WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork
Case No. D2013-1603
1. The Parties
The Complainant is Timbermate Products Pty Ltd of Nunawading, Victoria, Australia, represented by K & L Gates LLP, Australia.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Barry Gork of Chicago, Illinois, United States of America, represented by Much Shelist PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <timbermate.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On September 16, 2013, the Center issued a complaint deficiency notification regarding the file size of the Complaint. On the same date, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2013.
The Center verified that the Complaint together with the amended 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013.
On October 15, 2013 the Respondent’s representative emailed the Center seeking an extension of time for the filing of a Response on the grounds of a medical emergency in the Respondent’s family and a failure on the part of the Respondent to send the Complaint to his representative in timely fashion. On October 17, 2013 the Center referred the request to the Complainant and invited the Complainant to let the Center have its comments by the following day. The Complainant does not appear to have responded. The Center declined the request.
The Response was filed with the Center on October 24, 2013. On the same date, the Center acknowledged receipt of the Response and informed the parties that it would be forwarded to the Panel, upon appointment, for its consideration and further procedural steps, if any. The Panel deals with this issue below.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 1, 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.
An amended Complaint was necessary because the original (with its annexes) exceeded the 50 MB limit provided for in the Supplementary Rules. It was also desirable because in response to the Center’s registrar verification request the Registrar informed the Center that the underlying registrant was Mr. Barry Gork, the second-named Respondent, who had been employing the services of the first-named Respondent to protect his identity. For the purposes of this decision the Panel treats both Respondents as one and all references to the “Respondent“ are in substance references to Mr. Barry Gork.
Formal notification of the Complaint was received by the Respondent on September 25, 2013. However, according to the request for an extension of time for Response filed by the Respondent’s representative, no steps had been taken to instruct the Respondent’s representative prior to October 10, 2013, the date of the emergency. In other words, two weeks were allowed to elapse before the Respondent or his representative began to address the matter. It then transpired for reasons that the Panel does not entirely understand that the Respondent’s representative received the Notice of Complaint and the annexes to the Complaint, but not the Complaint itself and does not appear to have appreciated that fact. The Panel would have expected the request for an extension of time to have been filed on October 10, 2013 as soon as news of the emergency was received. In the event, it was not filed until the day that the Response was due. The request would have been dealt with very differently if the document in support had demonstrated that two weeks into the time period some work had been done on preparing a Response and the request had been made in timely fashion and not left to the day on which the Response was due to be filed.
In the view of the Panel, the Center was correct to refuse the request for an extension and the Panel declines to accept it into this administrative proceeding. The Panel has not read it.
4. Factual Background
The Complainant is an Australian producer of solvent and acrylic free woodfiller products and sells them under the TIMBERMATE trade mark, a trade mark which it first used in 1991. It has operated a website connected to its domain name <timbermate.com.au> since at least December 7, 1998.
The Complainant is the proprietor of two Australian and one United States trade mark registrations of device marks featuring the name “Timbermate”. The devices are complex marks containing inter alia images of planks and what appears to the Panel may be a filling tool, the name “Timbermate” in upper case characters, the description “water-based Woodfiller” and in much smaller script the words “non shrinking”, both the latter texts being in lower case characters apart from the initial “W” in the word “Woodfiller”. The earliest of these registrations is Australian registration No. 820375 in class 2 for woodfillers and related products and has a priority date of January 18, 2000. The priority date for the United States registration is June 17, 2010.
The Domain Name was registered on May 14, 2003, when, according to the Complaint, the Respondent and his company Timbermate Inc. “were authorized and exclusive distributors of the Timbermate Products in the USA pursuant to an oral agreement with the Complainant.”. This agreement was terminated by the Complainant in April 2011 and in or around June 2013 the Respondent used the Domain Name to resolve to a website promoting his new woodfiller product which he sells under the GOODFILLA name. Following correspondence between the parties’ representatives the link to the Respondent’s website was removed. The Domain Name currently resolves to a parking page of the Registrar featuring pay-per-click links.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its TIMBERMATE trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith
The Respondent filed a Response, but filed it out of time. The Center refused the request for an extension of time and the Panel declines to admit the Response into this administrative proceeding for the reason set out in Section 3 above. The Panel has not read it.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Moreover, in writing his decision, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
“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 in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
B. Identical or Confusingly Similar
The Domain Name comprises (a) the name under and by reference to which the Complainant has been selling its woodfilling products since 1991 and (b) the generic “.com” top level domain identifier. Unless the latter forms part of the Complainant’s trade mark, it is normal for panels to ignore it because, ordinarily, it
serves no distinctive purpose and detracts in no way from the distinctiveness of the Complainant’s trade mark.
