WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kenyon Prendeville Pty Ltd v. Ann Daniels / Private Registration/ Radar Results Pty Ltd

Case No. D2010-1220

1. The Parties

The Complainant is Kenyon Prendeville Pty Ltd of Melbourne, Victoria, Australia, represented by Mills Oakley Lawyers, Australia.

The Respondent is Ann Daniels / Private Registration / Radar Results Pty Ltd, respectively of Kincumber, , Sydney and Avoca Beach, New South Wales, Australia, represented by Priority Business Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <kenyonprendeville.com> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. On July 23, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, and on August 2 and 4, 5 and 10, 2010, the Center sent follow up emails to the Registrar seeking a response. On August 11, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Among other things, the Registrar noted that the disputed domain name “is registered with us, but is in redemption period, the client deleted the domain on the 26th of July”. In response to the question from the Center as to when the current registrant registered the disputed domain name, the Registrar answered “the domain was registered on 27-jan-2010”. (On its face, that response from the Registrar does not appear to the Panel to be an answer to the question asked. On the basis of other information provided by the Registrar and the Complainant, it appears that the domain name was “deleted” on July 26, 2010 and subsequently renewed.)

The Center sent an email communication to the Complainant on August 20, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 27, 2010. The Center verified that the Complaint together with the amended 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 August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010. The Respondent filed a request for an extension to file a Response. On September 20, the Response due date was extended to September 22, 2010. The Response was filed with the Center on September 22, 2010.

The Center appointed James A. Barker as the sole panelist in this matter on September 30, 2010. 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 disputed domain name was first registered on January 27, 2010.

The Complaint concerns three entities. One is the named registrant (the Respondent – Ann Daniels) of the disputed domain name, who was substituted in the amended Complaint as the Respondent following confirmation by the Registrar that this individual is the current registrant of the disputed domain name. A second is ”Radar Results Pty Ltd” (”Radar Results”), named in the amended Complaint as the “Former Respondent” (i.e. the former registrant of the disputed domain name). A third is “Private Registration”, which the Complainant states was the registrant of the disputed domain name for some period, between the registrations held by Radar Results and then later by Ann Daniels. The Complaint states that Private Registration operated as a domain privacy service for the Former Respondent. An affidavit attached to the Complaint refers to the Former Respondent’s use of a domain name privacy service.

The Complainant is the owner of the domain name <kenyonprendeville.com.au> which it registered in 2005.

5. Parties’ Contentions

A. Complainant

The Complainant claims unregistered trademark rights in its corporate name. The Complainant says that it uses that name in relation to its business of providing professional advice in relation to the sale and purchase of financial planning businesses. Referring to the WIPO Overview on WIPO Panel Views on Selected UDRP Questions, the Complainant states that its name has become a distinctive identifier associated with the Complainant and/or its services. The Complainant’s evidence to this effect comprises an affidavit of one of its directors. The affidavit states that the Complainant “has substantial goodwill and reputation” in its corporate name in its field of business, and that it has used its corporate name since 2003. The Complainant states that its corporate name is comprised of the conjoined surnames of its directors. The affidavit refers to presentations given by the directors of the Complainant at conferences, and references to it or its directors in media articles. The affidavit also refers to the use of the Complainant’s corporate name on stationery, as well as in marketing material and publications.

The affidavit states that the Complainant believes that the Former Respondent is the proper Respondent. The Former Respondent, Radar Results, is said by the Complainant to be a competitor. The Complainant says that Radar Results has used the disputed domain name to redirect Internet users to Radar Results’ website. The Complainant says that, in April, a director of the Respondent lodged a trademark application in her personal name, for a mark incorporating the name of the Complainant, as well as obtaining a New South Wales business name registration for ”kenyonprendeville.com”. Following some correspondence between the parties, Radar Results withdrew its trademark application in June 2010. For a period, the disputed domain name reverted to a blogging website. The Complainant states that, at some time before July 12, 2010, the disputed domain name ceased to revert to an active website. The Complaint states that the disputed domain name reverts to a landing website.

