World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Woolworths Limited v. Cracka IP Pty Ltd.

Case No. DAU2011-0028

1. The Parties

The Complainant is Woolworths Limited of New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Cracka IP Pty Ltd of New South Wales, Australia.

2. The Domain Name and Registrar

The Disputed Domain Names <danmurphyswines.com.au>, <danmurphywines.com.au>, <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au>, <sellermasters.com.au>, <langtonswines.com.au> are all registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”).1

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2011. On September 21, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 27, 2011, the Registrar 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 October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2011.

The Center appointed Nicholas Weston as the sole panelist in this matter on November 24, 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 finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center of physical delivery of the Written Notice to the Respondent even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand actual proof of service.

The language of this administrative proceeding is English, being the language of the registration agreement.

4. Factual Background

The Complainant directly and through subsidiaries operates a business in Australia with after tax profits of AUD$2.1B and employing more than 191,000 people, including under the following sub-brands:

A. DAN MURPHY: This liquor business operates more than 120 stores under the name and trademark DAN MURPHY’S. The Complainant is the owner of several trademarks consisting of, or including the word “Dan Murphy” and”Dan Murphy’s “, in respect of wholesaling and retailing of wines, spirits, liqueurs, beers; wines, spirits, liqueurs and beers advisory services in international class 42, including Australian Registration No. 716778 dated September 6, 1996 and a registration for DAN MURPHY'S CELLAR 1878 dating from June 9, 1980. It owns the domain names <danmurphy.com.au> and <danmurphys.com.au> and operates a website relating to this liquor business at the latter domain name.

B. CELLARMASTERS: Its direct wine retail business operates under the name and trademark CELLARMASTERS in Australia and has over 330,000 members. The Complainant is the owner of several trademarks consisting of, or including the word “Cellarmasters”, in respect of wines, spirits and liqueurs and the sale of wines, spirits and liqueurs by way of retailing, wholesaling, mail ordering and electronic mail ordering procedures in international classes 33 and 35, including Australian Registration No. 860636 dated December 14, 2000. It owns the domain names <cellarmasters.com> and <cellarmasters.com.au> and operates a website relating to this liquor business at the latter domain name.

C. LANGTONS: Its wine auction business operates under the name and unregistered trademark LANGTONS in Australia and has made retail sales exceeding AUD$150M since 1988. Complainant has since 1988 used several trademarks consisting of, or including the word “Langtons”, in respect of wine auctioneering. It owns the domain name <langtons.com.au> and operates a website relating to its wine auction business at that domain name.

The Disputed Domain Names <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au> and <sellermasters.com.au> were created on April 7, 2011. The Disputed Domain Names <danmurphyswines.com.au>, <danmurphywines.com.au> and <langtonswines.com.au > were created on June 8, 2011.

The Respondent uses the Disputed Domain Names to redirect traffic to its own website. Specifically, when each of the Disputed Domain Names <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au> and <sellermasters.com.au> is typed in, each redirects traffic to the Respondents’ wine sales website at <crackawines.com.au>. The other Disputed Domain Names the subject of this Complaint, <danmurphyswines.com.au>, <danmurphywines.com.au> and <langtonswines.com.au>, appear to be parked.

5. Parties’ Contentions

A. Complainant

The Complainant cites its registrations of the trademarks DAN MURPHY and CELLARMASTERS in Australia, and related marks consisting of, or including these words, as prima facie evidence of ownership. It also cites extensive use of the trademark LANGTONS in Australia, and related marks consisting of, or including the word LANGTONS, as prima facie evidence of ownership at common law of that mark also.

The Complainant submits that each of its trademarks is distinctive and that it has common law or unregistered rights in the LANGTONS marks, and that these rights in each mark predates the Respondent’s registration of the Disputed Domain Names <danmurphyswines.com.au>, <danmurphywines.com.au>, <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au>, <sellermasters.com.au> and <langtonswines.com.au>. They submit that respectively the Disputed Domain Names are confusingly similar to their trademarks, because each of the Disputed Domain Names either incorporate in their entirety each trademark (presumably alluding to cases like Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) or using phonetically identical equivalents to its marks (presumably alluding to cases like VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303) and that the similarities are not removed by the addition of the word “wines” in the cases of <danmurphywines.com.au> and <langtonswines.com.au> or the replacement of the first “c” with an “s” in the case of <sellarmasters.com.au> and <sellermasters.com.au> and, in that latter example, also with the replacement of the first “a” with an “e” to render a phonetic equivalent to the Complainant’s mark.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the marks DAN MURPHY’S, CELLARMASTERS or LANGTONS.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of bad faith registration, the Complainants contend that “it is It is inconceivable that the Respondent would not have been aware of the Complainant’s Dan Murphy or Langtons businesses” and that the domain names were registered “for selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain names.” On the issue of bad faith use, the Complainant contends that the Respondent uses the Disputed Domain Names “to divert Internet traffic otherwise rightfully bound for the Complainant” and that such registrations of marks owned by the Complainant and third party wine vendors “amounts to a pattern of conduct by the Respondent of registering domain names to prevent the owners of the mark from reflecting their mark in the corresponding domain names.”

