WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Smart Voucher Ltd T/A Ukash v. Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd
Case No. DAU2013-0006
1. The Parties
The Complainant is Smart Voucher Ltd T/A Ukash of London, United Kingdom of Great Britain and Northern Ireland, represented by SafeNames Ltd., United Kingdom.
The First Respondent is Chowdhury, MD Abu Russel of Belmore, New South Wales, Australia, represented by Action Legal International, Australia; the Second Respondent is Sydney Business & Technology Group Pty Ltd of Sydney, New South Wales, Australia, unrepresented.
2. The Domain Names and Registrar
The disputed domain names <ukash.com.au> and <ukash.net.au> are registered with Crazy Domains Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, and March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 1, 2013, and March 4, 2013, the Registrar transmitted by email to the Center its verification responses confirming that the Respondents are listed as the registrants and providing the contact details for the disputed domain names.
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 Respondents of the Complaint, and the proceedings commenced on March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. On March 26, 2013 a Response was received from the First Respondent. No response was made by the Second Respondent.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on April 15, 2013. 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 facts relevant to the findings and decision in this case are that:
1. the Complainant has since 2005 provided an online cash payment system for the purchase of goods or services by reference to the trade mark UKASH (the “Trade Mark”);
2. the Complainant is the owner of, inter alia, (European) Community Trade Mark Registration. No. 5598297 filed January 30, 2008 for the Trade Mark;
3. the disputed domain name <ukash.com.au> was registered to the First Respondent on September 21, 2010;
4. the disputed domain name <ukash.net.au> was registered to the Second Respondent on November 10, 2010;
5. at the time of the Complaint neither domain name appears to have been so far used;
6. there has been no commercial or other relationship between the parties and the Complainant has not authorized either Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
5. Parties’ Contentions
A. Complainant
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain names are confusingly similar, if not identical, to the Trade Mark.
The Complainant alleges that the Respondents have no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondents registered and/or are using the disputed domain names in bad faith.
B. Respondent
The Response was made in a timely manner but appears only to have been made on behalf of the First Respondent. It is discussed under section 6.2 of this decision.
No response was made on behalf of the Second Respondent.
C. Additional Submissions – Complainant
The Complainant made brief submissions in reply to the Response also referred to under section 6.2 of this decision.
6. Discussion and Findings
6.1. Preliminary issue: Multiple Respondents
The Panel notes that in these proceedings the First Respondent is the holder of one of the disputed domain names whilst the Second Respondent is the holder of the other. The Panel notes that the First Respondent is an individual with a given address in Belmore, New South Wales, Australia whilst the Second Respondent is an Australian company with a given registered business address in Sydney, New South Wales, Australia. The Respondents are separate legal entities. Moreover, as already noted, the Response has been made on behalf of only the First Respondent with no mention of the Second Respondent.
Paragraph 4(f) of the .auDRP provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
It is clear that neither of those provisions caters for the manner in which this Complaint has been brought. Nonetheless, the Complaint states its “formal request for consolidation of the current Complaint such that the registrants above can be listed as co-Respondents to a single set of proceedings”.
Accordingly, the preliminary question arises as to whether it is appropriate for a single consolidated Complaint to be brought against multiple respondents. In that respect it was the Complainant’s submission that:
“Whilst Complainant has listed what appears to be separate registrants with no connection to one another under a single dispute, Complainant contends that the First and Second Respondents are closely associated or related to the extent that Complainant believes that the domain names are subject to common control and that there are sufficient grounds for consolidation of the disputes given that the Policy is derived from the Uniform Domain Name Dispute Resolution Policy (“UDRP”), Complainant is inclined to put forward that … it is highly unlikely that “the drafters of the Policy intended for paragraph 3(c) to abrogate the authority of panels to order the consolidation of multiple domain name disputes under paragraph 10(e) in all circumstances involving differently named domain name holders.” 1
Complainant avers that given that there is a sufficient unity of interests between the respective Respondents and as a result, Complainant avers that this would merit consolidation in the sense that the Respondents may be essentially treated as a single domain name holder for the purposes of paragraph 3(c) of the Rules. Based on information contained within the Australian Securities and Investments Commission’ s (ASIC) database, the First Respondent is listed as the Director and Company Secretary of the Second Respondent. Furthermore, the First Respondent also appears to own all the shares of Second Respondent and thus Complainant avers that the First Respondent effectively controls the Second Respondent.
… both domains are registered with the same Registrar and prior to any notice to the Respondents, the domains in dispute both resolved to websites with similar content which were essentially index holding pages. Whilst the domains no longer resolve, Complainant avers that given that the domains were and are being used in an identical manner, Complainant draws a strong inference that the domains are under common control.
Complainant avers that the consolidation of the current proceedings is in the interests of all parties involved in order to avoid unnecessary duplication of filings, time and effort, and expenses. Additionally, consolidation will reduce the potential for conflicting or inconsistent results arising from multiple proceedings and it is Complainant ’s position that to do otherwise would be unfairly prejudicial to Complainant and procedurally inefficient as Complainant’ s claims to each of the disputed domain names involve common questions of law and fact. Finally, Complainant avers that consolidation in the current circumstances will further the fundamental objectives of the Policy, in particular paragraph 1.2 of the Policy which states that the purpose of the Policy is to provide a cheaper, expedited alternative to litigation for domain name disputes that satisfy the criteria laid out in paragraph 4(a) of the Policy.”
The Panel finds all of those submissions persuasive. The Panel notes, too, that the Center has accepted the Complainant’s prima facie submission that the Respondents appear to be sufficiently linked to justify a single set of proceedings. Finally, the Panel observes that although the Response was only made on behalf of the First Respondent, it did not indicate that the two Respondents were not related and appeared to sidestep that matter.