The Complainant states that the disputed domain name is identical or confusingly similar to its common law mark, which it says should be treated as similar to an invented word. The Complainant also says that the Former Respondent has no rights or legitimate interests in the disputed domain name which incorporates that mark. The Complainant refers to the Former Respondent’s registration of the disputed domain name and a cease and desist letter that was sent to the directors of the Former Respondent. The Complainant refers to various activities of the Former Respondent, and states that the Former Respondent has engaged in misleading and deceptive conduct and engaged in passing off in relation to the Complainant’s mark. Apart from formerly redirecting to the Former Respondent’s website, the Complainant says that the disputed domain name is not used in connection with any bona fide offering of goods or services under the name ”Kenyon Prendeville” or any other similar name. The Former Respondent has used the disputed domain name to misleadingly divert Internet users; obtaining a commercial gain or advantage; and/or to tarnish the Complainant’s mark.

The Complainant submits that the matters of fact relating to the lack of rights or legitimate interests should be assessed as at the date of filing of the original Complaint on July 23, 2010, when the Former Respondent was (in fact) the registrant of the disputed domain name. The Complainant’s rights would otherwise be seriously prejudiced.

The Complainant also refers to two affidavits which it says provide evidence of the Respondent’s lack of rights or legitimate interests. The first is an affidavit of the Complainant’s legal representative, with supporting evidence, affirming that on June 7 and 16, 2010, the disputed domain name was being redirected to a website of the Former Respondent. The second is the affidavit of the Complainant’s director, referred to above, relating to the Complainant’s business reputation. [Neither of those affidavits however refers explicitly to the named Respondent.]

The Complainant, finally, claims that the disputed domain name should be treated as being registered in bad faith by the Former Respondent. Among other things, the Complainant states that the Former Respondent is one of its three main competitors. The Complainant says that it can be inferred that the Former Respondent registered the disputed domain name to disrupt its business or to prevent the Complainant from reflecting its name in a corresponding domain name. The Complainant says that there is almost an irrefutable presumption that the Former Respondent knew of the Complainant.

B. Respondent

The Response was submitted on behalf of both the Respondent and the Former Respondent. The Response takes the format of a consecutive admission/non admission, or otherwise commentary in response to paragraphs of the amended Complaint.

The Former Respondent denies being the registrant of the disputed domain name. The Former Respondent says that its registration of the disputed domain name was made in the personal name of one of its directors, and therefore at no stage did the Former Respondent own the disputed domain name. On this basis, the Former Respondent says that it has been joined in these proceedings by error. The Former Respondent says that it has been in the business of providing consulting services to accountants and financial planners, and does not provide broking services like the Complainant.

The Respondent and Former Respondent do not admit that the Complainant has unregistered trademark rights, nor that the disputed domain name is identical or confusingly similar to that claimed mark.

In relation to a number of the Complainant’s allegations on the issue of rights or legitimate interests, the Response says that those activities (including the application for the registration of a mark incorporating the Complainant’s name) was undertaken in the name of the Former Respondent’s director, rather than in the name of the Former Respondent. In that respect, that director provides an affidavit denying that she was acting on behalf of the Former Respondent in undertaking those activities. The Respondent and Former Respondent deny any breach of the Australian Trade Practices Act or that it has engaged in passing off. The Response suggests that the redirection of the disputed domain name to the Former Respondent’s website in April was a result of Google’s AdWords using “Radar Results” as a meta tag. That tag was removed following a complaint from the Respondent to Google’s advertising legal support team. The Respondent says that the disputed domain name was not used in any illegitimate way by it or by its director, and that under no circumstances were it or its director seeking to create the impression of an associated with the Complainant.

The Former Respondent denies acting in bad faith. It says that it did not conduct business using the disputed domain name and nor was it seeking to create confusion with the Complainant’s name. The Response states that, when the Former Respondent’s director applied to register the disputed domain name, it was available for registration by any member of the public and was registered in good faith.

The affidavit by the Former Respondent’s director states that the disputed domain name was transferred to the current registrant (Ann Daniels) on April 1, 2010, not July 26, 2010 and that action has been taken so that the domain name was deleted on July 26, 2010. Since that time, no-one has been able to use any websites or emails using the disputed domain name. The Respondent says that the disputed domain name was reinstated in the name of Ann Daniels by the Complainant paying the reactivation fee and that, had the Complainant not done so, the disputed domain name would now be available for registration by the Complainant.

