WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
j2 Global Holdings Limited v. Mark Murden
Case No. DAU2012-0006
1. The Parties
The Complainant is j2 Global Holdings Limited of Dublin 2, Ireland, represented by McDermott Will & Emery LLP, United States of America.
The Respondent is Mark Murden of Harbord, New South Wales, Australia, represented by Mediation and Arbitration Chambers, Australia.
2. The Domain Name and Registrar
The disputed domain name <evoice.com.au> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012. On March 1, 2012, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On March 2, 2012, Melbourne IT 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”).
On March 7, 2012, the Complainant’s authorized representative emailed the Center requesting a thirty (30) day suspension of the proceedings to explore a possible settlement between the parties. On March 8, 2012, the Center notified the parties by email that the proceedings had been suspended until April 7, 2012. On April 5, 2012, the Complainant emailed the Center requesting that the proceedings be reinstituted.
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 April 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 30, 2012. The Response was filed with the Center on April 30, 2012.
The Center appointed John Swinson as the sole panelist in this matter on May 4, 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.
4. Factual Background
The Complainant is j2 Global Holdings Limited, a limited liability company organized under the laws of Ireland.
The Complainant owns Australian Registered Trade Mark Number 1253550 for EVOICE (registered July 25, 2008) (“EVOICE Mark”) and Trade Mark Number 1253553 for EVOICE RECEPTIONIST (registered July 25, 2008).
The Respondent is Mark Murden, an individual residing in Australia. The Respondent owns a company called Woodford Bay Company Pty Ltd (ACN 080 200 880) (“Woodford Bay”), which in turn owns the business name registration BN98065250 for EVOICE (registered in New South Wales, Australia, on June 11, 2004).
The Respondent registered the disputed domain name with Melbourne IT Ltd on June 30, 2004.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant provides world-famous EVOICE telecommunications services. Since 2004, sales of these services have generated USD 15 million in revenue.
The Complainant devotes substantial money and resources to advertising and marketing its brand and services (e.g. its 2011 advertising budget for EVOICE was almost USD 4.5 million). Its services are advertised through a number of online media channels (e.g., Facebook, LinkedIn).
The Complainant owns the trade marks described above, which incorporate EVOICE. The Complainant has established rights in these trade marks through long, continuous and widespread use in Australia. The Complainant also holds numerous international trade mark registrations incorporating EVOICE.
The disputed domain name is confusingly similar to the Complainant’s well-known and registered trade marks. It incorporates the EVOICE Mark in its entirety.
Rights or Legitimate Interests
The Respondent is not commonly known by the disputed domain name.
The Respondent is not making bona fide use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with an offering of goods or services. The website located at the disputed domain name has no substantive content, except for an arrow-like graphic and the words “WP Slider”. WhoIs records indicate that the Respondent last updated the website on April 7, 2010. Further, a search of the Wayback Machine evidences that no content has ever been posted at the disputed domain name.
The Complainant has never authorized the Respondent to use its trade marks as part of any domain name. There is no affiliation, connection or association between the Complainant and the Respondent.
The Respondent is not making a legitimate noncommercial use of the disputed domain name, as it is not being used for any apparent purpose. Additionally, the Respondent cannot claim fair use, as EVOICE is not being used descriptively or in good faith. Further, EVOICE is not being used to describe the Respondent or its business offerings.
Registered or Subsequently Used in Bad Faith
The Respondent is using the disputed domain name in bad faith. The Complainant has contacted the Respondent a number of times to attempt to purchase the disputed domain name. These communications were made after the Respondent last updated its website in April 2010. The Respondent has never responded to these communications and has failed to make any legitimate use of the disputed domain name. Inaction may give rise to bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent is holding the disputed domain name to disrupt the Complainant’s business activities, and to prevent the Complainant from reflecting its well-known EVOICE mark in the disputed domain name, which would cater to the Complainant’s significant Australian consumer base.
The Respondent is attempting to attract users, for commercial gain, to a website or other online location, by creating a likelihood of confusion with the Complainant’s name or trade marks as to the source, sponsorship, affiliation, or endorsement of that website or location.
The Respondent makes the following submissions.
The Respondent has privately held Woodford Bay since 1997. Woodford Bay provides corporate network administration and general IT services for Australian organizations (the Respondent provided an extensive list of specific services). The Respondent expanded operations in 2001 to include web and email hosting services and in 2004 to include Voice Over IP services. Woodford Bay operates using a number of domain names including <i-voice.com.au>, <i-fax.com.au> and the disputed domain name <evoice.com.au>.
A number of the Complainant’s claims are not supported by any evidence, are vague, misleading or inaccurate.
The Complainant infers that the Respondent is unknown and uncontactable. This is not the case, as is shown in the Complainant’s own evidence. The Respondent immediately contacted both the Center and the Complainant upon receipt of the Complaint.
Woodford Bay holds the business name registration for EVOICE. As the disputed domain name is an exact match of the registered business name, both the Respondent and Woodford Bay meet the eligibility and allocation criteria set out for the “.com.au” domain names (see auDA Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (2008-06)).
Identical or Confusingly Similar
The Complainant provides no evidence that its trade marks are well-known or that its services are world-famous. The sales data referred to appears to relate to the Complainant’s worldwide operations, as the Respondent is not aware of any operations the Complainant has in Australia.
The trade marks incorporating EVOICE were applied for four years after the Respondent first registered the business name EVOICE and the disputed domain name.
The Respondent concedes that the disputed domain name is similar to the Complainant’s trade marks, but submits that this is because the Complainant chose to register a name that was already registered by the Respondent, and in which the Respondent has pre-existing common law trade mark rights.
