WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asahi Group Holdings Ltd v. David Whittle
Case No. DAU2014-0024
1. The Parties
The Complainant is Asahi Group Holdings Ltd of Japan, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is David Whittle of Australia.
2. The Domain Name and Registrar
The disputed domain name <asahi.com.au> is registered with NameScout Corp (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2014, the Registrar 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” 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on August 11, 2014.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 18, 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 the Rules, paragraph 7.
Panel observes that on July 11, 2014, and in response to receipt of a copy of the Complaint from the Center, the Center received an email from the Respondent stating:
“This email is the first notification I have received in regards to asahi.com.au.
The domain name was registered based on the expression ‘as a hi’.
I no longer have any desire or use for the domain [name].
If there is a party with an interest in the domain I will happily transfer it immediately.”
The Panel notes further that there has been no reaction to that email from the Complainant and so the Panel is not prepared to treat this as a “consent-to-transfer” case and will proceed with application of the Policy.
4. Factual Background
The facts relevant to the discussion and findings in this case are that:
1. the Complainant is a well-known Japanese brewing company which makes and sells beers by reference to the trade mark ASAHI (the “Trade Mark”);
2. the Trade Mark is the subject of Australian Trade Mark Registration No.1329516 registered from May 9, 20081 ;
3. the disputed domain name was registered on December 8, 2005;
4. the disputed domain name is not in use;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark; and
6. the Respondent failed to reply to a letter of demand sent to its registered address.
5. Parties’ Contentions
A. Complainant
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain name is identical to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and/or used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(i) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
In reaching the present decision, the Panel deems it appropriate to refer to applicable precedent under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) to the extent it is in accordance with the substance of the Policy.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – namely, a threshold investigation into whether the Complainant has rights in the Trade Mark, followed by an assessment of whether the disputed domain name is 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 Policy.2 The Complainant provides evidence of registration of the Trade Mark and so the Panel is satisfied that it has trade mark rights.
The disputed domain name is, for the purposes of the Policy, identical to the Complainant’s Trade Mark since the country-code Top-Level Domain (“ccTLD”) “.com.au” is trivial and of no distinguishing value in this case.3
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the burden of production shifts to the Respondent 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 subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The publicly available WhoIs database does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. Further, the Complainant has not authorized the Respondent to use the Trade Mark. The disputed domain name is not in use and, by the Respondent’s own admission, it does not intend to use it and has no interest in it. Accordingly, there is no evidence of the domain name having been used in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and so the burden of production shifts to the Respondent to establish a right or legitimate interest in the disputed domain name. In the absence of a formal Response, that case is not rebutted and so Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and so finds that Complainant has satisfied the second limb of the Policy.
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 finds that the Respondent’s actions fall under either paragraph 4(b)(ii) or (iii) above. The evidence shows that the Trade mark is well known. There is an open question as to whether it was well-known in Australia in 2005 at the time of registration of the disputed domain name but in the absence of a formal Response and given the fact that the word has no common meaning in English, the implausible explanation given by Respondent as to why it was adopted, the Respondent’s history of bad faith conduct, and its failure to respond to the demand letter, the Panel concludes that the Respondent must have been aware of the Trade Mark and registered the domain name in bad faith. In so doing, the Panel finds that it is more likely than not that the Respondent was motivated to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, or primarily motivated to disrupt the business or activities of the Complainant.
In the alternative, the Panel finds bad faith registration for the reasons given and bad faith use under the principle of so-called “passive holding” as first laid down in the case of Telstra Corporation Limited v. Nuclear Marshmallows ( WIPO Case No. D2000-0003).
The Panel finds that the Respondent registered and/or used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <asahi.com.au> be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: August 23, 2014
1 The Panel notes that the Complainant has not provided an example of a plain word mark registration for the Trade Mark. Registration No. 1329516 is for a stylised rendition of the word “asahi” but for the purposes of this decision it can be treated as proof of rights in a word mark.
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.