The Complainant is Navico Australia Pty Ltd through its parent company, Navico Holding AS of Lysaker, Norway, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Quin Marine Pty Ltd, an Australian Corporation of Adelaide, Australia
The disputed domain name <navico.com.au> is registered with Net Registry Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2009. On May 26, 2009, the Center transmitted by email to NetRegistry Pty Ltd. a request for registrar verification in connection with the disputed domain name. On June 1, 2009, NetRegistry Pty Ltd. transmitted by email to the Center its verification response 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 June 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on June 29, 2009. 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.
Pursuant to paragraph 12 of the Rules the Panel asked the Center to obtain a supplementary statement from Navico Holding AS, a Norwegian entity originally named as Complainant, demonstrating its eligibility to hold the disputed domain name for the purposes of paragraph 4(i) of the Policy, or, alternatively, confirmation that the true Complainant was its Australian subsidiary, Navico Australia Pty Ltd. The Norwegian entity supplied a statement to the effect that “the Complainant in this proceeding shall mirror Navico Australia Pty Ltd who meets the eligibility rules”. The Panel has interpreted the statement as a request to reflect the Australian subsidiary as the true Complainant and as confirmation that the true Complainant is eligible to become the licensee of the disputed domain name should the Panel find the grounds of the Complaint made out.
On July 11 the Panel received from the Center a copy of a July 10, 2009 communication from the Respondent. The Panel directed the Center to ask the Respondent to advise if it wished the communication to be treated as its formal Response, albeit well out of time and, if so, to explain its failure to respond in time to the Complaint. The Respondent was given two business days within which to respond to that request, failing which the allegations in the Response would be taken to remain unchallenged.
On July 14 the Panel received from the Center a copy of a July 14, 2009 communication from the Respondent which was not, in terms, responsive to the formal request made at the Panel's direction. However, the communication contained similar material to that which was in the July 10 communication, together with an ‘explanation' that Mr. Stan Quin, the principal of the Respondent, is 75 years of age and unfamiliar with domain name matters. Under Rule 10 the Panel proposes to take the Respondent's July 10 and 14 communications into account in a limited way, as set out in section 5B below.
The following facts, taken from the Complaint, remain uncontested.
The trademark NAVICO was only registered by the Complainant in Australia in May 2008 but it has been registered in many other countries and was registered as a European Community trademark as early as 1999.
The trademark NAVICO is also registered as a domain name under more than 50 different gTLD and 2LDs worldwide in the name of the Complainant.
The domain name was registered on August 2, 2006, which post dated the European Community trademark registration by some 7 years.
The disputed domain name has remained parked with Netregistry since July 2008.
The Respondent's usual website is at “www.quinmarine.net.au.”
The Complaint was not amended to accommodate the substitution of the Australian entity for the originally named Norwegian entity. However, it refers to both entities at different times and interchangeably as ‘the Complainant'. The following contentions are taken by the Panel to be made by Navico Holdings AS on behalf of the Australian Complainant. Dealing first with paragraph 4(a)(i) of the Policy, the contentions are:
1. The Complainant was registered as a corporate entity on March 9, 2007 and Navico Holding AS was registered on February 11, 2005.
2. Navico Holding AS is a fusion of two marine electronics suppliers, Simrad Yachting and Lowrance Electronics. With the addition of Brunswick New Technologies' marine electronics division in March 2007, Navico is a “house of brands” with the B&G, Eagle, Lowrance, Navman, Northstar, and Simrad brands all manufactured and distributed under the Navico umbrella.
3. The disputed domain name comprises the term “Navico” for which the Complainant has several registered trademarks in countries around the world, including Australia, which is the registrant's country of residence. The trademark NAVICO is also registered as a domain name under more than 50 different ccTLDs worldwide in the name of the Complainant.
4. The Respondent has intentionally chosen a domain name “based on registered trademark” and is consequently referring customers to a parked website when they are searching for Navico. By holding on to the domain name customers will believe that the website is endorsed or sponsored by the Complainant.
5. Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark NAVICO there is a considerable risk that the trade public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. The trademark also risks being tarnished by being connected to an inactive website. By using a domain name identical to the trademark, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant's trademark.
6. The disputed domain name is identical to the trademark owned by the Complainant and the company name Navico incorporated by the Complainant.
7. Accordingly, the Complainant submits that the disputed domain name is identical to a name or trademark in which it has rights.
8. The disputed domain name was registered on August 2, 2006. This date is subsequent to when the community trademark for NAVICO matured into registration. The Australian trademark was registered in 2008, hence two years subsequent to the disputed domain name's registration. The disputed domain name was also registered subsequent to the Complainant's company Name Navico Holding AS by one year.
9. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The only relation that the Respondent has in regards of the term “Navico” is that they are a former distributor of Navico products. This relationship ceased “before September 1, 2006”.
10. The disputed domain name was registered “in conjunction to when the distributor agreement was terminated”. The Respondent had at the time of registration of the disputed domain name knowledge about the termination of the distributor agreement and still went on to register the disputed domain name. It could not have been a coincidence that these scenarios occurred simultaneously. It is also clear, that there is no connection or co-operation between the Complainant and the Respondent “anymore”.
11. The Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services and the domain name is parked by NetRegistry. This behaviour and procedure by the Respondent cannot be considered to create “legitimate interest”.
12. The Respondent is holding on to the domain name and preventing Navico from reflecting its trademark under the com.au ccTLD.
13. The Respondent is trading under “www.quinmarine.net.au” which should be seen as their official website to promote their business under and would also constitute the channel to sell the claimed spare parts of Navico the Respondent might have in stock. In addition to this, the Respondent is selling products from competitors to the Complainant.
14. The Respondent has no registered or unregistered rights in the name Navico or the mark NAVICO.
15. The domain name is the logical, or “natural”, domain name for the Complainant's operations in Australia. Consequently, it is highly likely that a significant number of Internet users would believe that the domain name would lead to the Complainant's website.
16. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
17. The trademark NAVICO has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The considerable value and goodwill of the mark NAVICO cannot have been unknown to the Respondent, which has been confirmed due to the former relationship with the Complainant and this is the reason why the Respondent registered the domain name in the first place.
18. The Respondent has never received any kind of authorization from the Complainant to use said trademark in a domain name. These circumstances alone, strongly suggest that the disputed domain name has been registered and subsequently been used in bad faith. Additionally, the disputed domain name was registered shortly before the registration agreement ceased which is an indication of a bad faith registration.
19. The Complainant first became aware of the Respondent's registration in spring 2008, when they tried to register the domain name. Soon thereafter the Complainant tried to contact the Respondent and explain the situation and asked for a voluntarily transfer.
20. On March 2, 2009 the Respondent said that it was concerned about the costs of promoting the sale of the spare parts that it held and valued the costs at A$500,000 should it relinquish the domain name. In order to justify the transaction it required US$30,000.
21. The disputed domain name is currently not used to promote goods of the brand NAVICO. In fact it has not been used at all by the Respondent for this purpose even though it has been registered for almost three years. It is “a bit odd” that the Respondent now, three years after the relationship with the Complainant ended, wants to use the domain name for NAVICO products that they claim to have in stock. The Respondent's official website should cover the promotion of spare parts that they might hold.
22. The Complainant also notes the eligibility requirements for the .com.au 2LD which require a close and substantial connection to be demonstrated, or an exact match, acronym or abbreviation of the supplied business registration. The Complainant contends that the Respondent did not at the time of registration and now does not meet those requirements.
23. In summary: the Respondent was aware of the Complainant's mark when it registered the domain name. Secondly, as a distributor, the Respondent was not authorized to register the domain name or mark, and should have known that this would infringe the Complainant's mark. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. None of the above circumstances applies to this case since the Respondent is not offering the goods and services of the trademark owner, nor is it disclosing any relationship with the trademark owner.