The Complainant’s registered trade mark is a device mark featuring many elements, but the most prominent of those elements is the “Timbermate” name and the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark.
The Complainant has also produced sufficient evidence (in the form of marketing materials, price lists, sales figures, historical advertisements and the like) to demonstrate to the satisfaction of the Panel that the Complainant has unregistered trade mark rights in respect of the “Timbermate” name. The Panel finds that the Domain Name (absent the generic “.com” top level domain identifier) is identical to the Complainant’s unregistered trade mark.
C. Rights or Legitimate Interests
The Complainant asserts (and the Panel has no reason to doubt) that the Respondent registered the Domain Name in 2003 when he was the Complainant’s authorized exclusive distributor for the Complainant’s woodfilling products, but that that distributorship was terminated in 2011 and that the Respondent has subsequently used the Domain Name to resolve to another website of the Respondent promoting sales of the Respondent’s competing “Goodfilla” product.
On the face of it, it would appear to the Panel that the Respondent now has no rights or legitimate interests in respect of the Domain Name. However, in light of the Panel’s finding under the next element of the Policy (D below) it is unnecessary for the Panel to come to a concluded view on this.
D. Registered and Used in Bad Faith
Nowhere in the Complaint does the Complainant assert that the Respondent registered the Domain Name in bad faith. Indeed, the Complaint makes it clear that the Respondent registered the Domain Name in 2003 while he was the Complainant’s United States exclusive distributor. Some eight or more years later following termination of the distributorship, the Respondent commenced a bad faith use linking it to a website selling his competing product. The Panel has no difficulty in finding that this subsequent use constitutes use in bad faith for the purposes of the Policy.
Accordingly, on the evidence of the Complainant, the Respondent registered the Domain Name in good faith and has subsequently used it in bad faith. Yet, despite the use of the conjunctive “and” in the heading to this section of the decision, which is taken from paragraph 4(a)(iii) of the Policy, the Complainant nonetheless contends that the Respondent registered and is using the Domain Name in bad faith.
In support of this contention the Complainant relies upon three cases, two of which are said to be authority for the proposition that use of a privacy service to conceal one’s identity on the Registrar’s Whois database is indicative of bad faith at time of registration of the Domain Name. This may indeed be so in certain circumstances, but not in the circumstances of this case where the Complainant has known all along the identity of the original registrant. The Complainant has also known all along that for the life of the distributorship the Respondent was using the Domain Name in good faith for the promotion and sale of the Complainant’s products.
The third cited case is an Irish case, Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003. The Complainant states: “In the Fatboy the original case, the Panel found that the subsequent use of a disputed domain name by a respondent to divert traffic to the complainant’s now competitor constitutes bad faith.”. This citation was particularly inept. It is a case under the .IE Domain Name Dispute Resolution Policy (the “IEDR Policy”) and, as the decision makes clear, the third condition in paragraph 1.1 of the IEDR Policy is that the domain name has been registered OR is being used in bad faith. [Emphasis added]. Accordingly, under the IEDR Policy, unlike the UDRP, subsequent bad faith use following a good faith registration may well lead to transfer of the domain name in issue.
The Complainant has failed to satisfy the Panel that the Domain Name was both registered and is being used in bad faith.
E. Reverse Domain Name Hijacking
For a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary that the Respondent should have sought such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he is under an obligation to so declare in his decision. See Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (“The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use ‘the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”).
For a finding under this head the Panel must conclude that the Complaint was brought in bad faith whether to deprive the Respondent of the Domain Name or to harass the Respondent or for some other reason.
Is the fact that the Panel has found that the Respondent is using the Domain Name in bad faith a relevant factor? Can that fact counter-balance any bad faith intent behind the filing of the Complaint? The Panel does not believe so. Two wrongs do not make a right.
