WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tectonic Digital Group v. Peter Brabeck
Case No. D2014-2146
1. The Parties
The Complainant is Tectonic Digital Group of Pyrmont, New South Wales, Australia, internally represented.
The Respondent is Peter Brabeck of Brisbane, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <awardsforce.com> (the “Disputed 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 December 10, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 11, 2014, 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 December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2015.
The Center appointed John Swinson as the sole panelist in this matter on January 14, 2015. 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 Tectonic Digital Group of Australia, which includes Tectonic Digital Pty Ltd and its sister company Award Force Pty Ltd (“Award Force”). Award Force is a next generation Software-as-a-Service (SaaS) awards management web application developed in Australia by the Complainant (through its company Tectonic Digital Pty Ltd).
The Complainant submits that is registered Award Force Pty Ltd as an Australian registered business on August 14, 2014, and that company has filed an Australian trade mark application for “Award Force” (Trade Mark No. 1650986), lodged October 7, 2014 (the “Trade Mark”). The Panel notes that the Trade Mark was accepted on January 13, 2015, but is awaiting advertisement (i.e. it has not been registered yet and there is an opposition period yet to come).
The Complainant also claims common law trade mark rights dating from July 2013 (discussed in detail below).
The Respondent is an individual, Peter Brabeck, also of Australia. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on January 8, 2014. The website at the Disputed Domain Name features a GoDaddy holding page with pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant registered the similar domain name <awardforce.com> on February 7, 2013. The Complainant submits that it began using the service mark “Award Force” on the website at that domain name in July 2013. On September 17, 2013, the Complainant registered the business name “Award Force” as a trading name of Tectonic Digital Pty Ltd. The Complainant has also registered Award Force Pty Ltd as a business name (Australian Business Number 46 601 254 424). Award Force Pty Ltd has registered the Trade Mark.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant’s business has been mistakenly referred to as “Awards Force” in the past.
Rights or Legitimate Interests
The Disputed Domain Name redirects to a PPC website. There is no evidence that the Respondent intends to use the Disputed Domain Name.
Online searches indicate that the Trade Mark is globally unique and that “Awards Force” is not being used as a proper name, except by one of the Complainant’s clients (Country Music Australia) in reference to the Complainant’s business.
The Respondent is not commonly known by the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered the Disputed Domain Name in bad faith in order to profit from the sale of the Disputed Domain Name to the Complainant or to obstruct the Complainant’s business.
The Respondent resides in Queensland, Australia. The Complainant has been servicing their first client in Queensland, the Queensland Government’s Department of Education, Training and Employment, since November 2013. This client made announcements on their website in December 2013, which referenced the Complainant. The Complainant submits that this is how the Respondent became aware of and opportunistically registered a misspelling of the Complainant’s trading name.
The Respondent has used a false address. The postcode provided in the registrant details does not exist in Australia.
The Complainant has contacted the Respondent via email to purchase the Disputed Domain Name for a nominal price (and has sent a follow-up email). No response has been received.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel has verified that the Complainant has applied for the Trade Mark. However, the Trade Mark is not yet registered and may be opposed when its acceptance is advertised. As such, the Complainant must establish common law rights in the Trade Mark.
In order to successfully assert common law or unregistered trade mark rights the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or its goods or services (i.e. that the Trade Mark has acquired a “secondary meaning”).
The Complainant has submitted that it registered a domain name incorporating the Trade Mark (<awardforce.com>) in February 2013, and began using the Trade Mark on the website at that domain in July 2013. It registered “Award Force” as trading name in September 2013.
In addition to reviewing the evidence provided by the Complainant, the Panel has conducted independent research into the Complainant’s use of the Trade Mark (as it is entitled to pursuant to paragraph 10 of the Rules). The Panel confirms that the Complainant has used the Trade Mark in relation to its digital technology services since at least July 2013. In November 2014, the Complainant received a US Mobile & App Design Award for its “Award Force” application. The project brief for the award states that “Award Force” was “launched commercially in late 2013 to a receptive market”. Customers across a spectrum of industries use this application. While the Complainant’s use of the Trade Mark has not been lengthy, the Panel is satisfied that that the Complainant has acquired the requisite common law or unregistered trade mark rights for the purposes of the Policy.
The Disputed Domain Name is confusingly similar to the Trade Mark, both visually and aurally. The only difference is the addition of the letter “s” in the Disputed Domain Name (i.e. the Disputed Domain Name contains the plural “awards” and the Trade Mark the singular “award”). The Panel finds that this insignificant change fails to distinguish the Disputed Domain Name from the Trade Mark (see, e.g. FIL Limited v. Elliott Evans, WIPO Case No. D2014-0259).
In light of the above, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- the Respondent has no connection with the Complainant;
- the Complainant has not consented to the Respondent's use of its Trade Mark; and
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has used a term similar to the Disputed Domain Name in any business.
Further, the website to which the Disputed Domain Name resolves is commercial in nature. It is a “link farm” website which directs users to various goods and services, and which presumably generates “click-through” advertising revenues. The Disputed Domain Name is not a dictionary or common word and is not being used in a descriptive sense (i.e. to describe the sponsored links hosted or related to the content of the website).
Use as a PPC or “link farm” website is not illegitimate per se, however, the Respondent has provided no evidence of its rights or legitimate interests in respect of the Disputed Domain Name. In the absence of an explanation from the Respondent as to why the Respondent selected and registered this particular domain name, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
As discussed above, at the time the Respondent registered the Disputed Domain Name, the Complainant had established common law rights in the Trade Mark. According to the registrant details, the Respondent resides in Queensland. The Complainant’s first Queensland client was announced just a month before the Disputed Domain Name was registered.
In light of the above, the Panel is of the view that the Respondent was potentially aware of the Complainant, and its Trade Mark at the time it registered the Disputed Domain Name. The Panel infers that the Respondent predicted the Complainant’s business would continue to grow and opportunistically registered the Disputed Domain Name for future commercial gain (either through generating PPC revenue from customer confusion or by selling the Disputed Domain Name to the Complainant). The Respondent could have provided evidence to rebut this conclusion, but did not do so.
Under the circumstances, the Panel is of the view that the following may further evidence bad faith registration and use:
- the deliberate use of incorrect or ineffective contact particulars (at a minimum, the Respondent’s postcode is incorrect) (see e.g. WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932 and cases cited therein); and
- the Respondent’s lack of reply to the Complainant’s email communications.
The Panel also notes that Peter Brabeck-Letmathe is Chairman and former CEO of Nestlé Group. He is known in Australia. It is possible that the disputed domain name was registered falsely in the name of Peter Brabeck.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 <awardsforce.com> be transferred to the Complainant.
Date: January 26, 2015