The Response also states that “The Former Respondent and the Respondent do not assert rights to the Disputed Domain Name in any event.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:

(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 was registered and is being used in bad faith.

These elements are discussed as follows, immediately following a consideration of the proper Respondent, and the effect of the Respondent’s statement that it does not assert rights in the disputed domain name.

A. Proper Respondent

Paragraph 1 of the Rules provides that the Respondent means “the holder of a domain-name registration against which a complaint is initiated.”

The original Complaint in this case was initiated by the Complainant filing its Complaint with the Center on July 23, 2010. That Complaint identified ”Private Registration Believed to be Radar Results Pty Ltd” as the Respondent. The Amended Complaint added ”Ann Daniels” as a Respondent together with Private Registration. The Complainant stated that it believed both of those entities to be, in fact, Radar Results Pty Ltd.

The Complainant certified (but did not provide direct evidence of) copying that Complaint to the Respondent. On July 26, 2010, as confirmed by the Registrar, the disputed domain was “deleted” and subsequently registered by “Ann Daniels”. Neither the Complaint nor the Response provide much information about that person, although the Response was purportedly submitted on behalf of that person as well as the former Respondent. Although stating that the disputed domain name was registered because of the Complainant paying the “reactivation fee”, the Respondent provides no explanation as to why the disputed domain name was ever registered in the name of Ann Daniels.

These circumstances give rise to a question as to the proper Respondent: is it the person against whom the original Complaint was filed, or the subsequent registrant? This question is more than a formality. This is because the substance of the Complaint proceeds almost entirely against the Former Respondent, Radar Results.

On balance, the Panel considers that the registrant-in-fact is Radar Results. Accordingly, the Complainant was properly filed against that entity within the meaning of paragraph 1 of the Rules and the Panel treats that entity as the proper Respondent in this case. The Panel takes this view for the following reasons:

- The Response was filed on behalf of both ”the Respondent” (Ann Daniels) and the “Former Respondent” (Private Registration / Radar Results). Accepting that “Private Registration” is a domain privacy service and not actively involved in these proceedings, the joint response suggests to the Panel that Ann Daniels and Radar Results have some relationship in relation to the ownership of the disputed domain name. (And, in relation to the privacy service, this Panel takes a similar view to the Panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, and treats the privacy service’s customer as the underlying registrant.)

- No explanation is provided in the Response as to the identity or role of “Ann Daniels”. As such, it is difficult for the Panel to conclude that this person registered the disputed domain name for some purpose unconnected with that of the Former Respondent.

- Less than 3 days after the initial filing of the Complaint, the disputed domain name was deleted. Whether or not the renewal of the disputed domain name was facilitated by the Complainant’s payment of the registration fee (as claimed by the Respondent), the coincidence of the deletion and re-registration of the domain name so shortly after the filing of the Complaint, suggests some intent by the Former Respondent to frustrate the proceedings against it. As noted in LPG SYSTEMS v. Jerry / Mr. Jeff Yan, WIPO Case No. D2010-0387 “the transfer of the disputed domain name after the submission of the Complaint by the Complainant to the Center…is found to be in violation of both paragraphs 8(a) and 8(b) of the Policy and to constitute cyberflight”. The consequence of that finding in that case was to treat the former respondent as the beneficial owner of the domain name then in dispute. The Panel in this case takes a similar approach.

- The Panel does not accept the Respondent’s denial of being the former registrant. The Respondent makes this argument on the basis that the disputed domain name was formerly registered in the personal name of ‘Michele Conroy’ – a director of Radar Results. That argument is incongruous in the face of the Complainant’s claims that the disputed domain name (when registered in the personal name of Michele Conroy) reverted to Radar Results’ own website, as well as the trademark and business name application lodged by Michele Conroy for a mark/name corresponding to the Complainant’s name. It is an obvious statement that a director is an agent of his or her company and owes fiduciary duties to the company. It is hardly credible that a director, acting consistently with her fiduciary duties, could take such actions consistently with those duties. Instead, the Respondent’s somewhat disingenuous argument suggests to the Panel that the Respondent (Radar Results) is willing to shield its own conduct in fact, behind various “names” which are not its own. The willingness of Radar Results to advance this argument would also lend some weight to a finding that Radar Results is similarly willing to shield its conduct behind the name of “Ann Daniels”. In any event, the Complainant has submitted evidence that as of April 13, 2010, the Respondent (Radar Results) was indeed listed as the registrant of the disputed domain name.

