WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cartridge World Australia Pty Ltd. v. Kerry Recharge Limited
Case No. DIE2011-0003
1. The Parties
The Complainant is Cartridge World Australia Pty Ltd. of Wayville, Australia, represented by DCS Lawyers, Australia.
The Registrant is Kerry Recharge Limited of Kerry, Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cartridgeworld.ie> is registered with IE Domain Registry Limited (“IE Domain Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 27, 2011, the Center transmitted by email to IE Domain Registry a request for registrar verification in connection with the disputed domain name. On June 28, 2011, IE Domain Registry transmitted by email to the Center its verification response confirming that the Registrant in the Complaint is listed as the registrant’s administrative contact and providing the contact details. In response to a notification by the Center regarding the registrant information, the Complainant submitted an amended Complaint on June 30, 2011. The Center verified that the Complaint and the amended 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 July 14, 2011. In accordance with the Rules, paragraph 5.1, the due date for Response was August 12, 2011. The Response was filed with the Center on August 10, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on August 16, 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
Since 1988, the Complainant and its predecessors in title have been using the term “Cartridge World” worldwide in relation to the supply of printer and photocopier consumables including printer cartridges, paper, toner, inks and fax rolls and related services.
The Complainant owns a large number of worldwide registered trade marks including the following: Community Trade Marks: No. 1915693 for CARTRIDGE WORLD and star device filed on October 12, 2000, in classes 35 and 37; and No. 3241882 for CARTRIDGE WORLD filed on June 25, 2003 in class 16.
According to IE Domain Registry, the disputed domain name was originally registered on January 27, 2003. It was registered to the Registrant on April 6, 2010.
As at February 3, 2011, the disputed domain name was being used for a website. The homepage was branded with a logo containing the words “recharge + cartridges”. The introductory text on the homepage stated: “Welcome to Cartridge World. Here we have everything you want in the world of [o]ffice supplies. Simply click below on the brand of your choice and browse through their products.” Users attempting to buy products from this site were redirected to another office products website located at “www.officeandink.ie”, also owned by the Registrant.
On February 23, 2011, the Complainant’s UK trade mark agent sent a cease and desist letter to the Registrant.
The Registrant allegedly telephoned the trade mark agent on March 2, 2011, and stated that the disputed domain name was no longer active but that the Complainant could purchase the domain name for GBP10,000. The Registrant allegedly stated that he was not prepared to put anything in writing.
On April 1, 2011, the trade mark agent wrote to the Registrant rejecting the Registrant’s offer to sell the disputed domain name for GBP10,000 and instead counter-offered GBP100 for the disputed domain name.
The Registrant apparently made two telephone calls to the trade mark agent on April 18, 2011. In the first telephone conversation, the Registrant apparently stated that the Complainant must go through “the UDRP” if it wanted to acquire the dispute domain name. In the second telephone conversation, a few minutes after the first conversation, it allegedly offered to “swap” the disputed domain name for the <rechargecartridges.ie> domain name which the Registrant alleged was controlled by the Complainant. In addition, in the latter telephone conversation, the Registrant allegedly stated that the offer to sell the disputed domain name to the Complainant for GBP10,000 was still “on the table” and that he was open to negotiation on the price, but “certainly not as low as GBP100”.
5. Parties’ Contentions
Identical or Misleadingly Similar
The Complainant has spent a substantial amount of money marketing and advertising its goods and services under the name “Cartridge World” around the world, and has created and developed a substantial reputation in that name. Since entering into the franchise market in 1992, the Complainant and/or its licensees are now operating over 1,650 stores in 61 countries around the world.
The Complainant has developed a significant presence on the Internet and operates many websites at domain names which contain the term “cartridgeworld” including <cartridgeworld.com>, <cartridgeworld.co.uk>, and <cartridgeworldireland.ie>.
The disputed domain name is confusingly and deceptively similar to the Complainant’s trade mark.
Rights or Legitimate Interests
The disputed domain name comprises the Complainant’s registered trade mark CARTRIDGE WORLD.
The Registrant is not making fair use or noncommercial use of the disputed domain name. The disputed domain name was used by the Registrant to provide identical goods and services to those provided by the Complainant.
The disputed domain name does not correspond to the name of the Registrant.
Registered or Used in Bad Faith
The Complainant understands that the Registrant, an ex-franchisee of the Complainant in Ireland acquired the disputed domain name in order to run its business at the website “www.officeandink.ie”, which is in direct competition to the Complainant’s business. This is supported by the fact that although the disputed domain name now leads consumers to a page that has been disabled, it previously diverted consumers to the site which stated “Welcome to Cartridge World” and which provided links to the “www.officeandink.ie” site where consumers could purchase printers, ink cartridges and other office supplies.
The Complainant does not control the <rechargecartridges.ie> domain name, which is any event being used as a product comparison site, not a site to promote or sell cartridges. These matters in relation to the <rechargecartridges.ie> domain name and website are known to the Registrant and are another indication of bad faith on the part of the Registrant.