B. Respondent

The Respondent did not file a formal reply to the Complainant’s contentions. However, there is a correspondence of note from the Respondent that has been filed by the Complainant (Annex 17 to the Complaint). This comprises an email dated August 25, 2011 from the Respondent which states:

“The domains that you refer to are commercial assets purchased by Cracka IP Pty Ltd, which were freely available at the time of registration. They form part of a large portfolio of domains that we intend to put up for auction together in the near future.

Regardless of the fact that some of the trademarks you refer to have not been registered, I can confirm that neither Cracka IP Pty Ltd or any of its Related Bodies Corporate have ever used any of these domains. Therefore it’s simply not possible that we have infringed your client’s Trademarks, rights or committed misleading or deceptive conduct. For this reason we have no choice but to reject all of your clients demands.

In terms of your threat to initiate auDRP or UPRP proceedings, we’d like to point out that there are plenty of other businesses and people in the world that would have a legitimate right to own and use these domains and our agents have already initiated discussions with a number of parties to raise interest before the auction.

Should your client have a genuine interest in acquiring these domains, we would be prepared to provide them assurances not to utilise the domains while you review any potential conflicts; however to negate costs at both ends, we would consider a fair and equitable offer to allow all parties to move forward.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) that the Disputed Domain Names have been registered or subsequently used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks DAN MURPHY and CELLARMASTERS. The Panel finds that although the Complainant’s LANGTONS mark is not a registered trademark in Australia, the Complainant nevertheless has unregistered trademark rights in it for purposes of the Policy. This is achieved through extensive usage of the LANGTONS mark by the Complainant throughout Australia supported by uncontested evidence that the LANGTON’S website receives 45,000 unique visits per month and that LANGTON’S Fine Wine Auctions Catalogue has a circulation of 90,000 per year. In this regard, the Panel notes that several panels under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) have decided that the UDRP affords protection not only to those having rights in registered trademarks but also to those having common law or unregistered trademark rights in their trade or service marks (e.g. Bennett Coleman & Co. Ltd v. Steven S. Lalwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131). Therefore, the Panel finds that Complainant also has rights in the LANGTONS mark in Australia.

Turning to whether the Disputed Domain Names are identical or confusingly similar to the DAN MURPHY, CELLARMASTERS and LANGTONS trademarks, the Panel observes that the Disputed Domain Names fall into two categories:

The “wines” Domain Names

1. <danmurphyswines.com.au>, <danmurphywines.com.au> and <langtonswines.com.au> respectively comprise (a) an exact reproduction of the Complainant’s trademarks DAN MURPHY, DAN MURPHY’S and LANGTONS (b) followed by the word “wines”; (c) followed by the country code top level domain suffix “.com.au” all in one continuous domain name; and

The phonetically identical Domain Names

2. <danmerfie.com.au>, <danmerphy.com.au> and <danmurfy.com.au> comprise (a) an exact reproduction of the first part of the Complainant’s DAN MURPHY trademark with a phonetically identical second word to the respective mark, specifically “merfie” “merphy” and “murfy”; (b) followed by the country code top level domain suffix “.com.au” all in one continuous domain name;

3. <sellarmasters.com.au> (a) an exact reproduction of the first part of the Complainant’s CELLARMASTERS trademark; (b) with the letter “c” in the trademark replaced by the letter “s” so that it is phonetically identical to the Complainant’s CELLARMASTERS trademark; (c) followed by the country code top level domain suffix “.com.au” all in one continuous domain name; and

4. <sellermasters.com.au> (a) an exact reproduction of the first part of the Complainant’s CELLARMASTERS trademark; (b) with the letter “c” in the trademark replaced with the letter “s” and the first “a” with an “e” so that it is phonetically identical to the Complainant’s CELLARMASTERS trademark; (c) followed by the country code top level domain suffix “.com.au” all in one continuous domain name.

