WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies

Case No. DAU2010-0014

1. The Parties

The Complainant is Bernard Janes of Karrinyup, Australia represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is L.J. Bubenicek & A. J. Main, A&L Technologies of Chippendale, Australia.

2. The Domain Name and Registrar

The disputed domain name <goballistic.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2010. On July 7, 2010, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On July 12, and July 19, 2010, NetRegistryPty Ltd. transmitted by email to the Center its verification responses 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 .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 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. The Response was filed with the Center on August 9, 2010. (As explained by the Respondent, August 8, 2010 was a Sunday in Australia, and so the Response was filed on the following day. For that reason, and because the delay was immaterial, the Panel has accordingly not treated that filing as a “late” response.)

The Center appointed James Barker as the sole panelist in this matter on August 18, 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 following facts are not directly contested between the parties.

The Complainant is described as a co-director of “Go Ballistic Pty Ltd” (“Go Ballistic Aus”) and “Go Ballistic Pty Limited” (“Go Ballistic UK”). (The Complainant provides no direct evidence of his link to those companies however.)

The Complainant is the owner of marks registered in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), the European Community, and in the United States of America (on the principal register of the USPTO) for GO BALLISTIC. The Complainant is also an applicant for a pending registration in Australia. The earliest filing date of those marks dates from 1998, in the United Kingdom.

Go Ballistic UK was founded in 1998 and represents around 120 paintball venues in the United Kingdom and Ireland. Go Ballistic UK carries on business primarily under the mark GO BALLISTIC. The Complainant says that it exclusively licenses the GO BALLISTIC trademark to Go Ballistic UK and Go Ballistic Aus. (The Complaint provides no direct evidence of such a licence). Go Ballistic UK operates websites at e.g. “www.goballistic.co.uk”. From the WhoIs evidence attached to the Complaint, it appears that the Complainant has registered the majority of those domain names in 2005. Like the GO BALLISTIC trademarks, those domain names are registered in the name of the Complainant. The Complainant says that, since 2005, it has made plans to expand globally. The Complainant says that, because it was unable to register the disputed domain name in the “.com.au” ccTLD, it instead registered <goballisticpaintball.com.au> and commenced carrying on a business via that website in February 2010.

One of the Complainant’s competitors in the United Kingdom is “Delta Force UK”. The Complainant says that the first named Respondent is known to it as a “senior officer of Delta Force UK who was charged with the responsibility of expanding the Delta Force UK business into Australia”, and refers as evidence to an email it received from a former employee of Delta Force UK.

The disputed domain name was registered in November 2007. As evidenced in the Complainant (from screenshots dated in April) that website. It resolves to an active website with the prominent title “Go Ballistic” and which advertises a “network of paintball centres” around Australia.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name wholly incorporates its GO BALLISTIC mark and, on that basis, is identical or at least confusingly similar to its mark.

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no association with the Complainant. The Respondent was and is aware of the Complainant’s GO BALLISTIC trademark, as well as Go Ballistic UK’s plans to expand into the Australian market. The disputed domain name is similar to or otherwise connected with the Respondent’s name. The Complainant is aware of a trademark application for GO BALLISTIC PAINTBALL in Australia and intends to oppose that application. The application does not given the Respondent a right or legitimate interest in the disputed domain name.

The Complainant says that the disputed domain name was registered, and has subsequently been used, in bad faith. The Respondent was aware of the Complainant’s mark at the time it registered the disputed domain name. The Complainant argues that the Respondent registered the disputed domain name in the circumstances described in paragraph 4(b)(iv) of the Policy. The Respondent’s have also registered the domain name <paintballguide.com.au> which differs from the website <paintballguide.co.uk>, operated by Go Ballistic UK, only by the ccTLD.

B. Respondent

The Respondent denies the claims against it. In relation to the Complainant’s trademark rights, the Respondent says that panel decisions referred to by the Complainant require the Complainant to show that its mark has acquired a significant reputation in either a global context or in the jurisdiction to which the disputed domain name relates. The Respondents says that the Complainant has failed to show this.

The Respondent claims that it has rights or legitimate interests in the disputed domain name. The Respondent registered the disputed domain name over 2 years before the Complainant applied to register its trademark in Australia. The Respondent established a marketing campaign in connection with the disputed domain name and launched its related website in April 2010. The Respondent has established relationships with 22 paintball service locations around Australia. During the 2 years in which the Respondent has been establishing its business, it has always represented itself as “Go Ballistic” and is commonly known in the Australian paintball industry as such.

