WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gregory Bros Pty Ltd, Gregory Jewellers Pty Ltd, LGR Holdings Pty Ltd v. Ann Schafer
Case No. D2013-0064
1. The Parties
The Complainants are Gregory Bros Pty Ltd (the “First Complainant”), Gregory Jewellers Pty Ltd (the “Second Complainant”) and LGR Holdings Pty Ltd (the “Third Complainant”) of Sydney, New South Wales, Australia represented by Argyle Lawyers, Australia.
The Respondent is Ann Schafer of Gladstone, Queensland, Australia represented by Andrew Nicholson, Australia.
2. The Domain Name and Registrar
The disputed domain name <gregoryjewellers.net> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2013, 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 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2013. The Response was filed with the Center on February 11, 2013.
The Center appointed Adam Taylor as the sole panelist in this matter on February 22, 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.
4. Factual Background
The Complainants were incorporated in Australia in 1982, 1995 and 2005 respectively. They jointly undertake a business which manufactures and sells a range of luxury jewellery products in Australia under the names “Gregory” and “Gregory Jewellers”. The business was started by the Complainants’ predecessors in the late 1960s as a jewellery manufacturer and wholesaler. Since 1989, the business has expanded into the operation of fourteen retail stores throughout New South Wales. Each of the retail stores is operated by either the Second Complainant or the Third Complainant. The First Complainant conducts the manufacturing and wholesale part of the business.
Since 2004, the Complainants’ website has been located at “www.gregoryjewellers.com.au”.
The Respondent operates a jewellery store and business in Gladstone, Central Queensland.
The Respondent registered the disputed domain name on May 21, 2011.
As of November 22, 2012, there was a website at the disputed domain name promoting the Respondent’s store. In the header of the home page, there was a logo bearing the words “Neville Gregory / Jewellers” together with the words “Leading Edge” in small font above the word “Jewellers”.
5. Parties’ Contentions
Identical or Confusingly Similar
Since 1989, the Complainants have engaged in extensive marketing in Australia including in magazines, newspapers, radio, store branding and promoting and via their website at “www.gregoryjewellers.com.au”, registered in 2004.
By reason of the advertising, promotion and sale of their products, the Complainants have developed an extensive client-base located throughout Australia.
By reason of these matters the Complainants have since the 1970s developed significant common law rights in the trade mark GREGORY JEWELLERS.
The disputed domain name is identical to the Complainants’ mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither the Respondent nor its business is commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but has registered it with the intent for commercial gain, misleadingly to divert consumers and in so doing to tarnish the Complainants’ trade mark.
Registered and Used in Bad Faith
The disputed domain name was registered and is being used in bad faith by the Respondent.
By using the disputed domain name, the Respondent is intentionally attempting 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 Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or its business or of a product or service on the Respondent’s website or sold through the Respondent’s business.
The Respondent uses the names “Neville Gregory Leading Edge Jewellers”, rather than “Gregory Jewellers”, on its website, retail store, 2012 catalogues, product packaging and product receipts. The only use made of the name “Gregory Jewellers” alone is in the disputed domain name.
A real question therefore arises as to why the Respondent has deliberately chosen not to use that name in respect of its domain name but instead elected to adopt a name identical to that used by the Complainants. The only inference is that the Respondent is engaged in a deliberate attempt to trade off the name and goodwill of the Complainants and to divert Internet consumers to the Respondent’s website and associated business.
That attempt has been effective. A Google search for the name “gregory jewellers” conducted on December 10, 2012, shows the disputed domain name interposed among references to the Complainants, the Complainants’ stores and reviews of the Complainants. This is likely to give rise to the very real possibility of deception and confusion in the marketplace.
Identical or Confusingly Similar
The relationship between the Complainants is explained by the assertion that they are “associated companies” and are “jointly engaged in conduct” of the business. However, they do not have common shareholders.
The Complainants have not identified which of them (if any) has the rights asserted in the relevant common law trade mark GREGORY JEWELLERS as opposed to the other names or marks identified in their material.
The Complainants claim common law rights arising since the 1970’s but none of the Complainants were incorporated in the 1970’s. The Second Complainant was only incorporated in 1995 and the Third Complainant was incorporated in 2005.
The Second Complainant applied for a trade mark in respect of the name/words “Gregory Jewellers” on August 2, 2012 in categories 14, 18, 35, 37 and 40. An adverse report was issued by IP Australia in respect of that application on November 1, 2012, and no further correspondence has been received from the Second Complainant at the date of the Response.
The existence of any trade mark falls to be determined on common law principles.
The name/words GREGORY JEWELLERS (absent something more) are not inherently capable of distinguishing the Complainants and their goods or services from those of other traders.
