WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BlueScope Steel Limited v. Jye Fulton

Case No. DAU2016-0029

1. The Parties

The Complainant is BlueScope Steel Limited of Melbourne, Australia, represented by Davies Collison Cave, Australia.

The Respondent is Jye Fulton of Merrylands, Australia, represented by GLR Law, Australia.

2. The Domain Names and Registrar

The disputed domain names, <colorbondfence.net.au>, <colorbondfenceprice.com.au>, <colorbondfencers.com.au>, <colorbondgates.com.au>, <fencingcolorbond.com.au>, and <sydneycolorbondfencing.com.au>, are registered with Web Address Registration Pty Ltd (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2016. On July 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), 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 22, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2016. The Response was filed with the Center on August 11, 2016.

The Center appointed Alistair Payne as the sole panelist in this matter on August 25, 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 very substantial Australia-based supplier of high quality steel, metallic coated and painted steel products to industry and to members of the public both in Australia and internationally. The Complainant first produced its COLORBOND line of products in Australia in 1966 and owns various trade mark registrations for this mark in Australia and around the world, namely Australian word mark registration 312434 for the word mark COLORBOND dating from October 19, 1977.

The Complainant operates a website at "www.colorbond.com" which domain name it registered in 1998 and through which it promotes its products under the COLORBOND mark, and owns at least 80 other domain names that incorporate the COLORBOND mark, including by way of example: <colorbondfence.com>, <colorbondfence.com.au>, <colorbondfences.com>, <colorbondfences.com.au>, <colorbondfencing.net.au>,<colorbondfencing.biz>, <colorbondfencing.net>, <colorbondsteelfencing.com> and <colorbondsteelfencing.com.au>.

The Respondent operates a fencing business in New South Wales as a sole trader and has registered various business names including, "Colorbond Fence Price", "Colorbond Fencing" and "Sydney Colorbond Fencing "of which the earliest was registered on May 6, 2013. He registered the earliest of the disputed domain names on December 13, 2011.

5. Parties' Contentions

A. Complainant

The Complainant submits that it first used its COLORBOND mark in 1966 and since then sales and turnover under the mark have grown exponentially such that the COLORBOND product and name have become an

iconic household brand in Australia.

Since 1966 the Complainant notes that approximately 6 million tons of COLORBOND steel has been produced. It notes that nearly half of all new homes in Australia have roofs made from COLORBOND steel and more than nine out of ten homes feature products made from COLORBOND steel, including roofs, fences, walls, gutters and fascia, water tanks, sheds, cubby houses, carports and even letter boxes and over 80% of all Australian gutters and fascias are made from COLORBOND steel. Accordingly the Complainant submits that its COLORBOND mark and products have a significant reputation in Australia such that the mark is an iconic Australian brand.

The Complainant also notes that it is the holder of the corresponding domain names for "colorbondfencing" in the ".biz", ".info", ".net", ".org", ".net.au" and ".eu" domain spaces. It says that disregarding the top-level elements, these domain names are substantially identical with or confusingly similar to the disputed domain names, namely, <colorbondfence.net.au>, <colorbondfenceprice.com.au>, <colorbondfencers.com.au>, <colorbondgates.com.au>, <fencingcolorbond.com.au>, and <sydneycolorbondfencing.com.au>, which leads to a greater likelihood of consumer confusion.

The Complainant submits that each of the disputed domain names wholly incorporate the COLORBOND trade mark in which the Complainant has rights. The additional words in each of the disputed domain names are non-distinctive and/or trifling additions such as "fence", "fencing" and "price" which are descriptive terms in relation to the services for which the Complainant's product is typically used. According to the Complainant, the operative component of the disputed domain names is therefore identical to the Complainant's COLORBOND trade mark and each of the disputed domain names are substantially identical with and/or confusingly similar to the trade mark in which the Complainant has rights.

