WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dymocks Holdings Pty Ltd. v. Heng Zhong / Whois Agent, Whois Privacy Protection Service, Inc.
Case No. D2016-0560
1. The Parties
The Complainant is Dymocks Holdings Pty Ltd. of Sydney, Australia, represented by Norton Rose Fulbright LLP, Australia.
The Respondents are Heng Zhong of Malden, Massachusetts, United States of America / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dymocks.com> (the "Disputed Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2016. On March 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 2016 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 March 29, 2016.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceeding commenced on March 30, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 20, 2016.
On April 27, 2016, an unsolicited supplemental filing (the "Supplemental Filing") was received from the Complainant.
The Center appointed Nick J. Gardner, Andrew F. Christie and Richard G. Lyon as panelists in this matter on May 9, 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.
4. Factual Background
The Complainant is an Australian company. It operates a network of 59 franchised retail bookstores throughout Australia under the name "Dymocks". The first Dymocks bookstore began operating in Sydney, Australia in 1879.
Since 1879, the Complainant (or the Complainant's predecessors) has offered and continues to offer printed books for sale. Over time, the Complainant has expanded the range of goods offered for sale to include diaries and calendars, stationery, games and puzzles, novelties, audio books, recorded music including CDs, DVDs, software, and ebooks, among other related goods.
Since around February 1997, the Complainant has operated a substantial online retail business. The Complainant operates its online retail business from the Complainant's website hosted at the domain name <dymocks.com.au> (the "Dymocks Website"), and makes retail sales to customers located in countries including Australia, New Zealand, Canada, the United States of America, the United Kingdom of Great Britain and Northern Ireland and Hong Kong, China through the Dymocks Website.
The Complainant is the owner a number of registered trademarks which include the word "Dymocks" - for example Australian Registration no. 657827 for DYMOCKS BOOKSELLERS in class 42. It also owns at least one registration for the word DYMOCKS on its own - Australian registration no. 815007 in respect of DYMOCKS in class 35. The various trademarks relied upon by the Complainant are referred to below as the "Dymocks Trademarks".
The Disputed Domain Name was registered in the name of the Complainant from on or around September 2, 1996 until September 1, 2015 or thereabouts. During the time that the Complainant was the registrant of the Disputed Domain Name, the Disputed Domain Name redirected users to the Dymocks Website.
On or about September 1, 2015, the Complainant asserts that it inadvertently allowed its registration of the Disputed Domain Name to lapse. The Respondents registered the Disputed Domain Name on or around November 21, 2015. Since registration by the Respondents the Disputed Domain Name has been linked to a parking page which displays links to other websites (most of which appear to be associated with the Complainant). All the Dymocks Trademarks predate the Respondents' registration of the Disputed Domain Name.
The Complainant's representatives have written a "cease and desist" letter to the Respondents on March 4, 2016 but received no reply.
5. Parties' Contentions
The Complainant's case can be summarized as follows.
a) The Disputed Domain Name is identical or confusingly similar to the Dymocks Trademarks.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondents registered and use the Disputed Domain Name in bad faith as the website to which the Disputed Domain Name resolves, make use of the Complainant's Dymocks Trademarks in order to attract traffic and then raise advertising revenue through the use of sponsored or click-through links.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Preliminary Matters
The Panel declines to admit the Supplemental Filing. This filing seeks to introduce further evidence about the Respondents and in particular about other domain names associated with the Respondent Heng Zhong. The Panel does not find it necessary to consider this material in reaching a conclusion in favor of the Complainant (see below).
The Panel notes this is a case where one Respondent (Whois Agent, Whois Privacy Protection Service, Inc.) appears to be a privacy or proxy registration service while the other Respondent (Heng Zhong) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in WIPO Overview 2.0, paragraph 4.9 namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it has jurisdiction to proceed to determine this Complaint and to draw inferences from the Respondents[s]' failure to file any Response.
B. Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various registered trademarks which include the word Dymocks and at least one registered trademark in respect of the word Dymocks on its own (the "Dymocks Word Trademark").
The Panel holds that the Disputed Domain Name is identical to the Dymocks Word Trademark. It is well established that where the specific generic Top-Level Domain ("gTLD") of a disputed domain name (in this case ".com") serves no purpose other than a purely technical one (contrast, for example, a domain name such as <osram.lighting>), it may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these applies in the present circumstances. Nothing in the record indicates or suggests that the Complainant has authorized, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the Dymocks Trademarks. The Complainant has prior rights in the Dymocks Trademarks which precede the Respondents' registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the Dymocks Trademarks, and the evidence as to the extent of the reputation the Complainant enjoys in the Dymocks Trademarks, and the identical nature of the Disputed Domain Name to the Dymocks Word Trademark, leads the Panel to conclude the registration and use was in bad faith. The word "Dymocks" is not an ordinary English word. According to the Complainant's evidence it is the name of the founder of the first Dymocks store. On the evidence before the Panel it has no discernible meaning other than in relation to the Complainant and its products and services. The Respondents registered the Disputed Domain Name very shortly after the Complainant's registration lapsed, and at that time any trademark or Internet based search would have easily disclosed Complainant's trademark rights and long-established use of the word "Dymocks".
The website operated by the Respondents at the Disputed Domain Name comprises a series of "click through" links to other websites, most of which appear to be associated with the Complainant. Internet users are likely to find this website when searching for the Complainant and at least some such users will then inevitably click on one or more of the links on that website and the Respondents will earn "click through" advertising revenue as a result. The Respondents' website may be automatically generated. This does not however matter for purposes of the Policy. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <dymocks.com> be transferred to the Complainant.
Nick J. Gardner
Andrew F. Christie
Richard G. Lyon
Date: May 18, 2016