WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Postal Corporation v. Hirio Ramindi
Case No. D2019-0136
1. The Parties
The Complainant is Australian Postal Corporation of Melbourne, Australia, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Hirio Ramindi of Fuku, Japan.
2. The Domain Name and Registrar
The disputed domain name <auspostmarketing.com> 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 January 22, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, 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 January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 27, 2019. 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 operates the Australian postal service, which has existed in its present form as a company since 1975. It has about 4,356 post offices, directly employs 35,000 people, and reported revenue of AU$ 134.2 million in 2018.
The Complainant owns a number of trademarks including:
AUSPOST, Australian trademark, registered June 7, 2010, registration number 1365414, classes 35, 36, 38, 39;
AUSTRALIA POST, Australian trademark, registered August 30, 1995, registration number 759014, classes 16, 35, 36, 38, 39;
AUSTRALIA POST, Australian trademark, registered August 11, 2009 registration number 1314374, class 36;
AUSTRALIA POST, Australian trademark, registered August 25, 2009, registration number 1317044, classes 9, 35, 38, 42, 45.
The Complainant also owns 96 domain names including <auspost.com.au> and <auspost.com>.
Nothing is known about the Respondent except for such contact details as were provided to the Registrar at the time of registration of the disputed domain name, which was registered on September 30, 2018. The disputed domain name resolves to a parking page populated with a number of link headings pertaining to postal, marketing and business matters.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) in the disputed domain name, in this case “.com”, should be disregarded. The remainder comprises the Complainant’s trademark AUSPOST, with the addition of “marketing”, being a key word of the direct mail marketing service offered to customers by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant owns and has the exclusive right to use the trademark AUSPOST, which the Respondent has not been authorised by the Complainant to use or to incorporate into the disputed domain name. The Respondent is not commonly known by the disputed domain name but as “Hirio Ramindi”. The Complainant says the disputed domain name, by resolving to a website that provides an assortment of pay-per-click links, is not in any bona fide use for the provision of goods or services.
The Complainant says the registration date of the disputed domain name on September 30, 2018 is later than the filing date and effective registration date of the Complainant’s Australian trademark AUSPOST on June 7, 2010, and also significantly later than the Complainant’s first use in commerce of its trademark in 1975.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant is well known internationally and at the time of registration of the disputed domain name, the Respondent knew or should have known of the existence of the Complainant's AUSPOST and AUSTRALIA POST trademarks. An Internet search for “auspost marketing” returns multiple links referencing the Complainant and its business. The Complainant is represented on Facebook, Twitter and LinkedIn.
The Complainant says the timing of the registration of the disputed domain name is significant in indicating opportunistic bad faith and that the Respondent knew about the Complainant. The Complainant’s advertising agency launched a nationwide “Everyone Matters” campaign in Australia on July 23, 2018, and the disputed domain name was registered on October 10, 2018.
The Complainant submits that the Respondent has registered and used the disputed domain name to attract Internet users to the corresponding website for commercial gain, in that visitors so misled will view and may follow pay-per-click links remunerative to the Respondent or others. The Respondent cannot disclaim responsibility for advertisements placed automatically or by third parties on the website and it is of no consequence whether the Respondent shares directly in the advertising revenue so generated.
The Complainant says there cannot be any legitimate future use of the dispute domain name by the Respondent, who is holding it for some undefined purpose.
The Complainant has cited a number of previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant is the holder of the registered trademark AUSPOST. The disputed domain name is <auspostmarketing.com>, of which the gTLD “.com” may be disregarded in the determination of confusing similarity. What remains is “auspostmarketing”, which may be read as “auspost”, being identical to the Complainant’s registered trademark, and “marketing”, which impinges upon the service of direct mail marketing offered by the Complainant. The entirety of the Complainant’s trademark is prominently displayed in the disputed domain name and the additional term “marketing” is found not to prevent confusing similarity. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has the exclusive right to use the AUSPOST trademark, which the Respondent has not been authorised to use or to incorporate into a domain name. The registration date of the disputed domain name was September 30, 2018, which is later that the filing and effective registration date of the Complainant’s Australian trademark AUSPOST on June 7, 2010, and later than the Complainant’s first use in commerce of its trademark in 1975.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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.”
The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The screen capture produced by the Complainant showed the disputed domain name to resolve to a parking page displaying a variety of what may reasonably be taken to be pay-per-click links and no evidence of any independent use in bona fide commerce or for any fair or noncommercial purpose. The Respondent is evidently known as “Hirio Ramindi”, and not commonly by the disputed domain name.
On the available evidence, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The screen capture of the website to which the disputed domain name has resolved is a parking page stated to be hosted free “courtesy of GoDaddy.com”. The parking page displays 11 link headings such as “Parcel Postage”, “B2b Marketing”, “Business Marketing”, and others that are similar to areas of the Complainant’s business. The website follows the common practice in the domain name warehousing industry of monetising stock domain names, that is to say, populating them with pay-per-click links. The expectation is that visitors may follow links, thereby generating advertising fees for the referring website, which may accrue in part to the relevant domain name registrant and in part to companies that place the links and may target the links automatically to the profile of the visitor. The provision of advertising links on websites is common and is generally legitimate. Where, as here, the means of attraction of visitors to the website is another’s trademark incorporated without permission in the disputed domain name, the earning of commercial fees in this manner derives from the other’s trademark and is not legitimate. In the terms of paragraph 4(b)(iv) of the Policy, on the balance of probabilities, the disputed domain name is found to have been used in bad faith with intent to attract visitors by confusion with the Complainant’s trademark for commercial gain. The Panel also finds it to be more probable than not that the disputed domain name was registered with the intention, pending some ultimate further use, of hosting a pay-per-click operation in the interim, constituting registration in bad faith.
It is not necessary to know the Respondent’s ultimate intentions for the disputed domain name. The Panel cannot reasonably conceive of a plausible and legitimate future use for the disputed domain name by the Respondent that would not conflict with the Complainant’s rights in a trademark as well known as AUSPOST. Having regard to all the evidence, the registration, possession and parking of the disputed domain name by the Respondent are found to be sufficient for a finding, on the balance of probabilities, that it was registered and is being used in bad faith.
On the totality of the evidence and on the balance of probabilities, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith under paragraph 4(a)(iii) 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 <auspostmarketing.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: March 7, 2019