Where a mark is unregistered, there can be no presumption of entitlement to rights and the onus is on the complainant to provide convincing evidence that it should be entitled to such rights. See County Bookshops v Guy Loveday, WIPO Case No. D2000-0655, where it was held that substantial evidence would be required to establish acquired distinctiveness for a mark as inherently descriptive as “County Bookshops”. This case is similar.
The alleged name / word trade mark GREGORY JEWELLERS simply combines a generic surname with the descriptive word “jewellers”, which is wholly descriptive of the goods and services offered by the Complainants. It is not an invented, unusual or inherently unique name or set of words. “Gregory” is a common surname in Australia. An Australian surname search shows over 4,000 results for the surname “Gregory”.
The Respondent does not admit that the Complainants have satisfied the onus of establishing rights in the asserted trade mark GREGORY JEWELLERS. Rather, it appears that the Complainants’ predominant mark (if any) is the word GREGORY. In many cases, the word “Gregory” appears in the singular as a stylized word in conjunction with, and in close proximity to, a visual logo. The Complainants have made a conscious decision to promote their goods and services through use of their primary mark GREGORY. Accordingly, it is not the case that at all times the Complainants’ goods are sold under the name “Gregory Jewellers”.
The Complainants have failed to establish the existence of a trade mark rights in the name / words GREGORY JEWELLERS..
In the event that the Complainants can establish that they have rights in the name / words GREGORY JEWELLERS, the Complainants’ reputation in the mark is geographically limited to a discrete area of New South Wales (being the greater Sydney area) or to New South Wales as a whole.
Rights or Legitimate Interests
The Respondent has traded for over forty years and is a second generation family business. Throughout this long history, the family name “Gregory” has always been a fundamental part of the businesses name, branding, marketing and advertising. The Respondent’s business is located in, and promotes its goods and services predominantly within, the Central Queensland region through various media including print, radio and television advertising. Throughout 2011/12, the Respondent spent approximately AUD 58,862.27 (excl. Goods and Services Tax) on such advertising.
There is no overlap in the geographic market area occupied by its business and that of the Complainants.
The Respondent has become known and recognized as “Gregory Jewellers” or “Gregory Family Jewellers” as confirmed by emails from suppliers and other partners and from photographs of in-store point of sale items.
The disputed domain name was registered and utilized because the Respondent, for obvious commercial reasons, desired to use a domain name which reflected its well-known and respected family name, which had a more modern feel that would carry the business forward into the future as it continued to evolve and which would be easy for customers (or prospective customers) to remember and type when trying to access the website.
The disputed domain name is viewed by the Respondent as a key part of its use of a more modern brand and a logical choice as it combines the surname “Gregory” with the profession within which that name is well-known and respected: “jewellers”.
As part of the strategy to develop a contemporary and modern business enterprise and focus, the Respondent commenced using the “Gregory Jewellers” name in press advertising and in-store collateral in June 2011. The disputed domain name has featured prominently in the Respondent’s advertising since this time.
All of the Respondent’s goods and services have, since July 2011, been sold by reference to “Gregory Jewellers”. Staff are also instructed to refer to the business in this way as part of the sales process.
It is the Respondent’s intention to continue to evolve the brand towards “Gregory Jewellers”. Later in 2013, the Respondent plans to run an intensive branding change campaign, including updated store signage, branding, advertising, marketing and in-store fit-out.
The words “Gregory” and “Jewellers” form prominent components of the Respondent’s advertising and marketing material.
The Respondent’s social media sites, including Facebook, which were also launched approximately a year and a half ago, are also branded “Gregory Jewellers”.
The Respondent has used (and made demonstrable preparations to use) the disputed domain name, and a business name or branding corresponding or otherwise reasonably referable to the disputed domain name, in connection with a bona fide offering of goods or services, prior to receipt of any notice of the dispute.
The Respondent is referred to by customers and suppliers by the disputed domain name and has evolved to become recognized by the disputed domain name and/or by a name to which the disputed domain name is reasonably referable.
The Respondent is making a legitimate, fair use of the disputed domain name without intent to obtain commercial gain due to (misleadingly) diverting consumers from the Complainants, or otherwise tarnishing the alleged trade mark or service mark at issue.
Registered and Used in Bad Faith
The Complainants have failed to put forward any probative evidence that the Respondent is using the disputed domain name for the purpose of intentionally diverting customers from, or otherwise disrupting, the Complainants’ business.
The Complainants’ business is presently operated predominantly, if not wholly, in and around Sydney, New South Wales - some 1,500 kilometres from the geographic area in which the Respondent trades. The goods and services provided by the respective parties are targeted toward different segments of the market. The Complaint confirms the Complainants’ intention to appeal to the high end or premium part of the market, including through the importation and sale of luxury European brands. In comparison, the Respondent has developed its reputation as an independent, mid-range jewellery store.
