WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Doteasy Technology Inc. v. M Makras & E.A Nahed, Dot Easy

Australia Pty. Ltd

Case No. DAU2011-0041

1. The Parties

The Complainant is Doteasy Technology Inc. of Burnaby, British Columbia, Canada, represented by Jonathan Wong, Canada.

The Respondents are M Makras & E.A Nahed, Dot Easy Australia Pty. Ltd of New South Wales, Australia represented by Watermark Intellectual Property Lawyers, Australia.

2. The Domain Names and Registrar

The disputed domain names <doteasy.com.au> and <doteasy.net.au> are registered with TPP Wholesale Pty Ltd.

3. Procedural History

The Complainant initially attempted to file the Complaint on December 7, 2011. At that time, the WIPO Arbitration and Mediation Center (the “Center”) identified that the Complainant had brought a complaint unsuccessfully against the Respondents in respect of the same domain names previously. Accordingly, the Center informed the Complainant that re-filed Complaints are accepted in only limited circumstances and pointed to the need for identification of the grounds which would justify acceptance of the re-filed Complaint on a preliminary basis and subject to the Panel’s final determination.

By email on the same day, the Complainant outlined very succinctly three grounds which it said supported refilling the case. In view of the brevity of the information provided, the Center sought further amplification by email on December 8, 2011. On December 9, 2011, the Complainant provided a rather more fulsome explanation.

Following review of that material, the Center notified the Complainant on December 15, 2011 that it was not satisfied the Complainant had necessarily satisfied the threshold requirement, but the Center considered the Complainant had at least raised the possibility of such a case. Accordingly, the Center informed the Complainant that it would accept the Complaint on a provisional basis if the Complainant wished to proceed. The Complainant then resubmitted the Complaint on December 15, 2011.

On December 16, 2011, however, Mr. Makras for the Respondents, referring to Plan Express Inc. v Plan Express WIPO Case No. D2000-0565, argued that the Complaint should not be accepted for filing as the Complainant was engaging in reverse domain name hijacking. By email later that day, the Complainant indicated that nonetheless it wished to proceed.

On December 19, 2011 and after reviewing the parties’ respective submissions, the Center notified the parties that it would accept the re-filed Complaint on a preliminary basis, with the Panel to make a final determination whether or not the re-filed Complaint may properly be accepted and, if so, deal with the proceeding. Also on December 19, 2011, the Center transmitted by email to TPP Wholesale Pty Ltd

TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain names. On December 23, 2011, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details.

The Center verified that the re-filed Complaint otherwise satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), 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 Respondents of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Response was filed with the Center on January 13, 2012.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 20, 2012. 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 findings

The Complainant offers domain name registration and management services, website design, development and hosting services. It has been doing so since mid-2000. It operates from a website to which the domain name <doteasy.com> resolves.

The Respondent, E. Nahed, was a customer of the Complainant’s services in at least 2002, before the Respondent registered either of the disputed domain names.

The Respondents also offer the same or similar services from the disputed domain name, <doteasy.com.au>. The disputed domain name, <doteasy.net.au>, redirects to the Respondents’ website at disputed domain name <doteasy.com.au>. The disputed domain name <doteasy.com.au> was first registered by the Respondents on April 17, 2003; the disputed domain name <doteasy.net.au> on April 11, 2006.

5. Discussion and Findings

As noted above, the disputed domain names have already been the subject of a dispute between the same parties: Doteasy Technology, Inc. v. M Makras & E.A. Nahed dba Dot Easy Australia WIPO Case No. DAU2006-0011 (“the 2006 decision”). In that case, the panelist denied the Complaint on the basis that the Complainant had failed to establish that the Respondents did not have rights or legitimate interests in the disputed domain names.

Paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") addresses the question: “Under what circumstance should a refiled case be accepted by a panel?”:

Consensus view: A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.

A number of cases are cited in support of those propositions. While a panel is not necessarily bound to adopt the approach taken in previous cases, the Panel considers it appropriate to adopt the Consensus View summarised in the WIPO Overview 2.0 above.

