WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vacaciones eDreams, S.L. v. BuyDirect Pty Ltd.
Case No. DAU2011-0043
1. The Parties
The Complainant is Vacaciones eDreams, S.L. of Barcelona, Spain, represented by UBILIBET, Spain.
The Respondent is BuyDirect Pty Ltd. of New South Wales, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <edreams.com.au> is registered with AussieHQ Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2011. On January 3, 2012, the Center transmitted by email to AussieHQ Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 11, 2012, AussieHQ 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”), 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 January 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2012. The Response was filed with the Center on February 6, 2012.
On February 13, 2012, the Center received supplemental filing from the Complainant; and on February 14, 2012, the Center received further supplemental filing from the Respondent.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 16, 2012. 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 January 13, 2012, the Complainant forwarded to the Center further submissions in reply to the Response. Paragraph 12 of the Rules provides that the panel may request or permit, at its sole discretion, further statements or documents from either of the parties. The Complainant's further filing was unsolicited. The consensus view among panelists is that unsolicited further filings should only be accepted where the party filing can show exceptional circumstances, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, for example, decision of this Panel in Wal-Mart Stores, Inc. v. Larus H. List, WIPO Case No. D2008-0193 and the cases there cited. The Complainant has shown no exceptional circumstances why its further filing should be admitted, and the Panel sees none in the Complainant’s further filing, or in the Respondent’s further filing in reply. Accordingly, the Complainant's further filing is rejected. Correspondingly, the Respondent’s further filing in reply is also rejected. The Panel therefore proceeds to determine the matter on the basis of the Complaint and the Response.
4. Factual Background
The disputed domain name was registered on November 29, 2011. It currently resolves to a "coming soon" page.
The Complainant is an online travel agency operating since 2000 offering travel and accommodation packages worldwide including, in Australia. It claims to be the No. 1 online travel agency in southern Europe and to have provided services to over 6 million customers. It provides evidence of publicity relating to it in a number of well-known publications including the Financial Times. It is the owner of several domain names comprising the word “eDreams” in both the gTLD and ccTLD domains. It is the owner of trademark registrations for the word EDREAMS including a registration in Australia in International Classes 38 and 39 for an EDREAMS logo dating from January 2009.
The Respondent is an on-line trader operating an e-commerce website selling and distributing various products and providing e-commerce consulting services including website development. The examples given by the Respondent of its activities include on-line sale of menswear, health and fitness products, IT and education products and advertising its products on television. It appears from the Respondent's evidence that it does this through separately designated websites under the domain names for example, <outdo.com.au>, <hiswear.com.au>, <ropesport.com.au>, <languageworld.com.au>.
5. Parties’ Contentions
The Complainant contends that:
- it has well-known and well established trademark rights in the trademark EDREAMS including registered trademark rights extending to Australia;
- the disputed domain name is identical or confusingly similar to the Complainant's name and trademark;
- the Respondent is not known by the name eDreams and holds no listed rights for the use of that name in Australia or elsewhere;
- the Complainant has not licensed or authorized the use of its trademark by the Respondent;
- the disputed domain name is inactive more than a month after its registration, and the Respondent's inactivity in commencing use of the disputed domain name is evidence of registration in bad faith;
- the Complainant has a solid presence in Australia and it is impossible that the Respondent was unaware of its existence;
- the disputed domain name is a complete appropriation of the Complainant's distinctive trademark;
- the Respondent has registered the disputed domain name with intent to prevent the Complainant from becoming the owner so that it can speculate with the sale of the domain name in the future.
