WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clark Equipment Company v. AllJap Machinery Pty Ltd

Case No. DAU2011-0042

1. The Parties

The Complainant is Clark Equipment Company of West Fargo, North Dakota, United States of America, represented by Watermark Intellectual Property Lawyers, Australia.

The Respondents named in the Complaint were Yanni Song, The Trustee for A and F Patane Family Trust, Phillip Patane and AllJap Machinery Pty Ltd, all of Darra, Queensland, Australia, represented by Arnotts Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <usedbobcats.com.au> (the “Domain Name”) is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2011. On December 20, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Domain Name. On December 21, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the first and second Respondents were 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 Respondents of the Complaint, and the proceedings commenced on January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Response was filed with the Center on January 30, 2012.

The Center appointed James A. Barker, Warwick A. Rothnie and William P. Knight as panelists in this matter on February 27, 2012. The Panel finds that it was properly constituted. Each member of 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 February 27, 2012, the Complainant submitted a supplemental filing with a request that it be accepted and considered by the Panel.

4. Factual Background

The Complainant is a United States company which makes and distributes industrial and construction machinery and equipment, in Australia and around the world, under a number of trade marks, including the trade mark BOBCAT. The trade mark BOBCAT is registered under the Trade Marks Act 1995 (Cth) in international classes 7, 12 and 37 in respect of machines and implements for handling, manipulating and moving earth and materials of all kinds, loaders, fork lift trucks, bulldozers and other earth moving or materials handling vehicles and services in respect of construction, repair, installation and maintenance services for such machinery and vehicles, amongst other goods and services. The earliest such registration dates from 1965. The Complaint states that the domain name <bobcat.com> is provided by the Complainant, although the website under this domain name claims to be operated by “Bobcat Company” and the domain name belongs to another company. It appears that this domain name passed from a dealer of the Complainant to the Complainant some time in 1997 or early 1998 and has been operated by the Complainant since that time and from some more recent time the Complainant has been using the business name “Bobcat Company”.

The principal Respondent is an Australian company, Alljap Machinery Pty Limited, which is the trustee of the A and F Patane Family Trust. Alljap Machinery Pty Limited registered the Domain Name in the name of the Trust early in 2009 and licensed the use of the Domain Name to a related body corporate, Southern Tool & Equipment Co Pty Limited. Mr. Fullippo (or “Phillip”) Patane is the sole director of each of Alljap Machinery Pty Limited and Southern Tool & Equipment Co Pty Limited. It would appear from the WhoIs record of the Domain Name that the first respondent, Mr. Yanni Song, was no more than the technical contact of Southern Tool & Equipment Co Pty Limited named at the time of first registration of the Domain Name.

At the time of the Complaint, Southern Tool & Equipment Co Pty Limited continued to use the Domain Name for its business, which is the supply and servicing of a wide range of vehicles and equipment, including second-hand Bobcat loaders manufactured by the Complainant, as well as similar loaders of other manufacturers and other equipment of suppliers other than the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, amongst other matters, that:

1. the Complainant is the owner of the Australian BOBCAT registered trade marks from a date well before the registration of the Domain Name;

2. the Domain Name is deceptively similar to the BOBCAT trade mark in that the dominant component of the Domain Name is the word “bobcat” and this constitutes infringement of the Complainant’s Australian registered trade marks;

3. none of the Respondents have any registered business names or company names that contain the word “Bobcat”;

4. the use of the BOBCAT trade mark in the Domain Name is not authorized by the Complainant and there is no relationship of any kind between any of the Respondents and the Complainant;

5. the website to which the Domain Name leads is not a bona fide offering by a reseller of the Complainant’s products in the special sense given to that expression by the decision in Oki Data Americas, Inc. v ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”); and

6. the real nature of the Respondents’ use of the Domain Name is to attract, for commercial gain, Internet users to the Southern Tool & Equipment Co Pty Limited website, by creating a likelihood of confusion with the BOBCAT trade mark as to the source, sponsorship, affiliation or endorsement of that website, or of a product or service on that website, and to facilitate the sale of goods and services not supplied by the Complainant.