In response to claims made in the Complainant, the Respondent says that it needs no license to use the GO BALLISTIC mark in Australia. The Respondent acknowledges that the Delta Force UK business, in which it has an interest, is a competitor of the Complainant in the United Kingdom and that the Complainant owns various UK trademarks for GO BALLISTIC. However, the Respondent says that at no stage was it aware that the Complainant had plans to expand into the Australian market. The Respondent says that the use of the disputed domain name and the GO BALLISTIC trademark was a marketing decision by it, given the connotation of “ballistic” with firearms which have a natural connection with paintball and with the colloquial term “go ballistic” meaning “to go hard” or “over the top”, etc, all of which have a clear connection with games such as paintball.

In relation to the Complainant’s claims of bad faith, the Respondent says that it was not aware of the Complainant or the Complainant’s intention to expand its business into Australia until April 2010. To this effect, the Respondent provides e.g. an affidavit of an employee stating that he first became aware of “the presence of [the Complainant’s company] in Australia on or about the 2^nd April 2010” and promptly informed his current employer, the Respondent. The employee says that he is confident that neither himself nor the Respondent had any knowledge of the planned expansion of the Complainant’s company into Australia.

The Respondent otherwise makes a number of detailed comments on the factual accuracy of elements of the Complaint, and what it says are merely circumstantial allegations against it.

6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a name, 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 in bad faith or was subsequently used in bad faith.

These issues are discussed below. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.

A. Identical or Confusingly Similar

The first thing which the Complainant must show, to establish its case under paragraph 4(a)(i) of the Policy, is that it has rights in a name, trademark or service mark. To this end, the Complainant has provided evidence of its registered trademark rights in various jurisdictions, including the United Kingdom, the United States of America, and the European Community. It is plain that the Complainant’s evidence of its registered rights demonstrate that it “has rights” for the purpose of paragraph 4(a)(i) of the Policy.

The Respondent’s contends that the Policy requires the Complainant to demonstrate that its mark has a significant reputation. That claim is misplaced. The Policy contains no such requirement. Neither do the majority of panel decisions support such a requirement. The Respondent refers for support to cases cited by the Complainant: Infospace.com Inc. v. Infospace Technology Co. Ltd., WIPO Case No. D2000-0074; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938. However, in both of those cases, the then complainants had registered marks which were, as such, sufficient for findings in the then complainants’ favour on the first element of the Policy.

Under paragraph 4(a)(i) of the Policy, the Complainant must also show that the disputed domain name is identical or confusingly similar to the mark in which it has rights. It is well-established that the domain name extension (“.com.au”) is not relevant for the purpose of this comparison. In this case, the disputed domain name is therefore relevantly identical to the Complainant’s GO BALLISTIC mark.

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

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must also establish that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has made out a prima facie case against the Respondent in this respect. The Respondent seeks to rebut that case, referring to its registration of the disputed domain name around two years before the Complainant applied to register a corresponding trademark in Australia, and referring to its use of the disputed domain name in connection with its paintball business.

Paragraph 4(c) of the Policy sets out three circumstances any one of which, if established, may demonstrate a respondent’s rights or legitimate interests. For the reasons that follow, the Panel does not consider that any of those circumstances are present in this case, and does not consider that there is evidence in the case file that would demonstrate some other form of right or legitimate interest in the Respondent’s favour.

One circumstance is where the Respondent is making a legitimate non-commercial or fair use of a disputed domain name (paragraph 4(c)(iii) of the Policy). There is no such evidence in this case. The Respondent’s website makes a commercial offering of services.

Another circumstance is where the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if it acquired no trademark or service mark rights (paragraph 4(c)(ii)). The Respondent suggests that, in the two years of it developing its business in Australia, it has always represented itself as “Go Ballistic” and that its business is commonly known in Australia as being associated with the disputed domain name. Here, the Respondent’s website may suggest that the Respondent is at least known by the disputed domain name. The Respondent does not however provide substantial evidence that it has been “commonly known” by the disputed domain name. The evidence provided by the Respondent is no more than a copy of its own homepage, which the Respondent says has been active since April 2010. The Respondent also does not, e.g., provide evidence of other advertising, media recognition, or the extent of its sales under that name that might show that it is “commonly known” by the disputed domain name. Further, as this panel has noted in previous cases, the registration and use of a disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent is commonly known by the domain name. Yakka Pty Ltd v. Mr. Paul Steinberg, WIPO Case No. D2004-0502. Were it otherwise, a respondent could rely on infringement to establish a right or legitimate interest – an outcome that is clearly contrary to the purpose of the Policy. (For somewhat similar statements, see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847)

