The Complainant American Future Technology Corp. of California, United States of America, represented by Chan Law Group LLP of the United States of America.
The Respondent is Rex Hall of Victoria, Australia, represented by Guy & Singh, Victoria, Australia.
The disputed domain name <ibuypower.com.au> (the “Disputed Domain Name”) is registered with NetRegistryPty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2009. On August 10, 2009, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On August 27, 2009 NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification that the complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 2, 2009. 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 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2009. The Response was filed with the Center on September 23, 2009.
The Center appointed Alistair Payne as the sole panelist in this matter on September 30, 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.
The Complainant is a United States based corporation which owns United States trade mark registrations for iBUYPOWER and design (2955109 and 3586957) and for the word mark iBUYPOWER (3586748), the earliest of which dates from May 2005. The Complainant operates a business and website selling high-end gaming computers under this mark in the United States and Canada. The Complainant does not suggest that it also sells its' products in Australia and has not presented evidence of trade mark rights in Australia, except to the extent that a limited amount of advertising may have “made [its] way” into that jurisdiction. It appears, however, from the Respondent's submissions that the Complainant did apply for equivalent Australian trade mark rights on May 1, 2009 but received an adverse examination report. The Complainant has owned and used the domain name “www.ibuypower.com” since May 1999.
The Respondent operates as a sole trader under the name IBUYPOWER in Victoria, Australia. He owns a business name registration in this name and has a registered trademark for iBUYPOWER both dating from June 27, 2007. He registered the Disputed Domain Name on June 21, 2007. The Respondent carries on a retail business in Australia selling computer hardware, software and peripherals through its website at the Disputed Domain Name to customers in Australia.
The Complainant submits that its registered United States trade marks demonstrate trade mark rights as required under the first limb of the .auDRP Policy (“the Policy”) and that the Disputed Domain Name is either identical or confusingly similar to its registered trade mark rights.
As to the second element of the Policy the Complainant says that it is neither affiliated with the Respondent, nor has it authorised, licensed or permitted the Respondent to use its mark. Further, the Complainant argues that the Respondent has attempted to create confusion among consumers of gaming computers which does not assist it in establishing rights in the Disputed Domain Name, and the Respondent's use of the Disputed Domain Name would suggest to Australian consumers that the Respondent's site is the Australian web presence of the Complainant. However, consumers will not find information about the Complainant's products on the Respondent's website. The Complainant submits that the Respondent secured the Disputed Domain Name well after the Complainant's first use of its mark and only obtained trade mark rights after registration of the Disputed Domain Name, which confirms the Respondent's intention to create confusion amongst consumers.
As to the third element, the Complainant submits that the Respondent is intentionally using the Disputed Domain Name to confuse consumers by suggesting an affiliation with the Complainant when there is no such affiliation, and that this is evidence of bad faith. It says that the fact that the Respondent's sales are limited to Australia is not material in view of the renown of the Complainant's mark. The Complainant states that it regularly advertises in four gaming magazines each month and has advertised in three others in the past, all of which are likely to be read by Australian consumers. Further, the Respondent's registration of the Disputed Domain Name, after the Complainant's substantial use and earlier registration of an identical and non-generic mark must be more than coincidence. Overall, the Respondent's intention must have been to confuse consumers into thinking that there is some connection between the parties, which the Complainant contends is indicative of registration and use in bad faith.
The Respondent says that the Complainant has not identified any relevant trade mark rights in Australia for the purposes of the Policy and is unlikely to ever secure registered rights as the Respondent is the prior registered owner in Australia of the iBUYPOWER trade mark. Further it is apparent that the Complainant does not trade in Australia, based on the statements made in the “FAQ” section of the complainant's own website where it says that it only ships products within the United States and Canada.
The Respondent says that it has carried on its legitimate business under the IBUYPOWER trade mark and business name in Australia since the date of registration of its business name. The Respondent says that it was entitled to register the Disputed Domain Name because the Complainant does not have any registered or common law trade mark rights in Australia and by its own admission does not trade in Australia. Accordingly, the Complainant has not succeeded under the second element of the Policy.
