WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bianjade Enterprises Pty Ltd v. Leigh Michael Connelly
Case No. DAU2003-0003
1. The Parties
The Complainant is Bianjade Enterprises Pty Ltd, Torquay, Victoria, Australia, represented by Griffith Hack Lawyers, Australia.
The Respondent is Leigh Michael Connelly, Mill Park, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <petsmegastore.com.au> is registered with Enetica Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 26, 2003, the Center transmitted by email to Enetica a request for registrar verification in connection with the domain name at issue. On June 27, 2003, Enetica transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2003. The Respondent contacted the Center by phone on the due date stating that his lawyer had prepared a response but had not sent it. A brief email response from the Respondent and a faxed response from the Respondent's representative were filed with the Center on July 22, 2003. Later on the same day the Respondent submitted a slightly expanded response.
The Center appointed Ross Wilson as the sole panelist in this matter on August 4, 2003. 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 Complainant was incorporated on May 17, 1995. It registered the business name of PETS MAGASTORE on August 21, 2000.
The Complainant commenced online trading in retail pet supplies in August 2000, from the website <pets-megastore.com.au>. The Complainant’s business comprises retail sales of pet supplies for most domestic animals, including birds, cats, kittens, dogs, puppies, horses, ferrets, fish rabbits, reptiles and rats. Products offered for sale by the Complainant for each of these species include cage cleaners, bedding, bowls and feeders, collars and leads, flea collars, toys, aquariums, supplements and training aids. The Complainant has over 23,000 customers worldwide and its yearly sales exceed AUD$4,000,000 per annum.
The geographic spread of the Complainant’s customers includes Australia, the USA, UK and Japan. Its target audience is individuals or families with pets, rescue centres, animal shelters and pet breeders. Since January 22, 2001, the Complainant has advertised on the Internet on a daily basis using the Overture.com and Google.com. search engines. The Complainant has been advertising on Overture.com since May 1, 2002, and spends on average $US20,000 - $US30,000 advertising per month on its site.
The Respondent carries on business trading as Pet Care Direct. The disputed domain name <petsmegastore.com.au> was registered on November 6, 2002. Accessing the domain name redirects Internet users to the Respondent's ‘Pet Care Direct’ website.
5. Parties’ Contentions
The Complainant contends that:
- it is the registered proprietor of the business name ‘PETS MEGASTORE’
- it has built up a valuable reputation in the common law trade mark ‘Pets Megastore’;
- the domain name registered by the Respondent, <petsmegastore.com.au>, is identical or confusingly similar to a name in which the Complainant has rights;
- the Respondent has no connection with Pets Megastore or Bianjade Enterprises Pty Ltd. The Respondent does not carry on business under the name ‘Pets Megastore’ or any similar name;
- since approximately April 16, 2003, the Respondent has, within 1-3 days of the Complainant placing specific advertisements, placed his own advertisements on Overture.com that substantially reproduce the Complainant’s advertisements;
- because of the Complainant’s reputation, the unauthorised use by the Respondent of the domain name constitutes representations that:
- the goods provided by the Respondent on the website are the same as the goods provided by the Complainant;
- the Respondent and the goods provided are somehow connected to the Complainant;
- the Respondent has the authority of the Complainant to use the Pets Megastore name and to offer goods that it is providing on the website under that name; and
- the Respondent has the approval of, or affiliation with the Complainant.
- the Respondent's representations are misleading and deceptive within the meaning of Section 9 of the Fair Trading Act (Victoria) which provides: "A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive." Under the Fair Trading Act, it does not matter whether or not deception or misleading conduct is intended. It is enough that the conduct is merely likely to mislead or deceive. Further, by adopting the domain name <petsmegastore.com.au> the Respondent is seeking to benefit from the goodwill of the Complainant and in doing so is passing himself off as the business of the Complainant or its licensees or affiliated with the Complainant;
- given the Complainant’s trading history and consequent reputation, the Respondent ought not be entitled to trade under the Pets Megastore name;
- given the reputation of the Complainant, the volume of its business and advertising activities and the time lag between the Respondent commencing to trade and obtaining the domain name, it is reasonable to infer that the Respondent has acquired the domain name for one or all of the following purposes:
- to prevent the Complainant from reflecting its business name in a corresponding domain name;
- to disrupt the business of the Complainant; and
- to attract for commercial gain, Internet users to the Pet Care Direct site by creating confusion with the Complainant’s name as to the source, sponsorship, affiliation or endorsement of his website.