The Complainant goes on to submit that there is no evidence that the Respondent operates as a sole trader and although he has registered several business names as noted above, as well as the business names "Slat Fencing" and "Timber Fencing", he holds each of them under an Australian Business Registration number in his own personal name, Jye Fulton. The Complainant says that it is apparent that the Respondent registered each of the business names containing the COLORBOND mark in or around the time that he registered the disputed domain names and as part of the same exercise in the misappropriation of the name and longstanding goodwill of the Complainant attaching to its COLORBOND mark. The Complainant also notes that on certain websites at the disputed domain names, the Respondent is trading as "Campbelltown Fencing" and "City Fencing".

The Complainant confirms that the Respondent does not have its authority as trade mark holder, to use a domain name which wholly incorporates the Complainant's COLORBOND trade mark. In particular, the Complainant says that it has never licensed, authorised, permitted or otherwise consented to the Respondent applying for or using any domain name incorporating its COLORBOND trade mark. Further, says the Complainant, it has no commercial or other relationship or association with the Respondent that would entitle it to use the Complainant's COLORBOND trade mark.

It further submits that the use being made of the disputed domain names by the Respondent is a commercial use, but it is not a bona fide offering of goods or services as referred to by the panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In particular, it submits that the websites at the disputed domain names fail to disclose the true trade mark owner of the COLORBOND trade mark and do not accurately and prominently disclose the fact that the Respondent does not have a relationship or association with the Complainant. It further says that the websites at the disputed domain names are designed to give the appearance of an association or affiliation with the Complainant in that they feature several registered logo trade marks of the Complainant (including the COLORBOND and BLUESCOPE STEEL logos) in relation to services covered by the Complainant's Australian registrations and without the Complainant's authority or consent. It says that such use therefore constitutes both trade mark and copyright infringement as the Complainant is the owner or exclusive licensee of the copyright in these logos. In addition, the Complainant notes that the websites at the disputed domain names also feature "BlueScope warranty for peace of mind"which has been lifted from the Complainant's website at "www.colorbond.com".

The Complainant notes that it cannot tell whether the Respondent exclusively uses COLORBOND products in its fencing projects but notes that it is apparent that the websites at the disputed domain names offer goods and services other than the goods of the Complainant, and feature advertisements for a diverse range of goods and services, including a range of products from financial services to household and personal goods and repair services.

Finally, the Complainant submits that the Respondent has also attempted to "corner the market" by engaging in a pattern of domain name registration that reflects the Complainant's trade mark. Specifically, the Complainant says that it is aware that the Respondent has registered eleven domain names containing the COLORBOND trade mark, five of which are: <colorbondfenceprice.com>, <colorbondfenceprice.sydney>,

<colorbondfencing.contractors>, <colorbondfencing.sydney> and <colorbondfencing.xyz> and which are the subject of a separate complaint. The disputed domain names comprise a combination of the Complainant's COLORBOND trade mark with descriptors of the Complainant's products sold under the COLORBOND mark, such as "fence", "fencing" and "gates". These facts, taken in consideration with the evidence of bad faith discussed below, clearly demonstrate according to the Complainant that the use to which the disputed domain names are currently being put is not use in a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant submits that based on its longstanding use of the COLORBOND mark in Australia, which it notes is a coined term and of its trade mark registrations, domain name registrations and online use, the Respondent must have been aware at the date of registration of each of the disputed domain names of the Complainant's rights and reputation. The Complainant asserts that the Respondent registered the disputed domain names in the full knowledge of the Complainant's rights and reputation in order to benefit from the association between the disputed domain names and the Complainant's mark and that the fact that the Respondent reproduced the Complainant's logo trade marks on its website and uses its products for its fencing services only serves to reinforce this view.

As far as use is concerned the Complainant submits that the Respondent appears to have registered and used the disputed domain names for commercial gain in order to confuse Internet users and to divert them to its own websites at the disputed domain names, in terms of paragraph 4(b)(iv) of the Policy. The Complainant points out that there is no indication on the websites as to the true holder of the COLORBOND trade mark nor the Respondent's relationship (or lack thereof) with the true holder of the mark. This inevitably results in persons visiting the Respondent's websites at the disputed domain names being led to believe that the Respondent's fencing services have the Complainant's sponsorship or endorsement or that the Respondent is affiliated with the Complainant when this is not the case. However, the Complainant does note that while the disputed domain name <colorbondgates.com.au> previously reverted to a website similar to the websites at the other disputed domain names of this Complaint, at the time of writing the disputed domain name <colorbondgates.com.au> does not revert to an active web site.

