WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michael Sweep v. Douglas Berry
Case No. DAU2012-0008
1. The Parties
The Complainant is Michael Sweep of Queensland, Australia represented by himself.
The Respondent is Douglas Berry of Queensland, Australia represented by Ledger and Co. Lawyers, Australia.
2. The Domain Name and Registrar
The disputed domain name <brisbaneglassnow.com.au> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 28, 2012, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On April 2, 2012, NetRegistryPty 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 April 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2012. The Response was filed with the Center on April 26, 2012.
The Center appointed James A. Barker as the sole panelist in this matter on May 9, 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
According to the Registrar, the disputed domain name was created on March 18, 2010, and registered on March 1, 2012, with the “registrant name” as Doug Berry, and the “registrant organization”” as Crown sun P/L, with an address in Nerang, Queensland, Australia.
The Complainant operates a website at <brisbaneglass.com.au>. The Complainant’s trading name is “Brisbane Glass”. It is a glass and glazing service company, in the capital city of Brisbane in the State of Queensland, Australia. As evidenced by its company registration, the Complainant’s trading name was first registered as such in 1991, with a name change to “Brisbane Glass Pty Ltd” on November 17, 1995. The Complainant also has an application for a registered mark for “Brisbane Glass Your Local Glassman”, identified as such in the Response (but not by the Complainant itself), and filed on March 21, 2012 (and mistakenly described in the Response as a registered mark).
The Complainant provides screenshots of various websites it says are connected with the Respondent. These include the website located at the domain name <brisbaneglass.com> on February 28 (the year is not indicated, but the Panel has assumed it is 2012). In the screenshot, that website’s homepage is prominently titled “Brisbane Glass Now Pty Ltd”, and includes the statement “Brisbane Glass Now is a 100% Australian owned glass Company that has been trading since 1991”. The Complainant also provided evidence of the website at the disputed domain name on March 23 (again, the year is not indicated). On that date, the website is the same to the look and feel of the website <brisbaneglass.com> as it appeared on February 28, and includes similar text to the earlier site.
The Complainant provides screenshots of other websites related to domain names registered to the Respondent, including <fastglassrepairs.com.au>, <glass1.com.au>, <glassrepairsnow.com.au>, and <nerangglass.com.au>. All the websites associated with those domain names include the same look and feel and substantially identical text.
The company associated with the Respondent, Brisbane Glass Now Pty Ltd, was registered as a company in July 2002.
This dispute is related to another involving the parties, under the Uniform Domain Name Dispute Resolution Policy (UDRP): Michael Sweep v. Douglas Berry, WIPO Case No. D2012-0651. That case includes the related domain name <brisbaneglass.com> (for reference, the “.com domain name”). The party’s arguments and evidence regarding that domain name, and the disputed domain in this case, were substantially similar.
5. Parties” Contentions
The Complainant does not have a registered trademark or service mark for its trading name. The Complainant claims that it has common law rights in its trading name. The Complainant also says that the disputed domain name is identical to the Complainant’s trading name and as such, is confusingly similar. The Complainant also notes that its business name / trading name (Brisbane Glass) was first registered in February 1991.
The Complainant says that its business is clearly seen by the Brisbane city, commercial and domestic community to be a strong, high profile business that promotes its marks in all forms of media marketing. To support this contention, the Complaint refers to two attachments. One is an email from a person whose signature block indicates that he is a sales representative for “City Glass”. In the email, the sales representative states that he has been dealing with Brisbane Glass for the last 7 years and that “Brisbane Glass is clearly known under the name of Brisbane glass. Brisbane glass is the only company I know that that have been trading as Brisbane glass they have always been operating as Brisbane glass and no other name and this has been the case for many years.” The Complainant attaches another email from a sales representative of another supplier, to similar effect. The second attachment is titled “Brisbane Glass Pty Ltd, intellectual property report 2011”. Although the Complainant states that it does not have a registered trademark for its business name, the title of the report appends a trademark symbol to the name “Brisbane Glass, Your Local Glassman”” with an associated design. The report details the nature of the Complainant’s business between 1991 and 2011, and outlines the nature of the business’ “intangible assets including but not limited to, trademarks including domain company and business names, associated with the business trade name of Brisbane Glass.” In relation to its IP assets, the report details the company’s business names and registered domain names (including <brisbaneglass.net> and <brisbaneglass.org>). The report does not identify the Complainant’s registered trademark for “Brisbane Glass Your Local Glassman”, presumably because the lodgement date for that mark was in 2012, whereas the report was dated 2011.
