WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sydney Water Corporation Limited v. CDN Properties Incorporated

Case No. D2013-1837

1. The Parties

The Complainant is Sydney Water Corporation Limited of Parramatta, New South Wales, Australia, represented by Ashurst - Australia, Australia.

The Respondent is CDN Properties Incorporated of Panama City, Panama, represented by Weblegal, Italy.

2. The Domain Name and Registrar

The disputed domain name <sydneywater.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2013. On November 21, 2013, the Respondent requested an extension to file a Response until November 25, 2013, and the Center granted the request. The Response was filed with the Center on November 25, 2013.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on December 3, 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.

At the request of the Panel, the Center issued The Administrative Panel Procedural Order No. 1 on December 6, 2013, requesting the Respondent to provide details of how and when the disputed domain name was acquired from the previous owner. The Respondent filed supplemental submissions in response to the Order No. 1 on December 10, 2013. The Complainant then filed supplemental submissions in reply on December 15, 2013.

4. Factual Background

The Complainant is a water utility company in Australia, providing water and related services to over 4.6 million people in Sydney, Australia and surrounding areas. The Complainant has been operating as a water utility for over 125 years, and has used the trademark SYDNEY WATER since as early as 1994 when it registered its business name. The Complainant also owns Australian trademark registrations for SYDNEY WATER under Registration Nos. 1164716 and 1412446, and a design registration for SYDNEY WATER under Registration No. 1164718. These trademark registrations date back to March, 2007. The Complainant has promoted its water utility services under the trademark SYDNEY WATER through various media, including print advertisements, and trade show events. In 2012-2013, the Complainant spent approximately AUD 430,000 promoting its business under the SYDNEY WATER trademark through publications and signage. The Complainant also owns and operates a website at “www.sydneywater.com.au”, which was first registered in 1998 and has been continuously used since that time.

The disputed domain name <sydneywater.com> was originally registered on May 9, 2003 by SZK.com, with the listed administrative contact as Michele Dinoia. The disputed domain name was subsequently transferred to the Respondent, at some point between July 26, 2009 and July 19, 2012.

The Complainant initially wrote to Michele Dinoia of SZK.com on May 28, 2007 putting SZK.com and Michele Dinoia on notice of the Complainant’s trademark rights in the SYDNEY WATER trademark and requesting the transfer of the disputed domain name <sydneywater.com> to the Complainant. SZK.com and Michele Dinoia had a business connection to the Respondent CDN Properties Incorporation. In 2013, the Complainant wrote to the Respondent asserting its trademark rights in SYDNEY WATER and requesting the Respondent to transfer the disputed domain name to the Complainant. The Respondent has stated in its supplemental response that it was aware of the original demand letter dated May 28, 2007 to SZK.com at the time the Respondent acquired the disputed domain name.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant submits that it owns Australian registrations for the trademark SYDNEY WATER (Registration Nos. 1164716; 1412446 and 11647718) registered as early as March, 2007. The Complainant contends that it has used the trademark SYDNEY WATER since at least as early as 1994 when it registered the mark as a business name, and as early as 1998 when it began using the domain name <sydneywater.com.au>.

The Complainant contends that the disputed domain name <sydneywater.com> is identical to its SYDNEY WATER trademark.

Rights or Legitimate interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the <sydneywater.com> disputed domain name. The Complainant contends that the Respondent has not used the disputed domain name in association with a bona fide offering of goods and services, since it reverts to a website that provides links to other sites of the Complainant’s competitors or related services for the purpose of monetary gain. The Respondent is not a licensee of the Complainant, and the Complainant has not authorized the Respondent to use the SYDNEY WATER trademark in any way.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the disputed domain name <sydneywater.com> in bad faith because the Respondent was aware of the Complainant’s trademark rights when it acquired the domain name, and appears to be holding the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs, or for the generation of money through a click-through scheme.

