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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Custom Building Products, Inc. v. Stone Age (NSW) Pty. Limited

Case No. DAU2011-0014

1. The Parties

The Complainant is Custom Building Products, Inc. of Seal Beach, California, United States of America represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is Stone Age (NSW) Pty. Limited of Kirrawee, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <aquamix.com.au> (the “Domain Name”) is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2011. On May 17, 2011, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the Domain Name. On May 18, 2011, NetRegistryPty Ltd. 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2011.

The Center appointed Alan L. Limbury as the sole panelist in this matter on June 30, 2011. 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 supplies building products, including goods for tile and stone installation, tile and stone care or floor preparation. Outside the United States of America, its products are sold to customers via a network of distributors. Through a subsidiary company, Aqua Mix, Inc., the Complainant supplies sealers, cleaners, grout colorants and problem solving and stone restoration products under the trademark AQUA MIX, which the Complainant registered as a fancy word mark in Australia on May 2, 2006 (No. 1111316) and (in slightly different form) in the United States of America on December 14, 1999 (No. 2299362).

The Domain Name was registered in the name of the Respondent, Stone Age (NSW) Pty. Limited (ACN 080 799 319) on March 14, 2003, the Contact Person being Mr. A. Kokkaliaris. The Respondent was incorporated on November 19, 1997 and was dissolved on March 11, 2009 following a creditors’ voluntary winding up. Mr. Kokkaliaris was a director, company secretary and a shareholder throughout this period.

On May 1, 2003, Aqua Mix, Inc. and “Stone Age Design” (the last of those words being handwritten) entered into a Letter Agreement for International Distributorship, which gave “Stone Age” the exclusive right to distribute AQUA MIX goods in Australia. The letter was signed on behalf of the distributor by K Kokkaliaris, Managing Director, and by A. Kokkaliaris, CEO. On July 31, 2003, by letter from the Complainant, signed on behalf of the recipient by the same persons, “Stone Age Design P/L” was licensed to use the AQUA MIX trademark.

That company, Stone Age Design Pty Limited (ACN 075 559 698) (“Stone Age Australia”) had been incorporated under that name on September 10, 1996. It changed its name on January 29, 2010 to Stone Age Design (Aust) Pty Limited. A. Kokkaliaris was a director, company secretary and shareholder from its incorporation until July 16, 2003, on which date K. Kokkaliaris became director, company secretary and shareholder.

On February 1, 2010 another company called Stone Age Design Pty Ltd (ACN 141 770 416) (“Stone Age Design”) was incorporated with K. Kokkaliaris its sole director, company secretary and shareholder.

Although there was disagreement as to whether the initial term of the distribution agreement expired on April 30, 2008, the Complainant permitted Stone Age Australia to continue to use the AQUA MIX trademark for the purpose of marketing the Complainant’s goods and Aqua Mix, Inc. continued to supply AQUA MIX goods to Stone Age Australia, which continued to distribute them in Australia and, with the Complainant’s consent, to use the business name Aqua Mix (Aust) (“the business name”).

On January 11, 2011, Aqua Mix, Inc. gave formal notice of the termination of the distribution agreement and of the trademark licence, with effect from April 12, 2011. The notice was addressed to “Stone Age Design P/L”. At the time, that was the name of the company that had been incorporated on February 1, 2010.

On April 2, 2011, Aqua Mix, Inc. sent to Stone Age Australia a Termination Deed, executed by Aqua Mix, Inc., which provided, inter alia, that upon execution of that deed the distribution agreement of 2003 and any rights for Stone Age Australia to use the AQUA MIX trademark will be taken to have terminated. That deed was executed on behalf of Stone Age Australia on April 5, 2011 and returned to Aqua Mix, Inc., together with a transfer form whereby Stone Age Australia relinquished the business name.

According to the solicitors for Mr. and Mrs. Kokkaliaris “and companies controlled by either or both of them” in a letter to the Complainant’s solicitors dated April 15, 2011, the website at “www.aquamix.com.au” was taken down on April 8, 2011 and all emails sent to the Domain Name received a reply which included the statements “…Stone Age Design Pty Ltd is no longer distributing the Aqua Mix range of products in Australia” and “Please DELETE our old aquamix.com.au email address from your address book…”.

As of May 2, 2011, the website “www.aqua-seal.com.au”, being the current website of Stone Age Australia, displayed the AQUA MIX trademark and invited enquiries at the email address “technical@aquamix.com.au”. On May 10, 2011, the solicitors for Mr. and Mrs. Kokkaliaris et al. explained that these pages were drafts published in error and that the correct version, without any references to Aqua Mix, has now been published.