Identical or Misleadingly Similar
The disputed domain name as used and displayed by the Registrant was in no way identical to the Complainant’s use of the same two words. The font, the colour and the symbols used by the Registrant are in no way identical to the Complainant’s use of the two words in question.
Rights or Legitimate Interests
The Registrant is a small business in Tralee, County Kerry in the Republic of Ireland. “Recharge Cartridges Kerry” is the Registrant’s registered business name. This was registered on May 18, 2010.
The Registrant is disappointed and hurt by the allegation of cybersquatting and by the Complainant’s approach. The Registrant rejects the Complaint entirely.
The first contact with the Complainant came by means of a heavy-handed bullying letter which threatened the future of the Registrant’s business.
The Registrant is a citizen of the Republic of Ireland and the disputed domain name was granted by IE Domain Registry using the systems of checks and balances that the Irish government has put in place.
Once a domain name is granted to a company, then it becomes an asset of the company and must always be used to produce a return for the company.
The Registrant’s business started as a cartridge refill business and over the years has diversified into all aspects of office supplies. The Registrant is still engaged in the cartridge refill business. On this basis the IE Domain Registry agreed with the Registrant that he had a legal right to the disputed domain name.
The words “cartridge” and “world” are not exclusively owned by any entity. They are words used in everyday language.
The disputed domain name should not be transferred as it would have an adverse effect on the Registrant’s struggling business. As the Registrant has been in the cartridge refill business for a number of years, it has every right to use the words “cartridge” and “world” in any way it see fit.
To the Registrant’s knowledge, the Complainant has no registered trade marks in the Republic of Ireland pending or otherwise and it cannot claim complete ownership of the words “cartridge” and “world”.
The Registrant owns several other generic domain names that it has purchased to promote its business both in relation to stationery supplies and cartridge refill.
Registered or Used in Bad Faith
All of the Registrant’s refill business comes from within County Kerry in the Republic of Ireland. To the Registrant’s knowledge there is no “cartridge world” business operating in the province of Munster, let alone in County Kerry. The Registrant is using the disputed domain name to promote its cartridge refill business in Kerry. It cannot be said that the Registrant is using the disputed domain name in bad faith if there is no “cartridge world” from which the Registrant could be said to be taking 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 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.
The Complainant has invoked a Community Trade Mark for the term CARTRIDGE WORLD, which has effect in the island of Ireland.
Accordingly, the Panel concludes that, disregarding the domain suffix “.ie”, the disputed domain name is identical to a protected identifier in which the Complainant has rights.
The Registrant claims that the disputed domain name as used and displayed by the Registrant is not identical to the Complainant’s use of the same term. The Registrant relies on particular on “the font, the colour and the symbols” used by the Registrant. However, when assessing the first condition in paragraph 1.1 of the Policy, the Panel is concerned only with a straight comparison between the trade mark and the disputed domain name and not with the content of the website at the disputed domain name, although the latter may come into play when considering the other conditions in paragraph 1.1 of the Policy.
This is the approach taken under the Uniform Dispute Resolution Policy (“UDRP”), which is very similar to the Policy. See, e.g., paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which states in part:
“The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g.. within a relevant market or language group) under subsequent UDRP elements (i.e. rights or legitimate interests and bad faith).
Here, the Complainant owns a registered trade mark for exactly the same term as is comprised by the disputed domain name and that suffices to constitute a protected identifier under the Policy.
B. Rights or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the disputed domain name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Registrant to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g. Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.
The factor in paragraph 3.1.1 of the Policy provides:
“Where the Registrant can demonstrate that, before being put on notice of the Complainant’s interest in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.
The disputed domain name has been used to channel users to the Registrant’s office supplies website at “www.officeandink.ie”. For the reasons explained below, such use cannot be said to have been “in good faith”.
In the Panel’s view, therefore, the Registrant has failed to establish that paragraph 3.1.1 of the Policy applies.
Paragraph 3.1.2 of the Policy does not apply as the disputed domain name does not correspond to the personal name or pseudonym of the Registrant.
Paragraph 3.1.3 of the Policy does not apply as the disputed domain name is not a geographical indication.
The Registrant argues that the fact that the disputed domain name has been awarded by the IE Domain Registry in accordance with the system of “checks and balances” imposed by the Irish government is of itself sufficient to generate rights and legitimate interests. The Registrant says that the IE Domain Registry agreed with the Registrant that it had a legal right to the disputed domain name on the basis that the Registrant’s business includes cartridge refill.
The Panel has not been made privy to the correspondence between IE Domain Registry and the Registrant. However, the fact that the IE Domain Registry accepted that the Registrant met the relevant conditions for registering the disputed domain name in the first place cannot of itself be said to generate rights or legitimate interests for the purposes of the Policy. Otherwise no .ie domain name could ever be subject to a successful administrative proceeding under the Policy, which would then be meaningless. Further, a review of the (admittedly non-exhaustive) factors in paragraph 3.1 of the Policy shows that they are distinct from the criteria which a registrant must satisfy in order to register a .ie domain name. For example, paragraph 3.1.1 of the Policy is concerned with whether or not a registrant has made good faith preparations to use the domain name.
