WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Internet Interaction Limited, trading as Grabone v. Robert Hayden
Case No. DIE2010-0005
1. The Parties
The Complainant is Internet Interaction Limited, trading as Grabone of Dublin, Ireland represented by Fanning & Kelly Solicitors, Ireland.
The Registrant is Robert Hayden, of Dublin, Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <grabone.ie> is registered with IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On December 21, 2010, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”)
In accordance with the Rules, paragraphs 2.1 and 4.1 the Center formally notified the Registrant of the Complaint, and the proceedings commenced on December 23, 2010. In accordance with the Rules, paragraph 5.1, the due date for Response was January 28, 2011. The Response was filed with the Center on January 27, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on February 3, 2011. 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 company incorporated in the Republic of Ireland. It is part of a group of companies which, inter alia, operates a business in Australia and New Zealand whereby website users combine to obtain discounts on third party goods and services.
The Registrant registered the disputed domain name on September 24, 2010.
There has been no active website at the disputed domain name.
5. Parties’ Contentions
Identical or Misleadingly Similar
The Complainant trades under the registered business name of GRABONE. It is an Internet business, operating from Dublin, Ireland, whose sole purpose is to host a website which advertises offers from third parties on the Internet.
On September 16, 2010, the Complainant applied to register the disputed domain name. On that date, a representative of the IEDR informed the Complainant that it had already received an application by the Registrant to register that domain name on September 11, 2010. The disputed domain name was registered to the Registrant on September 24, 2010.
The Complainant is part of Independent News and Media plc, which owns a 39.1% stake in APN News & Media Limited, a large newspaper publisher in Australia and New Zealand which is listed on the Australian Securities Exchange. APN News and Media Limited entered a joint venture with Shane Bradley within those jurisdictions under the company IdeaHQ Limited in 2009. They operate websites at “www.grabone.com”, “www.grabone.co.nz” and “www.grabone.com.au”.
An equivalent service is to launch in Ireland. The Complainant wishes to use the disputed domain name in line with the existing domain names in other countries. The Complainant believes that it has the right to trade on the basis of its own goodwill and reputation that it has already established under the “grabone” domain names. The Complainant has registered “grabone” as a business name and began trading under this name on September 1, 2010.
The Complainant has a legitimate business established under its “grabone” domain names.
Rights or Legitimate Interests
There is no evidence of the Registrant’s bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of goods or services, or an operation of a business (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring). The domain name is dormant.
The Complainant is concerned that the Registrant does not have a legitimate business or purpose in acquiring the disputed domain name; it is registered as a “spoiler” and is acting as a so-called cybersquatter. The Registrant in this case cannot comply with any of the circumstances envisaged concerning any right or legitimate interest to this domain name.
The disputed domain name does not correspond to the personal name or pseudonym of the Registrant.
The disputed domain name is identical or misleadingly similar to a geographical indication (<grabone.co.nz> and <grabone.com.au>) which has been used, in good faith, by the Complainant and its associated companies in other jurisdictions and before such geographical indication was protected in the island of Ireland.
Registered or Used in Bad Faith
The disputed domain name has been registered and is being used in bad faith by the Registrant.
The disputed domain name was registered or is used primarily in order to prevent the Complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name.
The disputed domain name was registered primarily for the purpose of interfering with or disrupting the business or activities of the Complainant and associated companies. The websites “www.grabone.com”, “www.grabone.co.nz” and “www.grabone.com.au” are very successful in Australia and New Zealand. There is goodwill and reputation now associated with the GRABONE mark. The Complainant believes that the Registrant was aware of existence of the ”grabone” business.
The disputed domain name is likely to dilute the reputation of the service mark in which the Complainant and associated companies have rights.
The Registrant is using and intends to use the disputed domain name as a means to frustrate the commercial hopes of the Complainant. It should be noted that, as of the date of filing this Complaint, the website to which the disputed domain name resolves does not contain any information, is a vacant site and therefore does not make fair use of the domain name. The Complainant wishes to rely on the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case, as here, there had been no use of the disputed domain name, nor any attempts to offer or sell the domain name. It was held that the test for “acting in bad faith” can be satisfied in circumstances of inactive or passive holding of the domain name. Therefore inaction on the part of the Registrant is not a bar to the Complainant obtaining ownership of the disputed domain name.