5. Parties’ Contentions

A. Complainant

The Complainant refers to itself and Aqua Mix, Inc. as “the Complainant” and to all the various Stone Age companies as “the Respondent”. It says it has continuously, since around 1996, sold AQUA MIX goods in Australia.

The Complainant says the Domain Name is, if not identical, confusingly similar to its AQUA MIX trademark; that the Respondent acknowledges the Complainant’s ownership of that mark in the Licence Agreement; and that the Respondent has no rights or legitimate interests in the Domain Name, which is being used in bad faith.

As to legitimacy, while the Complainant says the Respondent had no right to register the Domain Name when it did, the Complainant acknowledges that the Respondent later acquired the right to hold the Domain Name by way of the distribution agreement and trademark licence. Both of these agreements having been terminated (although the precise date of termination is in dispute), the Complainant says the Respondent no longer has any right or authority to use the Complainant’s intellectual property, including the AQUA MIX trademark and the Domain Name. It is immaterial that the Domain Name no longer points to an active website. Further, the Respondent no longer has any legitimate interest in holding the Domain Name because it is no longer a distributor of the Complainant’s goods. Finally, the Domain Name is not similar to or connected with the Respondent which, in any event, is a deregistered company and therefore ineligible to hold the Domain Name.

As to bad faith, the Complainant does not contend that the Domain Name was registered in bad faith nor, having regard to the subsequent formal distribution agreement between the parties, that its use was at all times in bad faith. However, it says the Respondent’s continued use following termination is in bad faith. That the Domain Name does not currently point to a website is irrelevant. Given that the Complainant has appointed another distributor in Australia, as the Respondent is aware, any use of the Domain Name by the Respondent would create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the AQUA MIX goods. By retaining the Domain Name the Respondent is preventing the Complainant from reflecting its AQUA MIX trademark in the most common Australian ccTLD for use by its current distributor. The Respondent’s conduct in retaining the Domain Name following the termination of its distribution arrangement with the Complainant, is an attempt to disrupt the Complainant’s business in Australia. Hence the Respondent’s use of the Domain Name subsequent to that termination has been and continues to be in bad faith.

The Complainant seeks the transfer to it of the Domain Name.

B. Respondent

The Respondent did not respond to the Complaint.

6. Discussion and Findings

To succeed in a complaint under the Policy, a complainant must establish that:

(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or subsequently used in bad faith.

A. Identical or Confusingly Similar

In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes are to be ignored: see BT Financial Group Ltd v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

The Domain Name is identical to the Complainant’s AQUA MIX trademark for the purposes of this Complaint. The Complainant has established this element of its case.

B. Rights or Legitimate Interests

Assuming, for present purposes, that the Respondent, which was not a party to the distribution and trademark licence agreements between Aqua Mix Inc. and Stone Age Australia, nevertheless had the benefit of those agreements, that benefit ended upon their termination. Accordingly, any right the Respondent might be said to have had to use the Aqua Mix (Aust) business name and the Domain Name no longer exists and the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element of its case.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy provides that, for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and [sic] use of a domain name in bad faith:

“...(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person...”

Here the Complainant concedes that the Domain Name was not registered in bad faith. While the distributorship lasted, the Domain Name was used with the Complainant’s consent to promote the sale of the Complainant’s goods. Apart from some email and website use shortly after the distributorship was terminated, which might be regarded as inadvertent, and which ceased once the Complainant’s solicitors drew attention to it, the Domain Name has not since been actively used. However, as under the Uniform Domain Name Policy, passive use can nevertheless give rise to a finding of bad faith use in some circumstances. As the learned panelist said in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:

“7.11 ...what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”

Here, as mentioned, there is no finding of bad faith registration. Given the history of the relationship between the parties, and treating the Respondent as if it had the benefit of the distributorship and trademark licence agreements, once those agreements terminated and the Complainant appointed another Australian company as its distributor, this Panelist cannot conceive of any possibly legitimate use to which the Respondent could put the Domain Name and, in the absence of any Response, is driven to the conclusion that, since the Respondent is a de-registered company, the person or persons in a position to control the Domain Name are using it in order to prevent the Complainant, being the registered proprietor of the Australian AQUA MIX trademark, from reflecting that mark in a corresponding “.com.au” domain name and for the purpose of disrupting the business or activities of the Complainant and its newly appointed distributor.

Accordingly, the Panel finds the Respondent to be using the Domain Name in bad faith. The Complainant has established this element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aquamix.com.au> be transferred to the Complainant.

Alan L Limbury
Sole Panelist
Dated: July 11, 2011

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