The Registrant says that once a domain name is granted to a company, then it becomes an asset of the company and must always be used to produce a return for the company. The basis for this assertion is not entirely clear. However, registrants of .ie domain names, be they individuals or companies, are contractually bound to submit to the Policy which allows for domain names to be transferred to a third party which establishes the relevant criteria under the Policy.
The Registrant also argues that the words “cartridge” and “world” are generic and that they cannot be monopolized by any entity. This assertion appears to be founded in part on the incorrect assumption by the Registrant that the Complainant does not own a registered trade mark for those words in the Republic of Ireland. In any event, while the name does indeed consist of two dictionary words, the issue is whether the combination of those words is or has become generic. The Registrant has provided no evidence to such effect. See further below under “Bad Faith”.
The Panel concludes that the Registrant has no rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
The third condition in paragraph 1.1 of the Policy is that the disputed domain name has been registered or is being used in bad faith.
The Registrant has not explained the circumstances in which it registered the disputed domain name. .IE Domain Registry has stated that the disputed domain name was originally registered on January 27, 2003, but that it was only registered to the Registrant on April 6, 2010. The Registrant has not said whether it is connected with the previous registrants of the disputed domain name or whether in fact it acquired the disputed domain name from an unrelated third party in April, 2010.
The relationship between the parties is also unclear. The Complainant suggests that the Registrant is an ex-franchisee of the Complainant but does not provide any dates or other details, let alone any supporting evidence. And the Registrant makes no mention at all of the alleged former franchise arrangement.
Accordingly the Panel is not in a position to reach any conclusion as to whether or not the Registrant registered the disputed domain name in the context of a franchise relationship between the parties or indeed as to what other purpose the Registrant may have had in mind at the time of registration of the disputed domain name.
What does seem clear, however, is that, if there was a franchise relationship, it had terminated by February 2011, when the Registrant used the disputed domain name to redirect users to its office supplies website.
Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith. In the Panel’s view, this use of the disputed domain name for the supply of office products – not denied by the Registrant – amounts to evidence of use in bad faith for the purposes of paragraphs 2.1.3 and 2.1.4 of the Policy:
“2.1.3 where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant; or
2.1. 4 where the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a protected identifier in which the Complainant has rights;…”
Not only has the Registrant used the disputed domain name comprising the Complainant’s trade mark for a business competing directly with the Complainant, but the introductory text on the homepage of the Registrant’s website stated: “Welcome to Cartridge World…”. In the Panel’s view this was an attempt by the Registrant to confuse users into thinking that it was connected with the Complainant and/or otherwise to interfere with or disrupt the Complainant’s business.
As mentioned above, the Registrant asserts that it was entitled to use the disputed domain name in the way that it has done because the name consists of two generic terms but the Registrant has not provided any evidence that the combination of the two terms is itself in common use. Further, the Registrant has not claimed that it was unaware of the Complainant at any material time. Accordingly, there is no evidence before the Panel to suggest that the Registrant used the disputed domain name for its generic qualities rather than with reference to the Complainant.
The Registrant’s main riposte on the question of bad faith is to assert that all of its cartridge refill business is derived from customers located within County Kerry in the Republic of Ireland, that the Registrant is using the disputed domain name to promote its cartridge refill business in Kerry and that, to the Registrant’s knowledge, there is no other business with the name “Cartridge World” operating in Kerry.
But the Registrant has provided no evidence supporting the claim that its cartridge business is in fact confined to Kerry. And there is nothing in the disputed domain name itself to suggest that it is directed only to customers in Kerry; rather it denotes “Ireland” as a whole. Further, the Panel sees nothing on the printouts of the website at the disputed domain name or the linked “www.officeandink.ie” website which indicates that the Registrant was targeting only Kerry. On the contrary, there are a number of references on the latter website which imply that it served the whole country, e.g. “Office and Ink Ireland”, “Irish Owned”, “100% Irish”.
The Registrant also draws attention to the difference between “the font, the colour and the symbols” used by the Registrant compared to the Complainant’s use of its trade mark. The Registrant does not give details of the exact differences which it relies upon. However, even if the Registrant’s indicia were sufficient to enable a substantial portion of visitors to the website to distinguish between the parties, that would still not assist the Registrant. The position would be similar to those cases where registrants argue that a disclaimer on a website is sufficient to avert confusion, as to which paragraph 3.5 of WIPO Overview 2.0 observes (in connection with the UDRP):
“The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user ‘initial interest confusion’ - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. ”
Here, the Registrant used the disputed domain name to create “initial interest confusion” on the part of internet users seeking the Complainant and in order to profit from at least some of that traffic. See, e.g., the UDRP cases National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168.
Finally, the Registrant argues that transfer of the disputed domain will have an adverse effect on the Registrant’s struggling business. Even if this unsupported statement is in fact true, unfortunately it is not a factor which the Panel can take into account.
The Panel finds that the disputed domain name has been used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the disputed domain name, <cartridgeworld.ie> be transferred to the Complainant.
Dated: September 2, 2011