24. All the circumstances combined and presented in the Complaint “clearly shows that the domain name was registered and has been used in bad faith”.
The Respondent did not file a Response in time, nor reply in any other substantive fashion to the Complaint. The July 10, 2009 communication referred to in section 2 above comprised an email to the Center from a person who signed himself as “John Coe, Quin Marine” with the single sentence “I have been asked by Mr. Stan Quin to forward to you the attached previous correspondence regarding this matter.”. The email was carbon copied to “firstname.lastname@example.org”.
Attached to the email is a two page pdf document. The first page appears to be a one page undated communication on plain paper. It purports to be a “Reply to Buddle Finlay [sic]” from “S.R. Quin” but is in fact addressed to the attention of Damien Weber at the Complainant's address in Sydney. It refers to “your letter dated 31st March 2008” and then states “We registered the Navico name because we hold Navico stock and we want to sell it”. So far as germane to the present proceedings, the communication continues “We have supported Navico products for 40 years we don't want to damage the Navico reputation in any way.”
The second page of the pdf attachment appears to be a fabricated composite of the header of an email dated 21 August 2008 from “email@example.com” to “Sara.Freixa@melbourneitdbs.co.uk” bearing the subject “Navico Products” followed in a different font size, text alignment and typeface by three sentences including “if we can recover our costs we would be happy to surrender the domain name”.
This body of text is then followed by a horizontal mark which the Panel recognises as typical of a discontinuity between two different originals being folded in such a way that they can be scanned together.
This mark is then followed by four numbered paragraphs which are in a different font size, text alignment and typeface to either of the first two text portions of the document. This portion of the document appears to summarise the Respondent's contentions presumably made in the missing parts of that or one or more other communications:
1 We had legitimate need of the domain name as part of our distribution obligation in 2006 to market the Navico products from UK. As such at the time of registration we were authorized to use it as the sole Australian disbtributor and service agent.
2 The Navico ‘company'was registered in Australia 6 months after we registered the domain name.
As such at the time of registration no trademarks were registered.
3 the comment below regarding the value of the trade name Navico can be used to justify a high sale price because the work done by Quin Marine in print media and boat shows is what made the name popular in this country.
4 We used the Navico name for brand identification not purporting to be involoved with the company Navico which did not exist at time of domain name registration.”
The July 14, 2009 communication is an email message from Mr Stan Quin to the Center, to similar effect, in addition to the explanation that he is 75 years of age and found himself unable to obtain telephone advice in relation to domain name matters.
The Complainant bears the onus of proving all three elements of paragraph 4(a) of the Policy, namely, that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered or has subsequently been used in bad faith.
Ignoring the 2LD and ccTLD components of the disputed domain name, it is self evidently identical to the Complainant's Australian registered trademark NAVICO and confusingly similar to the Complainant's registered name “Navico Australia Pty Ltd”. Whilst the fact that both the trademark and the company name registrations post date the registration of the disputed domain name is highly relevant under the second and third limbs of the Policy, it is of no relevance to the first limb.
The Complainant has submitted no evidence of it having rights in any foreign trademark or corporate name, and the Panel makes no finding in respect of those. The interchangeable references to the Norwegian entity and the Complainant, and the naming of the Norwegian entity as the Complainant in the Complaint, were both unhelpful and potentially fatal to the Complaint had the Panel not been able to discern the true position from the mixture of relevant and irrelevant evidence.
The disputed domain name seems to have been registered about a month before the Respondent's distributorship rights to the Complainant's product range was terminated. No agreement has been furnished in evidence to show what rights the Respondent did or did not have as part of that distributorship. The Respondent's communications, which the Panel is prepared to receive as a Response purely for the purposes of giving the Respondent the maximum benefit of paragraph 10(b) of the Rules, even though the Respondent has not provided more than a feeble explanation for its failure to comply with the requirements of the Policy, suggests that the Respondent had a legitimate interest in respect of the disputed domain name at the time of registration.
