WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hill & Smith Limited v. LB International Pty Ltd.
Case No. DAU2014-0008
1. The Parties
The Complainant is Hill & Smith Limited of Wolverhampton, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Clayton Utz Solicitors, Australia.
The Respondent is LB International Pty Ltd. of Girraween, New South Wales, Australia, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <brifen.com.au> is registered with Domain Central Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2014. On March 19, 2014, the Center transmitted by email to Domain Central Pty Ltd. a request for registrar verification in connection with the Disputed Domain Name. On March 21, 2014, Domain Central Pty Ltd. transmitted by email to the Center its verification response confirming the Respondent 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" 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 14, 2014. The Response was filed late with the Center on April 17, 2014. As the Response was informal and was filed only three days late and did not materially delay the proceedings, the Panel, in the exercise of its discretion and its powers under paragraph 10 of the Rules, accepts the Response.
The Center appointed Desmond J. Ryan, Philip N. Argy and Dan Hunter as panelists in this matter on May 16, 2014. 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 paragraph 7 of the Rules.
On May 8, 2014, the Complainant sought leave to submit a Reply to the Response. The Panel does not find it necessary to consider the Reply and does not admit it. Likewise the Panel declines to admit the Respondent's filing of June 5, 2014.
4. Factual Background
The Disputed Domain Name was created on September 25, 2006; it was last renewed on September 24, 2012. At the time of filing of the Complaint, the Disputed Domain Name resolved to an inactive webpage which stated that the website at the Disputed Domain Name "isn't loading right now" but contained links to two other websites advertising Wire Rope Fence.
The Complainant is a United Kingdom company; it is the owner of Australian Registered Trademark No. 565176 (the BRIFEN Mark) registered from October 11, 1991 in respect of goods in International Class 6 including wires, ropes, cables, fences and barriers.
The Complainant owns corresponding national and international registrations in over 20 other countries.
According to the Complainant, it acquired the BRIFEN Mark and the business associated with it in 2002 (hereinafter the term Complainant is used to refer to the Complainant and its predecessors where the context permits).
The Respondent is an Australian Company engaged in the design and construction of road safety barriers including wire rope safety barriers.
The details of the relationship between the Respondent and the Complainant are not completely clear; however, it appears that from some time in about 1988, the Respondent acted as the Australian licensee or distributor of the Complainant until the license was cancelled on April 30, 2011.
A formal license agreement between the Respondent and the Complainant's parent stating a Commencement Date of January 1, 2006 was prepared containing provisions for the use by the Respondent of the Complainant's patents, trademarks and confidential information in the manufacture and marketing of wire rope safety fence products (Complaint Annexure 4). The Agreement was not signed by either party. Neither party has given any information as to why it was not signed, but it appears likely the parties continued to act substantially in accordance with the terms set out until April 2011. Likewise, neither party has explained why the informal license was cancelled or terminated.
On May 3, 2011 the Respondent wrote to the Complainant suggesting a form of words announcing the termination of the license, as follows:
"To whom it may concern
As of 30 April 2011 LB International Pty Ltd is no longer the Australian Licensee for Brifen wire rope fences.
LB International Pty Ltd will continue to supply compatible spare parts for all the fence systems designed and supplied by LB International Pty Ltd since 1991.
LB International Pty Ltd will continue with design and documentation services, site inspection and site maintenance services.
Until such time as Hill & Smith make some other arrangement LB International Pty Ltd will seek to work on a project by project basis with Hill & Smith to provide continuity of supply services.
On behalf of our WRSB team at LB International Pty Ltd I would like to thank you for support for the Brifen WRSB over the past 23 years and to ensure you of our continued commitment to roadside protection products."
On May 4, 2011 the Complainant replied as follows:
prefer to delete the words: 'Until such time as Hill & Smith make some other arrangement' because this perhaps introduces uncertainty regarding Hill & Smith and its seems more positive simply to say 'LBI will work on a project by project basis with Hill & Smith to provide continuity of supply services' and also supply of 'branded parts' is subject to an Agreement between ourselves or purchase from H&S.
Mark" (Respondent Annexure 3).
On September 8, 2011, the Complainant's lawyers wrote to the Respondent demanding, inter alia, cessation of its use of the BRIFEN Mark and transfer of the Disputed Domain Name. On October 7, 2011 the Respondent's lawyers replied stating that "its client was not making or threatening to make any use of" the Disputed Domain Name asserting that the Respondent acquired the Disputed Domain Name without obligation to transfer it to the Complainant.
