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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clipsal Australia Pty Ltd v. DIGITCOM Technology

Case No. DCO2011-0062

1. The Parties

The Complainant is Clipsal Australia Pty Ltd of Baulkham Hills, New South Wales, Australia, represented by Banki Haddock Fiora, Australia.

The Respondent is DIGITCOM Technology of Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <clipsal.co> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 29, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 30, 2011, GoDaddy.com, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 December 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2012.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on January 17, 2012. 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 an Australian Proprietary Company incorporated in 1931 and is a leading manufacturer of industrial and domestic electrical accessories including electrical switches, heating, lighting and safety apparatus. The Complainant markets these products worldwide under the CLIPSAL trademark. The Complainant is the owner of a wide variety of registered trademarks in many different jurisdictions including Australian registered trademark number 83171 for the word mark CLIPSAL registered on February 27, 1945 and United Arab Emirates registered trademark number 15192 for the word mark CLIPSAL registered on July 28, 1998.

The disputed domain name was registered on July 20, 2010 and currently resolves to “www.smarthomeuae.com/new3/searchresult.php?search=clipsal&x=0&y=0” which is a website operated by the Respondent hosting an online store purporting to sell home furnishings and electrical goods. At the website associated with the disputed domain name the Respondent offers CLIPSAL branded goods together with goods made by a variety of other manufacturers.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that the Respondent, despite apparently being a reseller of goods bearing the Complainant’s CLIPSAL trademark, is not using the disputed domain name in connection with a bona fide offering of goods and services and thus does not have a right or legitimate interest in the disputed domain name (citing Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903). The Complainant avers that it has never licensed or otherwise permitted the Respondent to use its CLIPSAL trademark or to apply for or use any domain name incorporating this. The Complainant states that as far as it is aware, the Respondent has neither carried on any business nor was commonly known by the name “Clipsal” before the disputed domain name was registered.

The Complainant notes that the Respondent appears to sell a number of the Complainant’s CLIPSAL branded products on the website to which the disputed domain name resolves, indicating that the Respondent is and was well aware that the trademark CLIPSAL has a significant reputation for electrical accessories within the electrical industry. The Complainant submits that this evidences the Respondent's awareness of CLIPSAL as a reputable brand in Australia and overseas.

The Complainant asserts that there can be little question that the Respondent was aware of the reputation of the Complainant in its CLIPSAL name and trademark as the Respondent is apparently in the same area of business as the Complainant and purports to offer the Complainant’s Clipsal products for sale. The Complainant states that the Respondent must have expected that any use of the disputed domain name would harm the Complainant. The Complainant further asserts that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

The Complainant submits that the Respondent offered to sell related domain names to the disputed domain name, namely <clipsal.me>, <clipsal.biz>, <clipsal.info>, and <clipsal.org> to the Complainant during correspondence between the Parties. The Complainant notes that three of these domain names, <clipsal.biz>, <clipsal.info> and <clipsal.org> became the subject of an earlier complaint under the Policy in terms of which the appointed panel ordered that the said domain names be transferred to the Complainant (Clipsal Australia Pty Ltd v. DIGITCOM Technology, WIPO Case No. D2010-1800). Finally, the Complainant asserts that the Respondent has engaged in the making of a pattern of registrations incorporating the trademarks of others, namely <nuvo.me> (NUVO), <dynalite.me> (DYNALITE), <crestron.co> and <crestron.me> (CRESTRON) all of which the Respondent uses in a similar manner to the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the registered trademark CLIPSAL. For the purposes of comparison between this trademark and the disputed domain name, the country code top level domain of the disputed domain name (“.co”) is disregarded on the grounds that this is required for technical reasons and is wholly generic. Accordingly, when the Complainant's trademark CLIPSAL is compared to the disputed domain name <clipsal.co> it is evident that the disputed domain name is identical to the Complainant's trademark. In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant's CLIPSAL trademark and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii). you (as an individual, business, or other organization) 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 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant asserts that it has never licensed or otherwise permitted the Respondent to use its CLIPSAL trademark or to apply for or use any domain name incorporating this. The Complainant also submits that as far as it is aware, the Respondent has neither carried on any business nor was commonly known by the name “Clipsal” before the disputed domain name was registered. In the Panel's opinion, these assertions are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The burden of production thus falls upon the Respondent to bring forward evidence of its rights or legitimate interests, if any, in the disputed domain name.

