WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brambles Industries Limited v. Geelong Car Company Pty. Ltd., trading as Geelong City Motors
Case No. D2000-1153
1. The Parties
Complainant: Brambles Industries Limited, Level 40, Gateway, 1 Macquarie Place, Sydney, NSW 2000, Australia.
Respondent: Geelong Car Company Pty. Ltd., trading as Geelong City Motors, 195 Noble Street, Newtown, Victoria 3220, Australia.
2. The Domain Name(s) and Registrar(s)
Domain name: "bramblesequipment.com"
Registrar: Dotster, Inc., 1338 Commerce Avenue, Commerce Suite 202,
Longview, WA 98632, USA
3. Procedural History
The Complainant e-mailed the WIPO Arbitration and Mediation Center (the Center) on August 31, 2000, concerning the disputed domain name. A hard copy of the complaint was received by the Center on September 5, 2000. The complaint submitted complied with the ICANN Rules and Supplementary Rules. The appropriate fee payment has been made.
On September 4, 2000, the Center obtained a URL printout to confirm the current status of the domain name. The Centerís Request for Register Verification was received on September 5, 2000 from Dotster, Inc. confirming the registration and status of the disputed domain name, the current registrant, contact information and applicability of the Rules to the domain name.
The Center communicated the complaint to the Respondent on September 6, 2000, and sent copies to the Complainant and the Dotster Registrar. The Center advised the Respondent that September 6, 2000, is the formal date of commencement of the administrative procedure and that the last day for a response was September 25, 2000. The consequences of failing to respond by the due date were set out in the advice to the Respondent.
The Respondent did not reply by the due date and the Centre sent a Notification of Respondent Default on September 27, 2000.
The Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence on October 3, 2000.
The Panel has received no additional submissions. The proceeding was conducted in English and the Panelís decision is scheduled for issuance on October 17, 2000.
4. Factual Background
The Complainant, Brambles Industries Limited and its subsidiary, Brambles Australia Limited, is a long established Australian company. The companyís origins go back to 1875. It is widely known in Australia as an international materials handling and equipment services group. It has assets of $A 4.7 billion, average annual revenues of $A 4.5 billion and employs over 20000 staff.
The Complainant provides a wide range of services under or by reference to its trademarks and trading names, including:
- Industrial equipment rental, ranging from rail wagons to forklift and specialised container access equipment;
- Pallet management and specialised container services;
- Industrial and contract mining, industrial and municipal waste collection, treatment and disposal;
- Specialised transport services, particularly dangerous goods and bulk raw materials;
- Records management; and
- Marine services.
Since 1979 Brambles has actively protected its intellectual property rights in Australia by registering trademarks incorporating the word "Brambles". One particular trademark No. 591173 is for "Hiring and leasing services in relation to forklift trucks, cranes, platforms, low loaders, earthmoving equipment, road construction equipment, site construction and mining equipment and all other materials handling equipment;Ö". Brambles Industries Limited has the business name "Brambles Equipment" registered in six States of Australia and the Australian Capital Territory as well as four business name registrations for "Brambles Equipment Division" and one for "Brambles Equipment Rental".
Also, Brambles Industries Limited operates internationally and has protected it trademarks in 34 other countries for equipment or related services, many of which are for goods and services of similar descriptions to that used in the above mentioned Australian trademark registration.
Its domain name is "brambles.com.au",WWW.brambles.com.au which was registered in 1996.
The Respondent operates a retail automotive dealer business in Geelong, Victoria, Australia. It has been operating for over six years. It registered the domain name "bramblesequipment.com" at Dotster, Inc. on March 14, 2000.
On June 2, 2000, Scott Sinclair (later identified as a representative of the Internet brokering firm, SoldDomains Inc.) contacted Brambles Industries Limited by e-mail indicating that his firm had a client that wished to "divest" itself of the domain name "bramblesequipment.com." On July18, 2000, the Company Secretary of Brambles Industries Limited responded seeking an indication of the price for divesting the domain name. SoldDomains Inc. replied by e-mail on July 20, 2000, proposing that the domain name would have a balance sheet value of between $10 000 and $50 000 (presumably US dollars) and suggested that the Complainant is best placed to determine the current value of the domain name.
On August 15, 2000, Brambles Industries Limitedís Company Secretary e-mailed an offer to SoldDomains Inc. to only pay reasonable costs incurred in registering the domain name and transferring it to his company for an amount not exceeding $A 500. On August 16, 2000, SoldDomains Inc. without acknowledging the August 15, 2000, e-mail from Brambles Industries Limited, advised that its client had instructed SoldDomains Inc. to place the domain name on the Internet auction system. SoldDomains Inc. suggested to the Complainant that a payment of $4950 (presumably US dollars) would secure the domain name.