- Internet users typing the name "PETS MEGASTORE" into an Internet search engine and finding themselves being diverted to the Respondent’s website are likely to believe they are at the Complainant’s website, or be confused as to whether the Respondent’s website is in some way sponsored, affiliated or endorsed by the Complainant. Accordingly, by incorporating the ‘Pets Megastore’ name in the domain name, a greater volume of Internet traffic is diverted to the Respondent’s website. The Respondent is thereby likely to receive greater commercial gain through sales on his website.
- the home page of the Respondent’s website states ‘Welcome to our new look Online Store’, which has the potential to mislead customers into believing that the Complainant has re-designed its website.
The respondent contends that:
- the disputed domain name was registered in good faith and with no knowledge of any other website with a similar name.
- his ability to register the domain name unhindered supports his rights to the domain name.
- the Complainant's arguments that his search terms were copied from the Complainant's website are false.
- the Complainant has registered in bad faith the Respondent's main domain name <petcaredirect.com> in the .net and .biz domains.
The respondent denies all the allegations made by the Complainant including the references to copying the Complainant's advertisements and denies his website had the potential to mislead customers into thinking that the Complainant had redesigned its website when the Respondent's site contained the banner ‘Welcome to our new look Online Store’.
6. Discussion and Findings
All domain name licences issued in com.au are subject to the mandatory administrative proceeding under .au Dispute Resolution Policy (auDRP). Under Paragraph 4 (a) of the auDRP the onus is on the Complainant to prove that each of the following elements are present:
(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights [here the name refers to the Complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or the Complainant's personal name]; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
The Rules for auDRP at Paragraph 15(a) require the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
With respect to the three responses lodged late by the Respondent and his representative the Panel has determined to accept their admissibility in accordance with Paragraph 10 (b) of the auDRP Rules which requires each Party to be given a fair opportunity to present its case,. The decision is based on the fact that the Respondent made contact with the Case Manager on the due date and provided his and his representative's response on the following day.
The subject matter of this dispute is confined to the domain name <petsmegastore.com.au> and the Panel has no power or right to comment on the Respondent's statement that the Complainant has registered the domain name <petcaredirect> in the .net and .biz domains.
A. Identical or Confusingly Similar
Under (i) above the Complainant must prove that first it has rights in the name and second that the disputed domain name is identical or confusingly similar to the Complainant's name.
The Complainant's registration of the business name PETS MEGASTORE with the Victorian Government on August 21, 2000, demonstrates its rights in the name and meets the first component.
The second requirement in (i) above is to prove that the disputed domain name is identical or confusingly similar to the name in which the Complainant has rights. The disputed domain name uses the Complainant's two word business name and presents it as a single word with the .com.au suffix. In the Panel's view the disputed domain name sounds identical to the business name and its visual appearance is virtually identical.
Consequently, the Panel finds that the Complainant has rights in the name and that the disputed domain is identical to the name. In view of the finding it is not necessary for the Panel to consider whether the Complainant has common law trade mark rights in its name.
B. Rights or Legitimate Interests
While the onus is on the Complainant to prove each element of Paragraph 4(a) of the Policy, Paragraph 4(c) sets out how a Respondent can demonstrate rights or legitimate interests in the disputed domain name. The ways include, but are not limited to:
(i) "before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services: or
(ii) you (as an individual, business, or an organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights: or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Complainant's evidence of the Respondent having no rights to or legitimate interests in the name is based on its registration of the business name PETS MEGASTORE two years before the disputed domain name was registered. The Complainant's searches indicate that the Respondent does not have any registered business name in any Australian state or territory. The Complainant's evidence indicates that the Respondent carries on business under the name Pet Care Direct (in fact the disputed domain name resolves to the Pet Care Direct website).
The Respondent's case for rights to the disputed domain name rests on the assertion that he had no knowledge of the Complainant's website and that there was no intention to mislead or deceive potential customers. Also, he asserts that he was "able to register the name unhindered". Such a statement has no weight and is expressly contrary to the Policy in which auDA has determined that "rights or legitimate interests in respect of the domain name are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of the registration".