The Complainant states that the Respondent is a competitor who provides the same services and supplies as the Complainant. The Respondent runs its business from an area outside the Brisbane metropolitan area on the Gold Coast, and trades under the name “Glass Now”. Over the last 2-3 years, the Respondent appears to have been expanding its sales area to include the Brisbane city metropolitan area. The Respondent is doing this not under its established trading name of “Glass Now” but from a Google Adwords campaign using the disputed domain name. The Complainant says that this is not the Respondent’s trading name, and that the Respondent has no stores or vehicles flying or promoting this name, and the website that the disputed domain name reverted to, prior to a warning letter sent from the Complainant to the Respondent in December 2009, was originally the Respondent’s true business website of Glass Now.
After the Complainant’s first warning letter in December 2009, the Respondent changed its company name and website to “Brisbane Glass Now” and “Brisbane Glass Now Pty Ltd” in March 2010. The Complainant says that this site is a “filtering site to confuse and capture customers and clients” into believing that this may be the Complainant’s website.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent, over the last 24 months or so, has purchased a number of domain names, all with very different names to its true business and trading name of Glass Now, including the disputed domain name. All these domain names lead to a website for each, of a different name but all with the same look and design. All have contact details that lead back to the true business and trading name for the Respondent being Glass Now. The Respondent undertakes not marketing for these domains, except for its Google Adwords campaign, and has no branding under those names. The disputed domain name is being used as nothing more than an avenue to increase sales for the Respondent’s business.
The Complainant says that because of its strong profile, there can be no doubt that the Respondent knew of the Complainant’s business so that it has demonstrated bad faith in the registration and use of the disputed domain name. This, as well as communications to the Complainant from the Respondent (attached to the Complaint) shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark, as well as for the purpose of selling the disputed domain name back to the Complainant.
The Complainant provides evidence of various communications between the parties referred to above, some of which further elaborate the Complainant’s case. In summary, these include the following:
December 14, 2009: The Complainant sent an email addressed to “The Directors of Crownsun” (which the Complainant describes as the then “owning company” of the Respondent) requesting that the Respondent terminate its registration of the .com domain name.
July 10, 2011: The Complainant wrote to Brisbane Glass Now Pty Ltd, but addressed to the Respondent (Mr. Berry). The letter reiterated the Complainant’s rights and referred to previous correspondence to the Respondent. The letter states that “you have now sought to change the name of your company [from Crownsun Pty Ltd] to confuse members of the public further as to the association of your company with the business of Brisbane Glass Pty Ltd”. Among other things, the letter requested the Respondent to terminate its registration of the .com domain name.
July 19, 2011: The Respondent acknowledged the Complainant’s letter of July 10, 2011, by email response from Mr. Doug Berry, and under a prominent logo “1300 Glass Now”. (“1300” numbers are phone number prefixes in Australia that apply to charge the caller a low cost). That logo was identical to the logo appearing on the Respondent’s website on March 27, 2012 (as evidenced in the Complaint), except that on the website the “1300” was replaced with “Brisbane”.
July 29, 2011: The Respondent responded formally to the Complainant’s communication of July 10, 2011. The response noted that the Complainant had not commenced proceedings, that the Respondent has the words “Brisbane” and “Glass” in its business name and is therefore entitled to advertise its business using the .com domain name, and that the Respondent makes it clear to any member of the public who calls its business that it is “Brisbane Glass Now” and not “Brisbane Glass Pty Ltd”. The reply also stated that the Respondent has not attempted to represent itself as having an association with the Complainant.
July 29, 2011: On the same day as the Respondent’s response to the Complainant’s July 10, 2011 letter, the Respondent sent a further letter to the Complainant. That letter made a “without prejudice” offer to transfer the .com domain name “for a reasonable amount of consideration”.
February 24, 2012: The Complainant wrote to the Respondent restating its rights and alleging further details of the Respondent’s infringements of its rights. The Complainant referred to its longstanding goodwill in the name “Brisbane Glass”. The letter states that, but using the name “Brisbane Glass”, the Respondent has misleadingly represented that it is an authorized distributor or supplier of the Complainant’s products. The Respondent’s statement that it makes it clear to members of the public that it is not associated with the Complainant is evidence of actual confusion.
