WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harvey Fresh (1994) Ltd v. Tong Jiang

Case No. D2012-0024

1. The Parties

The Complainant is Harvey Fresh (1994) Ltd of West Perth, Australia represented by Wrays, Australia.

The Respondent is Tong Jiang of Henan, China.

2. The Domain Name and Registrar

The disputed domain name <harveyfresh.com> is registered with OldTownDomains.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2012. On January 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2012, the Registrar 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2012.

The Center appointed Francine Tan as the sole panelist in this matter on February 7, 2012. 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.

4. Factual Background

The Complainant is a family-owned business which manufactures, promotes and sells dairy products, fruit juices and wine. The Complainant states that it commenced manufacturing juice products in 1986 and dairy products in 1989, under the trade mark HARVEY FRESH, and that it is one of three major dairy manufacturers in Western Australia, with a market share of about 31% in terms of white milk retail sales in Western Australia. It claims to have a long and well-respected history in the Harvey region and throughout Western Australia. The Complainant is also said to be known by the HARVEY FRESH trade mark in other states and territories within Australia and overseas. A Statutory Declaration was filed in support of the Complainant’s claim of goodwill and reputation.

The Complainant acquired the domain name <harveyfresh.com.au> in 2001 and established a website for that domain name in the same year. In August 2010 the Complainant launched a new website for the domain name <harveyfresh.com.au>. The Complainant recorded that its website received over 94,000 visits and over 460,000 page views in the past twelve months.

In terms of its trade marks, the Complainant cited the following Australian registrations:

1) No. 710319 for HARVEY FRESH - registered on June 7, 2006 covering “Milk; milk beverages; yoghurt, cream and custard” (Class 29); “Fruit juice; non-alcoholic fruit juice based beverages; fruit juice cordial” (Class 32);

2) No. 1270482 for HARVEY FRESH - filed on November 4, 2008 and accepted on October 21, 2011 covering “Dairy products; cheeses and cheese products” (Class 29); and

3) No. 1372379 for HARVEY FRESH CHEESE - filed on July 15, 2010 (pending) covering “Cheese and cheese products; cheese and cheese products in combination with food products including dried and cooked food fruits, dried and cooked vegetables, nuts, crackers, biscuits, breads, and other farinaceous foods; snack foods; fish, poultry and game; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats”.

The Complainant states that it supplies its products to other countries including China, Singapore, the Philippines, Malaysia, Indonesia, Bangladesh, Vietnam, Japan and Korea.

The disputed domain name was registered on May 8, 2009.

The Complainant submitted in evidence a copy of a Domain Tools Reverse WhoIs Report for domain names registered in the name of the Respondent which shows that the Respondent apparently owns about 408 other domain names.

A. Complainant

The Complainant submits that:

(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

With regard to the first element of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain name is identical to its trade mark as it contains the words “Harvey Fresh” to which the Complainant has rights and the addition of the top level domain “.com” does not remove that similarity.

As for the second element of paragraph 4(a) of the Policy, the Complainant submits that:

(i) there is no evidence that the Respondent is commonly known by the name Harvey Fresh;

(ii) its use of the disputed domain name in relation to a website with pay-per-click links does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate non-commercial fair use” of the disputed domain name, especially where the goods or services compete with those of the Complainant. Exploitation of the reputation of a trade mark to obtain click-through commissions from the diversion of Internet users is an example of use in bad faith; and

(iii) “Harvey Fresh” is not a generic term and therefore the Respondent’s use of the disputed domain name incorporating that name is a deliberate attempt to trade off the Complainant’s reputation in the HARVEY FRESH mark.

Finally, with regard to the third element of paragraph 4(a) of the Policy, the Complainant points out that the objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another. In this case, the Respondent’s registration of the disputed domain name was for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name and to misleadingly attract, for commercial gain, Internet users to the Respondent’s website.

At the top left-hand side of the Respondent’s homepage to which the disputed domain name resolves is a function to “inquire about this domain name”. It links to a page which allows the user to offer an amount of money to purchase the disputed domain name. Although there is a “legal disclaimer” that states that this does not constitute an offer to sell the disputed domain name, the Complainant submits that this is an indication of bad faith registration and use which is supported by other evidence of bad faith:

a. The Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its HARVEY FRESH trade mark in a corresponding domain name, and the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy). The sheer number of other domain names registered by the Respondent and the fact that many of them are monetized websites demonstrate that the Respondent has engaged in a pattern of conduct of preventing others from reflecting their own rights in corresponding domain names.

b. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location by creating a likelihood of confusion with the Complainant’s HARVEY FRESH trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site or location or of a product or service on his web site of location (paragraph 4(b)(iv) of the Policy). The Respondent’s registration and use of the disputed domain name is likely to mislead or deceive Internet users into believing that the web site is affiliated with the Complainant.