Following the Center’s request, the Complainant has advised three reasons to justify refiling the Complaint:

(a) First, the Complainant has secured registration of the DOTEASY trademark in Australia and successfully opposed registration by the Respondents of their trademark application for a stylized version of “Dot Easy Australia”;

(b) Secondly, the Complainant seeks to submit evidence which it claims establish the Respondents succeeded in the 2006 dispute on the basis of false evidence; and

(c) Thirdly, the Complainant seeks to rely on evidence which it claims demonstrates the Respondent have engaged in copying large amounts of content from the Complainant’s website. This latter evidence is said to demonstrate bad faith use of the disputed domain names.

A. The successful registration of the trademark in Australia

The Complainant’s trademark, no. 1081907, was filed on and takes effect from October 22, 2005; that is, after the Respondents registered disputed domain name <doteasy.com.au>, but before the registration of disputed domain name <doteasy.net.au>.

The panelist in the 2006 decision found that the Complainant had proved the ownership of trademarks in Canada and the United States of America, (the Australian application was pending at that time). While those rights accrued after the date the Respondents had registered disputed domain name <doteasy.com.au>, the panelist also found (in accordance with accepted practice under the Policy) that the disputed domain names were confusingly similar to those proven trademarks. The Complainant’s successful registration of its Australian trademark, therefore, does substantially change matters under the first element of the Policy.

The panelist in the 2006 decision, however, found that the Respondents had established rights and legitimate interests in the disputed domain names under paragraphs 4(c)(i) and (ii) of the Policy:

(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that [the Respondent] has acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the Respondent] (as an individual, business or other organisation) has been commonly known by the domain name, even if [the Respondent] has acquired no trademark or service mark rights;

The failure of the Respondents’ opposition to the registration of the Complainant’s trademark, no. 1081907 and the success of the Complainant’s opposition to the registration by the Respondents of their trademark application, no. 1082189, does have the potential to undermine the 2006 decision panelist’s findings that the Respondents had rights or legitimate interests in the disputed domain names. This is because in Doteasy Technology Inc v. Dot Easy Australia Pty. Ltd. [2011] ATMO 88 (the “Opposition ruling”), the Registrar of Trade Marks’ Delegate rejected much of the Respondent’s claim to use of DOT EASY in Australia before the Complainant’s use in Australia commenced.¹

However, at paragraph 20 of the Opposition ruling, the Delegate concluded that the Respondent did in fact have prior use in Australia at least for “audio streaming” services pre-dating any rights of the Complainant. This appears to indicate that the Delegate accepted that the Respondents had rights and legitimate interests in DOT EASY in Australia at least in relation to audio streaming services.

It is also apparent that the nature of the Respondents’ activities expanded or changed after they registered the disputed domain name <doteasy.com.au>. Given the outcomes of the opposition proceedings referred to above, that change or expansion would appear to lead the Respondents into infringing the Complainant’s trademark, subject to any defences the Respondents might be able to establish under the Trade Marks Act 1995 (Cth) such as, for example, sections 122(1)(f) or (fa). On the record in this case, that may well mean that the Respondents’ business or a very substantial part of the Respondents’ business is being conducted under an infringing trademark. If that were established, it may well be that it would not disentitle the Respondents’ use in relation to audio streaming services.² These are not strictly issues arising, or appropriate to be dealt with, under the Policy and should more appropriately be dealt with in a Court proceeding.

Accordingly, the Panel finds that the successful registration of the Complainant’s trademark in Australia does not displace the Respondents’ rights or legitimate interests in the disputed domain names under the Policy.

B. The allegation of false evidence

The second development that the Complainant relies on is its claim that new evidence establishes the Respondents were not known as Dot Easy Australia until December 2004 (i.e., after the registration of disputed domain name <doteasy.com.au>).

The new evidence in question are print-outs from the Wayback Machine at website “www.archive.org” which are claimed to show that the Respondents’ used the name “Dot Easy” on December 19, 2003 and June 6, 2004 and used “Dot Easy, Sydney” to identify themselves on August 24, 2004 and September 25, 2004.

In Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V. WIPO Case No. D2011-0057, a three member panel (W. Scott Blackmer, Alan L. Limbury and Willem J.H. Leppink) referred with approval to the approach to new evidence identified by Sir Ian Barker in Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703:

On the discovery of new evidence, Sir Ian Barker referred to the leading English Court of Appeal case of Ladd v. Marshall [1954], 3 All ER 745, for the following criteria:

- the new evidence could not have been obtained with reasonable diligence for use at trial;

- the new evidence must be material (i.e., it would probably have an important influence on the result);

- the new evidence must be credible, although it need not be incontrovertible.