On the findings of the Panel the Complainant has brought a fundamentally misconceived Complaint. It should never have been brought. Paragraph 4(a)(iii) of the Policy calls for bad faith registration and use, yet there is no dispute that the Respondent’s registration of the Domain Name was in good faith.
Is the fact that the Complaint was fundamentally flawed of itself a basis for a finding of RDNH? The Panel has reviewed a number of decisions where findings of RDNH have been made to see what the basis was for those findings. In most cases the finding has resulted from:
(i) materially false evidence: The Procter & Gamble Company v. Marchex Sales, Inc., WIPO Case No. D2012-2179:
“The entire Panel finds it more extraordinary still that in its Complaint the Complainant represented the SWASH brand to be a worldwide brand of longstanding with multi-million dollar sales, stating that over the last 4 years alone the brand had gained sales of over USD 40,000,000. When this was challenged by the Respondent, the Complainant was forced to admit that the brand had only been on the market for 4 years, that sales had been restricted to the USA and that sales over those four years had totaled under USD 60,000.”
(ii) omission of relevant evidence G.A.Modefine S.A. v. A.R.Mani, WIPO Case No. D2001-0537:
“The Panel finds the failure of the Complainant in its Complaint to set out any of the clearly lengthy background to this dispute is surprising. The Complainant or entities associated with it have been pursuing the Respondent since 1995, through various representatives. The Panel is left with a strong sense that the reason these actions have led nowhere is because they come up against the same issue as has been identified in these proceedings, namely, the Respondent’s legitimate use of a variant of his own name. The Complaint states (at paragraph 20) in accordance with the Policy, that "the Complainant certifies that the information contained in the Complaint is to the best of the Complainant’s knowledge complete and accurate". The Panel does not see how that could properly have been said. In the circumstances, the Panel concludes, pursuant of paragraph 15(e) of the Rules, that this Complaint has been brought in bad faith, and that it constitutes an abuse of the administrative proceeding.”
(iii) misrepresentation Coöperative Univé U.A. v. Ashantiplc Ltd/ c/0 Domain Privacy LLC, WIPO Case No. D2011-0636:
“The Complainant failed to provide any argument or evidence which could support its Complaint and its attempt to mislead the Panel and/or its willful recklessness in making incorrect factual allegations is a clear demonstration of bad faith.”
(iv) no trade mark rights at date of registration of the domain name M Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941, a decision of this Panel:
“In the view of the Panel this is a Complaint which should never have been launched. The Complainant knew that the Domain Name was registered nearly 10 years before the Complainant acquired his registered rights, no attempt was made to demonstrate the existence of any earlier rights nor was any attempt made to address the issue arising from the disparity in dates. It simply was not mentioned. Instead, a flagrantly insupportable claim was made as to the Respondent’s bad faith intent at time of registration of the Domain Name and the Panel can only assume that it was hoped that the Panel would miss the point.”
(v) ulterior purpose Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, WIPO Case No. D2012-1555;
“Second, given the circumstances of this case, especially the dearth of evidence supporting the Complaint, it is difficult to avoid an inference that the Complaint was filed at least in part not to obtain the disputed domain name but rather to increase negotiating leverage in the settlement discussions, “a highly improper purpose.” Wall-Street.com, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC, WIPO Case No. D2012-1193.”
(vi) complainant knew that complaint was doomed to failure Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited, WIPO Case No. D2012-0403, a decision in which this Panel participated:
“Overall, it appears to the Panel that the Complainant has simply embarked on a course to obtain the Disputed Domain Name, if not by negotiation, then by launching this Complaint, but knowing that there was no real prospect of being able to demonstrate registration and use in bad faith.”
(vii) constructive knowledge IUNO Advokatpartnerselskab v. Angela Croom WIPO Case No. D2011-0806, another decision of this Panel:
“The Complaint is undoubtedly fundamentally flawed, but was it brought in bad faith to attempt to deprive the Respondent of the Domain Name or to harass the Respondent (paragraph 15(e) of the Rules)?
The Complainant is a law firm and the Panel finds it difficult to believe that a law firm would intentionally set out to abuse the process in this way. Equally, the Panel finds it astonishing that a law firm could produce such a fundamentally flawed Complaint. Occasionally, such complaints stem from an ignorance of the UDRP case law and the resources available on the Center’s website. In this case, however, the Complainant cites from the case law and relies on a passage (albeit an incomplete passage) from the WIPO Overview (see the reference to Mowitania Wendt & Molitor GbR v. Eric Clermont, supra.