The Respondent provides a statutory declaration that it did not seek to register its mark to confuse consumers as to its association with the Complainant and that it is unaware of the Complainant ever having traded in Australia. Further the Respondent says that it added a disclaimer to its website to ensure that there could be no confusion.
This is a complaint under the auDRP in relation to a domain name registered in the “.au” domain name space. Accordingly, the requirements of the auDRP policy govern the dispute. For the Complaint to succeed under paragraph 4(a) of the Policy it 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.
The auDRP is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP). Accordingly, the Panel has drawn on authority concerning the UDRP, as have both of the parties.
The Complainant owns in the United States two combined word and device marks which wholly incorporate the IBUYPOWER mark (2955109 and 3586957) and one identical word mark registration (3586748). The Policy does not specify that trade mark rights must be located in Australia and previous panels have expressly found that the first element under the Policy does not require a finding of trade mark rights in Australia, but rather trade mark rights for this purpose can be located anywhere in the world, even in circumstances such as in this case where there is no adequate evidence of such rights in Australia. (See for example Doteasy Technology, Inc. v. M Makras and E.A Nahed dba Dot Easy Australia, WIPO Case No. DAU2006-0011 and WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking”, WIPO Case No. DAU2006-0007).
This Panel finds this interpretation of the Policy to be at odds with (i) the restricted nature of the “.com.au” domain space (restricted as it is to entities, traders and persons having a commercial link with Australia) and (ii) with the interpretation by yet other panels of the “name” requirement under this element (which differs from the UDRP) to have in mind an Australian registered business name or corporate name. However, in the interests of consistency it is loathe to depart from an interpretation that has been followed by a number of distinguished panels and even if the result could theoretically result in a conflict with the position under Australian national law which in the circumstances of a ccTLD (as opposed to the UDRP) is in this Panel's view a valid and important consideration.
Accordingly the Complainant has demonstrated that it owns trade mark rights and that the Disputed Domain Name is identical or confusingly similar to its trade marks and as a result the Complainant fulfills the requirements of the first element of the Policy.
Under the Policy, it is for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and it is then for the Respondent to rebut the case.
The Complainant asserts that it is neither affiliated with the Respondent, has not authorised, licensed or permitted the Respondent to use its mark, nor does the Respondent sell its products. Rather the Respondent is taking advantage of its mark by attempting to create confusion among consumers of gaming computers, in particular by suggesting to consumers that the Respondent's site is the Australian web presence of the Complainant. This is confirmed by the fact that the Respondent secured the Disputed Domain Name well after the Complainant's first use of its mark and only obtained trade mark rights after registration of the Disputed Domain Name.
The Respondent rebuts this case by asserting that the Complainant owns no trade mark rights in Australia and does not trade in that country, whereas the Respondent owns national registered and common law rights. As soon as it became aware of any possibility of confusion it added a disclaimer to its site.
Given the Respondent's Australian trade mark registration and demonstrated use of the mark in Australia for more than 2 years, it is difficult for the Complainant to make out a case that the Respondent has no rights or legitimate interests. The Complainant's case is only likely to succeed if it can show that the Respondent's choice of the Disputed Domain Name was not bona fide.
The Respondent's evidence indicates that it chose its name without seeking to create confusion with the Complainant's website, products or customers. Considering the compelling evidence that the Complainant does not trade in Australia or sell to Australian-based customers, the minimal evidence of any reputation in Australia as a consequence of magazine advertising and that there is little or no potential for confusion, the Panel is inclined to accept the Respondent's arguments.
Even though the Disputed Domain Name is not generic, it seems to this Panel that where there was minimal scope for confusion at the time of registration and where there is no evidence that the Complainant acted promptly to protect its alleged rights, then it cannot be said that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Respondent has successfully rebutted the case that it has no rights or legitimate interests and the Complaint does not succeed under this second element of the Policy. As the Complaint fails it is unnecessary for the Panel to consider the third element.
For all the foregoing reasons, the Complaint is denied.
Dated: October 6, 2009