The Complainant says that it caused its attorney to send a letter dated May 4, 2009 to Mr. Patane and AllJap Machinery Pty Limited demanding that they assign the Domain Name to the Complainant and remove prominent signage on their premises displaying another registered trade mark of the Complainant, the BOBCAT logo. The letter referred to earlier events occurring in 2005. The Complainant referred to later correspondence between the Parties being fruitless, but no explanation was give or copies provided of the earlier or the later correspondence.

As a consequence, the Complainant argues, the Domain Name is confusingly similar to the Complainant’s BOBCAT trade mark in circumstances where the Respondents have no rights or legitimate interests in the Domain Name, such that both registration and subsequent use of the Domain Name was and is in bad faith, in the sense meant by the Policy.

B. Respondents

In their Response, the Respondents counter the arguments and conclusions of the Complainant as follows:

1. the Domain Name is distinctively different from the Complainant’s trade mark BOBCAT, by the addition of the word “used” before and the letter “s” after. The Respondents rely on several decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) from 2000 and 2001, as well as a decision of the Federal Court of Australia, at first instance, in Colorado Group Ltd v Strandbags Group Pty Ltd (No 2) (2006) 69 IPR 281; (2006) AIPC 92-206; [2006] FCA 880, presumably on the basis of one of the findings in that decision that use of a word in the name of a store does not usually constitute “use” of a registered trade mark, in the sense of that word under the Trade Marks Act 1995 (Cth), especially when a variety of differently branded goods are sold in that store.

2. the Respondents have a legitimate interest in the Domain Name by virtue of the fact that Mr. Patane is a director of both Alljap Machinery Pty Limited and Southern Tool & Equipment Co Pty Limited, and the former has licensed the use of the Domain Name to the latter and the word “bobcat” is a commonly used, descriptive word in Australia and New Zealand, referring to a small, rubber-tyred, four-wheeled loader used in underground and trench work, as evidenced by an entry in the Macquarie Concise Dictionary (5^th ed. 2009), Google searches and a listing of a number of business names which include the word “bobcat”.

3. the Complainant is responsible for unconscionable delay in commencing these proceedings, during which it has allowed the Respondents to continue using and investing in the Domain Name;

4. given the generic nature of the word “Bobcat”, according to the Respondents, its selection for the purposes of the business of the Respondents, or that of Southern Tool & Equipment Co Pty Limited, could not be regarded as registration in bad faith and its subsequent use should not be regarded as use in bad faith, there being no confusion or deception amongst the overwhelmingly Australian (although not entirely Australian) visitors to the Southern Tool & Equipment Co Pty Limited website.

6. Discussion and Findings

A. Procedural Matters

Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

It is convenient before dealing with the substantive issues between the parties to consider two preliminary issues raised by the Complaint, which it is proper to consider, even though they have not been relied upon by the Respondent. These are:

1. who is/are the proper Respondent/s to these proceedings; and

2. should the supplemental filing of the Complainant responding to the Response be admitted and considered?

1. Proper Respondent

It is clear from the WhoIs register in respect of the Domain Name and the Response filed in these proceedings that:

(a) Yanni Song was only ever a technical contact for Southern Tool & Equipment Co Pty Limited and is not a proper respondent;

(b) Mr. Fullippo (or “Phillip”) Patane is the sole director of Alljap Machinery Pty Limited and Southern Tool & Equipment Co Pty Limited but he is not, and has never been, the registrant of the Domain Name and is now only the technical contact for the Domain Name. He is not, therefore, a proper respondent;

(c) Alljap Machinery Pty Limited and the Trustee for A and F Patane Family Trust are not different entities – the Respondents’ solicitor has identified Alljap Machinery Pty Limited as being the Trustee for A and F Patane Family Trust;

(d) The Trustee for A and F Patane Family Trust is the named registrant of the Domain Name in the WhoIs record.

