The Complainant is Blurb Inc. of San Francisco, California, United States of America, represented by jdrlegal Pty Ltd., Australia.
The Respondent is Rethink IT Pty Ltd of Victoria, Australia, represented by Cooper Mills Lawyers, Australia.
The disputed domain name <blurb.com.au> is registered with Distribute.IT trading as ClicknGo.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2009. On September 1, 2009, the Center transmitted by email to Distribute.IT trading as ClicknGo a request for registrar verification in connection with the disputed domain name. On September 2, and September 4, 2009 Distribute.IT trading as ClicknGo 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 by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 16, 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 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2009. The Response was filed with the Center on October 12, 2009.
The Center appointed John Swinson as the sole panelist in this matter on October 15, 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.
During the course of the proceedings, the Panel requested further statements from both the Complainant and the Respondent. In accordance with the Rules, paragraph 12, on October 20, 2009, the Panel requested more information in relation to the following:
(i) when the domain name was first registered;
(ii) when the Respondent first acquired the disputed domain name;
(iii) the Respondent's preparations to use the name “Blurb” and “www.blurb.com.au”;
(iv) examples of what the website “www.blurb.com.au” looked like prior to July 2009.
A response was received by the Center from both the Respondent (on October 22, 2009) and the Complainant (on October 23, 2009). Neither the Complainant nor the Respondent could provide the Panel with examples of what the website at “www.blurb.com.au” looked like prior to July 2009.
The Complainant is a company incorporated in the United States of America (“United States”) with its registered address in San Francisco, California.
The Complainant is involved in the business of providing Internet services in the publishing industry. The Complainant offers a creative publishing platform that allows customers to publish their own books. The Complainant's online bookstore and marketing tools also enables users to share, market and sell their books. The Complainant launched its business through its website “www.blurb.com” in May 2006.
The Complainant has registered the BLURB trade mark in various countries around the world including Australia (see Australian Trade Mark Registration number 1105144). The Complainant has also registered associated trade marks, BLURB BOOKSMART and BOOKIFY in Australia (see Australian Trade Mark Registration numbers 1104120 and 1125757) and several other jurisdictions.
Prior to the commencement of these proceedings, the Complainant has offered to purchase the disputed domain name four times (once anonymously) for varying amounts. Each offer to purchase the disputed domain name was rejected by the Respondent.
The domain name in dispute was first registered on January 28, 2005 by a third party. It is not disputed that the Respondent acquired the domain name in dispute on or about March 2, 2009. The website operating from the disputed domain name is currently inactive.
The Respondent is the owner of trade mark application for BLURB MARKETING (see Australian Trade Mark Application number 1311432), that was filed shortly after the Respondent received a letter from the Complainant's legal representatives. This application has been accepted by the Australian Trade Marks Office and is currently awaiting advertisement.
The Complainant makes the following contentions:
The Complainant is involved in the business of providing Internet services in the publishing industry. The Complainant offers a creative publishing platform which allows customers to publish their own books. The Complainant's business also enables users to share, market and sell their books. The Complainant launched its business through its website “www.blurb.com” in May 2006.
The Complainant owns the following trade marks in Australia:
BLURB - Trade Mark Registration number 1105144, registered from March 23, 2006 for computer software and printing services.
BLURB BOOKSMART - Trade Mark Registration number 1104120, registered from March 17, 2006 for computer software.
BOOKIFY - Trade Mark Registration number 1125757, registered from July 26, 2006 for computer software, communication services and computer software design.
The Complainant has approximately 1.1 million users. During the year 2008, the Complainant achieved approximately USD 30 million in sales, approximately 4% of which is attributable to the Australian market (which is currently the Complainant's 5th largest geographic market).
The disputed domain name is identical to the Complainant's BLURB trade mark.
The Respondent is not commonly known by the domain name. The Respondent is not and has never held itself out as “Blurb” as a company and has neither registered the business name “Blurb”, nor applied for registration of the trade mark BLURB or BLURB.COM.AU.
Based on previous content on the website, the Respondent was using the domain name as a ‘link farm' to online book printing, book publishing and book purchasing for individuals and small businesses and the Respondent was or has been, amongst other things, been in the business of facilitating transactions between consumers and various publishing-related service providers through the domain name.
Given the nature and process of website registration, it is unreasonable to believe that during this process the Respondent did not become aware of the Complainant's website “www.blurb.com”. Through conducting preliminary research and due to the significant media coverage the Complainant has received, the Respondent had, or ought reasonably to have had notice of the Complainant's trade mark, the Complainant's business, and the domain name <blurb.com> prior to offering any goods or services.
