WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EnergyAustralia Pty Ltd. v. Free Energy Australia Pty Ltd
Case No. DAU2013-0019
1. The Parties
The Complainant is EnergyAustralia Pty Ltd. of Melbourne, Victoria, Australia, represented by Ashurst, Australia.
The Respondent is Free Energy Australia Pty Ltd. of South Melbourne, Victoria, Australia and The Gap, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <freeenergyaustralia.net.au> (the “Disputed Domain Name”) is registered with Crazy Domains Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2013. On June 24, 2013, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On June 27, 2013, Crazy Domains 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 “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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 2, 2013. In accordance with paragraph 5(a) ofthe Rules, the due date for Response was July 22, 2013. A brief informal email in responseto the Complaint was sent to the Center on July 22, 2013. A supplemental submission,emailed to the Center from the Respondent on July 25, 2013, sought to expand on that earlier reply and to address the Complaint with more particularity but, except to the very minor extent noted in section 5 below, the Panel has not had any regard to that late-filed document in accordance with paragraph 10 and 12 of the Rules.
The Center appointed Philip N. Argy as Presiding Panelist, and Dan Hunter and Desmond J. Ryan as panelists, in this matter on August 22, 2013. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules,.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, primarily taken from the Complaint and its annexures, remain uncontested:
In 1996 a New South Wales state-owned corporation known as “EnergyAustralia” was established under the “Energy Services Corporations Act”. On March 1, 2011 the retail energy business of that corporation was acquired by the Complainant and its name was changed to “EnergyAustralia Pty Ltd”. The Complainant thereby added to its existing retail energy business approximately 1.7 million retail customers which more than doubled the size of its retail customer base at that time. The Complainant now has approximately 2.8 million customer accounts and is the third largest energy retailer and the second largest electricity retailer in Australia. The Complainant also owns and operates a multibillion dollar portfolio of energy generation and storage facilities including cold, wind and gas assets. Its electricity generation facilities are spread widely across Australia.
The Complainant and its predecessor in title to the EnergyAustralia retail business have promoted the EnergyAustralia brand extensively in Australia including through television, print and Internet media. The Complainant’s annual advertising and marketing expenditure in promoting the EnergyAustralia brand exceeds AUD 1 million. The Complainant also sponsors numerous community and sporting organisations and engages third parties to conduct additional marketing activities on its behalf including by telephone, in retail stores and online.
The Complainant is the registrant of the domain name <energyaustralia.com.au> and promotes and provides information about its energy services on the website to which that domain name resolves. It owns a portfolio of trademark registrations and applications for ENERGYAUSTRALIA and TRUENERGY. The earliest registration of ENERGYAUSTRALIA is dated September 18, 1995.
The Complainant sent a letter to the Respondent on March 15, 2013 complaining about the Respondent’s use and registration of the Disputed Domain Name. The Complainant’s letter also noted the Respondent’s unauthorised reproduction and use of the Complainant’s registered trademark TRUENERGY on the Respondent’s website. On April 9, 2013 the Respondent’s lawyers replied to the Complainant communicating the Respondent’s refusal to comply with the cease and desist request set out in the Complainant’s letter apart from agreeing to delete the TRUENERGY and ENERGYAUSTRALIA logos.
The Respondent operates a sustainable energy business, primarily installing photovoltaic solar power generation systems to households. Much of its business is generated by telemarketing. It was incorporated on June 26, 2012 and adopted its current name two days later. The Disputed Domain Name was registered on July 2, 2012.
5. Parties’ Contentions
The Complaint asserts that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered “and” [sic] is being used in bad faith.
The Complainant’s primary contention is that the Disputed Domain Name is confusingly similar to its ENERGYAUSTRALIA trade marks. It submits that “the word ENERGYAUSTRALIA” is the dominant element of the Disputed Domain Name and that the addition of the word “free” does not materially differentiate the Disputed Domain Name from the Complainant’s ENERGYAUSTRALIA trademark.
In addition to the aural and visual similarity that the Complainant alleges exists between its ENERGYAUSTRALIA mark and the Disputed Domain Name, it says that the Disputed Domain Name is also likely to be confused for a range of other reasons, being essentially the similarity between many of the Complainant’s and the Respondent’s goods and services relating to energy including electricity and solar panel and generation equipment, and the use of telemarketing services.
Whilst conceding that the Respondent’s corporate name is Free Energy Australia Pty Ltd, the Complainant contends that such registration “is not evidence, on its own, of any rights or legitimate interests in the” Disputed Domain Name. The Complainant also submits that none of subparagraphs (i) to (iii) of paragraph 4(c) of the auDRP have any application.
In relation in particular to paragraph 4(c)(i), the Complainant says that the offering of goods and services on the Respondent’s website is not bona fide because the Respondent uses the Complainant’s TRUENERGY trademark to promote the Respondent’s goods and services.
