WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pepper Group Limited v. Domain Administrator, 1075 First Global Associates, LLC
Case No. D2016-0469
1. The Parties
The Complainant is Pepper Group Limited of North Sydney, New South Wales, Australia, represented by Piper Alderman, Australia.
The Respondent is Domain Administrator, 1075 First Global Associates, LLC of Wilkes-Barre, Pennsylvania, United States of America ("United States"), represented by Davis & Gilbert LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <peppermoney.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 March 9, 2016. On March 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 10, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2016. The Center received an email communication from the Respondent on April 5, 2016, requesting that it be allowed to file a late response. The Complainant sent a further communication to the Center on April 6, 2016 indicating that it had no objection to an extension of time for the Respondent to file a response, provided that the response would be filed within 24 hours. The Respondent filed a response on April 7, 2016. The Complainant submitted an unsolicited supplemental filing on April 15, 2016.
The Center appointed Gabriela Kennedy, Desmond J. Ryan and Lynda M. Braun as panelists in this matter on April 25, 2016. The Panel finds that it was properly constituted. Each member of 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.
The Panel accepts the Supplemental Filing made by the Complainant.
4. Factual Background
The Complainant is Pepper Group Limited, an Australian public company limited by shares. The Complainant was established in 2001 but began using the PEPPER trade mark within Australia in 2000. The Complainant first obtained a trade mark registration for PEPPER on June 30, 2004 in Australia. The Complainant applied to register the PEPPER MONEY trade mark in August 2015 in Australia and the United States, and in November 2015 in the European Union. On March 28, 2016, the Complainant's application for a registration for the PEPPER MONEY trade mark in the European Union matured to registration. The Complainant is also the registrant of various domain names including <pepper.com.au> and <peppermoney.com.au>.
The Respondent is 1075 First Global Associates, d/b/a Pepperjam, a holding company that owns the affiliate marketing entity eBay Enterprise Marketing Solutions Affiliate Network ("eBay Affiliate Network"), which has recently rebranded and resurrected the "Pepperjam" name. eBay Affiliate Network began its life in 1999 as "Pepperjam", and in 2008 launched its proprietary affiliate network branded Pepperjam Network. In 2010, Pepperjam Network was acquired by GSI Commerce, and retained the "Pepperjam" name. In 2012, GSI Commerce was acquired by eBay, Inc. ("eBay"), and Pepperjam was rebranded as "eBay Affiliate Network". In 2015, eBay sold eBay Affiliate Network to two private equity companies, which transferred all of eBay Affiliate Network's assets to the Respondent.
The Disputed Domain Name was registered on July 5, 2011, by eBay and was transferred from eBay to the Respondent in December 2015. The Disputed Domain Name has never resolved to an active website.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
a. The Complainant is the owner or joint owner of a number of registered and pending trade marks which comprise the words "pepper" or "pepper money" in a variety of countries ("Complainant's Trade Marks"). The Complainant uses the Complainant's Trade Marks in connection with insurance, financial affairs, monetary affairs, financial consultancy, advisory, evaluation, information and management services including mortgage broking, mortgage insurance, financial services including loan services and financial leasing.
b. The Complainant has made extensive use of the trade mark PEPPER within Australia since 2000, and subsequently has expanded its use overseas. The Complainant now has offices in the United Kingdom of Great Britain and Northern Ireland, Spain, the Republic of Korea, Hong Kong, China and New Zealand, and uses the Complainant's Trade Marks in these countries. As a result of the distribution and advertising associated with Pepper products since about 2000, the Complainant has developed a valuable reputation and goodwill in the "Pepper" brand.
c. In July 2015, the Complainant commenced its rebranding exercise by implementing a consumer‑facing name, namely, "Pepper Money". As part of its rebranding activities, the Complainant has filed trade mark applications in Australia, the European Union and the United States.
d. The Disputed Domain Name is identical to PEPPER MONEY and confusingly similar to PEPPER. The word "money" is synonymous with the consumer lending services which the Complainant provides, so synonymous that the Complainant is implementing a marketing strategy to brand some of its services as "Pepper Money" and has filed applications to register PEPPER MONEY as part of that strategy.
e. The Complainant's application to register PEPPER MONEY as a European Union trade mark registration matured in March 2016.
f. Therefore, the Disputed Domain Name is identical, or, at the very least 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 Disputed Domain Name.
a. The Disputed Domain Name does not appear to be active, and there is no indication of any preparation by the Respondent to use the Disputed Domain Name.
b. The Complainant's lawyers first contacted eBay on August 26, 2015, to advise them of the Complainant's interest in purchasing the Disputed Domain Name. Despite the efforts of the Complainant's lawyers, no response was received. On October 13, 2015, the Complainant's lawyers posted a further letter addressed to Ms. Shields, Director of Legal for eBay Australia and New Zealand, but no response was received.
