The Complainant is Cognito Software Limited of Auckland, New Zealand, internally represented.
The Respondent is Rethink IT Pty Ltd of Armadale, Victoria, Australia, represented by Cooper Mills Lawyers, Australia.
The disputed domain name <moneyworks.com.au> is registered with Distribute.IT t/as ClicknGo.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2009. On November 20, 2009, the Center transmitted by email to Distribute.IT t/as ClicknGo a request for registrar verification in connection with the disputed domain name. On November 22, 2009, Distribute.IT t/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. 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 December 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2009. The Response was filed with the Center on December 29, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on January 5, 2010. 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 the owner of marks for MONEYWORKS in various classes, registered in various jurisdictions including New Zealand in 2001 and Australia in 2006. The Complainant uses that mark in connection with a suite of accounting software packages. The Complainant claims (although provides no direct evidence) that it has promoted its MoneyWorks software in Australia continuously since 1994.
The Complainant provides evidence that, on May 19, 2009, it wrote to the Respondent requesting transfer of the disputed domain name. In its response on May 27, 2009, the Respondent referred to various other domain names, not owned by the Complainant, containing either the Complainant's name or trademark. Among other things, the Respondent denied that the Complainant was entitled to the disputed domain name, and claimed that “money works” is a generic term that appears in Google search 192,000 times”. The Respondent claimed to be developing a website in connection with the disputed domain name and to have invested in it a considerable amount of time and financial effort. The Respondent said that the Complainant's claim amounted to reverse domain name hijacking.
The disputed domain name was created on October 6, 2008 (as confirmed by the Registrar in its verification response to the Center, referred to above).
At the date of this decision, the disputed domain name reverts to a website including the prominent statement “Money Works” and “make your money work for you !!”. The site provides links to a small number of articles concerning financial matters, largely connected with the United States market, as well as some related financial information (including stock market indices).
The Respondent has been a previous respondent in proceedings filed under the Policy. See e.g. Blurb Inc. v. Rethink IT PTY Ltd., WIPO Case No. DAU2009-0008.
The Complainant claims that the disputed domain name contains the entirety of its mark.
The Complainant says that the Respondent appears to exist solely for the trading of domain names, and attaches a list of domain names owned by the Respondent and advertised for sale, including e.g. <mild.com.au>, <generic.com.au>, and <dcn.com.au>. The Complainant also refers to connections between the Respondent and other entities and companies which, it says, trade in domain names. The Complainant concludes that the Respondent is holding the disputed domain name for resale only.
The Complainant says (without evidence) that, until its letter to the Respondent on May 19, 2009, the disputed domain name did not revert to an active website. The Complainant says that, shortly after that correspondence, a website then appeared at the disputed domain name purporting to be a “portal to information and seminars to help make your money work for you.”
In relation to the Respondent's claim that it had invested considerable time and financial resources in the website, the Complainant says that the website is a “quick and dirty” implementation using Wordpress (a tool for the quick set up of blog sites). The Complainant provides evidence that the four articles contained on the Respondent's website are all plagarised from the website “www.traderscircle.com.au”, and says that the Respondent's website has not been updated since October 2009.
The Respondent denies the claims against it. The Respondent says that it operates an online share trading and financial seminar promotion service, and registered the disputed domain name in good faith for that purpose. The Respondent says that it also operates other business ventures, such as an online marketing business for which it has registered multiple domain names. The Respondent says that the Complainant has failed to establish its case under the Policy and requests a finding of reverse domain name hijacking.
Relevantly, the Respondent denies that the disputed domain name is identical to the Complainant's mark because that mark is registered in relation to goods and services too dissimilar to those offered by the Respondent. As such, the Respondent says there would be no confusion.
In relation to its rights or legitimate interests, the Respondent says that the Complainant has made baseless allegations against it. It says that the sale of domain names, if that was something the Respondent wished to do, is something that is permitted under the Policy. In any case, the Respondent says that it has not offered the disputed domain name for sale. The Respondent says that its website provides financial information with the aim of promoting the services of Ozfinancial Pty Ltd, trading as Traders Circle. The Respondent says that the disputed domain name is descriptive of its business.
The Respondent denies that it registered the disputed domain name in bad faith, and refers to its promotion of financial services. The Respondent says that it made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. As supporting evidence, the Respondent attaches a quote it said it received on January 6, 2009 for the development of its website.
The Respondent says that it was entitled to register the disputed domain name under the Policy, and requests a finding of reverse domain name hijacking.
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant 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.
These issues are discussed below. The Panel notes that the Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. The Panel also notes that the parties have addressed various allegations, including of trademark infringement, which is beyond the purview of the Panel to determine. The Panel has only addressed below the allegations and evidence relevant paragraph 4(a) of the Policy.
There is little doubt in the Panel's mind that the disputed domain name is relevantly identical to the Complainant's MONEYWORKS mark. The Respondent argues otherwise, on the basis that the Complainant has not registered its mark for classes descriptive of the services offered by the Respondent. Such an argument carries little weight. This is because, as relevantly noted by the Panel in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001, that the test: “is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.” The similarity of the fields of business in which the parties might compete is therefore not relevant to the question of determining, in this case, whether the mark is identical to the disputed domain name.