The Complainant does not identify any confusion between the respective businesses of the parties despite the fact that they have both been operating for a significant number of years.
Accordingly, having regard to the nature and location of the respective businesses, the parties are directing their goods and services largely toward different markets (geographically and demographically) without any real prospect of confusion.
No evidence has been put forward to suggest that the Respondent has ever approached the Complainants or competitors of the Complainants to sell the disputed domain name or that its purpose was to prevent the Complainants from reflecting their alleged mark in a corresponding domain name.
The Respondent has merely adopted a domain name commensurate with the name by which it is recognized in the market. The name is largely descriptive and is a combination of the surname of the Respondent’s proprietors, which has been used in the promotion of the business for a substantial period of years, and a descriptive word indicating the services provided by the Respondent.
The Complainants’ submission fails to recognize, and give sufficient weight to, the fact that they do not presently appear to operate any online trading environment on their website, nor does the Respondent do so on the website located at the disputed domain name. This is significant due to the extent of geographical separation between the respective businesses.
6. Discussion and Findings
A. Procedural Issues
It is necessary, first, to deal with a number of procedural issues:
1. Identity of the Respondent
The Response has been filed by Gregory Enterprises Pty Ltd. The Response states that Ann Schafer, who is the registrant of the disputed domain name and therefore named as the Respondent in the Complaint, is in fact a web developer engaged by Gregory Enterprises Pty Ltd, which is the beneficial owner of the disputed domain name. There is an email from Ann Schafer confirming this. Accordingly, the Panel sees no reason to draw a distinction between Ann Schafer and Gregory Enterprises Pty Ltd and will treat both those entities interchangeably.
2. Multiple Complainants
Paragraphs 4.16 of The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that multiple complainants are generally permitted where, amongst other things, complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion.
The Complainants submit that they have a common interest in the disputed domain name arising from the fact that they are “associated companies” jointly engaged in conduct of the business affected by the disputed domain name and that each of them trades under the names “Gregory” and “Gregory Jewellers”. The Complainants do not explain exactly how the association arises and the Respondent adds that the companies have no common shareholders. However, according to the list produced by the Respondent, all of the shareholders of the respective companies bear the surname “Gregory”. It is therefore obvious that, even if not technically part of the same corporate group, the three companies are part of a family-run business.
In the Panel’s view the fact that the three companies are trading under the same name as part of a family business is more than sufficient to warrant the inclusion of all three companies as multiple complainants in this proceeding. In fact, as alluded to in paragraph 1.8 of WIPO Overview 2.0, it is generally better that all relevant rights holders are included as co-complainants where there is reliance on a common source of trade mark rights.
3. Supplemental Filing by the Complainants
The Complainants made an unsolicited supplemental filing on March 4, 2013 (four days before the decision was due). The Respondent has objected to admission of this supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Complainant did not attempt to establish any exceptional circumstances justifying its supplemental filing. Instead, the filing was submitted as if there were an automatic right of reply to the Response. Indeed, the Panel notes that the supplemental filing includes much material which was available to the Complainant at the time the Complaint was filed and so the existence / relevance of that material would then have been known to the Complainant.
Accordingly, the Panel declines to admit the supplemental filing.
The Panel would add, however, that even if it had admitted the Complainant’s supplemental submission, it would have made no difference to the outcome of this case.
In the view of the Panel it is unhelpful for parties to file supplemental submissions without any attempt to justify them – as the Complainants have done here. This practice can result in the addition of unnecessary complication and cost to what is intended to be a relatively quick and inexpensive procedure.
B. Identical or Confusingly Similar
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”
The Complainants have produced photographs of their stores as well as a selection of magazine advertising and media articles. While the Complainants could have done more (and they did later seek to bolster their case with additional material in the supplemental filing, which the Panel has disallowed), nonetheless in the Panel’s view the evidence submitted with the Complaint is sufficient to establish that that the Complainants have extensively promoted their jewellery business by reference to the term “Gregory” for some years. The evidence indicates that the Complainants’ business is also widely known as “Gregory Jewellers”.
While the Respondent objects to much in the Complaint, it does not seriously dispute that the Complainants have for some years operated a chain of jewellery stores in New South Wales under the name “Gregory”. Nor is it in dispute that, since 2004, the Complainants have promoted their business via a website at “www.gregoryjewellers.com.au”.