The Respondent agrees that, for the purposes of the Policy, the disputed domain name is identical to the Complainant's trademark. It contends however, that:
- the Complainant's trademark rights are limited and do not extend to the use intended by the Respondent;
- the prefix "e" in combination with other dictionary words is often used to convey the meaning "online", "Internet", the word "cyber";
- there are many examples, not connected with the Complainant, of domain names containing the word "edreams" including <edreams.co.za>, <edreams.ca>, <edreams.cl>, <edreams.org> and other uses of the expression "edreams" including its use as an abbreviation for "electric dreams" in descriptive or other contexts;
- according to the European Commission's Report of May 30, 2011 the Complainant's sales outside the European economic area are "non-significant";
- the Complainant is not well-known in Australia; the Complainant does not make the list in Esperian's "Hitwise Hottest 100 Australian travel websites";
- the Respondent's director Andrew Callaghan has a strong personal association with the 80's movie Electric Dreams and the hit song, “Together in Electric Dreams”, and that the disputed domain name attracted his attention when published on the auDA official "drop list";
- its intended use for the disputed domain name is in connection with an online e-commerce store selling high end and environmentally friendly technology and security products for the home;
- during the past six months the Respondent has invested time in reviewing, testing and developing new e-commerce solutions for expanding its e-commerce stores, including the use of the disputed domain name which is currently schedule to be launched between June and September 2012. In preparation for this, it has tested and purchased a website template suitable for such use;
- it is common for e-commerce websites to take 12 months or more to develop;
- prior to deciding to register the disputed domain name, the Respondent had no prior knowledge of the Complainant, its corporate entity, its business or its Australian trademark;
- prior to registering the disputed domain name, it carried out a due diligence investigation which revealed the Complainant's trademark registration but it believed there would be no conflict between the trademark registration and the intended use of the disputed domain name;
- its investigation also showed that the disputed domain name had been registered since February 2010 to a company named Office Links Pty Ltd, and that it was listed as "Pending Delete (Client requested delete)" on the registrar's drop list. Subsequent enquiries following the filing of the Complaint disclosed that the reason for the deletion of the disputed domain name was that the registrant company was deregistered and therefore failed to meet the eligibility requirements of the “.au” domain names.
- historical WhoIs data for the disputed domain name shows that the Complainant took effective control of the disputed domain name sometime between February 27, 2010 and May 1, 2010; a fact not mentioned in the Complaint;
- on November 29, December 3, December 14, and December 28, 2011, it received from one Sergi Moreu an offer to buy the disputed domain name for sums ranging from USD250 to USD1,000; offers to which it did not respond. Sergi Moreu is an officer of the Complainant's authorized representative; a fact that also is not mentioned in the Complaint;
- the Complainant has abused the administrative process and acted in bad faith on the ground that it has deliberately withheld critical information from the Complaint that:
- it sent four email offers for purchase of the disputed domain name;
- it had a controlling interest in the disputed domain name prior to its deletion and registration by the Respondent;
- the Complainant's statement that, “[t]he fact that Complainant has not registered the disputed domain name before and is now claiming it in no way legitimizes the Respondent's stance,” was deliberately misleading and that the Complainant has knowingly decided not to disclose the history in the domain name to avoid complications in their Complaint;
- these failures to disclose important information is in breach of the certification provided in accordance with paragraph 3(b)(xiv) that: “the Complainant certifies that the information contained in this Complaint is to the best of the Complainant's knowledge complete and accurate.”
The Respondent supports its claims with documentary evidence and a sworn statutory declaration by Andrew Callaghan, the Respondent's director, declaring that at the time his decision to register the disputed domain name, he had no knowledge of the Complainant or its business activities; that he did not register the disputed domain name with the Complainant's trademark in mind, or with any intention to trade off its trademark or to compete with it; that he genuinely believes that the Respondent's intended use of the disputed domain name does not infringe the Complainant's trademarks and that a number of Australian residents to whom he has spoken have no knowledge of the Complainant, its trademark, its website or its business.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has trademark rights, including registered trademark rights in Australia, in the trademark EDREAMS. That trademark is identical to the disputed domain name. The Panel therefore finds, and the Respondent admits, that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
To succeed, the Complainant must establish each of the requirements of paragraph 4(a) of the Policy. In view of the Panel's finding under paragraph 4(a)(iii) of the Policy in C below it is unnecessary to make a finding under paragraph 4(a)(ii). It is unclear from the Response precisely when the Respondent became aware of the Complainant and its trademark and when it actively commenced preparations for the use of the disputed domain name. However, the Panel notes that in the light of its finding under paragraph 4(a)(iii) of the Policy, the Complainant has failed to show that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
(i) Registered in Bad Faith
The Complainant contends the trademark EDREAMS is well-known and must have been known to the Respondent when it registered the disputed domain name. The Respondent refutes that claim and states that whilst the Complainant may be well-known in Europe, it is not well-known in Australia. It supports that contention with evidence from Google searches, a European Union report and evidence to show that the Complainant does not appear in the list of the "Hitwise Hottest 100 Australian Travel Websites" published by Esperian. Whilst the Respondent's director’s evidence that the Complainant was unknown to persons to whom he spoke is of little weight, the Esperian list, the absence of Google listings and sparsity of English references in the online media cited, in the Panel's view, support the Respondent's contention that the Complainant and its trademark were not well-known in Australia. The Panel notes that when it repeated the Respondent's Google search the Complainant did not appear on any of the first ten pages of results.