Under paragraph 1 of the Rules, the “Respondent means the holder of a domain name registration against which a complaint is initiated.” The relevant “holder” of the Domain Name in this case is Alljap Machinery Pty Limited as the Trustee for A and F Patane Family Trust (being the same entity-in-fact) and the Complaint has been initiated against that entity under both those names or styles. Accordingly, Alljap Machinery Pty Limited is the proper respondent in these proceedings.

2. Supplementary Filing of Complainant

As already observed, the Center received further submissions from the Complainant on February 27, 2012 with a request that the supplemental filing be accepted and considered by the Panel.

This supplemental filing was not requested by the Panel pursuant to paragraph 12 of the Rules. Paragraph 12 of the Rules makes it clear that the panel alone must decide whether it requires further statements or documents from either of the parties. There is no provision for a right of reply on the part of either party. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to the objectives of the Policy and the Rules, that is to ensure a speedy and inexpensive determination of the relevant issues, to invite or allow supplementary pleadings and evidence. Each party is given a single opportunity to present everything of relevance and, if it fails to do so, there must be very compelling reasons to invite further contributions and then, usually, each party will be invited to do so, limited to the specific issue requiring clarification.

In any event, there is nothing in the Response calling for or justifying a supplemental filing from the Complainant.

In this case, therefore, upon considering the Complainant’s request, the Panel rejects the supplemental filing of the Complainant.

B. Substantive Matters

Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in their request for transfer of the Domain Name from the Respondent:

1. The Respondent's Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

2 The Respondent has no rights or legitimate interests in respect of the Domain Name; and

3. The Domain Name was registered or is subsequently being used in bad faith.

1. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trade mark rights in BOBCAT. The Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s BOBCAT trade marks in that the dominant component of the Domain Name is the word “bobcat” and the addition of the prefix “used” and the terminal letter “s” cannot serve as distinguishing elements. Those elements do not detract from the central element of the Domain Name, which is the Complainant’s mark.

The Panel considers that the decisions cited by the Respondents in do not relevantly reflect the great weight of decisions made under the UDRP over the period of more than ten years since those decisions were made. The citation of the decision of the Federal Court at first instance in the Strandbags case does not advance the Response in any way, not merely because the relevance of an implicit comparison between a storefront name and a domain name, given their functional differences, is far from evident but also because the determination in an administrative proceeding under the Policy is not necessarily assisted by a consideration of the nature of “use” of a registered trade mark for the purpose of the Trade Marks Act 1995. Under this limb, the Policy simply requires a comparison of the Domain Name to the Complainant's proven trademarks. How the domain name is used and what the trademark is registered for is not relevant at this stage of the inquiry, although they may be matters requiring consideration at later stages.

The first element of paragraph 4(a) of the Policy is satisfied.

2. Rights or Legitimate Interests

It is not disputed that the Respondents are not licensed by the Complainant nor by any of the Complainant’s related bodies corporate to use the BOBCAT trade mark in the Domain Name. The Respondents do not pretend to be known by the name Bobcat. However, under the Australian “.com.au” domain naming policies, a person is entitled to register a domain name which includes a word “otherwise closely and substantially connected to” that person, so the question of whether the Respondents have a legitimate interest in the Domain Name is a much more difficult one.

There is no doubt, it would appear from the Complaint and the Response, that the Respondents are offering second-hand Bobcat loaders, as well as competing loaders and a wide range of other products, as well as service and repair for the Bobcat loaders of the Complainant.

The Complainant’s assertion that the Respondents’ (and Southern Tool & Equipment Co Pty Limited’s) use of the Domain Name amounts to infringement of the BOBCAT trade marks under the Trade Marks Act 1995 is neither convincing nor helpful. If that were the case, the Complainant could have taken legal remedies years ago but has chosen not to do so but, in any event, it is not for this Panel to decide the matter. It is for this Panel to decide whether the Respondents have shown a right or legitimate interest in the Domain Name and, if so, whether their registration and/or subsequent use of the Domain Name has been in good faith, in accordance with the Policy and with such guidance on such matters as we may obtain from the many decisions under both the UDRP with respect to top level domains and the Policy.