5. Parties' Contentions
The Complainant asserts and contends that:
- it has been, since 2002, the successor in title to the trademark BRIFEN and that from at least 2006 until April 30, 2011, the Respondent was its Australian licensee. The Complainant acknowledges that prior to April 30, 2011 it had not objected to the Respondent's use of the Disputed Domain Name;
- its consent to such use terminated on termination of the license;
- accordingly, from that time on, the Respondent had no right or legitimate interest in the Disputed Domain Name. The Complainant cites Miele Inc. v. Absolute Air Cleaners and Perfumes, WIPO Case No. D2000-0756 in support of that contention;
- the Respondent is not commonly known by the Disputed Domain Name and has made no bona fide use of it in offering goods or services since April 30, 2011;
- the Respondent's renewal of the registration of the Disputed Domain Name in September 2012 amounted to a re-registration for the purpose of the Policy and that since the license had terminated the renewal of the registration was registration in bad faith;
- further, the Complainant contends that bad faith use and registration is evidenced by the Respondent's intentional change of the use of the Disputed Domain Name, from active to passive;
- the Respondent is no longer entitled to hold the Disputed Domain Name under the auDA Eligibility Rules because it no longer has a "close and substantial" connection with the Disputed Domain Name; and
- the Complainant's passive use of the Disputed Domain Name is in bad faith and is damaging to the reputation of the Complainant.
The Respondent asserts and contends that:
- it has been "associated" with the trademark "BRIFEN" since September 1988 and built a business around the name Brifen Australia in relation to the Complainant's product;
- its business is much wider than that of its Brifen Australia division;
- when the Complainant established a subsidiary in Australia in 2011 the Respondent offered to sell it its Brifen Australia business including its associated website and domain names. That offer was not accepted by the Complainant;
- it is the owner of the registered business name Brifen Australia since 2002;
- it needs the Disputed Domain Name to enable it to transition its customers away from its former email address "@brifen.com.au";
- in 2003 the Complainant acknowledged the appointment of Brifen Australia as its licensee in Australia and the use of the Brifen Australia name on a plaque presented to it;
- it changed the use of the Disputed Domain Name initially to inform the market it was no longer selling BRIFEN wire rope barriers;
- the Complainant has made misleading statements and engaged in legal harassment;
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant's BRIFEN Mark comprises the word BRIFEN, repeated within a non-distinctive border and with a small circle device. The dominant feature of the mark is the word BRIFEN, and it is by that word that the mark would be known and registered. The Panel finds that the Complainant has rights in the trademark BRIFEN.
The Disputed Domain Name wholly contains the word BRIFEN and nothing more, apart from the generic second level and country code Top-Level Domain denominators. The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Whilst the Complainant bears the burden of proof under all elements of paragraph 4(a) of the Policy, Panels have repeatedly recognized that matters arising under paragraph 4(a)(ii) are often only within the knowledge of the Respondent. Accordingly, if the Complainant makes a prima facie showing of absence of right or legitimate interests in the Disputed Domain Name, the burden of rebuttal shifts to the Respondent, see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. The Complainant's BRIFEN Mark was registered in 1991, some fifteen years before the creation of the Disputed Domain Name in September 2006.
In its Complaint, the Complainant states that the Respondent was its Australian licensee from "at least 2006" until the license was terminated in April 2011. It appears however from correspondence annexed to the Complaint and to the Response that the Respondent had been the licensee of or distributor for the Complainant and its predecessors for over 20 years (Complaint Annexure 5, Response Annexure 3). The Respondent does not dispute that its use of the BRIFEN Mark has been in relation to the marketing of the BRIFEN Wire Rope Safety Barrier and design and construction of barriers using that system. In consequence it appears that at all relevant times, it was aware of the Complainant's trademark and its rights in it. The Complainant acknowledges that it did not object to the Respondent's registration of the Disputed Domain Name and its use by the Respondent in relation to the marketing of the BRIFEN product prior to April 2011. During that period therefore, the Respondent may have had a right to use the BRIFEN trademark sufficient to found a legitimate interest in the Disputed Domain Name. That right, and, in the opinion of the majority of the Panel, that interest was contingent upon the license and ceased with the termination of the license (see for example, Cobb International Ltd v. Cobb Australia and New Zealand Pty Ltd, WIPO Case No. DAU2013-0005) or a reasonable period thereafter beyond which it had no right or legitimate interest in trading in BRIFEN branded products.
The Respondent's claim that it needed to retain the Disputed Domain Name as an aid to transition its customers away from its address at the Disputed Domain Name does not create an ongoing legitimate interest, or at least one that would persist for more than three years. The Respondent has provided no evidence that the Disputed Domain Name has been used for that purpose since at least 2011.