There are striking similarities between the domain name and the Complainant's website which further support that the Respondent was aware of the Complainant's website and business. These include the fact that both the domain name and the website incorporate the word “blurb”, the business model under the domain name is similar to the Complainant's business in that both businesses facilitate online printing, publishing and purchasing of books through the Internet and both the Registrant's domain name and the Complainant's website use the same key word searches including searches on “Blurb”, “Blurb Books” and “Blurb Publishing”.
The Respondent's use of the domain name is likely intended to mislead or divert customers and potential customers from the domain name <blurb.com> therefore the Respondent cannot be considered to have been using the domain name for legitimate commercial or fair purposes.
The Complainant has had and continues to have existing customers in the Australian market. The Respondent has knowingly registered the disputed domain name in an attempt to secure a portion of the Complainant's Australian market.
By using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's trade mark, including suggesting affiliation or endorsement of the domain name by the Complainant.
The Respondent makes the following contentions:
The Respondent has operated an online web marketing business (and associated services) since late 2008 under the name “Blurb Marketing.” Prior to this it provided web development services under its own name, ReThink IT.
The Respondent is involved in the business of web development, online marketing and search engine optimization.
The Respondent owns the following trade mark application in Australia:
BLURB MARKETING - Trade Mark Application number 1311432, filed July 24, 2009 for marketing purposes.
The Respondent's business provides online web marketing services. The Respondent is not in the business of the facilitation of “transactions, including purchasing and publishing of printed books, between consumers and publishers of books” as asserted by the Complainant. The Complainant produces no evidence of this assertion.
The Respondent has been in the process of developing its website for deployment on the disputed domain name. Evidence for this is shown in the quotes it obtained from “Design Elements Pty Ltd” in May 2009 and in the development of the website, which refers to its services of “search engine optimization” and “Internet marketing services”. However, as a consequence of this proceeding the Respondent has been forced to put its website deployment plans on hold pending a resolution of this proceeding and any subsequent litigation.
The Respondent registered the disputed domain name in furtherance of their business in good faith. The Respondent chose the name “Blurb Marketing” as the word “Blurb” is a generic word that has the meaning of “a brief advertisement or announcement” which was ideal for the online marketing and advertising services and strategies it provides for its customers in Australia.
It is very clear that the Respondent does have rights and legitimate interests in the domain name therefore the Complainant has failed to satisfy the evidential burden which it carries.
Australian trade mark law does not support the proposition that a trade mark owner has a monopoly use of a word over anything other than the classes in which it has sought and obtained registration, this is particularly so for a descriptive word such as “blurb”. An infringement is not made out by using a descriptive word for goods and services which are not within the class or goods or services for which a trade mark is registered.
The Respondent was not aware of the Complainant's business in Australia when choosing its name. However regardless of whether or not the Respondent was or was not aware of the Complainant and its trade marks is irrelevant, as the Respondent is using its own trade mark in a different class to that of the Complainant's.
The Respondent has never since registration of the domain name authorized, consented to or allowed another person to (a) have any website resolve from the domain name and (b) have any ‘link farm' resolve from the domain name. The Respondent has never been aware of any website or ‘link farm' which resolved from the website and suggests that the previous registrant of the domain name may have allowed the domain name to resolve to the unknown websites.
The fact that the Complainant's business is very well-known ensures that its customers and potential customers could not be confused by the Respondent's business, firstly because the website has not yet been launched, and secondly, as the services the Respondent offers are not within the clauses in which the Complainant claims it has a reputation within the Australian market place.
The Complainant's conduct up to and including the filing of this proceeding amounts to reverse domain name-hijacking. The Complainant has offered to purchase the domain name from the Respondent no less than three times. Each offer is accompanied by a threat of legal or auDRP proceedings which clearly amounts to bad faith as the threats were tied to the offers.
To succeed in its claim, the Complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the domain name registered by the Respondent is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect to the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving these elements lies with the Complainant.
The Complainant is the registered owner of Australian Registered Trade Mark number 1105144 for BLURB. This mark was registered effective from March 23, 2006.
The BLURB trade mark is identical to the disputed domain name. The suffix “.com.au” can be ignored for this purpose. Nemetschek North America, Inc., OzCAD Pty Limited v. CAD Australia Pty Limited, WIPO Case No. DAU2008-0014; MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016 and BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
Accordingly, the first element has been met.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii):
(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 (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark 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 name, trade mark or service mark at issue.”
