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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Packsize LLC v. Kiekaboo Pty Ltd

Case No. DAU2016-0006

1. The Parties

The Complainant is Packsize LLC of Salt Lake City, Utah, United States of America ("United States"), represented by Workman Nydegger, United States.

The Respondent is Kiekaboo Pty Ltd of Avalon, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <packsize.com.au> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 15, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2016, 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 February 26, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2016.

The Center appointed Mary Padbury as the sole panelist in this matter on March 29, 2016. 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 Complainant is a manufacturer and provider of machinery that manufactures on-demand cardboard containers for packaging. The Complainant is the owner of the PACKSIZE trademark and has been using the trademark around the world since at least as early as October 2002. The Complainant has invested in marketing the goods it sells under the PACKSIZE trademark. The Complainant registered the domain name <packsize.com> on January 18, 2002. The Complainant has obtained trademark registrations or filed trademark applications in various countries around the world, including Australia, for the PACKSIZE mark. These are listed in Annex D to the Complaint. The Complainant's earliest trademark registration is United States Trademark Registration No. 3830478 for PACKSIZE and United States Trademark Registration No. 3830479 PACKSIZE & Design both registered on August 10, 2010. The Complainant is also the applicant for Australian Trademark Application No. 17322034 PACKSIZE filed on November 4, 2015 and Australian Trademark Application No. 1745154 PACKSIZE & Design filed on January 7, 2016. The Complainant has also filed trademark applications in Canada, Mexico and the European Community in 2016.

The Respondent is the registrant of the disputed domain name <packsize.com.au>. It is not clear from the WhoIs information for the disputed domain name when the Respondent registered the disputed domain name although the Registrar confirmed that the Respondent has been the registrant since at least October 22, 2014.

5. Parties' Contentions

A. Complainant

The Complainant contends that it is the owner of the PACKSIZE trademark and has been using the trademark around the world since at least as early as October 2002. The Complainant asserts that it has invested substantially in marketing the goods it sells under the PACKSIZE trademark and that its long and continuous use of the mark as evidenced, at least in part, by registration of the domain name <packsize.com> on January 18, 2002. The Complainant contends that, as a result, the PACKSIZE trademark has become synonymous with container producing machinery and that it has built up considerable goodwill in the minds of consumers in connection with the PACKSIZE trademark. The Complainant contends that consumers rely on the Complainant's Packsize products and have come to associate the PACKSIZE trademark with quality goods.

The Complainant contends that the disputed domain name contains the trademark PACKSIZE in its entirety and is therefore identical to the PACKSIZE trademark. The disputed domain name is comprised primarily of the PACKSIZE trademark with the only additional portions being the country code Top-Level Domain ("ccTLD") ".com.au". The Complainant contends that it is well settled that ccTLDs do not carry any distinguishing weight and that for the purposes of assessing identity and/or confusing similarity. This leaves the word "packsize" which is identical in all respects to the Complainant's PACKSIZE trademark.

The Complainant contends that the Panel should find that paragraph 4(a)(i) of the Policy has been satisfied because the disputed domain name is identical to the Complainant's PACKSIZE trademark.

The Complainant also contends that the Respondent has no rights or legitimate interest in the disputed domain name. First, the Respondent is neither a licensee of the Complainant nor otherwise authorized to use the trademark. Further, the Complainant contends that the Respondent could not possibly contend that it is commonly known by or identified with the disputed domain name. PACKSIZE is asserted to be an invented word with no meaning other than to serve as a trademark for the goods and services that the Complainant provides. The Complainant contends that it is not a common dictionary term having inherent value as a search term arising from its commonality. Rather, the Complainant submits that its only value is that which the Complainant has imparted to it in the form of goodwill through extensive use to promote its goods and services. Further, the Complainant contends that the Respondent's name is not similar to the disputed domain name.

The Complainant contends that the Respondent has not made a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. Rather, the Complainant notes that the disputed domain name resolves to a blank page that features no content. The Complainant asserts that merely registering a domain name without further use, as the Respondent has done here, is insufficient to constitute a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy or to establish rights or legitimate interests for the purpose of the Policy. The Complainant submits that it has met the burden under paragraph 4(a)(ii) of the Policy having established that the Respondent is not commonly known by the name Packsize or engaged in a bona fide commercial use or a noncommercial fair use of the Complainant's mark and that the Complainant has not authorized the Respondent to use its mark.