However, the Panel does not feel the need to come to a concluded view on whether the Complainant’s intentions in launching this Complaint were abusive. In the view of this Panel a complainant in the position of the Complainant:
(a) ought to have been aware of the fundamental defects in the Complaint; and
(b) ought to have been aware that to launch it in this form would put the Respondent to unnecessary and irrecoverable expense;
(c) ought to have been aware that false allegations of bad faith necessarily give rise to concern and distress on the part of the person falsely accused;
(d) ought to have been aware that if the Complainant had succeeded, the Respondent would have been wrongfully deprived of the Domain Name.
Whether or not the Complainant’s motives were abusive, objectively speaking the end-result (i.e., the Complaint) was fundamentally flawed. In the view of this Panel, a represented complainant (and particularly a complainant in the position of this Complainant, a law firm) should be taken to have known and understood the Policy and should be taken to have known and desired the natural and probable consequences of its actions.”
If the objective test as set out in the above quote from the IUNO decision is correct, this case is clearly a case of RDNH. The Complainant is legally represented and all along the Complainant has known that the Domain Name was registered in good faith. On that basis the Complainant, a represented complainant, should be taken to have known and understood the Policy and nonetheless pursued a complaint doomed to failure.
However, in assessing bad faith for the purposes of paragraph 4(a)(iii) this Panel has generally stood out against deemed or constructive bad faith and has preferred the line taken by the panel in WALA-Heilmittel GmbH v. Canada Jumeira / Contact Privacy Inc., WIPO Case No. D2013-0782:
“In the Panel’s view, the question for the Panel in this case is not whether the Respondent “could” or “should” have known of the Complainant’s trade mark but rather whether, on the balance of probabilities, it is likely that the Respondent WAS IN FACT AWARE of the Complainant’s trade mark on registration of the disputed domain name” [Emphasis added].
There seems to the Panel to be no reason to adopt a different standard when assessing bad faith for the purposes of paragraph 15(e) of the Rules and, on reflection, the Panel concludes that while there may be cases as extreme as the factual background to the IUNO case meriting an objective analysis, in most cases actual knowledge (which may be inferred from the surrounding circumstances) is to be preferred.
Adopting that approach here, the Panel is required to choose between abuse and incompetence. In the end, the Panel concludes that when the Complaint was filed the Complainant (through its representative) knew that the Policy called for the conjunctive requirement and knew therefore that the Complainant was doomed to failure.
In citing two WIPO cases in support of its argument in relation to privacy services, the Complainant demonstrated an ability to research previous WIPO decisions. Moreover, the “Registered and Used in Bad Faith” section of the first of those decisions (Compagnie Gervais Danone v. Transure Enterprise Ltd / Privacy WIPO Case No. D2009-1019) commenced: “The significance of the conjunctive requirements of registration and use in bad faith is that the Complainant must prove use in bad faith as well as registration in bad faith: Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.” That same section in the second of those two cases (Saxo Bank A/S v. Domains by Proxy, Inc. / Forexmedia LTD WIPO Case No. D2011-0018) included the following: “The Complainant must prove both bad faith registration and bad faith use to make out this ground: see the summary of the recent WIPO UDRP jurisprudence in this area in Yeshiva University v SS Media, Joy Dhivakar S Singh, WIPO Case No. D2010-1588.”
Accordingly, the Complainant (through its representative) was only too well aware of the conjunctive requirement and instead of citing any previous decisions on the topic under the Policy elected to cite an Irish decision, Fatboy the original B.V. v. Padraig Beirne, WIPO Case No. DIE2008-0003, a case under the IEDR Policy, which does not incorporate the conjunctive requirement.
The Panel finds that “the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeeding”. The fact that the Domain Name is identical to the Complainant’s trade mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent is making bad faith use of the Domain Name does not alter the fact that under the Policy the Complaint was doomed to failure and the Complainant (through its representative) knew it.
For the foregoing reasons, the Complaint is denied and the Panel makes a finding of Reverse Domain Name Hijacking.
Date: November 3, 2013