The Respondent has also produced evidence that the term "eDreams" is used descriptively or as an abbreviation for "electric dreams" or as part of domain names held by several persons apparently unrelated to the Complainant. This includes evidence of prior UDRP decisions in which the Complainant or its United States affiliate has been unsuccessful in seeking transfer of domain names which include the word "eDreams" or variations of it. The Respondent cites EDREAMS, Inc. v Arise Company Ltd., WIPO Case No. D2006-0725, EDREAMS, Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2006-0726 and eDreams, Inc. v. CK Ventures Inc., WIPO Case No. D2009-1508.
The Respondent asserts that it picked up the disputed domain name when its registration by an Australian company, apparently unrelated to the Complainant, appeared on the auDA drop list as "Pending Deletion (Client requested deletion)". The Respondent was entitled to take that at its face value. As noted above, in the Panel's view the Complainant has failed to show that its name and trademark were well-known in Australia or that the Respondent knew or ought to have known of the Complainant or its trademark when it decided to pick up the lapsed registration of the disputed domain name. Its director, Andrew Callaghan declares on oath that when he decided on the disputed domain name he did not know of the Complainant or its trademark and did not have the Complainant or its trademark in mind. In all the circumstances and having regard to the evidence adduced and the weight to be afforded to the sworn testimony of Mr. Callaghan, the Panel finds, on the balance of probability, that the Respondent did not register the disputed domain name in an attempt to appropriate the Complainant's goodwill in its name or trademark and its registration of the disputed domain name was not in bad faith. This finding is not negated by the fact that the Respondent subsequently became aware of the Complainant and its trademark. The Respondent's view that its intended use of the disputed domain name would not infringe the Complainant's rights was, in the Panel's opinion, reasonable.
(ii) Subsequent Use in Bad Faith
Under the Policy, unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the requirements of paragraph 4(a)(iii) of the Policy are discrete and not cumulative. It is therefore necessary to consider whether subsequent to its registration, the Respondent has used the disputed domain name in bad faith. There has in fact been no actual use of the disputed domain name otherwise than in the putting up of a static "coming soon" page. The Panel is however, entitled to take into account the circumstances of the non-use and the Respondent's stated intended use. The Complainant contends that the Respondent's failure actively to use the disputed domain name is in itself evidence of bad faith. The Panel does not accept that contention. The disputed domain name was registered on November 29, 2011 and the Complaint was filed on December 30, 2011. Given that the short one month period includes part of the summer vacation period in Australia it is not surprising that the disputed domain name did not immediately become active.
The evidence establishes that the Respondent is an active e-commerce provider covering a diverse range of goods and services each at separate websites under separate domain names. The Respondent states that it intends to establish a site at the disputed domain name over the next few months, and has taken steps to establish a platform for that purpose. It states that it proposes to offer at that site an e-commerce store selling high end and environmentally friendly technology and security products for the home. The Respondent acknowledges that the Complainant has registered trademark rights in Australia, but contends that those rights do not extend to the goods and services for which the Complainant's mark is registered and that such use is not otherwise likely to give rise to confusion with the Complainant or its services. That appears to the Panel to be a reasonable contention in the light of the evidence of substantial third party use of the word "edreams" in a variety of fields.
It is the Panel's view therefore, that the Complainant's actions and stated intentions do not indicate bad faith use of the disputed domain name.
The Respondent contends that the Complainant has acted in bad faith and abuse of process in failing to disclose, what it asserts to be, critical information. Whilst the Complainant's failure to disclose that information is regrettable, it is not, in the Panel's view, critical and falls short of conduct necessary to support a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Dated: April 3, 2012