The Respondent appears to assert a right or interest pursuant to paragraph 4(c)(ii) of the Policy on the basis of its ownership of the registered business name Brifen Australia and its trade under that name in the conduct of its BRIFEN Wire Rope Safety Barrier business. That, however, does not establish that it has been commonly known by the Disputed Domain Name. The Respondent insists that its business is wider than its wire rope business and produces evidence to show that it owns several other business names beside the name Brifen Australia. Thus, the only evidence is that its wire rope division may have been commonly known by the Disputed Domain Name. There is no evidence that the Respondent itself, the holder of the Disputed Domain Name, was commonly known by that name. The evidence from the Respondent's website at "www.lbaustralia.com.au" indicates that it is known as LB Australia and that its wire rope division is now known as Wire Ropes Australia.
The use currently being made of the Disputed Domain Name is to point to an inactive website. For reasons stated more fully under Paragraph C below, that use is not a noncommercial or fair use of the Disputed Domain Name, and the Respondent has not contended that it is.
Finally, it is the opinion of the majority of the Panel that the Respondent is not entitled to hold the Disputed Domain Name under the auDA Eligibility and Allocation Rules ("the Eligibility Rules"). Relevantly, for the purpose of this dispute, to be eligible to hold the Disputed Domain Name the Respondent must be:
1.(a) an Australian registered company; or
(b) trading under a registered business name in an Australian State or Territory; and
2. the domain name must be:
(a) an exact match, abbreviation or acronym of the registrant's name; or
(b) otherwise closely and substantially connected to the registrant in accordance with the Guidelines in the Interpretation of Policy Rules for the Open 2LDs ("the Guidelines").
The relevant guidelines for the purposes of this dispute are, in paragraph 10.5
(a) a product that the registrant manufacturers or sells, or
(b) a service that the registrant provides.
Rule 5 of the Eligibility Rules provides that renewal of a domain name license is:
"dependent on the registrant continuing to meet the eligibility and allocation rules".
Thus, at the time it renewed the Disputed Domain Name in December 2012, the Respondent needed to comply with those rules and the Guidelines. It did not do so, despite allegedly holding a business name registration in respect of a name under which it had not traded for some time. The Respondent is an Australian company so it satisfied requirement 1(a). However, as the Disputed Domain Name is not an exact match, abbreviation or acronym of the registrant's name, to be eligible for renewal the Disputed Domain Name needed to satisfy requirement 2(b) and the associated Guidelines. To do that the Disputed Domain Name needed to be closely and substantially connected to a BRIFEN product which it then sold or a BRIFEN service which it then provided, but that connection had been broken more than twelve months earlier when the license ceased and the Respondent ceased to trade in the BRIFEN products or trade under the Brifen Australia name. The fact that it continued to trade in a similar product and/or provide a service under another name or trademark did not provide the necessary connection to the Disputed Domain Name. If the Respondent has no right to hold the Disputed Domain name under the Eligibility Rules, it cannot have a right or legitimate interest in respect of that domain name.
In the opinion of the majority of the Panel, the Respondent has failed to rebut the Complainant's prima facie showing that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
C. Registered or Subsequently Used in Bad Faith
In the light of the above, it is necessary for the disposition of this case to determine whether the Respondent's conduct also falls under paragraph 4(b)(iii) of the Policy. In this respect it is important to note the difference between the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP"). Under the Policy it is necessary only to show bad faith registration or subsequent bad faith use; the UDRP requires both.
As noted in Paragraph 6B above, the Complainant appears to have acquiesced in the registration of the Disputed Domain Name and its use during the currency of the license, so the original registration and use of the Disputed Domain Name was not in bad faith. However, the Respondent has continued to hold the Disputed Domain Name when it is not entitled to do so under the Eligibility Rules, and semi-passively to use the Disputed Domain Name in circumstances which have the potential to damage the Complainant and to prevent it from reflecting its name and mark in the corresponding domain name.
At the time of the Complaint, the Disputed Domain Name pointed to parked webpage which had links to sites offering wire rope products in competition with the Complainant. Whilst there is no evidence that the Respondent was directly responsible for those links or profited from them (and the Complainant has not so asserted), they indicate that the Respondent's holding of the Disputed Domain Name in the face of the Complainant's demand for its return has the potential to harm the Complainant and amounts to bad faith use within the rationale of Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0013.
The Disputed Domain Name reflects exactly the Complainant's trademark, a mark in which the Complainant has long standing rights and reputation. There is not, in the opinion of the majority of the Panel any plausible reason why the Respondent should renew the Disputed Domain Name and hold it, after its association with BRIFEN branded products had long since ceased, otherwise than to thwart the Complainant's understandable desire to reflect its trademark in a corresponding domain name. While such conduct does not fall strictly within the precise terms of paragraph 4(b)(iii) of the Policy, the terms enumerated in paragraph 4(b) are non-exhaustive and, in the opinion of the majority of the Panel, that conduct is in bad faith.