B. Respondent

The Respondent contends that it is in the business of purchasing and selling domain names on a commercial scale. The Respondent argues that the disputed domain name <sydneywater.com> is made up of two generic and descriptive words “Sydney” and “water”, and that the Complainant cannot have monopoly rights over generic words. The Respondent notes that the disputed domain name <sydneywater.com> was created in 2003, more than 4 years prior to the issuance of the Complainant’s trademark registration. The Respondent submits that the Complainant has acquiesced to the Respondent’s ownership of the disputed domain name because it made its original complaint to the previous owner SZK.com in 2007, and thereafter took no further steps. The Respondent further contends that use of generic or descriptive words in a domain name for the purposes of click-through sites is not in of itself evidence of bad faith and is evidence of a legitimate use of the disputed domain name.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark SYDNEY WATER by virtue of its Australian trademark Registration Nos. 1164716, 1412446 and 1164718.

The Panel further finds that the disputed domain name <sydneywater.com> is confusingly similar to the Complainant’s registered trademark SYDNEY WATER. The addition of a generic Top-Level Domain (gTLD) designation does not serve to distinguish the disputed domain name from the Complainant’s registered trademark SYDNEY WATER.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the evidentiary record submitted in this proceeding, the Panel is prepared to find that the Complainant has a longstanding reputation in the trademark SYDNEY WATER in association with water utility services, based on common law use of its business name, related domain name and its registered trademarks.

The Panel accepts that the Complainant has not authorized or licensed the Respondent to use the disputed domain name in association with water utility services or otherwise. The Panel further accepts that the Respondent is not commonly known by the name “Sydney Water”, and does not own any trademark rights in the trademark SYDNEY WATER. As confirmed in the Respondent’s supplemental filing, it is clear that the Respondent was aware of the Complainant’s rights in the SYDNEY WATER mark when it acquired the disputed domain name sometime after July, 2009. The Respondent’s current website shows multiple references to water utility subject matter, including references to the payment of water utility bills. The Panel finds that the use of a confusingly similar domain name in these circumstances, in association with a click-through site for purposes of monetary gain is not evidence of bona fide use or of any rights or legitimate interests.

The Panel rejects the Respondent’s argument based on the alleged generic nature of SYDNEY WATER. The Complainant has established rights in the combination of the two word elements, through extensive use, and actual notice to the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirment under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that the Respondent admits that it acquired the disputed domain name during the period of time between July 26, 2009 and July 19, 2012. The Panel also notes the following statement made in the Respondent’s supplemental filing, “Moreover, the submitted documents are documentary evidence that the Respondent acquired the domain name not before than July 26, 2009; i.e. more than two years after the receipt of the cease and desist letter”. The Respondent’s initial Response, and supplemental filing of December 10, 2013, make it clear that at the time the Respondent acquired the disputed domain name it was aware of the Complainant’s rights in the SYDNEY WATER trademark and that there was a potential infringement issue with respect to the disputed domain name <sydneywater.com>.

In these circumstances, the relevant date for determining bad faith is the date the disputed domain name was acquired:

“The general rule established by panels is that a subsequent acquirer of a domain name is held to have “registered” that domain name for purposes of the Policy as of the date of acquisition of the registration rights.” America Móvil, S.A.B. de C.V. v. Claro GmbH & Co. KG, WIPO Case No. D2008-1770 (referring to HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062)

and

“Respondent is the registrant of the domain name for purposes of the Policy as at the date of the acquisition of the portfolio, which according to Respondent was ‘recently’”. Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921.

The facts in this case indicate that the Respondent is deemed to have registered the disputed domain name between July 2009 and July 2012, at which time it was clearly aware of the Complainant’s trademark rights in the trademark SYDNEY WATER. In these circumstances, the Respondent’s registration and use of the confusingly similar domain name <sydneywater.com> in association with a website that provides click-through links connected to water utility services (and payment for those services), all for the purposes of monetary gain, is evidence of bad faith under the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iiI) of the Policy.

7. Decision

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

Christopher J. Pibus
Sole Panelist
Date: December 19, 2013