WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Titan Enterprises QLD Pty Ltd v. Domain Admin, Whois Privacy Corp.
Case No. D2016-1949
1. The Parties
Complainant is Titan Enterprises QLD Pty Ltd of Crestmead, Queensland, Australia, represented by King & Wood Mallesons, Australia.
Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <bewareoftitangarage.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2016. On September 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2016. The Center received an email communication from Complainant on October 20, 2016. On October 21, 2016, Complainant submitted an unsolicited supplemental filing. The Panel, in its discretion, has considered this supplemental filing since it contained relevant information not available at the time of the filing of the Complaint.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 27, 2016. 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
Complainant, based in Australia, manufactures, sells, and installs steel buildings and structures including garages, sheds, carports, and cabins. Complainant has offered its goods and services under the mark TITAN for at least 14 years, and the TITAN mark has been registered in Australia since September 12, 2002. Complainant’s mark TITAN GARAGES has been registered in Australia since January 19, 2015.
The Domain Name was registered on January 2, 2016. There is currently no content at the website to which the Domain name resolves. Prior to October 4, 2016, however, the Domain Name resolved to a website purporting to serve as a “forum for customers to share about Titan Garages and Sheds.” Among other content, the site stated: “[I]f you are a customer wronged by Titan Garages and Sheds, then join the class action lawsuit with Shine Lawyers. Together, we will seek justice together.” Another web page at the site, entitled “Legal Action,” asserted that “Shine Lawyers has been approached to begin a class action lawsuit against [Complainant].” This page invited visitors to join the group on the site’s “Contact Us” page. This latter page sought contact information from visitors.
In its supplemental submission, Complainant states that Shine Lawyers, who also appear to be located in Australia, have denied any involvement with the Domain Name or its corresponding website, and have disavowed any knowledge of the site.
5. Parties’ Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainants clearly hold rights, through widespread registration and longstanding use, in the marks TITAN and TITAN GARAGES. The Panel also finds the Domain Name to be confusingly similar to the mark, as it incorporates the TITAN GARAGES mark (minus the “s”) and adds the phrase “beware of.” This additional text does not alter the fact that the dominant element of the Domain name is the TITAN GARAGES mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain any possible bona fides. The Domain Name previously resolved to a website where there appeared to be criticism of Complainant and its products, coupled with an invitation to share complaints about Complainant and join a group of disgruntled customers to sue Complainant through the efforts of a specific law firm (Shine Lawyers). The undisputed record, however, indicates that Shine Lawyers has disavowed any role with Respondent and this website. It is not altogether clear what is going on here, but on this record the most probable conclusion is that Respondent is up to some type of swindle. Given the falsity of the claim that the Shine Lawyers are backing a class action suit, the Panel finds it more likely than not that Respondent is seeking to undertake some sort of scam.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
On this record, and lacking any assertions or proof from Respondent, the Panel finds that Respondent registered and has been using the Domain Name to operate what appears to be some type of scam. At a minimum, the record indicates that Respondent was seeking contact information from people, and that Respondent falsely stated that a specific law firm was backing a class action effort. The most reasonable – and undisputed – inference to draw here is that Respondent is up to nefarious activity.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bewareoftitangarage.com> be transferred to Complainant.
Robert A. Badgley
Date: November 1, 2016