The Complainant asserts that the Panel should therefore find paragraph 4(a)(ii) of the Policy has been satisfied because the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that in the time since the Respondent registered the disputed domain name, the Respondent has made no use of the disputed domain name and that it currently resolves to a blank website that features no content. The Complainant contends that the Respondent's failure to make a legitimate use of the disputed domain name indicates the Respondent's bad faith under paragraph 4(a)(iii) of the Policy. Complainant refers to the decision in Morgan Stanley v. Guerilla Freedom Fighter c/o Bethesda Properties LLC, NAF Claim No. FA1061232 (finding that "Respondent's failure to use the <deanwitter.mobi> domain name, which is identical to Complainant's DEAN WITTER mark, for any purpose besides the "parked" page that currently resolves from the disputed domain name indicates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy (a)(iii)"). The Complainant also refers to the decision in Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).

The Complainant further asserts that as the PACKSIZE mark is fanciful and arbitrary that this eliminates the possibility the Respondent and the Complainant independently chose identical or confusingly similar marks. The Complainant contends that it is almost certain that the Respondent was well aware of the Complainant's PACKSIZE trademark before registering the disputed domain name. The Complainant asserts the Respondent's apparent knowledge of the Complainant's PACKSIZE trademark prior to registering the disputed domain name in combination with the Respondent's failure to use the disputed domain name suggests that the Respondent's purpose in registering the disputed domain name was to disrupt the Complainant's business and prevent the Complainant obtaining the disputed domain name for itself. The Complainant submits that the Respondent's apparent purpose in registering the disputed domain name is a further indication of the Respondent's bad faith in registering and using the disputed domain name.

The Complainant contends that the Panel should find that paragraph 4(a)(iii) of the Policy has been satisfied because the disputed domain name has been registered and used in bad faith.

B. Respondent

There was no response from the Respondent.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must establish each of the following:

(i) the disputed domain name is identical or confusingly similar to a 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.

No response has been filed. The Complaint has been served, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent. When a respondent has not complied with a time period for response, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with any rules and principles of law it deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights. As noted in Gulf DTH LDC v. Mohammad Alsayed, WIPOCase No. DAE2015-0003, "there are two parts to this inquiry:

- the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark". The Complainant has proven ownership of two trademarks registered in the United States identified in section 4 above which pre-date apparent registration of the disputed domain name.

On the question of identity or confusing similarity, it is clear that the marks are identical once the gTLD and ccTLD is ignored. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademark PACKSIZE and the requirement under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that any of the following circumstances can be situations in which the Respondent has rights or legitimate interests in a domain name:

(i) before any notice to the Respondent of the dispute, the Respondent's 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; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

As noted in Gulf DTH LDC v. Mohammad Alsayed, supra, "The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a Complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case."

The Complainant states that it has neither licensed nor authorised the Respondent to use the disputed domain name. The Respondent is not commonly known by or identified with the disputed domain name. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant has established the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has either been registered or is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four examples of circumstances, in particular but without limitation, which if found by the Panel to be present shall be evidence of the registration or use of a domain name in bad faith. These are as follows:

(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 web site 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 web site or location or of a product or service on that web site or location.

The question is whether the registration of the disputed domain name and making no use of it constitutes bad faith. The Panel notes that the trademark PACKSIZE has an acquired meaning, that the Complainant asserts uncontradicted worldwide use of the trademark since 2002 and the consequent establishment of goodwill in the trademark in connection with its goods and services. Can it be said in accordance with the cases referred to by the Complainant that, in these circumstances, the Respondent's registration of the disputed domain name and failure to use for any purpose besides a "parked page" is bad faith under paragraph 4(b)(ii) or (iii) of the Policy? Although finely balanced, given the relatively distinctive nature of the trademark PACKSIZE and its registration and worldwide use by the Complainant since 2002, the Panel is satisfied that paragraphs 4(a)(ii) and (iii) of the Policy are made out.

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 <packsize.com.au> be transferred to the Complainant.

Mary Padbury
Sole Panelist
Date: May 3, 2016

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