In relation to the third limb of the auDRP, the Complainant submits that the Respondent only registered the Disputed Domain Name to take advantage of the Complainant’s reputation and goodwill in the ENERGYAUSTRALIA marks. It particularly relies on an email sent to one of the Respondent’s prospective telemarketing representatives instructing the representative to tell those called that the representative is calling on behalf of the Complainant. It also relies on the Respondent’s flagrant use of the Complainant’s TRUenergy logo on its website. In both cases, so the submission goes, it is clear that the Disputed Domain Name is being used by the Respondent to deliberately mislead consumers into believing that the Respondent has sponsorship, approval or some affiliation with the Complainant, leading to the inevitable conclusion that the Disputed Domain Name was both registered and is being used in bad faith.
As noted above, no formal Response had been filed before the expiration of the time within which a Response had to be received. However, the Respondent did at the last minute send an email to the Center rebutting the principal allegations made in the Complaint and pointing out that the voluminous Whirlpool forum extracts remarking adversely on the Respondent and its principals, which the Complainant included with the Complaint, did not relate so much to the Respondent as it did to two individuals closely associated with and/or directing the Respondent. Three days later the Respondent supplemented its original rebuttal with a more detailed submission which, when read together with the original email, could be taken to constitute a more formal Response.
As it was filed outside time and without the Center’s or the Panel’s consent, in accordance with paragraphs 10 and 12 of the Rules, the Panel declines to receive the supplemental email except insofar as it expressly refutes and purports to explain two aspects of its conduct relied upon by the Complainant in support of its second and third limb pleading. The first element is a factual element that the bulk of the Whirlpool forum material tendered by the Complainant has subsequently been removed from online access by Whirlpool administrators, and the second was that the decoy procedure (that is, telling a telemarketer to falsely claim that each call was being made on behalf of a different and more well-known organization than was in fact the case) was in common use in the industry and was designed to conceal the identity of the Respondent in case the Complainant or someone much bigger than the Respondent were to approach and ‘steal’ that business from the Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the auDRP, the Rules, the Supplemental Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the auDRP requires the Complainant to 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 has been registered or subsequently used in bad faith.
The onus of proof is on the Complainant in relation to all three of these elements or limbs.
A. Identical or confusingly similar to a trademark or name in which the Complainant has rights
Unlike the UDRP, which requires a complainant to establish rights in trademarks or service marks, the auDRP offers an additional ground to a complainant that can establish rights in a name. In this case the Panel is entirely satisfied based on the extensive evidence in the record that the Complainant has rights both in its corporate name and style EnergyAustralia Pty Ltd, and in its Australian registered trade mark ENERGYAUSTRALIA.
That, of course, does not resolve the issue in the Complainant’s favor. It has to go further and demonstrate to the Panel’s satisfaction that the Disputed Domain Name is identical or confusingly similar to its name or mark. The Complainant does not assert that the Disputed Domain Name is identical to its name or mark. Curiously, nor does it assert that it is confusingly similar to its name. The Complainant’s case is that the Disputed Domain Name is confusingly similar to “the word ENERGYAUSTRALIA”, being its trademark.
The inquiry under the first element of the auDRP is simply whether a trademark (or a name) and the disputed domain name, when directly compared, are identical or confusingly similar. The contents of any website to which a disputed domain name resolves is not relevant to this ground of a complaint: Wal-Mart Stores, Inc. v. xc2, WIPO Case No. D2006-0811 and Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. See also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525.
It is also accepted that, due to the technical idiosyncrasies of domain name syntax, the use of lower case characters, the omission of blank spaces between words, and the suffixing of a generic or country code domain level signifier such as “.com” or “.au”, may usually be ignored for the purposes of the comparison.
The Panel has therefore compared “freeenergyaustralia” with ENERGYAUSTRALIA. Obviously both character strings contain the common characters “energyaustralia”. But that is the beginning and end of the similarity. “Energy” is an ordinary English noun. “Australia” is a proper noun being the name of a country. “Free” is another ordinary English word that is most usually used as an adjective or a verb. The characters “freeenergyaustralia” can be read as a single word with no obvious denotation or connotation. Or they might be read as “free Energy Australia” with “free” used as a verb synonymous with “liberate” and “Energy Australia” signifying the Complainant. They might be read as “free energy Australia” with “free” used as an adjective denoting no cost, “energy” used as an ordinary noun, and “Australia” designating either a location in respect of which the free energy is being referenced or the collective population to whom the claim of free energy is being directed. There are no doubt other variants but what is clear is that to make good its case under paragraph 4(a)(i) the Complainant has to persuade the Panel that the Disputed Domain Name is “confusingly” similar to its name or mark.
Since the Complainant’s mark is embedded in the Disputed Domain Name, it is hard to say there is no similarity at all, but even a finding that the Disputed Domain Name is similar to the Complainant’s name or mark is not sufficient. The critical question on this aspect of the auDRP is whether the similarity is “confusing”. See e.g. the panel’s discussion in SAP AG v. Reffael Caspi, WIPO Case No. D2009-0060.