It is well-established that the “.com.au” country code level designation used as part of the address should be disregarded in the determination of similarity (see: BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names: “danmurphyswines”, “danmurphywines”, “danmerfie”, “danmerphy”, “danmurfy”, “sellarmasters”, “sellermasters” and “langtonswines”.

Having regard to the addition of the word “wines” at the end of the domain names <danmurphyswines.com.au>, <danmurphywines.com.au> and <langtonswines.com.au> , the Panel is satisfied that Internet users would understand the word “wines” to be descriptive. It is well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a descriptive word such as, in this case, “wines”: (see Six Continents Hotels, Inc. v. Ameriasa, WIPO Case No. D2002 1132; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033). The confusion is compounded because the term is descriptive of the goods or services marketed by the Complainant in relation to the trademarks. The panel’s comments in Southcorp Wines Pty Ltd and J.Y.Tulloch & Sons Pty Ltd v. Resource Capital Australia Pty Limited, WIPO Case No. D2001-1393 apply equally in this case: “the addition of the word "wines" acts to reinforce, rather than to detract from, the association with the Complainant which the disputed domain name conveys to anyone having knowledge of the wine industry in Australia”. The respective Disputed Domain Names are therefore confusingly similar to the Complainant’s DAN MURPHY, DAN MURPHY’S and LANGTONS trademarks.

Disputed domain names comprising phonetic variations of trademarks have been held to be “confusingly similar” in numerous WIPO cases, e.g. VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123. The respective phonetically equivalent disputed domain names are therefore confusingly similar to the Complainant’s DAN MURPHY and CELLARMASTERS trademarks.

In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 the Panel held that “The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. Further, in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the Disputed Domain Name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”

Further, unlike the UDRP, the Policy extends protection expressly to “names” as well as trademark rights. For the purposes of the Policy, a “name” is defined by note 2 as referring to:

(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

(b) the complainant’s personal name.

The name of the Complainant’s wholly owned subsidiary Langtons Pty Ltd, comprises the trademark and two descriptive words that connote its legal structure.

The Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the Disputed Domain Name would be caused to wonder if there was an association with the Complainant’s trademark rights. The Disputed Domain Name <langtonswines.com.au> is therefore confusingly similar to the LANGTONS trademark on that basis also.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists (illustratively rather than exhaustively) the ways that a respondent may demonstrate rights or a legitimate interest in a domain name:

(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an 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) [the Respondent has] (as an individual, business, or other organisation) been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.

The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) paragraph 2.1).

For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration: (see Note 2 to the Policy).

As to (i), the Disputed Domain Names <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au> and <sellermasters.com.au> resolve to the Respondent’s wine sales website at <crackawines.com.au> and <danmurphyswines.com.au>, <danmurphywines.com.au> and <langtonswines.com.au>, are parked. Therefore, there is no evidence that the Respondent has made any use nor that it has made demonstrable preparations to use the Disputed Domain Names in connection with an offering of goods and services (not being the offering of domain names that the Respondent has acquired for the purpose of selling, renting or otherwise transferring). On this point, the Respondent satisfies none of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 though to be fair that case is of limited utility in circumstances such as these where there is no relationship between the parties.

Nor is there any evidence that the Respondent satisfies (ii) or (iii) above. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating these marks. In these circumstances, the Complainant has made out a prima facie case.

The fact that the Respondent chose to register domain names that include names owned by the Complainant calls for an explanation, which the Respondent could have given in a Response. By its failure to submit a Response, the Respondent has not rebutted the prima facie case.

In the course of the single piece of correspondence from the Respondent to the Complainant’s tendered, the Respondent stated:

“Should your client have a genuine interest in acquiring these domains . . . we would consider a fair and equitable offer to allow all parties to move forward.”

This Panel finds the Respondent is in clear breach of clause 4.3(b) of the Domain Monetisation Policy (2008 – 10) which states: “the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered”. This Panel does not find it credible that the respondent is somehow a “domainer” (as defined in the Domain Monetisation Policy (2008 10) or that it is engaging in “domain monetisation” (as defined therein) by inviting the Complainant to make an offer.

