WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marketstorm Australia Pty Limited v. ACN 140 859 892 Pty Ltd (t/a Recoup Debt Recovery)

Case No. DAU2011-0026

1. The Parties

The Complainant is Marketstorm Australia Pty Limited of Millers Point, Australia represented by Simpsons Solicitors, Australia.

The Respondent is ACN 140 859 892 Pty Ltd (t/a Recoup Debt Recovery) of Australia represented by Spruson & Ferguson Lawyers, Australia.

2. The Domain Names and Registrar

The disputed domain names: <buildingcontractorsdebtrecovery.com.au>, <constructioncontractorsdebtrecovery.com.au>, <contractordebtrecovery.com.au>, <contractordebtrecovery.net.au> and <contractorsdebtrecovery.net.au> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2011. On September 6, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain names. On September 9, 2011, Aust Domains International Pty Ltd dba Aust Domains, Inc .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 September 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2011. The Response was filed with the Center on October 2, 2011.

The Center appointed Fleur Hinton, Staniforth Ricketson and Michael J. Spence, as panelists in this matter on October 20, 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.

On October 19, 2011, the Complainant sought leave to file a Supplemental Filing. Also on October 19, 2011, the Respondent lodged a request that it be given the opportunity to oppose the Supplemental Filing. On October 31, 2011, the Panel decided to accept the Complainant’s Supplemental Filing. However, the Panel declined to accept the addition of four other domain names to the Complaint as was requested in the Supplemental Filing of October 19, 2011. The Complainant lodged a second Supplemental Filing on November 7, 2011. The Respondent was given until December 15, 2011, in which to lodge a response to the Complainant’s Supplemental Filing. The Respondent filed a response to the Complainant’s second Supplemental Filing on December 15, 2011.

4. Factual Background

The Complainant is the registered owner of Australian device Trade Mark Registration No. 1298628 (“the Registration”) comprising the device of a city skyline with the words “Contractors (sic) Debt Recovery” written across it in capitals. Underneath the device in smaller letters are the words “Turning excuses into payments”. This registration dates from May 11, 2009. The Complainant provides debt recovery services in the construction industry and its clients are mainly building contractors, architects, designers, engineers and tradesmen.

It has also been using the unregistered trade mark (“the Unregistered Trade Mark”) CONTRACTORS DEBT RECOVERY since October 2007. The Complainant has recovered debts to the value of AUD 13,650 million in the last 5 years and has been trading under the registered business name “Contractors (sic) Debt Recovery” since October 11, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it has the right to the exclusive use of the words “Contractors Debt Recovery” because it is the owner of the Registration, in which these words have not been disclaimed. In addition, the Complainant argues that it has used the Unregistered Trade mark to such an extent that the words “Contractors Debt Recovery” have acquired a secondary meaning protectable at common law. The Complainant further argues that it is not appropriate for the Panel to make a decision as to the validity of the individual parts of a trade mark when the trade mark, as a whole, is a valid registration.

The Complainant also argues that, under the Policy its business name registration for “Contractors Debt Recovery” should be considered as a basis for its action under paragraph 4(a)(1) and should, therefore, have the same status as a trade mark registration.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Respondent is using the disputed domain names to benefit from the Complainant’s reputation.

The Complainant argues that the Respondent is not commonly known by any of the five domain names. It states that the disputed domain names <constructioncontractorsdebtrecovery.com.au>, <contractordebtrecovery.com.au>, <contractordebtrecovery.net.au> and <contractorsdebtrecovery.net.au> were registered immediately after the Respondent would have received the cease and desist letter sent by the Complainant’s solicitors on July 26, 2011. In that letter the Complainant’s solicitors claim inter alia that the Respondent is using the disputed domain name <contractordebtrecovery.com.au> “to divert customers from our client to your other website www.recoup.com.au”. The Complainant annexes a screenshot of the website at the disputed domain name <contractordebtrecovery.com.au>. The other four disputed domain names, the Complainant says, are merely parked. For these reasons there is no legitimate or fair use being made of the disputed domain names.