The Complainant says that the Respondent continued to use the disputed domain names in the same manner even after receipt of its cease-and-desist letter in April 2015 and subsequently sought in settlement negotiations to sell the disputed domain names to the Complainant at the inflated price of AUD 800,000. This says the Complainant is further evidence of the Respondent's intention to either use the disputed domain names to attract Internet users to its own website or for the purpose of selling the disputed domain names at a considerable profit to the Respondent.

Finally, the Complainant submits that the disputed domain names were registered in order to prevent the Complainant from reflecting the COLORBOND mark in corresponding domain names as the Respondent has engaged in a pattern of such conduct having registered eleven domain names containing the Complainant's COLORBOND trade mark, including <colorbondfencprice.com>, <colorbondfenceprice.sydney>, <colorbondfencing.contractors>, <colorbondfencing.sydney> and <colorbondfencing.xyz> which are the subject of a separate Complaint due to differences in dispute resolution policies.

B. Respondent

The Respondent does not deny that the Complainant owns relevant trade mark rights but says that the disputed domain names are not deceptively similar to the Complainant's trade marks as the addition of words such as "fencing" and "Sydney" in the disputed domain names are not merely non-distinctive or trifling additions but describe the Respondent's business as fencing contractors and therefore distinguish the disputed domain names in relation to the Respondent's services from the Complainant's marks.

The Respondent asserts that it registered business names in 2013, 2014 and 2015 that are similar if not identical to the disputed domain names that it registered in 2014. The Respondent submits that it genuinely uses the Complainant's products in the course of providing its fencing services and that this amounts to a bona fide or legitimate use of the disputed domain names. The Respondent further asserts that it has not attempted to create the same look and feel for its website as on the Complainant's websites and the respective websites look nothing like each other.

The Respondent further says that there is no evidence of the disputed domain names being either registered in bad faith or used in bad faith in circumstances that the Respondent is a fencing contractor using COLORBOND products and that the disputed domain names are merely descriptive of his services, and not an attempt to hold himself out as being the Complainant or passing off his business as being COLORBOND. This, says the Respondent, is even more the case in circumstances that the respective websites look vastly different and the Respondent has used the business names and corresponding disputed domain names for more than a year and has allowed his business to build to the level that it is at now. He says further that the request for monetary compensation for the disputed domain names is not evidence of bad faith considering the effort in building his business using the disputed domain names.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various trade mark registrations for its COLORBOND mark and in particular Australian word mark registration 312434 for the word mark COLORBOND dating from October 19, 1977. The Complainant has also shown that as a consequence of substantial use and promotion over a period of many years its COLORBOND mark enjoys a high degree of renown in connection with its steel products in Australia.

Each of the disputed domain names wholly incorporates the COLORBOND mark together with a generic term such as "fence" "fencing", "fenceprice", "fencers" or "gates", before the top-level domain. In each case the dominant element of the disputed domain name is the Complainant's COLORBOND mark and the addition of generic terms whether as modifiers before the top level domain, or used as the top-level domain, does not serve to distinguish the disputed domain name in question upon a "side by side" comparison. In all cases the use of the Complainant's COLORBOND mark in the disputed domain name renders Internet users likely to assume that there is some kind of association or affiliation between the disputed domain names and the Complainant or the Complainant's products. In addition the Panel notes that other than the top-level element, the Complainant already owns and uses identical domain names to each of the disputed domain names which only heightens the potential likelihood of confusion.

Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant's COLORBOND mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The disputed domain names resolve to various websites, including "www.cambelltownfencing.com.au", "www.cityfencing.com.au", and "colorbondfencing.sydney" that appear to be virtually identical although they appear under different trading names, namely "Cambelltown Fencing", "City Fencing", "Colorbondgates" and "Colorbondfencing". However, all feature the name of Jye Fulton, who appears to be operating as a sole trader.