March 8, 2012: The Respondent replied to the Complainant’s correspondence of February 24, 2012. The Respondent stated that it was prepared to transfer the .com domain name for AUD $35,000.
The Respondent denies the allegations made in the Complaint. The Respondent says that the Complainant does not have any universal rights in the words “Brisbane” and ”Glass”. The disputed domain name is therefore not confusingly similar to a trademark in which the Complainant has rights. The Complainant is not able to register a trademark that contains the words “Brisbane” and “Glass” because those words are too common. This, the Respondent says, is evidenced by the fact that “Brisbane” is the capital city of Queensland and the word “Glass” is regularly used in conjunction with other glazing service providers.
The Respondent denies that the disputed domain name is identical to the trademark application (for BRISBANE GLASS YOUR LOCAL GLASSMAN), which the Respondent mistakenly identifies as a registered mark.
The Respondent states that it has not attempted to copy the Complainant’s logo, colours, and otherwise infringe on the Complainant’s trademark, because the disputed domain name contains common words that are commonly associated with other glazing service providers. It is therefore impossible for the disputed domain name to infringe on a trademark that is not and cannot be registered, and should therefore not be held to be confusingly similar to the Complainant’s trademark.
The Respondent says the Complainant has asserted the disputed domain name is similar to its trademark for “Brisbane Glass Your Local Glassman” (although the Panel can see no such reference in the Complaint). The Respondent says the words “Brisbane” and “Glass” are regularly used by other glazing service providers, and provides evidence of a number of websites to this effect. These include websites for businesses called “UBD Glass”, “H & D Glass Services”, ”Australia Glass”, ” A.B Dicker Glass and Glazing”, ” ”Brisbane Glass Repairs”, ”Glass Pool Fencing Brisbane”, and ”Brisbane Frosted Glass”. The Respondent says that the associated domain names show that the Complainant’s trademark (sic) should be restricted to “Your Local Glassman” when determining whether the disputed domain name is confusingly similar.
The Respondent states that the Complainant does not have a registered mark for “Brisbane Glass”. The Respondent says that it would be oppressive to the Respondent to hold that the disputed domain name is confusingly similar to a trademark or service mark that is “virtually non-existent” as it cannot be registered due to the common, descriptive nature of the words “Brisbane” and “Glass”.
In relation to its rights or legitimate interests, the Respondent says that it is using the disputed domain name for legitimate purposes that include advertising. For support, the Respondent refers to the decision of the panel in Anachusa Ltd. V. Ashantiplc Limted / Ashantiplc Ltd, WIPO Case No. D2011-0005. In particular, the Respondent refers to the finding of that panel that “UDRP Panels have repeatedly found that the use of common words and phrases utilized as domain names to advertise relevant subject matter is legitimate.”
The Respondent also refers to the decision of Can I Do Better Internet Corp. v. Blastapplications, WIPO Case No. D2011-0005. (That case concerned a trademark registered in the United States of America which, unsurprisingly, pointed out the registration of the mark vested a right of use in the registrant, and that right of use included use in a domain name.)
The Respondent says that the disputed domain name has no direct association with the Complainant and its trademark (sic) for “Brisbane Glass Your Local Glassman”. The Respondent also says that it does not attempt to send Internet users to another domain in an attempt to gain an unfair commercial advantage, and that this demonstrates that the Respondent has a right or legitimate interest. The Respondent refers to the decision in Galderma S.A. v. Domains by Proxy, Inc. / Aegis Holdings Group, Inc., WIPO Case No. D2011-0146.
The Respondent denies that the disputed domain name was chosen in order to exploit the Complainant’s trademark. The Respondent says that it has, since 1991, provided glazing services to the Brisbane, Gold Coast and South East Queensland areas. The disputed domain name was chosen in an effort to further promote the Respondent’s glazing services in the Brisbane area. In 2000, the Respondent started Glass Now Pty Ltd, and promoted its business since 2006 using Good Adwords. The Respondent notes that its company name was changed from Crown Sun Pty Ltd to Brisbane Glass Now Pty Ltd – the registration the Respondent provides in evidence indicates that this occurred in 2002.