For all these reasons, taken together, the Panel considers that Radar Results is the Respondent-in-fact

B. Effect of the Respondent’s denial of rights

A second procedural issue arises from the Respondent’s statement that it does not assert rights in the disputed domain name. Does this negate the need for the Panel to consider the Complaint on its merits, and allow the Panel to make an order in favour of the Complainant?

The Panel does not consider that this apparent concession by the Respondent removes the need for the Panel to satisfy itself that each of the elements of paragraph 4(a) of the Policy are present. One reason is that paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” (emphasis added) Proceeding to a decision on the merits, even summarily, reduces the risk of an injustice, and thereby the risk of treating one party unequally (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights - as noted by the Panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, supra).

Also to avoid unfairness, the Panel considers that any such concessions by a party should be unequivocal before a Panel acts on them. In this Panel’s experience, it is often the case that a party expresses themselves unclearly or with an unintended meaning. In this case the Respondent’s ”concession” was not clear. This was because the Respondent, on one hand, stated that it did not assert rights in the disputed domain name but, on the other, disputed many of the allegations made against it under paragraph 4(a) of the Policy.

Accordingly, the Panel has proceeded to consider each of the three elements of paragraph 4(a) of the Policy as follows.

C. Identical or Confusingly Similar

The Complainant did not present evidence or argue that it has registered trademark rights in KENYONPRENDEVILLE. Rather, the Complainant argues that it has common law rights in its corporate name.

What is required to demonstrate rights in an unregistered mark is outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The consensus of prior panels is relevantly set out under the heading: ”1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?: Consensus view: The 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 Complainant did not provide substantial argument or evidence in this respect. The primary evidence provided by the Complainant is affidavit evidence of its directors. However, at least in this respect, the Complainant provides evidence of trading under the Kenyonprendeville name since 2003. The Complainant’s corporate name combines the names of its directors and, in that respect, appears to be arbitrary and distinctive in a trademark sense. While the Respondent flatly denies the Complainant having common law rights, it provides no explanation or evidence to support a contrary argument.

Accordingly, on the balance of probabilities, the Panel finds that the Complainant has sufficiently established that it has common law rights in KENYONPRENDEVILLE.

The next question is whether the disputed domain name is identical or confusingly similar to that mark.

The Complainant’s mark is entirely incorporated in the disputed domain name. As noted above, the Complainant’s mark is sufficiently distinctive for trademark purposes. It is well-established under the Policy that the entire incorporation of a distinctive mark in a domain name, including a domain that that adds a descriptive word, may be sufficient for a finding of confusing similarity. See e.g. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. As such, there is a likelihood that at least some Internet consumers might be confused as to whether the disputed domain name has an association with the Complainant.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Having accepted that Radar Results is the registrant-in-fact of the disputed domain name, the Panel finds that the Complainant has shown that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has established a prima facie case against the Respondent in this respect. There is no apparent connection between the Respondent and the terms which comprise the disputed domain name. The Respondent itself states that it has not ever asserted or claimed any rights or legitimate interests in the disputed domain name.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

On balance, the Panel accepts the Complainant’s evidence that the disputed domain name for a period reverted to the Respondent’s own website and that the Respondent offers generally competing services in the financial planning industry.

As both the Complainant and the Respondent operate in a similar market, in the same jurisdiction, and having regard to the apparently distinctive nature of the Complainant’s mark, it is the Panel’s view that the Respondent cannot have been unaware of the Complainant’s mark when the disputed domain name was first registered in January 2010. There appears no sensible objective relationship between the terms incorporated in the disputed domain name and the Respondent. The Respondent itself says that it has never traded under the domain name <kenyonprendeville.com>. The Respondent otherwise provides no explanation as to why it registered the disputed domain name.

In these circumstances, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

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 domain name, <kenyonprendeville.com>, be transferred to the Complainant.

James A. Barker
Sole Panelist
Dated: October 25, 2010