The Respondent and the Complainant are competitors. Both are operating in Victoria and, in the Panel's view, it is most likely that the Respondent knew of the Complainant's name and online activities at the time of registering the domain name that reflects the Complainant's business name. Also relevant is the fact that the Respondent does not use the name "Pets Megastore" at all in his website. These particular circumstances are similar to those in the case of GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, (WIPO Case No. DAU2002-0001) where the Panel stated that the onus shifts to the Respondent to provide some evidence of legitimate use of the disputed domain name when the Complainant's name does not appear in the Respondent's name and is not used in any of the Respondent's online material.
The Respondent states that he has no connection with the Complainant but has not provided any evidence to the Panel regarding his rights or legitimate interests in the disputed domain name.
The Respondent's failure to provide any evidence, particularly addressing the example circumstances set out in Paragraph 4 (c) of the .au Dispute Resolution Policy, leads the Panel to conclude that the Respondent had no bona fide use of the name corresponding to the disputed domain name, was not commonly known by the domain name and was not making any legitimate non-commercial or fair use of the name.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
For the purposes of determining if the Respondent acted in bad faith, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The Complainant has argued that bad faith registration and use is evidenced by the circumstances under Paragraph 4(b)(ii), (iii) and (iv) of the Policy which states that:
(ii) "you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation or endorsement of that website or location or of a product or service on that website".
The Complainant's evidence of the Respondent's bad faith is that by typing the disputed domain name an Internet user is diverted to the Respondent's website Pet Care Direct, that the Respondent is copying its advertisements in Overture.com and that the Respondent's website announced "Welcome to out new look Online Store" which had the potential to mislead customers into believing that the Complainant had re-designed its website. The Complainant provided website exhibits as its evidence.
The Panel is aware that the "Welcome…" announcement is no longer being displayed. However, for the Panel the most compelling evidence of the Respondent's bad faith registration or subsequent use is the way the disputed domain name directs users to his competing Pet Care Direct site. The Respondent refers to his Pet Care Direct site as "my main domain". Clearly the disputed domain name would cause confusion and this is evidenced by the Complainant's customer who brought the matter to its attention. There is no doubt that commercial gain could result from the bad faith use of the disputed domain name.
While the Respondent denies the Complainant's allegations no evidence had been put forward for the Panel's consideration.
In light of the Complainant's business name, turnover, advertising and specific sources of online advertising the Panel finds it is difficult to believe the Respondent was not aware of an online competitor such as PETS MEGASTORE. Also, it is difficult to believe the Respondent's email responses of July 22, 2003, stating that "after countless hours searching the registration website" he registered the disputed domain name "in good faith with no knowledge of any other website With (sic) a similar name in Australia or globally for that matter".
The Complainant's bad faith claims are also based on the view that since April 2003, the Respondent had been reproducing its advertisements on Overture.com. The exhibits provided show some similarity in the wording of the advertisements but more particularly in the advertisement's heading. Of the 40 search "hits" only the Complainant and Respondent's advertisements refer to a percentage savings in their respective headings.
To confirm that the advertisements were being copied the Complainant placed an advertisement with a deliberate error in it. The Complainant's conducted a search in Overture.com using the key words of the deliberate error. The search resulted in the Respondent's site being found along with two of the Complainant's sites and one other unrelated site. In the Panel's view this search does not produce compelling evidence. Nevertheless, on balance the Panel believes the overall advertising evidence does indicate some systematic "riding on the coat-tails" of the advertising efforts of the Complainant.
The Panel is not limited to considering just the paragraph 4(b) circumstances to determine whether the domain name was registered or subsequently used in bad faith. In the Panel's view there are other factors supporting registration and use in bad faith by the Respondent. In particular, the Respondent's current holding of the domain name in combination with having no legitimate rights or interests in the name and the likelihood of being aware of the PETS MEGASTORE reputation and business name, can be interpreted as bad faith use for the purposes of paragraph 4(a)(iii). Previous URDP decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
In view of the above, the Panel finds that the disputed domain name has been registered or was subsequently used in bad faith by the Respondent.
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 <petsmegastore.com.au> be transferred to the Complainant.
Dated: August 18, 2003