World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

US Bank National Association as trustees for the First Alert Trust v. Master Distributors Unit Trust, Bradley Green

Case No. DAU2011-0031

1. The Parties

The Complainant is US Bank National Association as trustees for the First Alert Trust of Minnesota, United States of America, represented by Griffith Hack, Australia.

The Respondent is Master Distributors Unit Trust, Bradley Green of Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <firstalert.com.au> (“the Domain Name”) is registered with PlanetDomain Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2011. On September 28, 2011, the Center transmitted by email to PlanetDomain Pty Ltd. A request for registrar verification in connection with the Domain Name. On October 5, 2011, PlanetDomain Pty Ltd. 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 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2011.

The Center appointed Alan L. Limbury as the sole panelist in this matter on November 15, 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

Through its licensees, the Complainant supplies electronic fire and smoke detectors, fire extinguishers, safes, cash boxes and home security goods in various countries, including Australia. It is the proprietor of numerous trademarks, including Australian registered trademarks, the earliest of which is No. 299970, FIRST ALERT, registered with effect from August 26, 1976, in relation to electronic fire and smoke detectors.

On March 1, 2002, a licensee of the Complainant, BRK Brands, Inc, (acting with the authority of the Complainant) entered into a distribution agreement with the Respondent which gave the Respondent the exclusive right to distribute goods under the mark FIRST ALERT in Australia.

According to the information provided by PlanetDomain Pty Ltd., the Domain Name was “created” on April 24, 2007 and “registered” on February 3, 2011.

The distribution agreement was terminated on December 31, 2008.

On April 15, 2010, the Domain Name resolved to a web page featuring the FIRST ALERT trademark and stating: “Welcome to the First Alert Website for Australia”. Following a letter to the Respondent from the Complainant’s attorneys on November 10, 2010, the Domain Name resolved on May 4, 2011 to a “Coming Soon” webpage at “www.family-first.com.au”, apparently offering for sale a fire protection blanket and smoke alarms.

On November 24, 2011, the Panel found that the Domain Name still resolved to the <family-first.com.au> “Coming Soon” webpage.

5. Parties’ Contentions

A. Complainant

The Complainant says the Domain Name, if not wholly identical, is confusingly similar to its FIRST ALERT trademark and that the Respondent has no rights or legitimate interests in the Domain Name which, if not registered in bad faith, is being used in bad faith.

B. Respondent

The Respondent did not provide any Response.

6. Discussion and Findings

To succeed in this Complaint under the Policy, the Complainant must establish that:

(i) the Domain Name is 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 Name; and

(iii) the Domain Name has been registered or subsequently used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has trademark rights in FIRST ALERT.

In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes may be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001. Accordingly, the relevant part of the Domain Name comprises the Complainant’s trademark FIRST ALERT in its entirety. The Panel finds the Domain Name to be identical to the Complainant’s mark.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

Assuming that the Domain Name was registered for the purpose of implementing the distribution agreement, any rights or legitimate interests the Respondent might have had in the Domain Name for that purpose ceased upon the termination of that agreement. Accordingly the Panel finds the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has established this element of its case.

C. Registered or Subsequently Used in Bad Faith

The Policy, paragraph 4(b) provides that 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 registration or use of a domain name in bad faith:

“(i) [...]

(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.”

Assuming that the Domain Name was registered in good faith for the purpose of implementing the distribution agreement, its use in April, 2010, more than a year after termination of that agreement, misrepresented to Internet users that the Respondent’s website was at that time “the First Alert Website for Australia”. Its subsequent and continued use to resolve to the <family-first.com.au> website depicting products competitive with those of the Complainant is likely and appears intended to give rise to the kind of confusion described in the Policy, paragraph 4(b)(iv).

Further, the Respondent’s retention of the Domain Name following termination of the distribution agreement appears designed to prevent the Complainant from using it in Australia and to disrupt the Complainant’s and its licensee’s business activities.

Accordingly the Panel finds the Domain name to have been used in bad faith.

The Complainant has established this element of its case.

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 Name <firstalert.com.au> be transferred to the Complainant, the holder of the Australian registered trademark FIRST ALERT.

Alan L. Limbury
Sole Panelist
Dated: November 24, 2011

 

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