It is unnecessary to consider the Complainant's further argument that the Respondent's renewal of the registration after the termination of the license amounts to a re-registration and was therefore a registration in bad faith. However, paragraph 2 of the Policy provides that by applying to register the domain name or asking for it to be maintained or renewed the domain name applicant, i.e. the Respondent, represents and warrants, inter alia, that it meets the eligibility criteria. As discussed in paragraph B above, at the time of seeking to maintain or renew the Disputed Domain Name, the Respondent was not entitled to make such representation or warranty. Accordingly, in the view of the majority of the Panel the representations and warranty taken to have been made by the Respondent at the last renewal of the Disputed Domain Name cannot have been given in good faith.
The Panel therefore finds that the Disputed Domain Name, despite being initially registered and used in good faith, has subsequently been used in bad faith.
Finally the Panel notes that as the Complainant is the owner of an Australian registered trademark and the Disputed Domain Name is an exact match for the Complainant's BRIFEN trademark, it is eligible to hold a domain name in the .au domain.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel, by a majority, orders that the Disputed Domain Name, <brifen.com.au>, be transferred to the Complainant.
Desmond J. Ryan AM
Philip N. Argy
Date: June 10, 2014
Although I have a number of disagreements with the decision of the majority of the Panel, I will restrict my comments to the most salient aspect of this matter and the reason why I conclude that the Complainant has not made out its case.
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the Disputed Domain Name has been registered or subsequently used in bad faith. The majority members conclude, on the basis of the Complaint and the Response, that there is sufficient evidence of bad faith, based on their reading of paragraph 4(b)(iii) and paragraph 2, and their conclusion that there isn't "any plausible reason why the Respondent should renew the Disputed Domain Name and to hold it, after its association with BRIFEN branded products had long since ceased, otherwise than to thwart the Complainant's understandable desire to reflect its trademark in a corresponding domain name."
This assertion and the majority's conclusion are wrong, as a matter of fact and of law. As to the question of fact, there is clear, undisputed factual evidence of an absence of bad faith, that the majority ignores on the basis that it is not "plausible". The Complaint itself attests that the Respondent had the right to use the BRIFEN Mark under a license agreement from 2006 until 2011. The Response notes that the Respondent has traded for years in Australia under the mark, and has a registered business name in Australia. The Respondent registered and used the Disputed Domain Name with a legitimate interest and in good faith from at least September 2006 till at least April 30, 2011 when the license agreement terminated. After the termination of the license, the Complainant acquiesced to the Respondent's use of the Disputed Domain Name for another three years before bringing this action. All of these facts seem to be plausible evidence of an absence of bad faith to me; or more significantly these facts amount to credible evidence of the absence of bad faith, a distinction that is important here.
My problem here is not in the majority's differing interpretation of whether the evidence is plausible, rather it is that the majority should not be using that standard at all. This Panel is in no position to assess plausibility or otherwise of the Complainant's or the Respondent's assertions. We are not a court and we do not have the opportunity to examine any evidence. All we have are the Complaint and the Response, two self-serving statements by the two parties or their representatives that are not sworn under oath (notwithstanding the attestation required under paragraph 3(b)(xiv) of the Rules) and cannot be assessed for veracity. By design, no sworn documentary material is provided in domain name administrative proceedings and, again by design, we cannot interview witnesses, or see them examined or cross-examined. These cases are therefore different from court assessments of plausibility or veracity, and we cannot use that standard. In assessing bad faith, where the Complainant provides evidence of bad faith, the burden shifts to the Respondent to provide some rebuttal of that evidence. Where, as here, the Respondent provides some credible evidence of an absence of bad faith, it is improper for a panel to decide that the Respondent is lying or has another motivation. Just as it would be improper for a panel to decide that the Complainant is lying absent some other extenuating circumstances.
The auDRP and UDRP works as it was intended to work—as an expeditious administrative proceeding that doesn't require high standards of proof on either side—when we confine it to situations where panels can apply the three requirements of paragraph 4(a) in a manner that does not rely on value judgments about the truth of the parties' assertions. Cases involving license terminations are notoriously difficult to assess on this basis.
In my view, the Complainant has failed to meet its evidentiary burden that there is bad faith pursuant to paragraph 4(a)(iii), and therefore has not made out all the requirements in paragraph 4(a). The Complaint should therefore be dismissed.
Date: June 10, 2014