerate the Policy and one which this Panel will not permit, is clearly senseless and counterproductive, and can not and will not be sanctioned.
The position in the present case is arguably different from that considered by the learned Panelist in Dusty Brown. The Respondent’s contentions outlined above assert that there is no continuing relationship between the Respondent and Mr. Curyer or his company 888 Pty Ltd. The Respondent also denies any knowledge of the dispute prior to the transfer of the disputed domain name or involvement in the business of 888 Pty Ltd.
It is also important to bear in mind the limitations in proceedings under the Policy, which are conducted on the papers and without benefit of cross-examination. The present case is not one where the Respondent’s claims of innocent adoption can be rejected out of hand as wholly implausible. However, on balance the Panel concludes that the Respondent has not rebutted the prima facie case raised by the Complainant. Broadly speaking, the Panel considers that three matters tip the scales against the Respondent on the record in this case.
First, the Respondent lives at the same address as 888 Pty Ltd and admits she operates out of the same commercial premises at that address used by 888 Pty Ltd. Given this and the Respondent’s apparently past relationship with Mr. Curyer, it seems unlikely that the Respondent was not aware of the nature of the business being conducted by 888 Pty Ltd or, given the nature of its products as (it is claimed) the Complainant’s only competitor in remote area lighting, the Complainant or its trademark. While it is true the Complainant’s registered trademarks probably do not cover those products and it also appears that the Complainant has overstated the extent of its use of PELICAN to some extent – as the Respondent points out, and the Complainant does not contest, the Complainant uses “Peli” in (at least) Europe, there is nonetheless evidence that the Complainant has a strong common law reputation in its field in Australia.
Secondly, the Respondent says she intends to use the disputed domain name in her “area of interest, contacts and knowledge – travel”. The Panel notes that panels usually require concrete demonstration of how the disputed domain name is being used, or demonstration of concrete steps to use it, before accepting a claim to bona fide use. The Respondent has not used the disputed domain name in that field or at all. Arguably, that could be because of the relatively short time since she acquired it and the filing of the Complaint. However, the Respondent has not provided any evidence to demonstrate that she has in the past been active in “travel” or otherwise demonstrated any connection with that field of activity. In other words, there is nothing before the Panel to show that “travel” is an area where the Respondent could be expected to use the disputed domain name rather than just developed it as an explanation after the event. In these circumstances, the Panel is not prepared to assume in the Respondent’s favour that use of the disputed domain name would be limited only to the field of “travel”.
Thirdly, the sequence of events outlined above relating to 888 Pty Ltd’s use of the disputed domain name, the dispute arising with the Complainant and the quick transfer of the disputed domain name to the Respondent are at the least suspicious. That sequence and those events are not decisive in themselves but, given those matters, called on the Respondent to produce more compelling evidence to support the claim of legitimate intentions and interest.
Accordingly, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant and so the Complainant has established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad Faith
The third requirement under the Policy is that the Respondent has registered or used the disputed domain name in bad faith. This is a disjunctive requirement, not conjunctive as under the UDRP.
It follows from the failure of the Respondent’s claim to rights or legitimate interests in the disputed domain name that the Respondent’s registration of the disputed domain name was infected by the motives and use of the disputed domain name by 888 Pty Ltd. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The Panel rejects the Respondent’s attempts to characterize 888 Pty Ltd’s website described above as simply a use of the Complainant’s trademark in comparative advertising for the competing Fox Fury Nomad product. It may be fair to characterize the use of the trademark in that particular section as comparative advertising. However, the banner headline Pelican Lighting and the disputed domain name itself are evidence of the use of the Complainant’s trademark to attract potential customers of such products to the website of a competing product. As the Respondent contends, the Complainant’s registered trademarks may not cover such products, but that overlooks the Complainant’s common law rights. It also overlooks the link on the website for Torches which redirects the browser to a website offering for sale torches (flashlights) of brands competing with the Complainant’s products and which fall directly within the Complainant’s registered trademarks.
For 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, <pelican.com.au>, be transferred to the Complainant.
Warwick A. Rothnie
Dated: October 26, 2011