Identical or Misleadingly Similar
The effective date of the Complainants’ business name registration at the Irish Companies Registration Office (“CRO”) was October 20, 2010. This registration is the only evidence of an Irish business registration supplied by the Complainant. It occurred 36 days following the Registrant’s application for the disputed domain name on September 14, 2010.
The September 14, 2010 date coincides with the Registrant’s establishment of a Twitter page at “www.twitter.com/grabone_ie”.
The Registrant applied to the CRO for registration of business name “Grabone Ireland”. The “effective date” of the application is September 22, 2010.
The Registrant has applied to the Irish Patents Office for registration of a trade mark for the word “GrabOne” plus logo.
Rights or Legitimate Interests
The Registrant developed a business plan on July 23, 2010; the domain name <iedirectory.ie> is referred to as “website 1” and the disputed domain name is referred to as “website 2”.
Following careful consideration, the Registrant elected to use the disputed domain name based on his business model which focused on customers being able to search categories of business listings from the website and “grabbing” free coupons to receive free or discounted products and services.
Thereafter the Registrant registered the domain names and appointed a web developer through “www.elance.com”. The Registrant set up an “under construction” page at the disputed domain name to notify customers/clients of the pending launch.
The website design was developed to coincide with the Registrant’s partner website “www.iedirectory.ie”. The Registrant has put the remaining web development on hold until this dispute is resolved to minimize the possibility of loss on his investment. This disruption has delayed the original timeframe of February 2011 for the official launch of the website at the disputed domain name.
The registrant has established a Paypal payment system to take payments and a Google AdSense account to promote the site.
The Registrant has also designed “GrabOne” business cards to provide to customers/clients.
The Registrant has demonstrated a bona fide use of the disputed domain name with reference to several examples outlined above.
Registered or Used in Bad Faith
The Registrant denies that it is a “cybersquatter” or has registered the disputed domain name primarily for the purpose of interfering with or disrupting the businesses or activities of the Complainant. There is no evidence that the Registrant has had any communication with the Complainant or has directly attempted to disrupt the businesses or activities of the Complainant.
The Complainant claims that a joint venture was established sometime in 2009 with the intention to launch a service in Ireland around the “grabone” name. The Complainant has provided no evidence of an attempt to register such name or business entity until October 2010, which was after the Registrant had filed registrations, developed a business plan, arranged capital and begun website development for the disputed domain name.
The Registrant denies prior knowledge of the Complainant’s websites “with international domain extensions”. The Complainant has provided no actual evidence to support such claims.
The domains <grabone.co.nz> and <grabone.com.au> are described by Wikipedia as deal-a-day websites or “groupon clones”. This business model differs substantially to the business model developed and in use by the Registrant for the website at the disputed domain name.
The Registrant has not copied any aspect of the Complainant’s website design or content or its business model.
The Registrant is an entrepreneur with a unique business plan using his own capital to start up a bona fide business.
6. Discussion and Findings
A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights.
Under paragraph 1.3 of the Policy, “Protected Identifiers” are defined as:
“1.3.1 trade and service marks protected in the island of Ireland. 1.3.2 personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland. 1.3.3 geographical indications that can prima facie be protected in the island of Ireland. Geographical indications are, for the purposes of this Policy, indications which identify a good as originating in a territory or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. A Complainant is deemed to have rights in a geographical indication for the purposes of this Policy, if it has standing to bring an action based on the alleged infringement of the geographical indication before the courts of Ireland.”
The Policy differs from dispute resolution policies for abusive domain name registration in some other countries (such as Nominet’s Dispute Resolution Service for .uk domain names) which do not limit the trade mark or other rights to those enforceable in the countries concerned. Here, each of the components in paragraph 1.3 expressly requires a complainant to establish rights protected in the island of Ireland.
Neither paragraphs 1.3.2 or 1.3.3 apply here (although see further below as to paragraph 1.3.3).