5. Partiesí Contentions
The Complainant contends that:
- The disputed domain name is identical or confusingly similar to its trademark "Brambles";
- The disputed domain name is identical to its common law trademark "Brambles Equipment";
- The Respondent has no company name, business name or trademark registration in Australia incorporating the name "Brambles Equipment";
- The disputed domain name does not resolve to a web site or other on-line presence of the Respondent;
- Use of the disputed domain name would infringe its trademark registrations for goods and services suggested by the name (i.e. equipment);
- Use of the disputed domain name by the Respondent (at least in Australia) would constitute common law passing off and be in contravention of the misleading and deceptive conduct provisions of the Australian Trade Practices Act, 1974;
- It has not licensed or otherwise permitted the Respondent to use any of its registered or common law trademarks or to apply for any domain name incorporating any of its trademarks;
- The Respondent has no legitimate rights in respect of the disputed domain name;
- The disputed domain name was registered and was used in bad faith; and
- The Respondentís intention to sell the disputed domain name constitutes "commercial use" of the domain name which, in view of Brambles Industries Limitedís trademark rights in "Brambles" and "Brambles Equipment", could not be in good faith.
The dispute domain name is requested to be transferred to the Complainant.
The Respondent failed to provide any response.
6. Discussion and Findings
In accordance with Rule 5 (e) as the Respondent has not submitted a response and as there are no exceptional circumstances, the Panel will decide the dispute based on the complaint.
In the dispute notification letter of September 4, 2000, from the WIPO Arbitration and Mediation Center the Respondent was identified as Geelong Car Company Pty. Ltd. However, the Business Manager of Dotster, Inc. confirmed the next day that the disputed domain name "bramblesequipment.com" was registered with Dotster, Inc. and that the current registrant was "Geelong".
The reference to the Respondent as "Geelong" is taken by the Panel to be a short hand reference to the full name of Geelong Car Company Pty. Ltd., as set out in the Centerís notification letter to the Registrar. Dotster, Inc. confirmed that the registrant, administrative, billing and technical contact was ALEXANDER, David 100233.231@ COMPUTERSERVE.COM, Geelong City Motors, 195 Noble Street, Newtown Victoria, Australia. Records of the Australian Securities and Investments Commission identify David Lachlan Alexander as a current Director of Geelong Car Company, Pty. Ltd. Also, according to the records of the Victorian Business Names Register, Geelong City Motors is the business name of Geelong Car Company Pty. Ltd. Therefore, the Panel is satisfied in terms of the evidence that the Respondent had registered the disputed domain name.
In accordance with the ICANN Policy, the Complainant must prove that: (i) the Respondentís domain name is identical or confusingly similar to a trademark 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 Respondentís domain name has been registered and is being used in bad faith.
(i) The Respondentís domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The registered trademark is not identical with the disputed domain name because the domain name includes the descriptive word "equipment". In considering whether the domain name is confusingly similar to the trademark the case of Caterpillar Inc. v. Matthew Quin (see WIPO Case No. D 2000-0314) is relevant. In that case the disputed domain names of "caterpillarparts.com" and "caterpillarspares.com" were found to be confusingly similar to the registered trademarks of Caterpillar and Caterpillar Design because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar".
In the present case, the word "Brambles" is the distinct component in the disputed domain name. It is identical to the registered trademark. The differentiating word "equipment" is descriptive only. The combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the Complainantís business. In the Panelís view, Brambles customers who use its equipment services would be confused through the similarity of the domain name with the Complainantís trademark.
The Complainant also submitted that the disputed domain name is identical to the Complainantís common law trademark "Brambles Equipment". As the Panel finds that the disputed domain name is confusingly similar to the registered trademark it is not necessary to make a finding on whether there is a common law trademark and whether the disputed domain name is identical to that common law trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The business of the Respondent is concerned with the sale of motor vehicles and there is no obvious reason why it should require a domain name made up of the words "brambles" and "equipment". On the evidence before the Panel, the Respondent has not used the domain name in connection with a bona fide offering of goods and services, is not commonly known by the domain name and is not making any legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
(iii) The Respondentís domain name has been registered and is being used in bad faith.
For the purposed of determining if there was bad faith the Panel considered the circumstances of registration and use of the domain name as set out in 4 b (i) of ICANNís Policy. The Policy states, inter alia, that evidence of registration and use in bad faith is found if the circumstances indicate that the registration of the domain name was primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
The evidence in the e-mails from the Respondentís agent to the Complainant to offer the purchase of the disputed domain name for $4950 clearly shows that the Respondent wished to gain a valuable consideration in excess of the out-of-pocket expenses directly related to the domain name. While there is no evidence that the disputed domain name was used in any other commercial sense, its offer for sale is sufficient to equate to "use" for the purposes of establishing bad faith.
This interpretation of "use" is supported in a number of cases involving domain name disputes (see Panavision International, LP v. Dennis Toeppen et al., 141 F.3d 1316 (9th Cir. 1998); WIPO Domain Name Dispute Case No. D99-0001 World Wrestling Federation Entertainment, Inc. v. Michael Bosman; WIPO Domain Name Dispute Case No. D2000-0001 Robert Ellenbogen v. Mike Pearson; and WIPO Domain Name Dispute Case No. D2000-0174 Interep National Radio Sales, Inc. v. Internet Domain Names, Inc.).
In accordance with the Uniform Domain Name Dispute Resolution Policy [paragraph 4 b (i)] the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is confusingly similar to the Complainantís trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondentís domain name has been registered and is being used in bad faith. The Panel requires the Respondent to transfer the domain name to the Complainant.
Dated: October 17, 2000