The Respondent submits that it genuinely uses the Complainant's products in the course of providing its fencing services and that this is akin to having a commercial relationship with the Complainant and therefore amounts to a bona fide or legitimate use of the disputed domain names. Previous panels have assessed whether a respondent's use of the Complainant's mark in a disputed domain name amounts to bona fide use or not using the analysis from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In that case the panel set out four minimum factors in helping to decide whether a respondent was possibly making a bone fide use of the disputed domain name, or not:

"- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v.Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);

- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) ('a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark')."

Upon analysis using these factors it appears that the first two are satisfied in this case but the last two are clearly not satisfied. It is apparent that the Respondent uses the Complainant's products in providing its fencing services and there is no indication from the website that it uses a competitor's products although the Panel notes that several advertisements appear at the very end of the Respondent's web page for unrelated products or services. However, the Respondent's website at each of the disputed domain names fails to indicate that the Respondent does not have an official relationship with the Complainant and neither does it suggest that it is an independent business even though it uses the COLORBOND mark constantly and much more than in a merely descriptive manner throughout the website. It also reproduces the Complainant's "Bluescope Steel" logo and other logo marks together with the Complainant's warranty, all of which falsely suggests that it has an affiliation with the Complainant. In addition, it appears to the Panel that the Respondent has made every effort to corner certain parts of the Australian market in domain names that include the COLORBOND mark and the concept of "fencing" or "gates". The six disputed domain names in this case and the five disputed domain names the subject of the complaint in BlueScope Steel Limited v. Jye Fulton, Colorbond Fence Price, WIPO Case No. D2016-1405 all lead Internet users to the Respondent's website.

As a result, the Oki Data factors are not satisfied in this case and in the circumstances of the Respondent's unauthorised use of the Complainant's marks and of its registration of a multiplicity of domain names containing the Complainant's mark, it cannot be said that the Respondent's use of the disputed domain names is bona fide. Accordingly, for this and for the reasons set out under Part C, below the Complaint succeeds under this element of the Policy.

C. Registered or Subsequently Used in Bad Faith

By the date of registration of each of the disputed domain names it is apparent that the Complainant had developed a very strong reputation in Australia in relation to its COLORBOND mark and products as a consequence of very longstanding use. As a fencer using the Complainant's products it is clear that the Respondent was well aware of the Complainant's COLORBOND mark and there can be no question but that it knowingly registered each of the disputed domain names. The Panel notes also the similarity between the Complainant's domain names used to resolve to its own website, namely <colorbondfence.com>, <colorbondfence.com.au>, <colorbondfences.com>, <colorbondfences.com.au>, <colorbondfencing.net.au>, <colorbondfencing.biz>, <colorbondfencing.net>, <colorbondsteelfencing.com> and <colorbondsteelfencing.com.au>, and the disputed domain names.

It seems apparent to the Panel that the Respondent registered each of the disputed domain names with the express purpose of confusing and attracting Internet users seeing the COLORBOND mark in each of the disputed domain names to its own website. Such use was without question for commercial purposes and as discussed above was without the Complainant's authorisation, sponsorship or endorsement. In these circumstances, the Panel finds that the requirements of paragraph 4(b)(iv) of the Policy are satisfied and that this amounts to evidence of registration and use in bad faith.

The fact that the Respondent registered the disputed domain names containing the Complainant's COLORBOND mark without its authorisation and then attempted to request a very substantial sum for their transfer to the Complainant, only serves to reinforce the Panel's view that such use was in bad faith.

The Panel therefore finds that each of the disputed domain names was registered or used in bad faith.

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 names, <colorbondfence.net.au>, <colorbondfenceprice.com.au>, <colorbondfencers.com.au>, <colorbondgates.com.au>, <fencingcolorbond.com.au>, and <sydneycolorbondfencing.com.au>, be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 8, 2016