B. Respondent

The Respondent argues that the presence of the words “contractors debt recovery” as part of the Registration does not give the Complainant the exclusive right to the use of those words. In support of this the Respondent sets out a list of sources in which expressions similar to or identical with one or more of the disputed domain names appear as generic expressions. Under the provisions of the Freedom of Information Act 1982 (Cth) the Respondent has obtained details of the examination report issued in respect of the Complainant’s trade mark application for the word mark “CONTRACTORS DEBT RECOVERY” in which an objection was made by the examiner that the trade mark was directly descriptive and that, therefore, no one trader could have exclusive rights in it as other traders were likely to require it for legitimate use in order to describe their own similar services. As at the date of the Response, the Complainant had not made any attempt to overcome this objection by lodging evidence of use.

The Respondent also states that under the Australian Trade Marks Act 1995 (Cth) disclaimers of non-distinctive material are not required. Therefore, the Respondent argues, the fact that the Registration is a device mark and that the application for the word mark CONTRACTORS DEBT RECOVERY per se has been objected to as being “completely descriptive” of the Complainant’s goods and services must have the effect that the words “contractors debt recovery” in the Registration have been disclaimed. The Respondent denies that the mere registration of a business name can give trade mark rights to that name if it is descriptive.

In addition, the Respondent has provided details of its own Trade Mark Application No. 1439454 for RECOUP DEBT RECOVERY and device which was accepted, Trade Mark Registration No. 1739454, in the face of the Registration.

The Respondent argues that it does have legitimate rights and interests in the disputed domain names. It is the owner of four accepted Australian Trade Mark Applications. The two relevant ones are (Accepted) Trade Mark Application No. 1439454 for RECOUP CONTRACTOR DEBT RECOVERY and (Accepted) Trade Mark Application No. 1434310 for BUILDING AND CONSTRUCTION DEBT RECOVERY BY CONSTRUCTIVE RESOURCES. Both of these are device marks. The Respondent registered and has been using the domain names <contractordebtrecovery.com.au> and <contractorsdebtrecovery.com>, the latter of which is not a disputed domain name in these proceedings. The Respondent registered the business name “Building & Construction Contractors Debt Recovery”. The Respondent was using the domain names <contractordebtrecovery.com.au> and <contractorsdebtrecovery.com> and expressions incorporating “contractor/s debt recovery” in relation to the debt recovery services which it provided to the construction industry prior to the receipt of the Complainant’s cease and desist letter of July 26, 2011. The Respondent intends to use the disputed domain names which are currently parked in a way similar to that in which the disputed domain name <contractordebtrecovery.com.au> and the domain name <contractorsdebtrecovery.com> are currently used.

6. Discussion and Findings

In order to be successful in having a domain name transferred or cancelled, the Complainant must satisfy the Panel that all three elements of the Policy have been satisfied, that is, that:

(i) The Respondent’s 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 domain name, and

(iii) the Respondent’s domain name has been registered or subsequently used in bad faith”.

The Panel notes that many of the submissions made and much of the evidence in these proceedings are not directly relevant to the issues which the Panel must consider under the Policy.

A. Identical or Confusingly Similar

The Panel finds the “contractors debt recovery” portion of the Registration to be a very descriptive term. Nevertheless, it is not a part of the Panel’s function to make a determination as to whether this term is so descriptive that it is not entitled to protection under the Australian Trade Marks Act 1995 (Cth); the fact remains that it is part of a validly registered Australian trade mark in which the Complainant has rights, see the majority decision in Drugstore.com, Inc. v. NurhulChee / Robert Murry, WIPO Case No. D2008-0230.

In consequence, it is unnecessary for the Panel to determine whether the Complainant has a sufficient reputation in the expression “contractors debt recovery” for it to function as an unregistered trade mark or what the effect of a business name registration may be.