To put the issue beyond doubt, while the use to which a website is put is not relevant in considering paragraph 4(a)(i) of the Policy, it is relevant in considering paragraph 4(a)(ii). Clauses 4.1 and 4.4 of the Policy (relevantly) state:

“4.1 It is acceptable to register domain names under the close and substantial connection rule for the explicit purpose of domain monetisation within the category “a service that the registrant provides”. The “service” being provided by a domainer is the service of providing users with information and advertising links about the subject matter of the domain name.

4. 4 If the content of a monetised website does not relate to the domain name in any discernible way, then the domainer is not providing the service described in paragraph 4. 1 and the close and substantial connection rule is not satisfied.”

The evidence is that some of the Disputed Domain Names resolves to the respondent’s webpage and that others are parked. This Panel finds that, pursuant to clause 4.4 of the Domain Monetisation Policy (2008 – 10) the close and substantial connection rule is not satisfied.

In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Names.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration and Use in Bad Faith.

For the purposes of Paragraph 4(a)(iii), 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, (relevantly):

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.”

The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The volume of names registered by the Respondent, the unlikelihood that registering eight domain names containing the Complainant’s trademarks or phonetic equivalents on the same day was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg, WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The trademarks DAN MURPHY, DAN MURPHY’S, CELLARMASTERS and LANGTONS are so widely known in Australia for wine sales that it is inconceivable that the Respondent might have registered these marks without knowing of them. This finding is supported by the fact that the Respondent has also registered domain names including <liquorlandwines.com>, <nickwines.com> and <vintagecellarswines.com> which incorporate words similar to the names of other liquor retailers based in Australia including “Liquorland”, “Nick’s Wines” and “Vintage Cellars”.

Moreover, the Panel has considered whether the involvement of the Respondent in previous cases under the Policy resulting in the transfer of four domain names is sufficient to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii). The Panel notes that only one of these cases proceeded to a Decision (see, Woolworths Limited v. Cracka IP Pty Ltd., Calvie Brodie, WIPO Case No. D2011-1574). The Panel finds that a “pattern” is evident having regard to the number of transfers: see Mobile Communication Service Inc. v. WebReg, RN, supra; Centron GmbH v. Michele Dinoia, WIPO Case No. D2006-0915). The pattern is not the product of mere inadvertence but evidence of bad faith.

Two conclusions can therefore be drawn about the Respondent from its use of the Disputed Domain Names resolving to the Respondent’s website or alternatively being parked. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, in this Panel’s view, it is also in breach of the “Aust Domains Internet Domains Register” registration policy titled “Terms & Conditions for Australia .au Domain Names” for breach of the warranty: “You confirm and state to us and to auDA separately that: .. .our registration or use of the Domain name does not infringe any person’s legal rights.”

The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814). Steering unsuspecting Internet visitors to competing services taking advantage of the confusion created by the similarity of the domain names to Complainant’s trademarks is the very essence of bad faith use under the UDRP: (see, e.g.: Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420).

This Panel also finds that the Respondent’s email to the Complainant’s legal representatives on August 25, 2011 in which the Respondent indicates an interest in selling the disputed domain names to the Complainant, indicate an intention to profit from the transaction that also supports a finding of bad faith (see, eg: Telstra Corporation Limited v. Mr. Andy Kang, WIPO Case No. D2002-0832).

This Panel finds that the Respondent is a sophisticated domainer, and must have been aware of the relevant trademarks. This Panel finds that the Respondent has taken the well-known Australian trademarks DAN MURPHY, DAN MURPHY’S, CELLARMASTERS or LANGTONS and incorporated them, or phonetically similar variations of them, in the respective Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users away from the Complainant’s webpage to parked pages or alternatively to the Respondent’s website for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 Domain Names <danmurphyswines.com.au>, <danmurphywines.com.au>, <danmerfie.com.au>, <danmerphy.com.au>, <danmurfy.com.au>, <sellarmasters.com.au>, <sellermasters.com.au> and <langtonswines.com.au> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Dated: December 8, 2011


1 It appears that at the time of the publication of this Decision by the Center, there has been an apparent change of registrars. In this regard, the Panel suggests that the Center may wish to draw this apparent change to auDA’s attention for any appropriate investigation and follow up in due course given the provisions of paragraph 8 of the Policy. In any event, this does not affect the Panel’s decision in the dispositive portion of this Decision.

 

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