It is well established that the top-level domain name extension is to be disregarded for the purpose of comparison. Therefore, ignoring that element, it is plain that the “moneyworks” element of the domain name is identical to the Complainant's MONEYWORKS mark.
For these reasons, the Complainant has established this first element.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has “no” rights or legitimate interests. Once a Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with Complainant. See e.g. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has made a prima facie case against the Respondent. In reply the Respondent bases its legitimate interest on the argument that the disputed domain name is “descriptive” of the services it offers. The Respondent suggests that it is making a bona fide use of the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
This argument faces two difficulties.
Firstly, the Complainant has a registered mark for MONEYWORKS, which predates the Respondent's registration of the disputed domain name. Being a registered mark, it is entitled to a rebuttable presumption that it is distinctive, rather than merely descriptive. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Scholastic Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629. The Respondent has provided little evidence to rebut that presumption.
In addition, it is not self-evident to the Panel that the disputed domain name is relevantly descriptive as it is used by the Respondent. What does the term “moneyworks” describe in connection with the Respondent's business? It obviously combines the common words “money” and “works”. The combination of those terms might be loosely suggestive of the field of financial services the Respondent claims to provide. However, the Respondent provided no evidence that those words, when combined, have a particular descriptive meaning directly relating to its business. Neither did the Respondent provide evidence that it uses the term descriptively on its website or otherwise.
The term “moneyworks” might, in some contexts be used descriptively, based on the separate dictionary meaning of those words. This is not, however, the context in which the Respondent uses them. Instead it appears to the Panel that the Respondent is using the term itself as a type of mark. Apart from its use of the term at the top of its website, the Respondent's website refers to itself as “MoneyWorks”. For example, the website includes statements such as “MoneyWorks provides a portal to information and seminars…”. It is evident from this type of use that the Respondent is using the term as a badge for its business, rather than a descriptive term for the services it provides. The way in which the Respondent presents those words (without spacing between them, and separately capitalized) reinforces this impression. That is, the Respondent's argument that it uses “moneyworks” descriptively is not backed up by what it does.
Secondly, whether the Respondent is making a bona fide use of the disputed domain name may depend on a consideration of good faith. See e.g. Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058, citing World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499 (“[n]ot all use prior to notice of the dispute can qualify as bona fide use”). A lack of good faith may be inferred where there is evidence that the Respondent registered the disputed domain name to exploit the value of a mark which it incorporates. See, e.g., The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346.
Put simply, the Panel considers that it is more likely than not that the Respondent was aware of the Complainant's mark when it registered the disputed domain name, and sought to obtain some advantage from confusion with that mark. The Complainant provided evidence of having marks registered both in Australia (where the Respondent has its address) and in New Zealand, before the registration of the disputed domain name. The Panel notes that a simple Google search for “moneyworks” ranks the Complainant's website at the top of its search results. The Respondent is clearly a sophisticated user of the Internet and might reasonably be expected to have been aware of the Complainant's Internet presence through such a simple search.
Further, there is the coincidence of the Respondent's selection of the disputed domain name. Despite evidence that the Respondent was also in the business of registering domain names, the Respondent provided no evidence that it had registered any other domain name descriptive or suggestive of its financial services. The Respondent provided no evidence of registering a disputed domain name more directly referring to Ozfinancial Pty Ltd, trading as Traders Circle, with which the Respondent's Director claims a business relationship. The Respondent provided little explanation for the nature of the information on its website, including why it has used only a domain name in the “.au” ccTLD in connection with a website providing information that seems to be directed particularly to the United States market. The Panel finds it difficult to accept that the Respondent, being so geographically proximate to the Complainant, registered only the disputed domain name by accident and in connection with the same general field of business (financial services) as the Complainant. The coincidence is reinforced by the exact correspondence of the disputed domain name with the Complainant's mark.
The Panel acknowledges that the Complainant has not made out a strong or detailed case. The Complainant provided little evidence of its reputation, or detail of its business, from which the Respondent's awareness of its mark might be easily inferred. The Respondent denied that awareness. The Respondent also provided some (although not substantial) evidence of its own business. The Panel considers that elements of this case are somewhat similar to a prior case, with a different conclusion, determined by this Panel under the Policy. (See, TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003.) However, while “borderline”, the Panel considers that the nature of the Complainant's earlier registered marks, and the other evidence in this particular case, tips the balance in the Complainant's favour.
For these reasons, the Panel finds that the Complainant has established this second element.
For somewhat similar reasons to those set out above, concerning a lack of good faith, the Panel finds that the Respondent either registered, or has subsequently used, the disputed domain name in bad faith.
It is central to such a finding that the Respondent sought to exploit the value of the Complainant's mark when it registered, or when it subsequently used, the disputed domain name. Although the evidence is circumstantial, the Panel considers the degree of coincidence, and the other circumstances set out above, are suggestive of such bad faith.
Accordingly, the Complainant has established this third element.
The Respondent seeks a finding of reverse domain name hijacking against the Respondent. Because of the Panel's findings above, it follows that such a claim must fail.
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, <moneyworks.com.au>, be transferred to the Complainant.
James A. Barker
Dated: January 19, 2010