However, the time at which the legitimacy of the Respondent's interest in a disputed domain name is to be tested is the time the Complaint is filed. Whatever legitimate interest the Respondent may have had in August 2006 in having the disputed domain name, it currently has no such rights or legitimate interests in the Panel's view, some three years after it ceased to be an authorised distributor of the Complainant's products. Indeed the Respondent's communications concede as much, offering to transfer the domain name to the Complainant.
That is not to say that the Respondent cannot use the Complainant's trademark. On the contrary, it may well be entitled to sell off its stock of Navico brand products by reference to that brand name. That right does not in the circumstances of this case, where the Respondent is not in fact using the disputed domain name for that purpose, and merely asserts a hypothetical interest which it shows no intention of exercising, amount to a level of legitimacy of interest which the Panel is prepared to recognise. It is a fine balance, but the Panel finds on the balance of probabilities that the Respondent had by the time the Complaint was filed lost any legitimate interest it may have had in the disputed domain name at the time it was registered in August 2006 when it was apparently still an authorised distributor of the Complainant's products.
For the reasons set out above, the Panel is of the view that the Respondent, if in fact an authorised distributor of the Complainant's products as at the time of registration of the disputed domain name, was probably entitled to that registration. Despite the Complainant's insinuations that the Respondent's registration of the disputed domain name was made in anticipation of the formal termination of its distributorship, the evidence is not strong enough to support a finding to that effect.
Unlike paragraph 4(a)(iii) of the UDRP on which it is based, the equivalent paragraph of the Policy differs in a material respect, namely, the use of the disjunctive “or” between “registration” and “use” in bad faith. Thus, whereas a good faith registration with subsequent bad faith use generally cannot avail a complainant under the UDRP, under the Policy such circumstances can enable a Complainant to prevail if made good. This is such a case.
The July 10 and 14, 2009 communications from the Respondent persuade the Panel that Mr. Stan Quin has at all times acted in good faith and has sought to engage with the Complainant to discuss the issues raised in this proceeding. However, despite his being the apparent principal of the corporate Respondent, Mr. Quin is not the sole embodiment of it. The WhoIs record does not name Mr. Quin as either Administrative or Technical Contact for the disputed domain name. Nor is Mr. Quin the sole person at the Respondent who has engaged in communications in relation to the subject matter of the present proceedings. The Panel suspects that Mr. Quin has either been manipulated by others or kept ignorant by others who believe that continued registration of the domain name will afford the Respondent some tactical advantage in negotiating other disputes between the parties related to the termination of its distributorship. It appears to the Panel that, in the period since its distributorship was terminated in about September 2006, the Respondent has used its registration of the disputed domain name for the ulterior purpose of leveraging its position in negotiations with the Complainant in relation to financial matters arising from their past relationship, rather than for any good faith purpose associated with the sale of its remaining stock of Navico branded products. Had the panel seen evidence of use by the Respondent of the disputed domain name for the purposes recited by Mr. Quin, his assertions might have been more compelling. However, the Respondent's failure to put forward an acceptable explanation for its failure to comply with the Policy has resulted in the Panel being unable to afford it the benefit of the doubt on the critical issue of subsequent bad faith use, and the Complainant has succeeded in persuading the Panel of current bad faith use by the barest of margins.
Had the Australian-resident Complainant not been substituted for the Norwegian entity named in the Complaint as filed, the Panel would have been unable to find compliance with paragraph 4(i) of the Policy and the only option would have been to cancel the registration of the disputed domain name.
However, the Australian Complainant asserts its eligibility and appears to the Panel to be eligible to be a licensee of the disputed domain name. Accordingly, 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 <navico.com.au> be transferred to Navico Australia Pty Ltd.
Philip N. Argy
Dated: July 14, 2009