c. In about December 2015, the Complainant noted that the Disputed Domain Name was no longer registered to eBay, but had been transferred to the Respondent, which appears to be associated with eBay.
d. On December 7 and 17, 2015, the Complainant's lawyers wrote to the Respondent, attempting to enter into negotiations to purchase the Disputed Domain Name on behalf of the Complainant. On December 18, 2015, Ms. Spanish of eBay Enterprise Network wrote to the Complainant's lawyers as follows: "We have received your letters. Our organization, 1075 First Global Associates, LLC, is not willing to part with these domains at this time."
e. The Complainant has not been able to identify any evidence of use of the trade mark PEPPER MONEY by either eBay or the Respondent. To the best of the Complainant's knowledge, neither eBay nor the Respondent has ever been known by the name "Pepper Money" and neither has rights to the Disputed Domain Name. The Respondent has no pending or registered trade mark rights which incorporate the words "pepper money".
f. At no time has the Complainant or any of its affiliates granted rights to the Respondent to use any of the Complainant's Trade Marks. Any use by any person other than the Complainant or any person not expressly authorized by the Complainant, is unauthorized and is likely to mislead members of the public into thinking that the user has an association with the Complainant, which it does not have.
g. From the history of the Disputed Domain Name, it would appear that eBay initially registered the Disputed Domain Name on or about July 2011, and for over four years it does not appear to have made any use of the Disputed Domain Name. Subsequent to letters from the Complainant's lawyers, eBay appears to have transferred the Disputed Domain Name to the Respondent and the Respondent has also not made use of it.
h. The Respondent's actions of holding registration of the Disputed Domain Name with no apparent intention to use it, has the effect of denying the proper use of the Disputed Domain Name by the Complainant and denying the Complainant from exercising its rights to its PEPPER MONEY trade marks.
(iii) The Disputed Domain Name was registered and is being used in bad faith
a. The Respondent has no obvious connection with the Disputed Domain Name. The Disputed Domain Name is comprised of the words "pepper money". When faced with such a domain name, an Internet user is likely to be confused into thinking that the owner of the Disputed Domain Name has a connection to PEPPER MONEY, when this is not the case.
b. The Respondent registered and is subsequently using the Disputed Domain Name in bad faith by holding the registration when it has no connection to the Disputed Domain Name. By its actions, the Respondent is preventing the Complainant, who has a legitimate interest in the Disputed Domain Name, from obtaining the Disputed Domain Name.
The Respondent's contentions can be summarized as follows:
(i) The Disputed Domain Name is not confusingly similar to a trade mark in which the Complainant has rights.
a. The Disputed Domain Name is not confusingly similar to a trade mark in which the Complainant has rights because the Complainant has no rights to any PEPPER MONEY trade mark, and because the Disputed Domain Name is not confusingly similar to PEPPER, the only trade mark in which the Complainant may have protectable rights.
b. Trade mark rights must be the established use of a mark in trade, which may be presumed if a mark has been granted a formal registration by a governing body such as the United States Patent & Trademark Office. Merely filing an "intent-to-use" application, however, does not confer any rights in a mark.
c. Here, by its own admission, the Complainant does not own a registration for the mark PEPPER MONEY in any jurisdiction, and has never used the term "Pepper Money" to denote its products or services in trade. The Complainant does not claim any common law rights to the mark PEPPER MONEY, but merely purports to intend a future use of PEPPER MONEY to denote its consumer lending products.
d. Because the Complainant has no rights in PEPPER MONEY, the Complainant's only hope of avoiding dismissal is to rely on its trade mark right in PEPPER. The trade mark PEPPER, however, is simply not confusingly similar to "Pepper Money". The word "money" is a modifier that erases any meaningful likelihood of confusion with the Complainant's PEPPER mark. The Complainant argues that any mark incorporating the word "pepper" belongs to the Complainant alone. That position, however, would likely offend the sensibilities of many established brands that have rights in long-registered marks that include the word "pepper". The Respondent disputes that argument, and queries whether the Complainant would file a UDRP complaint if, upon unsolicited request, the 130 year-old soft drink brand "Dr. Pepper" refused to sell the Complainant its <drpepper.com> domain name.
(ii) The Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
a. When the Disputed Domain Name was registered in July 2011, the Respondent was known commercially as Pepperjam and had been actively using the domain names <pepperjam.com> and <pepperjamnetwork.com> (the "Pepperjam Domain Names") for years. It chose to register the Disputed Domain Name because it intended to extend its use of its PEPPERJAM trade mark to "Pepper Money" in order to emphasize the potential value of its services to customers. Accordingly, at the time of its registration of the Disputed Domain Name, the Respondent had a legitimate interest with respect to the Disputed Domain Name.