The claims in the Response that the word “bobcat” has lost its value as a trade mark, and is merely descriptive of compact, rubber-tyred front-end loaders, are unconvincing. There can be no doubt whatsoever of the current status of the Complainant’s registered trade marks for BOBCAT which are not under challenge. The appearance of a word in a single edition of a single dictionary is interesting but not persuasive. There are dictionaries which list “coca-cola” without noting its trade mark status but that does not mean that the owner of such a famous mark has lost all rights in it. Likewise, the list of business names provided by the Respondents is unhelpful; it includes “XXX Bobcats”, which the Panel has no doubt is not intended as a reference to front-end loaders, as well as many suppliers of construction and agricultural machinery which may well be licensed resellers of the Complainant – the Respondents provide no evidence one way or another. The same can be said of the Respondents’ Google search.

In the Panel’s opinion, the issue of whether a reseller of a complainant’s products has a legitimate interest in registering and using a domain name which includes the complainant’s trade mark in respect of the supply of such products, where there is no contractual relationship between the respondent and the complainant, is directly analogous to the issue before us of the Respondents’ legitimate interests in the Domain Name. The consensus of panelists’ views on the fairest way of balancing the competing interests of the parties in such cases has been authoritatively dealt with in the Oki-Data decision, which in turn has been followed many times since. For a reseller of a complainant’s products to have a legitimate interest in a domain name, where the complainant has not authorized such use, the reseller must meet the following criteria:

1. it must actually be offering the goods or services at issue. E.g.,World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

2. it must use the website under the disputed domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).

3. its website must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).

4. it must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

Applying these principles to the Domain Name, it is clear to the Panel that criteria 2 and 3 are not satisfied in this case.

The Panel would be inclined to agree with the learned panel in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 that such conduct may in appropriate cases be unobjectionable. For example, the Panel believes that there may be circumstances in which other products offered on a website that are not of the complainant’s provenance do not detract from its use substantially for the complainant’s products alone, and are of a minor and supplementary nature, such as spare parts or services of repair or supply of the complainant’s products. However, in this case, the Respondents must fail as the website operated by Southern Tool & Equipment Co Pty Limited has always offered a plethora of other and competing products and the true relationship between the Respondents and the Complainant is not made clear.

Furthermore, it is clear that the Respondents are aware of and have approved such use by their licensee, by virtue of their sharing the same premises and having Mr. Patane as the controlling force behind each of Alljap Machinery Pty Limited and Southern Tool & Equipment Co Pty Limited.

The Panel accordingly concludes that the Respondent does not have a right or legitimate interest in the <usedbobcats.com.au> Domain Name.

3. Registered or Used in Bad Faith

In this case, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the Domain Name are equally relevant to the issue of registration or use in bad faith, in the sense that those expressions are used in the Policy. The Panel does not accept the Respondents’ argument that the Complainant’s delay in lodging a Complaint undermines its allegations of suffering any prejudice, even assuming that is a relevant consideration, nor that it has suffered any disadvantage as a consequence of such delay.

It is unsatisfactory that the Complainant has not offered any evidence as to what happened before and after its letter of 2009.

Be that as it may, the Panel accepts the consensus view of the UDRP panelists on the issue of laches, acquiescence and delay set out in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that

“the doctrine or defence of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.”

There is simply insufficient evidence of any kind to justify a conclusion that any departure from this principle should be made in respect of this Complaint or the Policy in general.

Even if the Respondents are not profiting from the attraction of Internet users seeking the Complainant’s authorised resellers, given the overwhelming likelihood that the Respondents chose the Domain Name because of its identity to the BOBCAT trade mark of the Complainant, it can be concluded that the Respondents registered the Domain Name with the intention of deriving a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy. Additionally and alternatively, the use of the Domain Name to resolve to a website offering for sale both genuine Bobcat brand equipment and competitors’ brands is well-established as use in bad faith which is in turn sufficient to satisfy this element under the Policy.

In these circumstances, the Panel concludes that Domain Name was 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 Domain Name, <usedbobcats.com.au> be transferred to the Complainant.

James A. Barker
Presiding Panelist

Warwick A. Rothnie
Panelist

William P. Knight
Panelist

Dated: March 5, 2012