None of the disputed domain names is identical with the Registration. However, noting that the principal textual component of the Registration (“contractors debt recovery”) is clearly distinguishable within each disputed domain name, the Panel finds that each of the disputed domain names is confusingly similar to the Registration. Therefore, the Panel finds that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

The burden is on the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant states that it has not authorized or licensed the Respondent to use the disputed domain names. The Complainant claims that the Respondent has registered the disputed domain names in order to take advantage of the Complainant’s goodwill and reputation. The Complainant says that the Respondent is not known by those names and shows a screenshot of the disputed domain name <contractordebtrecovery.com.au>. The screenshot shows the Respondent’s trade mark RECOUP CONTRACTOR DEBT RECOVERY being used on the website at this disputed domain name. The Respondent is, therefore, using it as a descriptive term on its website.

The Respondent says that it had registered the disputed domain names prior to its having received the cease and desist letter from the Complainant’s solicitors. It commenced business in these types of services towards the end of 2010 due to changes in the relevant Australian legislation.

The Complainant has tried to establish that the Respondent has no rights or legitimate interests in the disputed domain names on the basis that these domain names comprise words in which the Complainant has rights. The Panel finds the fact that the Complainant has registered rights in a trade mark which includes a device and descriptive words, does not of itself establish that Complainant has the exclusive entitlement to use such words in a domain name, or that the Respondent must therefore lack rights or legitimate interests in a domain name which includes these words. In Visa Europe Limited v. Name Administration Inc. (BVI) WIPO Case No. D2010-1531, the panel referred to Exotiq Properties Ltd. v. David Smart, WIPO Case No. D2009-1672 in which the panel said

“It is for the Complainant to establish … that the Respondent has no rights or legitimate interests in the disputed domain name. Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term “exotiq”… the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent's prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name”.

The Panel finds in this case that, although the Complainant is the owner of the Registration, neither that ownership nor the other evidence lodged, suffices in the particular circumstances to establish that the Complainant has exclusive rights in the very descriptive expression “contractors debt recovery”. Without such rights the questions as to whether the Complainant has licensed or otherwise authorized use of the confusingly similar disputed domain names or whether the Respondent is trading on the Complainant’s reputation are irrelevant, especially where, as here, the Panel finds that the Respondents appear to be making a legitimate use of generic expressions in the pursuit of their business.

Although the “parking” of domain names may, in some circumstances, suggest a lack of bona fides, in the present case the Panel finds that the evidence of record does not support such a conclusion here. The Panel notes, inter alia, that the four parked disputed domain names have apparently not been parked for a very long period, and the Panel finds it would be premature to conclude, merely on the basis of a brief period of parking, that the Respondent must therefore lack any bona fide interest in the domain names. The Respondent asserts that it plans to use those parked names in the same way that it is using the disputed domain name <contractordebtrecovery.com.au> and the domain name <contractorsdebtrecovery.com>, and in the circumstances, the Panel does not find that claim to be inherently implausible. (Perhaps if, with the passage of time, Respondent’s claims of such intended use were not to come to pass, and its assertions in this regard were, after the publication of this decision be shown to be untrue, or if there were to be other relevant developments that would satisfy the threshold requirements for a re-filing, the matter could conceivably be appropriate for reexamination by a different panel at a subsequent time). At present, on the available record in these Policy proceedings, the Panel does not find this to be.

This is not a case where the Respondent has attempted to register every permutation of the expression “contractors debt recovery” so that there are no domain names available with appropriate words for the Complainant or other traders in similar services.

In view of the above, and in all of the circumstances, this Panel finds that the Complainant has, on balance, failed to demonstrate in these Policy proceedings that the Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered or Subsequently Used in Bad Faith

In view of the Panel’s finding that the Complainant has failed to show that the Respondent lacks rights or legitimate interests in the disputed domain names, it is unnecessary for the Panel to record a finding here on whether the disputed domain names were registered or are being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Michael J. Spence
Presiding Panelist

Fleur Hinton
Panelist

Staniforth Ricketson
Panelist

Dated: December 28, 2011