c. The Complainant had rights in, and was using, the HARVEY FRESH trade mark at the time the Respondent registered the disputed domain name.

d. The disputed domain name is likely to confuse consumers into wondering whether the Complainant is the source of, has sponsored or endorsed, or is affiliated with, the Respondent’s website. This is because the content on the Respondent’s website provides “related searches” and “sponsored listings”, most of which relate to or offer similar products and services to those offered by the Complainant such as the offer of healthy fruit juice, dairy products, fresh juices, juice recipes, fresh fruit smoothie recipes, organic raw milk, etc.

e. The website to which the disputed domain name resolves is monetized. Websites that have no reason for existence other than domain name monetization can never in and of themselves be considered use in good faith.

f. The Respondent was, or should have been aware of, the Complainant’s pre-existing rights in the trade mark HARVEY FRESH in view of the fact that the Complainant’s trade mark is widely known in its business sector and the fact that the content of the Respondent’s website relates to products of the Complainant. Moreover, the Complainant has a presence in China where the Respondent is located. A search using the Google or Baidu search engines would have made the Complainant’s rights known to the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy requires the Complainant to prove each of the following elements in order to obtain an order in its favour:

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established it has rights in the trade mark HARVEY FRESH. This trade mark has been incorporated in the disputed domain name. As generic top level domains (such as “.com” in this case) are of no consequence in the consideration of whether a domain name is identical or confusingly similar to a complainant’s trade mark, the Panel therefore finds that the disputed domain name which contains the Complainant’s HARVEY FRESH mark in its entirety is identical for the purposes of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In accordance with the Rules, paragraph 15, the Panel has to make its decision “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. This means that notwithstanding the Respondent’s failure to file a Response, the Complainant still has to be found to satisfy the evidentiary burden of establishing at least a prima facie case in compliance with the requirements of the Policy. The default on the Respondent’s part does not automatically nor necessarily result in a favorable decision for the Complainant.

The Panel has considered the evidence submitted and comes to the conclusion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, although not in and of itself a factor which is conclusive, the Panel draws a negative inference from the Respondent’s silence in these proceedings. One would expect a registrant of a domain name to want to defend or refute any adverse claims made against its domain name registration where it has a right or legitimate interest in it. Therefore in not taking steps to challenge or defend the disputed domain name registration in these proceedings, a measure of doubt is inevitably cast on the Respondent’s intentions and motivation for having registered the disputed domain name.

In the absence of a response from the Respondent, the Panel is unable to find a basis for arriving at a different conclusion.

The Panel therefore finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that evidence of bad faith registration and use can be found to have been established in any of the following situations:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location.

In this case, the Panel finds a number of circumstances to cause one to doubt that the Respondent had registered and used the disputed domain name other than in bad faith. Firstly, the Respondent’s specific choice in combining the words “Harvey” and “Fresh” is rather suspect, considering that Harvey is not a generic or common word. Secondly, the Complainant points out that there appears to be a pattern of conduct on the Respondent’s part in registering numerous domain names, apparently for the purpose of monetization and/or cybersquatting purposes. The Panel therefore agrees that the Respondent must have known of the Complainant and/or of its trade mark when he registered the disputed domain name. The Panel finds merit in the assertion made by the Complainant that the element of bad faith can also be found in the “legal disclaimer” which appears on the Respondent’s webpage which the Panel notes, reads as follows: “This form does not constitute an offer to sell this domain, and the owner of this domain is not otherwise stating any intention to sell the domain. By hereby submitting a request for information and/or an offer you are acting as the sole initiator of a possible transaction between you and the owner of this domain”.

This is undoubtedly an attempt by the Respondent to disclaim or shift responsibility to the person who inquires on the price of the disputed domain name. However, the Panel is of the view that the “inquire about this domain name” function which appears on the Respondent’s homepage is a reflection of one of the primary purposes for the Respondent’s registration of the disputed domain name which is to sell, rent, or otherwise transfer it to the Complainant who is the owner of the HARVEY FRESH trade mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The Panel also finds that the circumstances described in paragraph 4(b)(iv) of the Policy apply in this case. The Respondent’s intention must have been to try to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s HARVEY FRESH mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the web site or location.

Although Internet users looking for the Complainant’s website would ultimately come to realize that the Respondent’s website to which the disputed domain name resolves is not the Complainant’s or endorsed by it, the initial interest confusion would have been caused. Such an abusive registration of a domain name should not be allowed.

The Panel therefore finds that the Complainant has satisfied the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <harveyfresh.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Dated: February 17, 2012