For similar reasons, even if the Panel is wrong on this finding and if the Respondent is commonly known by the disputed domain name, the Panel does not consider that the Respondent can establish rights or legitimate interests. This is because of the Panel’s finding (discussed further below) that the registration was not bona fide. In other words, the Panel does not consider that a respondent could succeed under paragraph 4(a)(ii) of the Policy regardless of the circumstances in which it might have become commonly known by a disputed domain name. Paragraph 4(a)(ii) of the Policy cannot sensibly be read in isolation of the “rights or legitimate interests” to which it relates. The common meaning of “rights or legitimate interests” does not, in the Panel’s view, admit a circumstance where a respondent becomes commonly known by a disputed domain name that it has registered with an intent to appropriate another’s trademark. The Panel has found that the evidence suggests that this was the Respondent’s intent.

The third circumstance which might demonstrate rights or legitimate interests, is where the Respondent is making a bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of services (paragraph 4(c)(i) of the Policy). On balance, the Panel does not consider that the Respondent’s use is relevantly bona fide. In this respect, whether the Respondent is making a bona fide use of the disputed domain name may depend on a consideration of good faith. See e.g. Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058; citing World Wrestling Federation Entertainment, Inc. v. Rift, WIPO Case No. D2000-1499; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296; Jet Marques v. Vertical Axis, Inc., WIPO Case No. D2006-0250. A lack of good faith may be inferred where there is evidence that the Respondent registered the disputed domain name to exploit the value of a mark which it incorporates. See, e.g., Chase Manhattan Corp. v. John Whitely, WIPO Case No. D2000-0346. This is the finding the Panel has made below in relation to the issue of bad faith.

C. Registered or Subsequently Used in Bad Faith

The third matter which the Complainant must prove is that the disputed domain name was registered or subsequently used in bad faith. As stated by the Panel in Mandarin Oriental Services B.V. v Control Alt Delete, WIPO Case No. D2000-1671: “The essential question for the Panel is whether or not the Respondent registered the Domain Name with the Complainant specifically in mind.” The Complainant argues that the Respondent registered the disputed domain name in bad faith because it was aware of the Complainant’s mark and the Complainant’s intention to expand its business into Australia.

The Respondent denies that he was aware of the Complainant or the Complainant’s intention to expand its business into Australia, until April 2010, and refers to a declaration of a self-described employee of Mr Bubenicek (a chief officer of the Respondent). That declaration relevantly states that “I first became aware of the presence of Mr Janes’ Go Ballistic PTY LTD company in Australia on or about the 2nd April 2010” and “I am confident to say that neither myself, Mr Bubenicek or Mr Llewellyn…had any knowledge of the existence or planned expansion of Mr Janes’ company into Australia.” Evidence attached to the Complaint indicates that Mr Llewellyn is, together with the Respondent, a director of the company Delta Force Properties Pty Ltd. The business of that company is not described in the Complaint or Response, however that name at least suggests that it is somehow related to the paintball enterprise conducted by the Respondent. The Response also attaches a ‘to whom it may concern’ statement from Mr Llewellyn (although not in the form of a statutory declaration) which relevantly states that “I had no knowledge that [the Complainant] had any plans to expand into Australia”.

It is notable that the declarations attached to the Response deny knowledge particularly of the Complainant’s plans to expand into Australia – they do not deny that the Respondent was aware of the Complainant when the disputed domain name was registered. The Respondent concedes that Delta Force UK (an entity in which the Respondent says it has an interest) and the Complainant are in competition in the UK. At least to the extent that they compete in the United Kingdom, both the Respondent and Complainant operate what appears to the Panel to be a particular and defined market, despite the Respondent’s claims to the contrary. Both the Respondent and Complainant operate a similar business model: which is to advertise on the Internet various paintball services in a variety of locations. For example, the Respondent says that in Australia it has established relationships with 22 paintball service locations. As such, even if the Respondent is correct to say that the market in which it operates is “highly fragmented”, both the Respondent and the Complainant operate a business designed to make the market less fragmented through the combined advertising of differently located paintball services. It is also relevant that the Complainant operates its business at domain names that are relevantly identical to the disputed domain name. What this evidence suggests to the Panel is that the Respondent was clearly aware of the Complainant when it registered the disputed domain name.

The Respondent’s denial of bad faith instead rests substantially on its claim to have been unaware of the Complainant’s plans to expand its business into Australia and the Complainant’s lack of business reputation in Australia. Even if that contention is true, it would not however prevent a finding of bad faith under paragraph 4(a)(iii) of the Policy. Such a finding does not require the Complainant to establish a general reputation in a particular jurisdiction (although evidence to that effect may, in certain circumstances, be relevant to the issue of bad faith). Under paragraph 4(a)(iii) of the Policy, and as noted above, what matters is the state of mind of the Respondent.