b. As part of its legitimate interest in the Disputed Domain Name, the Respondent obtained a trade mark registration with the United States Patent & Trademark Office for the PEPPERJAM trade mark (the "PEPPERJAM Mark") on July 15, 2008. The PEPPERJAM Mark was cancelled by the United States Patent & Trademark Office in February 2015 for non-use. This occurred because, in 2012, Pepperjam was acquired by eBay, and was rebranded as the eBay Affiliate Network, and began redirecting the Pepperjam Domain Names to <ebayenterprise.com>. Currently, however, the Respondent is no longer associated with eBay, and is returning to the "Pepperjam" name that was in active use for over a decade prior to 2012. Indeed, today, the Pepperjam Domain Names are live, functional, and no longer redirect to any other website. As part of its rebranding effort, and in line with its original corporate vision in registering the Disputed Domain Name in 2011, the Respondent plans to extend its use of the "Pepperjam" name to Pepper Money.
c. That the Parties are involved in two distinct business undertakings in two different fields of activities, namely, affiliate network marketing and consumer lending, further supports the conclusion that the Respondent has a bona fide interest in the Disputed Domain Name.
(iii) The Disputed Domain Name was not registered and is not being used in bad faith.
a. The Complainant expressly alleges that it was not until July 2015 – four years after the Disputed Domain Name was registered in July 2011 – that the Complainant "commenced its rebranding exercise by deciding to implement its rebranded name of 'Pepper Money'".
b. The Complainant cannot establish bad faith use or registration of the Disputed Domain Name because the Complainant and the Respondent are not competitors in any sense, but operate in entirely dissimilar industries and geographical territories. The Respondent, a United States affiliate network marketing company, simply has nothing to gain by redirecting the web traffic of an Australian moneylender. There is no reasonable suspicion – much less discernable evidence – that the Respondent registered or used the Disputed Domain Name with the intent of coopting the Complainant's goodwill.
c. The Complaint must be dismissed because the Complainant cannot establish the only possible remaining ground for bad faith – intent to profit from the sale of a domain name in which the Respondent has no bona fide interest. Here, the Respondent has a legitimate interest in the Disputed Domain Name, did not "initiate contact" with the Complainant, and never "demanded a premium for the Disputed Domain Name" to the Complainant or anyone else. To the contrary, this case is based on the Respondent's refusal to engage in negotiations to sell the Disputed Domain Name to the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the Disputed Domain Name is identical to the Complainant's PEPPER MONEY trade mark. The Complainant has rights in the PEPPER mark based on its trade mark registrations since June 2004. In addition, the Complainant filed trade mark applications for PEPPER MONEY in August 2015 in Australia and the United States, and in November 2015 in the European Union, and subsequent to the filing of these proceedings its trade mark application for PEPPER MONEY in the European Union matured into a registration on March 28, 2016. While this occurred after the registration of the Disputed Domain Name, there is virtual unanimity among UDRP panels that the date when the Complainant acquires its rights is not relevant for the panel's consideration of this element. For purposes of this element, therefore, this Panel accepts that the Complainant has rights in the PEPPER MONEY mark.
As for the generic Top-Level Domain ("gTLD") ".com", it is well established that in making an inquiry under the Policy as to whether a domain name is identical or confusingly similar to a trade mark, the gTLD may be disregarded. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006‑0762.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As stated in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has not authorized the Respondent to use the PEPPER or PEPPER MONEY marks, the Respondent is not commonly known by the Disputed Domain Name, nor does the Respondent operate a business under this name. The Panel is therefore of the view that the Complainant has made a prima facie case and the Respondent must provide evidence that it has rights or legitimate interests in the Disputed Domain Name.
The Respondent may acquire rights or legitimate interests in respect of the Disputed Domain Name through use of the Disputed Domain Name for legitimate noncommercial purposes without intention to misleadingly divert customers or to tarnish the trade mark at issue, or in connection with a bona fide offering of goods or services.
However, the Disputed Domain Name has never resolved to an active website since it was registered by eBay in 2011. Further, the Respondent has not submitted any evidence to support its claim that it intended to extend the use of its PEPPERJAM trade mark to PEPPER MONEY and has provided no other conclusive evidence that it has rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Name was registered by eBay in 2011 and transferred to the Respondent in or around December 2015. However, it was not until July 2015 that the Complainant adopted the rebranded name "Pepper Money".
As the Complainant had not contemplated using "Pepper Money" when the Disputed Domain Name was registered, the Panel concludes that the registration of the Disputed Domain Name was not in bad faith. Even looking at the evidence in the light most favorable to the Complainant, noting in particular the transfer of the Disputed Domain Name to the Respondent in December 2015, there is insufficient evidence for the Panel to conclude that the Respondent was seeking to unfairly capitalize on the Complainant's reputation and goodwill. To the extent such evidence may exist, it would in any event require a more nuanced examination of the Parties' contentions than is generally possible in the limited context of the Policy.
The Panel finds the Complainant has not demonstrated that the Respondent used the Disputed Domain Name in bad faith.
Accordingly, the Panel finds that the Complainant has not satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Desmond J. Ryan
Lynda M. Braun
Date: May 9, 2016