WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Macquarie Group Limited v. McQuarie Group Pty Ltd / Roland Storti
Case No. DAU2012-0028
1. The Parties
The Complainant is Macquarie Group Limited of Sydney, New South Wales, Australia represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is McQuarie Group Pty Ltd / Roland Storti of South Melbourne, Victoria, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <mcquarie.com.au> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2012. On November 7, 2012, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On November 9, 2012, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 14, 2012, the Respondent transmitted by email to the Center a “brief summary of the situation”. On November 14, 2012, the Center notified the Respondent that once it has verified that the Complaint satisfies the formal requirements it will officially notify the Respondent that an administrative proceeding has been commenced against it, and it will have 20 calendar days to submit a response.
The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. On December 11, 2012, the Respondent requested an extension of time to December 17, 2012, to file its response, to which the Complainant did not object. On December 12, 2012, the Center granted the Respondent an extension of time to December 17, 2012 to file its response. The Response was filed with the Center on December 17, 2012.
On December 20, 2012, the Complainant transmitted by email to the Center a request to suspend the proceedings whilst it sought to resolve the matter directly with the Respondent. On December 20, 2012, the Center formally suspended the proceedings until January 20, 2013. Following this, the Complainant and Respondent communicated with each other by email but failed to reach an agreement concerning the disputed domain name. On January 18, 2013, the Complainant requested the proceedings be reinstituted and submitted a supplemental filing containing copies of the communications between it and the Respondent during the suspension period. On January 21, 2013, the Center formally reinstituted the proceedings.
The Center appointed Andrew F. Christie as the sole panelist in this matter on January 28, 2013. 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.
On February 11, 2013, the Panel issued Administrative Panel Procedural Order No. 1, in which the Panel: (i) admitted into the case record the Complainant’s unsolicited supplemental submission of January 18, 2013; and (ii) invited the Respondent to file, by no later than February 18, 2013, a supplemental submission providing evidence establishing the volume, the financial value, and the type of the business conducted by the Respondent under the name “McQuarie Group Pty Ltd” from July 2005 to the present time, and the uses by the Respondent of the disputed domain from July 2005 to the present time.
On February 22, 2013, the Respondent sent an email communication to the Center in which it: (i) requested an extension of time in which to file the supplemental submission invited in Administrative Panel Procedural Order No. 1; and (ii) expressed discomfort with providing information contained in tax returns, and questioned the relevance of providing such information. On February 25, 2013, the Panel issued Administrative Panel Procedural Order No. 2, in which the Panel: (i) extended to February 28, 2013, the time provided to the Respondent in which to file the supplemental submission invited in Procedural Order No. 1, and noted that no further request by the Respondent for an extension of time will be entertained; (ii) explained that there was no compulsion on the Respondent to file a supplemental submission but that failure to do so would be taken into account in determining whether or not the Respondent had established its claim to a right or legitimate interest in the disputed domain name; and (iii) reminded the parties that any information provided by the Respondent pursuant to this Administrative Panel Procedural Order would be treated by the Center as confidential and would be disclosed only to the parties and to the Administrative Panel.
On March 1, 2013, the Respondent sent the Center an email stating: “The Taxation assessments have been requested but have not yet been received from the taxation department. As soon as they arrive I will send them through.” Attached to this email were numerous screenshots of an email inbox in which appeared to be some emails addressed to the Respondent using email addresses ending in “@mcquarie.com.au”.
4. Factual Background
The Complainant is a global provider of banking, financial, advisory, investment and funds management services. It was founded in 1969, is headquartered in Sydney, and currently operates from 70 offices around the world. As at March 31, 2012, it managed AUD 327 billion in assets. In 2012 its net operating income was AUD 6.9 billion.
The Complainant and its subsidiaries and related entities are the owners of numerous trademark registrations in Australia consisting of or containing the trademark MACQUARIE, dating from at least as early as 1988. They also hold numerous domain names consisting of or containing the trademark MACQUARIE, including <macquarie.com> and <macquarie.com.au>.
The Respondent is a consulting company, based in Melbourne, Australia. It was formed in 1993 with the name “McQuarie Construction Group Pty Ltd”, and changed to its present name of “McQuarie Group Pty Ltd” in 1999. The parties accepted that the disputed domain name was registered by the Respondent on July 28, 2005. It currently resolves to a website that contains basic information about the Respondent, and the statement: “This site is currently being upgraded. We apologise for any inconvenience”. The website states that the Respondent’s line of business is “performance management, compliance management and auditing solutions”, and lists a contact phone number in Melbourne and an email address for enquiries.
The Complainant first became aware of the disputed domain name on December 21, 2011, when the Respondent sent an email to one of the Complainant’s customers informing the customer that it had mistakenly sent an email to the Respondent, ostensibly the result of a typographical error. A member of the Complainant’s Service Quality Specialist staff called the Respondent on January 31, 2012 and February 3, 2012, suggesting a technical solution (an “edge defence”) to the problem of misdirected emails. Thereafter, there were various emails and conversations between the two parties, culminating in an email from the Respondent to the Complainant on February 12, 2012, in which the Respondent stated: “Considering a technical solution can not be reached we have only one option to resolve the situation and therefore have undertaken an assessment of the costs associated for Macquarie Group to purchase our domain name ‘’www.mcquarie.com.au’’ and for us to change our company name, logo and embark on a rebranding exercise. We have evaluated these tasks and all that is associated and would settle for an amount of $145,500.00”.
Following this February 12, 2012 communication there were further exchanges between the parties, further emails from the Complainant’s customers wrongly sent to the Respondent, and further emails from the Respondent to those customers informing them of the mistake, including one in which the Respondent stated: “We have made contact with the legal department at Macquarie and they are not that committed in resolving this issue”.