In this Panel’s view, not only must a complainant establish similarity between the disputed domain name and its trade marks, but it must also establish that, on a direct (objective) comparison between the two, people seeing the disputed domain name will likely be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves.
Whilst the Panel is not prepared to say that no-one could possibly be confused, it is certainly not satisfied that a substantial class of persons seeing only the Disputed Domain Name would be more likely than not to believe that the website to which that domain name resolved was likely to refer to goods and services of the Complainant.
The Complainant has failed to make good the first ground of its Complaint but, against the contingency that reasonable minds might differ, the Panel has also considered the second and third limbs of the auDRP.
B. Rights or Legitimate Interests in respect of the Disputed Domain Names
Here the Complainant faces its greatest difficulty. Whereas under the first limb of the auDRP the content of a respondent’s website is to be ignored, the reverse is the case under limb 2 where an assessment of the rights or legitimate interests of a respondent may take account of all relevant circumstances.
In the present case the Respondent’s website is for the most part concerned with the generation of power through the use of photovoltaic technology – in other words, solar power. The Panel is quite satisfied that, despite the need for capital investment, solar power is frequently referred to as “free” energy. It is entirely plausible given the Respondent’s name, Free Energy Australia Pty Ltd, that many, if not a majority of, people would imagine it to be involved with the generation of power from natural resources such as solar, wind or water. A visitor to the Respondent’s website would immediately see that it is indeed involved with solar power and related matters. Despite there being a number of aspects of the Respondent’s conduct with which the Panel has significant concern, especially the use of the Complainant’s TRUENERGY logo along with those of several other energy related companies, and the apparent instruction to its prospective telemarketer to claim to be calling on behalf of the Complainant, it remains objectively the case that a website and business dealing with solar power generation confers upon the Respondent a legitimate interest in respect of a domain name that incorporates the words “free energy”. Both by reason of its corporate name and style, as well as by reason of the geographic area within which the Respondent conducts its business, the addition of “Australia” to “free energy” is perfectly legitimate and unremarkable. There is no evidence, nor indeed even any suggestion, that the Respondent is not conducting a real business. The crux of the Complainant’s case is that the Respondent’s inappropriate conduct is disentitling. Absent any ability for the Panel to test the evidence of the Respondent, despite its paucity, the Panel is bound to take it at face value. Furthermore, the auDRP is concerned with whether there has been bona fide use of the Disputed Domain Name in the Respondent's offering of solar installations; not the ethics of the Respondent in the delivery of those services. In contested litigation a court might well come to contrary conclusions but the auDRP is not designed for such cases and the Panel is bound to apply the auDRP based on the record such as it is.
In the Panel’s view the second limb of the auDRP is not made out by the Complainant.
C. Registered or subsequently used in bad faith
Paragraph 4(a)(iii) of the auDRP requires the Complainant to demonstrate that the Disputed Domain Name was either registered or subsequently used in bad faith. The record does not expressly state when the Disputed Domain Name was first registered. The Panel believes that such information has value to a panel in deliberating in matters under the auDRP and recommends to auDA that it should be included as a matter of course in the information a registrar is required to provide in response to a request from a Provider under the auDRP.
Here the Panel infers from the Respondent’s incorporation date of June 26, 2012 and the “last modified” date of July 2, 2012 in the WhoIs record for the Disputed Domain Name, that it was first registered on or about the latter date by the Respondent. However, even with the Disputed Domain Name having first been registered well after the Complainant and its predecessor in business had established substantial goodwill and reputation in the name EnergyAustralia and in the brand ENERGYAUSTRALIA, the Panel’s findings under limb 2 make it difficult for the Complainant to successfully argue that mere registration of the Disputed Domain Name was bad faith conduct. Indeed had it not been for the explicit email instructing the Respondent’s prospective telemarketing representative to tell persons called that the call was being made on behalf of the Complainant and the use, along with other third party trade marks, of the Complainant’s TRUENERGY trademark on its website, the Complainant would have considerable difficulty making good any case under limb 3 of the auDRP given the Panel’s findings in relation to limb 2.
As noted in relation to the preceding limb, the Panel is not equipped in a proceeding under the auDRP to test evidence or to substitute its suspicions for the evidence in the record. Faced with the Respondent’s bald denial of bad faith and despite its explanation for the impugned conduct being convenient and hardly persuasive, the Panel nevertheless is precluded from finding bad faith conduct without much stronger evidence to displace the Panel’s findings in relation to limb 2. On its face, the Respondent is carrying on a real business in Australia involving the use of free energy from the sun to generate solar power and, without more compelling evidence than is available on the record, or cross examination in which the Respondent’s credit is successfully undermined, the Panel is unable to conclude that the Disputed Domain Name was either registered or is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the auDRP and 15 of the Rules, the Complaint is denied.
Philip N. Argy
Desmond J. Ryan
Dated: September 5, 2013