The Panel disagrees with the Respondent’s assertion that, because “Gregory” is a common surname in Australia, the terms “Gregory” / “Gregory Jewellers” are not inherently capable of distinguishing the Complainants’ business. Even if it is a common surname, “Gregory” is not an obvious term to use in connection with jewellery and the Panel does not see how “Gregory” or “Gregory Jewellers” can possibly be considered to be “wholly descriptive” of the Complainants’ goods and services.
The Respondent says that the Complainants have not identified which of them owns the relevant trade mark rights. The Panel disagrees. In the Panel’s view, it is clearly the Complainants’ case that all three Complainants trade jointly under the names “Gregory” and “Gregory Jewellers”; the First Complainant undertakes the manufacturing and wholesale aspects of the business; the other two Complainants between them operate the retail stores.
The Respondent argues that the Complainants’ rights are geographically limited. Even if correct, this is irrelevant – as specifically stated in paragraph 1.7 of WIPO Overview 2.0: “The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.”
The Respondent treats as significant the fact that the Complainants’ principal branding is “Gregory” alone, rather than “Gregory Jewellers”. However, in the Panel’s view, nothing turns on this.
Insofar as the Complainants have trade mark rights in the term “Gregory”, the disputed domain name consists of the trade mark plus the descriptive term “jewellers”. This is confusingly similar to the trade mark. Paragraph 1.2 of WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Insofar as the Complainants have rights in the term “Gregory Jewellers”, this is identical to the disputed domain name.
In either case, therefore, the Complainants have established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Panel does not propose to address this factor given the Complainants’ failure to establish bad faith, explained below, and also because, in this case, the issues which arise in respect of rights or legitimate interests are very similar to those which fall for consideration under bad faith.
D. Registered and Used in Bad Faith
It is not in dispute that the Respondent has for some years been operating a jewellery store and business in a different part of Australia to the Complainants.
While the Complainants observe that the Respondent is using the name “Neville Gregory Leading Edge Jewellers”, the evidence before the Panel indicates that, for all intents and purposes, the Respondent’s trading name has in fact been “Neville Gregory, Jewellers”. The term “Leading Edge” does also appear on the Respondent’s logo but this is in a different and smaller font to the rest of the name, and is clearly a subsidiary marketing strapline rather than part of the name itself.
The Complainants do not object to the Respondent’s use of a trading name which incorporates the surname “Gregory”. The core issue in this case is whether, in registering and using the disputed domain name and thereby switching from “Neville Gregory Jewellers” to “Gregory Jewellers”, the Respondent set out to trade on the fame of the Complainants.
The difficulty facing the Complainants in this case is perhaps illustrated by the comment in the Complaint that there is a “real question” as to why the Respondent selected the disputed domain name. The Complainants then attempt to answer that question by saying that the “only inference” is that the Respondent is engaged in a deliberate attempt to trade off the Complainants’ goodwill.
At this point, it is worth noting that the Respondent does not deny awareness of the Complainants at the time of registration of the disputed domain name.
However, the Respondent maintains that it chose the disputed domain name as part of a wider rebranding exercise designed to create a name with a “more modern feel” and one that would be easier for customers and potential customers to remember when seeking the Respondent’s website. The Respondent says that, at around the same time that it registered the disputed domain name, it also started using the name “Gregory Jewellers” for its Facebook and other social media sites. The Respondent has produced marketing materials with the name “Gregory Jewellers” (i.e., omitting “Neville”), which it says it intends to introduce once existing supplies run out.
The Respondent has therefore come up with what, on the face of it, is an entirely plausible reason for the selection of the disputed domain name, which is independent of the Complainants. Like the Complainants, the Respondent’s business is family-run. In the Panel’s view, the change of name to concentrate on the family surname “Gregory” and exclude the first-name “Neville” is potentially a naturally branding progression. In any case, it is not such an unusual change of direction that it immediately casts doubt on the bona fides of the Respondent.
In the above circumstances, the Respondent’s awareness of the Complainants when it selected the disputed domain name, does not of itself indicate to the Panel that the Respondent possessed a malign purpose vis-à-vis the Complainants.
Of course, the position would have been different if there had been any evidence indicating that the name-change was in some way motivated by the Complainants but there is nothing of that nature. For example, there is no suggestion that the Respondent has at any stage copied any aspect of the Complainants’ website.
The Panel would add that the UDRP is a relatively limited process. The Panel does not have the benefit of the procedures available to a court such as witness testimony and document discovery, which might have cast further light on the Respondent’s state of mind on registering and using the disputed domain name.
Here, all that the Panel can do is assess the evidence before it and, having done so, for the above reasons the Panel is unable to conclude on the balance of probabilities that the Respondent intentionally set out to trespass on the Complainants’ rights. In short, the Complainants have not established that the Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: March 11, 2013