While the Respondent has not responded to the Complaint, it is clear both from its response to the complaint in Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra and from the evidence produced by the Complainant in the present case that the Respondent is or appears to be a reseller of the Complainant's goods. Accordingly, it falls to the Panel to consider whether, assuming the Respondent to be such a reseller, this might confer rights or legitimate interests upon the Respondent. This issue is examined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 2.3 which provides as follows:

“Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?

Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.

However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>).”

The Panel in the present case subscribes to both the consensus view and the additional comment that it is generally difficult for a respondent who has used a domain name identical to the complainant's trademark to establish rights or legitimate interests therein. In the Panel's view, this latter observation applies to the disputed domain name, given that it is identical to the Complainant's CLIPSAL trademark. While this would be sufficient for a finding that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel will consider the Oki Data elements as outlined above for the sake of completeness. In the present case, it is apparent that the Respondent is offering certain CLIPSAL branded goods for sale at the relevant website. The Respondent also offers the goods of third parties, some of whom appear to be in competition with the Complainant, at the website for the disputed domain name. The website does not disclose the Respondent's relationship with the Complainant. Furthermore, taking the disputed domain name together with the domain names involved in the case of Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra, it would be difficult for the Respondent to argue that it has not attempted to “corner the market” in domain names reflecting the Complainant's CLIPSAL trademark. Clearly, in light of the above analysis, the Respondent would be unable to meet the Oki Data criteria in the present case.

In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(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 the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, 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 the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

On this topic, the Complainant’s submissions focus principally on paragraph 4(b)(iv) of the Policy together with mention of the Respondent's offer to sell domain names containing the Complainant's trademarks to the Complainant. On the subject of the preliminary submission, the Panel has no hesitation in finding that by using the disputed domain name the Respondent has attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. In the Panel's opinion, such confusion would inevitably result from the absence of any disclaimer or clarifying statement as to the Parties' relationship on the Respondent's website and would be compounded by the fact that the Respondent offers a wholly undifferentiated mixture of the Complainant's and third party goods for sale therein.

It is equally clear to the Panel that the Respondent has prevented the Complainant from reflecting its trademark in a corresponding domain name (in this case in the “.co” country code top level domain) and that, taking into consideration the generic top level domain names noted in Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra, the Respondent has engaged in a pattern of such conduct. Furthermore, the Complainant has demonstrated that in correspondence with the Complainant, the Respondent proposed that the disputed domain name be sold to the Complainant (together with others incorporating the Complainant's trademarks described as “our full basket”) at a price to be fixed afterwards which the Respondent insisted should be “generous and Fair” [sic] and evidently was not to be based upon the Respondent's genuine out of pocket costs.

While the above circumstances might engage paragraphs 4(b)(i) or (ii) of the Policy respectively, the former requires sale of the domain name to be the Respondent's primary purpose in making the registration. The Panel is unable to determine the Respondent's actual primary motivation with any degree of certainty. However, in the Panel's view the Respondent either intended to add to its pattern of domain name registrations which blocked the Complainant from reflecting its trademarks in corresponding domain names, or to sell the disputed domain name to the Complainant at a greater price than the cost of registration, or indeed simply to increase the traffic to the Respondent's website by using the attractive force of the Complainant's trademark and taking advantage of the resulting consumer confusion. In any event, the Panel is satisfied that the Respondent was primarily motivated by at least one of these factors or possibly a combination thereof. Each factor is, in itself, an indicator that the disputed domain name was registered and used in bad faith.

In light of all of the above circumstances, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and accordingly, that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For 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, <clipsal.co> be transferred to the Complainant.

Andrew D.S. Lothian
Sole Panelist
Dated: January 30, 2012

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