As to paragraph 1.3.1, the Complainant has not invoked any registered trade or service marks protected in the island of Ireland. The issue, therefore, is whether the Complainant has acquired unregistered trade mark rights which are protected in the island of Ireland for the purposes of paragraph 1.3.1.
According to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view is that in order to establish an unregistered trade mark for the purposes of the UDRP a complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition...”. The panel in Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002 (where this Panelist was the presiding panelist) considered that this approach applied equally to the Policy. See also Daft Media Limited v. Daft Motors Limited, WIPO Case No. DIE2009-0005.
The Complainant says that it is part of the Independent News and Media plc group and that, in 2009, another company in the group entered into a joint venture in Australia and New Zealand with a company called IdeaHQ Limited to operate websites at “www.grabone.com”, “www.grabone.co.nz” and “www.grabone.com.au”. It is apparent from website printouts supplied by the Complainant that that particular venture involved combining the purchasing power of users of the websites to obtain discounts on various goods and services. The printouts also bear out the Complainant’s statement that that business operates in Australia and New Zealand. Certainly, there is no suggestion anywhere of any possible connection with Ireland. Accordingly, these websites cannot assist the Complainant in establishing unregistered trade mark rights “in the island of Ireland” as required by paragraph 1.3.1 and it is not necessary to decide whether the Complainant should be allowed to rely on such activities by other companies with the Complainant’s group.
The Complainant does in fact invoke use by it and its associated companies of “geographical indications” <grabone.co.nz> and <grabone.com.au> which it says occurred “before such geographical indication was protected in the island of Ireland”. If by this, the Complainant simply means that it can rely on the use of the <.co.nz> and <.com.au> websites to establish unregistered rights under the Policy, then the Panel disagrees because, as stated above, no connection with Ireland has been established. If the Complainant is relying on paragraph 1.3.3 of the Policy then, in the Panel’s view, the assertion is entirely misconceived because the domain names <grabone.co.nz> and <grabone.com.au> are not geographical indications, which are defined in paragraph 1.3.3 as goods originating in a region where a given quality, reputation or other characteristic is essentially attributable to the geographic origin. Still less are they geographical indications protected in the island of Ireland, as required by paragraph 1.3.3.
As to activities in Ireland, the Complainant states that it is an Internet business, operating from Dublin under the name “grabone”, whose sole purpose is to host a website which advertises offers from third parties on the Internet. The Complainant says that it registered “grabone” as a business name and began trading under this name on September 1, 2010.
However, the registration of a business name of itself does not generate unregistered trade mark rights. What matters is the actual use of the name.
The Complainant states that its service “is to launch in Ireland” and so it appears that the Complainant has not yet offered its service to the public. Certainly, there is no evidence from the Complainant as to the matters mentioned in paragraph 1.7 of the WIPO Overview such as the amount of sales, advertising activities or media recognition. It is therefore difficult to see how the name “grabone” could be considered as a distinctive identifier associated with the Complainant which would give rise to unregistered trade mark rights protected in the island of Ireland.
It is possible (but not necessarily the case) that the Panel might have been prepared to find for the Complainant on paragraph 1.3.1 if there were at least evidence of some advance publicity relating to the Complainant’s proposed activities in Ireland, particularly if the Registrant’s application to register the disputed domain name (on around September 11, 2011) followed soon after. But there is no need to decide the point because the Complainant has provided no evidence at all of this nature. There is merely a statement that the Complainant registered its business name and began trading on September 1, 2010. (In fact the Registrant has produced a CRO printout showing that the Complainant’s business name was registered only on October 20, 2010.)
Accordingly, there is no basis on which the Panel can conclude that the Complainant has acquired unregistered trade mark rights protected in the island of Ireland.
The Complainant has failed to establish the existence of a “Protected Identifier” under paragraph 1.1 of the Policy.
In light of the Panel’s finding above, it is unnecessary to address the second and third factors of the Policy. The Panel stresses that this Decision is not intended to prejudge any other proceeding, and it does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court.
For all the foregoing reasons, the Complaint is denied.
Dated: February 23, 2011