The Respondent also denies that it acted in bad faith, as the disputed domain name was registered in connection with advertising. The Respondent states that the Complainant waited more than two years to make a complaint under the Policy; the words “Brisbane” and “Glass” are associated with other glazing service providers; and those words are so common that it is highly unlikely that the Respondent was targeting the Complainant directly when the disputed domain name was registered. The Respondent refers to various other decisions under the Policy for support in these respects. These include the case of Ipiranga Produtos de Petroleo S.A. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2011-0163, in which the then Panel found that there was no evidence that the then respondent targeted the Complainant or its mark, even though the then respondent had not denied that it was aware of the complainant.
The Respondent denies that it registered the disputed domain name to sell or otherwise transfer it to the Complainant. The Complainant had threatened to commence legal proceedings against the Respondent, and the Respondent’s offer for sale was made in an effort to resolve the dispute in a manner that was commercially viable.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered in bad faith or was subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below, immediately following a procedural discussion regarding the proper name of the Respondent. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy, as have both the Complainant and the Respondent.
The Panel also notes that the parties submissions in this case are substantially the same as in the related case of Michael Sweep v. Douglas Berry, WIPO Case No. D2012-0651. Without any explanation, both parties appear to have assumed that their arguments can be cut-and-pasted into this dispute with equal relevance. For example, both the Complaint and Response cut-and-paste references to the Respondent’s offer to sell the .com domain name and, in the Respondent’s case, refers to this as relating to the disputed domain name. It is difficult to know what to make of this approach. In the absence of explicit argument and evidence of the parties, the Panel has assumed that both parties consider their arguments and evidence should apply equally in this dispute. As such, the Panel has referenced most of the parties arguments and evidence as if they applied to the disputed domain name. In cases where the evidence does not “fit” into this case (such as the offer of sale of the “.com” domain name), the Panel notes it below.
A. Name of the Respondent
Under the Rules, the Respondent “means the holder of a domain-name registration against which a complaint is initiated.” The Complaint was filed against “Douglas Berry” and the Response was submitted in the name of “Glass Now”. However, the Registrar has confirmed that the name of the holder of the disputed domain name is “Doug Berry”.
There appears to be no dispute in this case that Doug / Douglas Berry is the principal and representative of the company Glass Now Pty Ltd. There also appears to be no dispute that Michael Sweep is the principal and representative of Brisbane Glass Pty Ltd. Accordingly, for the purpose this dispute, the Panel accepts that Douglas Berry and the corporate entity Glass Now Pty Ltd are joint Respondents-in-fact, and that Michael Sweep and the corporate entity “Brisbane Glass Pty Ltd” and joint Complainants-in-fact.
B. Identical or Confusingly Similar
The Complainant’s first argument was that the disputed domain name is confusingly similar to a mark in which it has rights. The Complainant did not provide evidence of a registered mark. The Complainant instead argued that it had common law rights in a mark for BRISBANE GLASS. For the reasons set out in Michael Sweep v. Douglas Berry, WIPO Case No. D2012-0651, the Panel does not consider there is sufficient evidence that BRISBANE GLASS is distinctively associated with the Complainant in a trademark sense.
However, unlike the UDRP, the Policy allows a complainant to put forward a case that a disputed domain name is identical or confusingly similar to a name in which it has rights. In the absence of the Complainant establishing rights in a mark, the alternative question is whether the Complainant relevantly has rights in a name. There is little doubt that the Complainant has rights in a name. The Complainant demonstrated that it has rights in the name “Brisbane Glass”, established at least by its company and business name registrations.
The second question is whether the disputed domain name is identical or confusingly similar to that name. Although the Panel has concluded that the Complainant’s name is not distinctive in a trademark sense, the Panel considers that, on balance, the disputed domain name is confusingly similar to the Complainant’s name. The larger part of the disputed domain name incorporates, in whole, the Complainant’s name, and adds the generic term “now”. As such, the Panel considers there is some potential for confusion between the two. This is supported by actual evidence of confusion which, the Complainant pointed out (in correspondence to the Respondent attached to the Complaint) was admitted in correspondence from the Respondent. The latter correspondence suggested that the Respondent had received telephone calls from members of the public mistaking it for the Complainant (requiring the Respondent to make it clear that it was, in fact, separate to the Complainant).
