The Complainant is Mark Kingsley Williams, c/o Trade Mark Direct Ltd of London, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Bbhinds Pty Ltd of New South Wales, Australia represented by Victor Ng of Markwell Intellectual Property Lawyers, Australia.
The disputed domain name <trademarkdirect.com.au> is registered with Netfleet.com.au.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2013. On March 22, 2013, the Center transmitted by email to Netfleet.com.au a request for registrar verification in connection with the disputed domain name. On March 25, 2013, Netfleet.com.au 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 April 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2013. The Response was filed with the Center on April 24, 2013.
The Center appointed Michael J. Spence as the sole panelist in this matter on May 7, 2013. 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 offers an advisory service in relation to intellectual property rights in the United Kingdom. The Respondent has for many years manufactured and sold children's clothing and nappies. On May 19, 2011, a company associated with the Respondent, Datweb Pty Ltd, registered the disputed domain name. Datweb Pty Ltd holds many domain name registrations. In an email from the Complainant to the Respondent it is alleged that on October 22, 2012 the Complainant was granted an Australian trade mark registration for the trade mark TRADEMARKDIRECT. On or around February 22, 2013, the Respondent acquired the disputed domain name from Datweb Pty Ltd.
The Complainant contends: (i) that the disputed domain name is identical or confusingly similar to its registered trade mark; (ii) that the Respondent has made no preparations to use the disputed domain name, has no rights or legitimate interests in the disputed domain name, and could not have such rights in relation to the use of the disputed domain name for a clothing website because it would be misleading; and (iii) that evidence of bad faith can be found in a pattern of registration of domain names by Datweb Pty Ltd including well-known trade marks, and in fact, a Google search by the Respondent would have put it on notice of the Complainant’s business and therefore revealed the potential for consumer confusion.
The Respondent contends: (i) that the Complainant has not provided evidence, beyond the trade mark registration itself, that it is owner of the registered mark or has common law or any other rights in the trade mark TRADEMARKDIRECT (ii) that the Respondent has been making legitimate preparations to use the disputed domain name since June 2012 and therefore has rights or legitimate interests in the disputed domain name; and (iii) that as the trade mark registration was dated a year after the registration of the disputed domain name and there was no evidence any pre-existing common law trade mark, the registration could note have been in bad faith, that there was no evidence tendered of the pattern of misleading domain name registration asserted by the Complainant, that it was legitimate for the Respondent to acquire the disputed domain name from a related company, and that the fact that a Google search would have revealed the Complainant’s business in a different field in a different country was irrelevant. The Respondent also contends reverse domain name hijacking under the Rules paragraph 15(e).
It is clear that the disputed domain name is identical to the trade mark which is alleged by the Complaint. However, the Complaint (remarkably for a Complaint purporting to offer advisory services in relation to intellectual property) contains only an extract of the wording of the relevant trade mark with no further evidence of the claimed registration, that it is the Complainant itself that has rights in the trade mark, the date of registration, or evidence of any prior common law trade mark rights. This is wholly inadequate as an evidentiary basis upon which to establish that the trade mark it is alleged is identical or confusingly similar to the disputed domain name is one in which the Complainant has rights. It is particularly problematic as much of the Complainant's argument is based on the notion of existing goodwill in its UK business of which no evidence at all is adduced.
The Panel does not exclude the possibility that the Complainant was in fact granted an Australian trade mark registration for the trade mark TRADEMARK DIRECT, but the evidence of that is lacking on the record before the Panel in these proceedings. Moreover, such evidence as is provided in these proceedings of the date of registration of the Complainant’s trade mark, a reference to that date in an email from the Complainant to the Respondent cited by the Respondent, suggests that the trade mark was registered on October 22, 2012, while the date of registration of the disputed domain name is May 19, 2011. No evidence at all is provided by the Complainant of goodwill in a preceding unregistered trade mark. Such evidence is particularly relevant because of the potentially descriptive nature of the mark. The Panel has considered but is not in the circumstances minded to grant the Complainant another bite at the cherry by way of a Panel Order requesting that evidence of either the date of registration of the Australian trade mark, or of preceding trade mark rights be provided. The burden of proof is on the Complainant and the Complaint in any event fails for other reasons discussed further below.
The Panel therefore finds that the Complainant has not established the first element of Paragraph 4(a) of the auDRP Policy.
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
In this case, the Complainant has alleged that the claim that the Respondent is preparing to use the disputed domain name for a clothing web site is a “fiction”. It also claims that the Respondent could have no rights in relation to the use of the disputed domain name for a clothing web site as it would be inherently confusing. However, the Respondent claims that it has been preparing for the web site for which it acquired the disputed domain name from a related company from before the date of the trade mark registration, and no evidence has been adduced of prior rights. It further contends that the use of the disputed domain name for a clothing web site would be no more inherently confusing than it is “misleading that the website at <apple.com.au> is used to sell computers and not fruit and that <amazon.com> sells books not South American river cruises”.
In relation to this second element of Paragraph 4(a) of the auDRP Policy, the evidence adduced by both the Complainant and Respondent is insufficient to determine the extent of the Respondent's rights or legitimate interests in the disputed domain name. As the burden of proof falls on the Complainant, the Panel finds that the Complainant has not established the second element of Paragraph 4(a) of the UDRP Policy.
The trade mark upon which the Complainant allegedly relies – assuming it was registered and is owned by the Complainant as alleged – was apparently registered after the disputed domain name. As the Complainant adduces no evidence of prior trade mark rights, nor of continued use with a presumed intention to mislead, the Complainant's argument with respect to registration in bad faith cannot succeed. The Panel finds the fact that the company from which the Respondent acquired the disputed domain name holds some domain names which may be misleading is strictly irrelevant to the determination of this case. For similar reasons, the Panel is not persuaded that the Complainant has succeeded (even by implication) in establishing a case of bad faith use.
The Panel therefore finds that the Complainant has not established the third element of Paragraph 4(a) of the auDRP Policy.
Paragraph 15(e) of the UDRP Rules provides that, 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 under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In this case, there is insufficient evidence to support a finding of reverse domain name hijacking. Rather, the Complaint that has been submitted appears to have been inadequately prepared and, in particular, inadequate evidence adduced to support its claim.
The Panel therefore finds that the Respondent has not established its claim of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Michael J. Spence
Date: May 21, 2013