WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunsuper Pty Ltd v. Namescope Limited
Case No. D2019-2966
1. The Parties
The Complainant is Sunsuper Pty Ltd, Australia, represented by Allens, Australia.
The Respondent is Namescope Limited, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <austsafe.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 2019, 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 December 11, 2019, 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 amendment to the Complaint on December 12, 2019
The Center verified that the Complaint together with the amendment to 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 December 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 20, 2020. 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 relevant facts are straightforward and can be summarized as follows.
The Complainant is the Trustee of the Sunsuper Superannuation Fund, responsible for managing and investing funds put aside for retirement by Australians in the workforce, including mandatory contributions from employers. The Complainant has been operating in Australia since 1987, and its superannuation fund currently has 1.4 million members.
On March 30, 2019 the Complainant merged its business with that of Austsafe Pty Ltd (“Austsafe”). Austsafe was the Trustee of the Austsafe Superannuation Fund. The fund’s membership has grown from 30,795 members at the end of 1991 to more than 150,000 members by the end of June 2006, and most recently having more than 105,000 members as at January 2019.
The Complainant is the proprietor of various Australian trademarks for a logo together with a stylised version of the word AUSTSAFE SUPER – for example Australian registration No 1320988 filed on September 16, 2009, and registered on May 19, 2010. This is referred to in this decision as the “Austsafe registered trademark”.
Austsafe has operated in Australia since 1988. Austsafe registered the domain name <austsafe.com.au> and has linked it to an active website promoting its business since at least September 2000. At that date, Austsafe’s superannuation fund had approximately 107,000 members, and since that time the <austsafe.com.au> domain name has been used to link to a website which provides and/or promotes services to consumers, including pensions, retirement, and superannuation plans and funds.
The Disputed Domain Name was registered by the Respondent on June 5, 2006. If an attempt is made to access the website linked to the Disputed Domain Name, specifically the first time a user accesses the Disputed Domain Name from a new IP address, the user is redirected at random to one of a range of malicious webpages with malicious payloads. The user is then presented with a virus notification or asked to download new software which appears to have malicious content. It appears that a cookie is stored when a user has accessed the Disputed Domain Name once, and the webpage displayed each subsequent time the same user accesses the Disputed Domain Name is a landing page containing what appear to be advertisements for other superannuation products and companies in Australia. The content displayed at the Disputed Domain Name when a user accesses it for the second or subsequent time consists almost entirely of advertisements for the Complainant’s competitors.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Name is confusingly similar to the Austsafe registered trademark. It also says that it is identical to the term “austsafe” in which it has common law trademark rights.
The Complainant says that the Respondent has no rights or legitimate interests in the term “austsafe”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it was likely chosen as a deliberate reference to Austsafe’s name. The Complainant submits that the Respondent’s registration and use of the Disputed Domain Name is intended to intentionally attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s Austsafe registered trademark and the Austsafe name, and confusion as to the source of the Respondent’s website or location of a product or service.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Notification of Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies 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 is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark 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;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the Austsafe registered trademark which includes the term “austsafe”. Each of the trademarks concerned is a device mark but each features prominently as part of the registered device the term “austsafe” and in these circumstances the Panel concludes the Disputed Domain Name is confusingly similar to the Austsafe registered trademark. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031.
It does not matter for the purposes of this element that the Disputed Domain Name was registered before the Austsafe registered trademark existed – the Panel agrees with the consensus approach as explained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.1.3:
“While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”.
Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP. See below as to bad faith issues.
In the present case however the Panel also finds that the Complainant has rights in the unregistered trademark AUSTSAFE (“unregistered Austsafe trademark”) for the purpose of this proceeding. It is clear that “Austsafe” was adopted as the substantive part of Austsafe’s name with effect from at least 1988 (see above) and has been used on that basis ever since by Austsafe and then the Complainant.
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Panel does not consider the term “austsafe” to be descriptive and is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term with effect from at least 2000 and possibly earlier.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Austsafe registered trademark and identical to its unregistered Austsafe trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the Austsafe registered trademark includes, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using that term. The same is true of the unregistered Austsafe trademark.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use Austsafe registered trademark or the term “austsafe”. The Complainant has prior rights in the unregistered Austsafe trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent 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 Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any 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 Austsafe registered trademark, and the evidence as to the extent of the reputation the Complainant and its predecessors enjoy in the Austsafe registered trademark and the unregistered Austsafe trademark, and the fact that the Disputed Domain Name simply uses the term “austsafe” in its entirety and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use were in bad faith.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 website or other online 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 Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent’s intention was in so doing. As explained above the websites to which the Disputed Domain Name resolve seem to deliver some form of malicious payload the first time a user accesses them, but then provide pay-per-click advertising on subsequent access attempts. This seems an odd combination and the Panel cannot clearly determine which, if any, of the above factors may apply. The Complainant says that factor (iv) applies. The Panel thinks that might be the case. However, the Panel notes that the above list is non-exhaustive and takes the view that the acquisition and use of the Disputed Domain Name in such a manner is itself evidence of bad faith – see The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038. This is particularly so given that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
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 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 <austsafe.com> be transferred to the Complainant.
Nick J. Gardner
Date: February 3, 2020