For these reasons, the Panel finds that the Complainant has established this first element.
C. Rights or Legitimate Interests
The Complainant has provided substantial evidence, going back to 1991, of its business operations and advertising under the name Brisbane Glass. Much of this evidence is provided in the Complainant’s “intellectual property report” attached to the Complaint. This report provides evidence of the Complainant’s business, and examples of the Complainant’s marketing and get-up using that name over more than 20 years. The Complainant also provides email attestations from two suppliers (presumably, suppliers to the Complainant) who state that the Complainant has been “operating as” Brisbane Glass.
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 Respondent has a legitimate interest in the disputed domain name is a more difficult one.
Against this, the Complainant must establish that the Respondent has no rights or legitimate interests in the disputed domain name. Having recognized the difficulty of a requirement to conclusively prove a negative, prior panels have stated the principle that, once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant has established a prima facie case against the Respondent. The Respondent has presented a contrary case. In essence, the Respondent’s argument rests on the descriptive nature of the term “Brisbane Glass”, and its use of that term in connection with a website advertising its business. There is no doubt that such a use can be a basis for a legitimate interest, if this was in fact the Respondent’s primary motive. If however, the Respondent intended to use the disputed domain name in a way that takes commercial or other unfair advantage of the domain name’s trademark associations, then the registration will not be legitimate.
It is of course possible that the Respondent may have had both motivations in mind – to both use the disputed domain name in connection with its business and take some advantage of the Complainant’s name at the same time. But, as noted above, paragraph 4(a)(ii) of the Policy requires the Complainant to show that the Respondent has no legitimate interest. It follows that if the Respondent can demonstrate some legitimate interests, this may be sufficient to rebut the Complainant’s case.
From the case file, the following appear to be the essential facts of this case:
- Both parties operate in the glazing (or glass) business.
- The Complainant operates in the Brisbane area.
- The Respondent has its head office near the Brisbane area, and is seeking to offer services in the Brisbane area.
- The Respondent has a registered company name for “Brisbane Glass Now” (having changed its company name from Crown Sun).
- The disputed domain name is relevantly identical to the Respondent’s company name.
- At the date of registration of the disputed domain name, the Respondent was aware of the Complainant.
- The Complainant is aggrieved by the Respondent’s registration of the disputed domain name (and the .com domain name), and believes the Respondent is seeking to trade on the Complainant’s goodwill.
- The Respondent believes that the Complainant has no monopoly over the English words “Brisbane” and “Glass” which it claims have a descriptive meaning in connection with its business, and are used by other business in the Brisbane area.
On balance, the Panel has concluded that the Respondent registered the disputed domain name because, at least in part, it related to its business. As the Panel has noted in Michael Sweep v. Douglas Berry, WIPO Case No. D2012-0651, it is difficult to conclude that the conjoined term “Brisbane” and “Glass” are inherently distinctive, especially having regard to the use of these terms by other traders in the Brisbane area, and the obvious meanings suggested by the terms. The Respondent operates in the same field of business as the Complainant, relating to glass. The term “Brisbane Glass Now” is also relevantly identical with the Respondent’s registered company name.
This does not mean that the evidence is unequivocally in the Respondent’s favour. It is notable that the Respondent has chosen to link the disputed domain name with a website which is kept separate to what appears to be its official website (at <glassnow.com.au>), along with the registration of a number of other domain names. The Respondent did not explain what motivated its change of corporate name from “Crown Sun” to “Brisbane Glass Now”. The Respondent must have been aware of the Complainant and its business when it registered the disputed domain name. There was also no evidence of another trader using the name “Brisbane Glass” per se.
However, the Panel does not consider that these latter factors outweigh the former. The test under paragraph 4(a)(ii) is not a comparative one – to determine whether the Complainant has better rights (however defined) than those of the Respondent. The test is whether the Respondent has any rights or legitimate interests at all. There is sufficient evidence in this case for the Respondent to rebut the prima facie case against it.
For these reasons, the Panel finds that the Complainant has failed to establish this second element under the Policy.
D. Registered or Subsequently Used in Bad Faith
Because of the Panel’s finding in relation to rights and legitimate interests, it is not necessary for the Panel to make findings under the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: May 23, 2012