On balance, the Panel finds it appropriate that these Administrative Proceedings accept both Respondents and both disputed domain names. It has been possible throughout this decision to largely refer to the First Respondent and Second Respondent together as “Respondents” whilst returning to the specific references to the one or other as necessary.
6.2. Preliminary issue: Defended and undefended cases
Different reasoning and potentially different decisions in relation to each domain name might result from the fact that the First Respondent made a Response to the Complaint whereas the Second Respondent did not. For that reason the Panel turns briefly to the substance of the Response and the Complainant’s Additional Submissions in reaction thereto before moving onto the application of the Policy.
The Response is short and pays almost no regard to the Policy. The only statement deserving scrutiny is the claim that “Mr. Chowdhery has registered the domain name: ukash.com.au, three years earlier than SmartVoucher Ltd entered to Australia for IP registration”.
In reply to that claim the Complainant submits that the First Respondent has misunderstood the respective registration dates.
The Panel makes the preliminary finding that the Response adds nothing to the First Respondent’s position. The claim that the First Respondent registered the disputed domain name <ukash.com.au> in 2008 is unsupported by compelling evidence. The publicly available WhoIs information for the current registration of that domain name shows a registration date of September 21, 2010. Its registration post-dates the registration of the Complainant’s trademark in several jurisdictions. For reasons which follow, the fact that the domain name registration might predate the filing date of the Complainant’s application for trade mark registration in Australia has no influence on the outcome. Finally, although the evidence of the claim to registration in 2008 is forensically uncertain, even if it were the case that the First Respondent allowed an earlier 2008 registration to lapse, that registration still post-dates the Complainant’s earliest applications for trade mark registration and post-dates the Complainant’s demonstrated use of the trade mark since 2005.
In the result, it is possible to apply the Policy to both Respondents without reason to treat them differentially.
6.3. The Policy
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) your domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) (iii) your domain name has been registered or subsequently used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following:
6.3. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether the Complainant has rights in the Trade Mark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the Trade Mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy2. The Complainant provides evidence of registration of the Trade Mark and so the Panel is satisfied that it has trade mark rights in UKASH.
The remaining question is whether the disputed domain names are confusingly similar to the Complainant’s Trade Mark. For the purposes of testing confusing similarity, the country codes Top Level Domain (“ccTLD”), “.com.au” and “.net.au” can be ignored as trivial and of no distinguishing value.3 The residual terms are then identical to the Trade Mark. Numerous panels under this Policy have characterized domain names which merely add these extensions to a trade mark as being “legally identical” to the trade mark and this Panel takes that same position.
The Panel finds that the disputed domain names are identical to the Trade Mark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy with regard to both disputed domain names.
6.3. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the respondents have no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the respondents to rebut such prima facie case by demonstrating rights or legitimate interests.4
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database does not support any conclusion that the respondents might be commonly known by the disputed domain names. There is no evidence that the respondents have trade mark rights in the disputed domain names, registered or not. The disputed domain names are not in use. The evidence is that any former use of the disputed domain names was perfunctory. Moreover, when the Complainant’s representative approached the respondents the disputed domain names were readily offered for sale at a very significant price.
The Panel finds that the Complainant has established a prima facie case that the respondents lack rights or legitimate interests in the disputed domain names. That case has not been rebutted since the Second Respondent made no reply and the Response made by the First Respondent carried no relevant submissions in that regard.
The Panel finds that the respondents have no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy with regard to both disputed domain names.
6.3. C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(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 website 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 website or location or of a product or service on that website or location.”
The Panel accepts the Complainant’s evidence that the UKASH e-payment system was officially launched in Australia towards the end of July 2009 and that the launch was widely reported and acknowledged through various media outlets in Australia. Moreover, at that time, the Trade Mark is shown to have already been well recognized in many countries. In all likelihood the First Respondent knew of the Complainant’s business and Trade Mark at the time it registered the disputed domain name <ukash.com.au>. Since the First Respondent owns and controls the Second Respondent, that knowledge can reasonably be imputed to the Second Respondent which then knew of the Complainant’s business and Trade Mark at the time of registration of the disputed domain name <ukash.net.au>.
This Panel finds, on the balance of probabilities, sufficient evidence to support a finding bad faith based on any one or more of Policy, paragraph 4(b)(i) – (iv) scenarios.
Were it necessary to rely only on paragraph 4(b)(iv) of the Policy, being the single scenario linked to the act of use rather than the act of registration, the Panel would readily find that the Complainant had shown common law trade mark rights and a substantial reputation in UKASH and that the reasoning first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 applied to this case for the same reasons given then, namely, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The Panel finds on a balance of the evidence that the respondents deliberately chose the disputed domain names so as to somehow benefit commercially from the notoriety of the Trade Mark. In terms of paragraphs 4(b)(i)-(iii) of the Policy, it can be concluded on the balance of probabilities that:
- the offer to sell the domain names for AUD 299,990 shows that the Respondents were actuated by the motives outlined in paragraph 4(b)(i) of the Policy;
- in view of the evidence of the reputation of the Complainant’s business by 2010, the Respondents registered the disputed domain names in order to prevent the Complainant from reflecting those names in a corresponding domain name (paragraph 4(b)(ii) of the Policy); and
- the Respondents registered the disputed domain names primarily for the purpose of disrupting the business or activities of the Complainant (paragraph 4(b)(iii) of the Policy).
The Panel finds that the Respondents registered and used the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy with regard to both disputed domain names.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <ukash.com.au> and <ukash.net.au> be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: May 8, 2013
1 Per panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
4 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.