Rights or Legitimate Interests
The Respondent has been, and is, commonly known by the registered business name EVOICE and the disputed domain name.
The Respondent states that Australian fair trading legislation requires that any business operating under a name that is not the personal or corporate registered name must register the business name under which it operates so that the identity (and address) of its directors can be publicly known. As such, Woodford Bay has registered the business name EVOICE, as outlined above. The business name I VOICE CONSULTING (BN98066801) was registered on the same date, indicating that the name EVOICE was not registered for an improper purpose, but as part of a predetermined business strategy.
The Respondent is making a bona fide use of the disputed domain name in connection with an offering of goods or services.
The domain name <i-voice.com.au> is used for the Respondent’s business web and email presence while the disputed domain name is used for back end services for clients, application, development and staging purposes. The disputed domain name is also used for staging and testing of new sites, that is why the website is incomplete, it will be populated with content and used to replace the <i-voice.com.au> website once it is ready.
The Respondent has common law rights in the use of EVOICE and does not need permission from the Complainant in respect of its use.
The Respondent is making a legitimate noncommercial use of the disputed domain name, as it is using it in conjunction with the preparation and development of its back end office business services. The Respondent was doing this, and preparing to do this, before it received notice of the dispute, and before the Complainant’s business existed in Australia.
Registered or Subsequently Used in Bad Faith
The use of the disputed domain name by the Respondent, being earlier in time, is legitimate and the Complainant has failed to establish bad faith.
The Respondent submits that it is unusual that it is being accused of using the disputed domain name in bad faith for not offering to sell the disputed domain name to the Complainant. It submits that it is usually evidence of bad faith if person registers a domain name for the purposes of selling it (see paragraph 4(b)(i) of the Policy).
The Respondent submits that the emails from the Complainant requesting to purchase the disputed domain name were not from a business address, as such, they were marked as “spam” and were not viewed by the Respondent.
The Complainant suspended the proceedings to explore a possible settlement. However, this did not proceed as the Complainant was unwillingly to make any offer.
The claim that the Respondent is attempting to disrupt the Complainant’s business activities is without substance. The Complainant has presented no evidence of its Australian operations, and the Respondent was not aware of any such operations prior to March 1, 2012.
The registration of the disputed domain name cannot have been in bad faith because it predated the registration of the Complainant’s trade marks and the Complainant has provided no evidence of the EVOICE service operating before the disputed domain name or the Respondent’s business name were registered.
Reverse Domain Name Hijacking
The Respondent invites the Panel to make an additional finding of Reverse Domain Name Hijacking (paragraph 15(e) of the Rules), as the Complainant has proceeded with the Complaint despite having been advised of the Respondent’s bona fide business registration and use of EVOICE. The Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding (Meeza QSTP-LLC v. Torsten Frank / medisite Systemhaus GmbH, WIPO Case No. D2009-0943; Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798; NetDeposit, Inc. v. NetDeposit.com, WIPO Case No. D2003-0365).
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Complainant owns two registered trade marks incorporating EVOICE. This is the dominant feature of the trade marks. The disputed domain name is <evoice.com.au>. It is therefore clear that the disputed domain name and the Complainant’s trade marks are confusingly similar.
The Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name.
The following demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) the Respondent’s company registered the New South Wales business name EVOICE well prior to the Complainant filing its trade mark applications in Australia and prior to any notice of this dispute; and
(ii) the Respondent operates a legitimate business under the name I-Voice, and uses the disputed domain name for backend services, such as, for example, website staging and VoIP telephone configurations.
In light of the above, the Complainant has failed to show that the Respondent lacks a legitimate interest.
The second element of the Policy is not satisfied.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the disputed domain name has been registered or subsequently used in bad faith. While the Policy sets out instances of bad faith registration and use, these circumstances are not exhaustive.
There is no evidence of any bad faith registration or use of the disputed domain name by the Respondent.
Specifically, the Panel concludes that:
(i) the registration of the disputed domain name predates the registration of the Complainant’s trade marks in Australia and the Respondent was unaware of the Complainant’s trade mark rights prior to being notified of this dispute;1
(ii) the Respondent’s lack of reply to the Complainant’s emails does not constitute bad faith; on this point, the Panel accepts the Respondent’s evidence that he thought the Complainant’s emails were spam as they did not come from a business address (as would be expected from a company the size of the Complainant);
(iii) the Respondent has not attempted to sell the disputed domain name to the Complainant (unusually, the Complainant submits that this evidences bad faith);
(iv) the Complainant provided no evidence that the Respondent has used the disputed domain name to disrupt the Complainant’s business activities; and
(v) the Complainant provided no evidence that the public has been confused or misled by the Respondent’s use of the disputed domain name.
In light of the above, the Complainant has failed to show that the disputed domain name was registered or subsequently used in bad faith. The third element of the Policy is not satisfied.
D. Reverse Domain Name Hijacking
The Panel makes no finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith” against a complainant. It is not clear that the Complainant has acted in bad faith. The Complainant has attempted to make an arguable case, and the facts do not support a finding that the Complainant brought the case despite knowing it was unsound. It may not have been apparent to the Complainant at the time it filed its Complaint that the Respondent was associated with the company that owned the registered business name EVOICE and used the disputed domain name for back-end business purposes.
For the foregoing reasons, the Complaint is denied.
Dated: May 21, 2012
1 Although the Complainant claims that the sales of its “world-famous EVOICE telecommunications services” have generated USD 15 million in revenue since 2004, nothing in the available record suggests that the Respondent was aware of the Complainant’s services and/ or trademark rights at the time of registration of the disputed domain name.