The Complainant acknowledges that its proposed evidence existed before it filed the complaint leading to the 2006 decision. It says:

We stumbled upon this evidence during our trademark filing/opposition process. That is, after the 2006 decision.

The Panel is far from satisfied that material apparently available via a search of the Wayback Machine qualifies as material which could not have been obtained with reasonable diligence for use in the 2006 decision.

The Panel notes that both the panelist in the 2006 decision and the Delegate in the opposition proceedings found the Respondents had proved dealings with third parties under the name “Dot Easy Australia” in 1999 and subsequent years; viz.:

- a letter dated March 14, 2000, from Webmasters International of Seattle, Washington, addressed to Dot Easy Australia, naming both partners, welcoming Dot Easy Australia into membership of Webmasters International;

- a letter dated October 6, 2000, from the Ambassador for Lebanon in Australia addressed to Dot Easy Australia, responding to a letter dated February 5, 2000, which is not before the Panel;

- a letter dated July 23, 2000, from St. Charbel’s Church and Monastery, Punchbowl, Australia, addressed to Mr. Elie Nahed, Dot Easy Australia; and

- a printout of a webpage “http://www.geocities.com/doteasyaustralia” showing the name Dot Easy Australia, offering hosting and reseller plans for reward and containing a copyright notice “Copyright 2000 Dot Easy Australia”.

The purported new evidence does not displace that evidence.

In addition, it is far from clear that the following description on a print out from the Wayback Machine necessarily indicates how the Respondents identified themselves:

.The Panel notes that other services on the same print out are identified simply as, for example, “DellHost”, “NTT/Verio” and “Eathlink”, which do not appear to be the formal, or only, names likely to have been used by those parties.

The Panel accepts the Complainant’s point that a business or trading name is a key aspect of a business’ identification and consistent use and presentation of the business or trading name is highly important in building brand equity. However, the disputed domain names are <doteasy.com.au> and <doteasy.net.au>, not “Dot Easy Australia”. The names the Complainant now seeks to rely on to disqualify the Respondents equally support the disputed domain names. The inclusion of “Australia” in the Respondents’ name serves only to identify them with their center of operations.

Even if the new evidence be admitted, therefore, the Panel finds it does not undermine the Respondents’ rights or legitimate interests.

C. The alleged copying of large amounts from the Complainant’s website

As noted above, the Complainant also advances material in support of an allegation that the Respondents have engaged in large scale copying from the Complainant’s website. The Complainant relies on this to undermine the finding that the Respondents have made out its defense under paragraph 4(c)(i) of the Policy.

As with the material from the Wayback Machine relating to the name or names used by the Respondents, the Panel is far from satisfied that it qualifies as new evidence in the sense discussed above. Moreover, in light of the Panel’s conclusions in sections A and B above, the material and the allegation, if accepted, would not displace the finding that the Respondents have rights or legitimate interests on other grounds.

D. Conclusions

The Panel considers that, while finely balanced, the successful registration of the Complainant’s Australian trademark as a result of a successful opposition against the Respondents does justify acceptance of the re-filed Complaint, having regard to the grounds pursued in that opposition.

For the reasons set out above, however, the Complainant still has not proved that the Respondents do not have rights or legitimate interests in the disputed domain names. Accordingly, it is unnecessary to consider whether or not the Respondents have registered or used the disputed domain names in bad faith; the Complaint must fail.

The Respondents say that the Complainant is using the Policy to harass them in bad faith and seek a finding of reverse domain name hijacking.

Mere failure of the Complaint is not sufficient alone to warrant such a finding. The Complainant’s failure to draw the Center’s attention to the earlier dispute and specifically identify what it considered justified a new Complaint is particularly troubling. See e.g. Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v. Netego DotCom, WIPO Case No. D2009-0540. On balance, however, the Panel considers that the successful registration of the Australian trademark after a successful opposition proceeding in this case is sufficient to refrain from making a finding of reverse domain name hijacking.

6. Decision

For the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist
Dated: February 4, 2012

¹ The Panel notes both parties filed evidence in the opposition proceedings, but only the Complainant appeared at the hearing and made submissions. The Respondents say they failed to appear inadvertently as a result of miscommunications involving their legal representatives. In any event, there was no appeal and the Complainant’s trademark is registered.

2 See e.g. Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196.