In this respect, paragraph 4(b) of the Policy sets out four illustrative circumstances of bad faith. The Panel has considered each in turn, in reverse order of those paragraphs which might to apply in this case, in the Panel’s view.

Paragraph 4(b)(i) of the Policy provides (in summary) that there is evidence of bad faith in circumstances where the Respondent registered the disputed domain name to sell it to the Complainant for valuable consideration in excess of its out-of-pocket costs. There is no evidence in this case that the Respondent sought to sell the disputed domain name to the Complainant. The evidence instead indicates that the Respondent has used the disputed domain name since April 2010 in connection with its own business.

Paragraph 4(b)(iv) of the Policy provides that there is bad faith where the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark. The Complainant argues that this is what the Respondent has done. The disputed domain name, being relevantly identical to the Complainant’s mark, is confusingly similar. There is no doubt that the Respondent operates a commercial business. However, the Panel does not consider that the evidence strongly supports a finding under paragraph 4(b)(iv). Principally, this is because there is little evidence that the Complainant has a commercial reputation in Australia which the Respondent might have tried to unfairly exploit to advantage its own business in Australia. The Complainant’s evidence indicates the reputation of its mark in the United Kingdom. Only more recently has the Complainant registered a company in Australia (December 2009), and registered the domain name <goballisticpaintball.com.au> in February 2010. There is no doubt the potential for confusion in those Internet users searching for the Complainant. Nevertheless, it is difficult to see how the Respondent, operating in Australia, might have intended to profit from any such confusion when the disputed domain name was registered, as a user searching for the Complainant as “Go Ballistic” would not have been a person searching for services in Australia. In 2007 the Complainant did not operate in that jurisdiction.

Paragraphs 4(b)(ii) and (iii) of the Policy provide respectively that there is bad faith in circumstances where the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name¹; or that the registration was done primarily to disrupt the business or activities of another person. There is an obvious potential for a Respondent’s conduct to simultaneously fall within both of these paragraphs: a domain name registration done to disrupt the business activities of a complainant could also be a registration which prevents that complainant from reflecting its mark in a domain name.

The Panel finds that the Respondent’s registration of the disputed domain name, being relevantly identical to the Complainant’s mark, is self-evidently a registration which has both prevented the Complainant from reflecting its mark in a corresponding domain name (in the “.com.au” ccTLD) and thereby disrupted the Complainant’s business. But there is little evidence that the disruption of the Complainant’s business was the Respondent’s “primary” motivation, as required for a finding under paragraph 4(b)(iii) of the Policy.

The evidence is, however, suggestive that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name. As noted above, the Panel finds that the Respondent was aware of the Complainant’s mark when he registered the disputed domain name. The disputed domain name does not correspond to the name of a registered business, company or other entity in which the Respondent has an interest, or a mark in which the Respondent has rights. Instead the disputed domain name corresponds to the mark of the Complainant, which is a competitor of the Respondent in the United Kingdom. Other than the use of the term “Go Ballistic” on the website to which the disputed domain name refers, there is no evidence that the Respondent is otherwise known by that name. Evidence attached to the Response indicates that it is known as “Delta Force” (e.g. the Response attaches copies of correspondence addressed to it under that name.)

The Panel notes the Respondent’s argument that it registered the disputed domain name as a “marketing decision” motivated by the connotation of “ ‘ballistic’ with firearms which have a natural connection with paintball and with the colloquial term ‘go ballistic’ meaning to ‘go hard’ or ‘over the top’...all of which have a clear connection with paintball”. As noted by the Panel in Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, “where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name's value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith.” However, the Respondent provided no evidence that the term “go ballistic” appears in any dictionary. While the Panel can accept, from its own understanding, that the term “go ballistic” has some descriptive connotations in Australia, there is little evidence that it is a term with a particular association with paintball. Combined with the evidence indicating that the Respondent was aware of and had interests in a competitor of the Complainant, the Panel cannot with confidence find that the Respondent was motivated to register the disputed domain name primarily because of its generic value.

Both the Complaint and Response make various other arguments to which the Panel has had regard. However, those arguments (and other related evidence attached to the parties’ submissions) do not affect the Panel’s primary findings set out above.

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, <goballistic.com.au>, be transferred to the Complainant.

James Barker
Sole Panelist
Dated: September 6, 2010