Paragraph 4(c)(i) is relevant.
The Respondent became aware of the subject matter of this dispute in July 2009. The Respondent learnt that a third party was interested in purchasing the disputed domain name on or about July 1, 2009. The Respondent was sent a demand letter on July 17, 2009. Thus, for the purposes of paragraph 4(c)(i), the Panel must consider whether, before July 2009, either (a) the Respondent made bona fide use of the disputed domain name or the name BLURB (or in this case, BLURB MARKETING) in connection with an offering of goods or services; or (b) the Respondent made bona fide demonstrable preparations to use the disputed domain name or the name BLURB (or in this case, BLURB MARKETING) in connection with an offering of goods or services.
The Respondent acquired the disputed domain name in early March 2009, and it appears (although is not certain) that the Respondent intended to launch its BLURB MARKETING business in September 2009.
The Respondent has submitted evidence that in May, it was preparing to launch an online business under the name BLURB MARKETING. This was demonstrated by written correspondence from a third party, “Design Element”, a web design business, which was hired to develop a website and other marketing materials under the BLURB MARKETING branding. In correspondence from “Design Element” dated May 19, 2009 and May 25, 2009, the domain name <blurb.com.au> and the name “Blurb Marketing” are used, although the exact nature of the business that was planned is not disclosed in this correspondence. The Respondent has also produced basic designs for its website (the date of creation is uncertain, and it could have been created in or after July 2009) which refers to its services of “search engine optimization” and “Internet marketing services”.
Thus, although the evidence may not be extensive, on balance, the Panel finds that the Respondent made preparations to use the disputed domain name and the name BLURB MARKETING prior to July 2009. Were these preparations bona fide? There is little evidence to suggest otherwise.
The Complainant has produced a signed declaration stating that when the Respondent owned the disputed domain name, the website at the disputed domain name contained pay-per-click links (i.e., a link farm) including links to competitors of the Complainant. The Complainant did not provide a copy of this website. Even assuming the existence of such website, it would, not necessarily prove fatal to the Respondent's case. The “link farm” website is not what the Respondent relies upon to show its legitimate interest – the demonstrable preparations to use are preparations for a bona fide website that is legitimate. The temporary link farm website described could conceivably be evidence of bad faith in relation to the third element (paragraph 4(a)(iii) of the Policy). But in the present circumstances the weight of evidence seems to the Panel to be insufficient to negate the fact that the Respondent made bona fide demonstrable preparations to use the disputed domain name or the name BLURB (or in this case, BLURB MARKETING) in connection with an offering of goods or services
For a generic term such as “blurb”, “a complainant must make a strong showing of the absence of legitimate interest if it is to succeed.” Jupitermedia Corporation and Australia Internet.com Pty Ltd v. Spotpress Pty Ltd. trading as Internet Printing, WIPO Case No. DAU2003-0005. The Respondent states that it chose the word “blurb” as it is a generic word that has the meaning of “a brief advertisement or announcement” which was ideal for the online marketing services it provides in Australia. In circumstances where a generic word has been used by the Respondent for offering goods or services, or where such use can be proven to be in preparation, it has been found that the Respondent has a legitimate interest in the domain name. TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003; Jupitermedia Corporation and Australia Internet.com Pty Ltd v. Spotpress Pty Ltd. trading as Internet Printing, WIPO Case No. DAU2003-0005 and WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking”, WIPO Case No. DAU2006-0007.
Even if the Respondent was aware of the Complainant's business when it acquired the disputed domain name or chose the business name BLURB MARKETING, that would not by itself necessarily show that the Respondent has no rights or legitimate interests in the disputed domain name. This is largely the case here because the disputed domain name consists of a generic word. TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003. Moreover, as the Respondent points out, its proposed business would seem unlikely to infringe the Complainant's Australian trade mark or to compete with the Complainant's business. If a person owns a dot com domain name, that, of itself, does not mean that any person who registers the corresponding dot com au domain name does so in bad faith or without a legitimate interest.
Accordingly, the Panel finds that the Respondent has legitimate interests in the disputed domain name, and the second element has not been met.
Due to the findings above it is not necessary to decide this issue.
The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant.
Paragraph 15(e) of the Rules states:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse domain name hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified as the Complainant had an arguable case for each element of the Complaint. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: October 28, 2009