The Complainant conducted some investigations into the trading activities of the Respondent, and in July 2012 it received its investigator’s report which stated, in essence, that: (i) the Respondent had no visible presence at the address registered with the company regulator, the Australian Securities and Investments Commission (the “ASIC”) for the Respondent; (ii) the Respondent had been asked to vacate the premises at the ASIC registered address in 2006, and had not provided a forwarding address; and (iii) calls to numbers listed as belonging to the Respondent either went unanswered or went through to disconnected lines.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its extensive portfolio of registered MACQUARIE trademarks, and that its trademarks are highly distinctive and have, over the years, become a global and well-known brand in financial services. The disputed domain name contains a trademark that is both aurally and visually similar to the Complainant’s trademark MACQUARIE, missing the first letter “a”. Indeed, numerous customers appear to have confused the disputed domain name with the domain name used by the Complainant. Further, the addition of the ccTLD “.com.au” is not relevant to this point.
The Complainant contends that the Respondent does not have any right or legitimate interest in the disputed domain name because: (i) it is not identical to the Respondent’s name, which is McQuarie Group Pty Ltd, not McQuarie Pty Ltd, and until 1999 the Respondent’s company was named McQuarie Construction Group Pty Ltd; (ii) the Respondent is no longer trading and is holding the disputed domain name solely to obtain a significant financial benefit from the Complainant by exploiting confusion amongst its customers; (iii) the Respondent is clearly unwilling to resolve the problem by implementing an available technical solution; and (iv) irrespective of whether the Respondent may have had a legitimate interest in the disputed domain name at the date of its registration, that is no longer the case.
The Complainant contends that the Respondent is currently using the disputed domain name in bad faith because: (i) the evidence suggests that the Respondent has not been trading for some time, and that during that period, since at least December 2011, the Respondent has been receiving emails intended for the Complainant; (ii) after a number of such misdirected emails, the Respondent suggested that the only solution to the dilemma of customer confusion is for the Complainant to purchase the disputed domain name for AUD 145,500.00, thereby assisting the rebranding of the Respondent’s business; (iii) the Respondent has not responded to the Complainant’s technical solution suggestions, and instead responds to the Complainant’s misdirected customers in a way to exert pressure on the Complainant to purchase the disputed domain name on the Respondent’s terms; (iv) the Respondent’s claim that the figure of AUD 145,500.00 includes rebranding costs appears disingenuous given the evidence suggesting that the Respondent is not trading; (v) the Respondent has recognized that it has a potential of benefiting financially from what may have been an active business in the past but is now dormant or non-existent, by exploiting confusion amongst the Complainant’s customers; and (vi) the Respondent’s failure to at least attempt a technical resolution suggests its focus is to extract maximum financial gain, not to avoid customer confusion.
The Respondent responded to several of the Complainant’s points, including with statements to the effect that: (i) most of its correspondence is conducted via electronic means, thereby reducing the need to receive and collect mail, and it now has a new registered address; (ii) the Complainant was first advised of the confusion via email on July 13, 2010, not December 21, 2011; (iii) the Respondent does not deem implementing an edge defense technical solution to be an acceptable business practice; (iv) the Respondent has provided a fair and reasonable alternative for removing any possible confusion, by changing the company name under which it has operated for nearly 20 years; and (v) the Respondent has not stopped conducting business in the 19 years of its existence.
In relation to the issue of whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent contends: (i) that the Complainant is not the first entity to have registered the trademark “associated exactly” with the domain name <macquarie.com.au>, as Mars Sugars Australia Pty Ltd and Lockwood Brands Pty Ltd both had trademark applications for MACQUARIE accepted prior to acceptance of the Complainant’s trademark application for MACQUARIE; (ii) that the parties are clearly two different entities; and (iii) that the confusion has been caused by ASIC allowing the Complainant to change its name in 2002 to be almost exactly the same as the Respondent’s name.
In relation to the issue of whether the Respondent has any right or legitimate interest in the disputed domain name, the Respondent contends that: (i) it was the owner of the domain names <mcquarie.com> and <mcquarie.com.au> from 1993 to 1996, and that the original documentation was destroyed; (ii) it let the domain name <mcquarie.com.au> lapse, but reacquired it on July 28, 2005; (iii) it has been trading since 1993 and has not ceased trading during this time; and (iv) it has at all times attempted in good faith to reduce any confusion by the Complainant’s customers, and has ensured that the emails are directed to the correct recipient where possible.
In relation to the issue of whether the Respondent has registered or is using the disputed domain name in bad faith, the Respondent contends that: (i) at no time did it attempt, or continue, to hold onto the disputed domain name in bad faith; and (ii) it does not meet any of the four circumstances of evidence of registration or use in bad faith as outlined in the Policy.
The Respondent requests the Panel to make a finding of reverse domain name hijacking because the Complaint has failed to establish that the Respondent acted in bad faith and the primary purpose of the proceeding is to harass the domain name holder to implement a process that would be detrimental to the Respondent.
C. Complainant’s Supplemental Filing
On January 18, 2013, the Complainant submitted to the Center a supplemental filing consisting of some supplemental submissions and copies of emails between the parties during the case suspension period.
The supplemental submissions include: (i) the Respondent’s refusal to consider the technical solution proposed by the Complainant appears to be founded on a misconception as to what was technically possible and/or the result of a lack of funds and/or technical expertise; (ii) the Complainant has offered its technical assistance, at no cost to the Respondent, to implement the solution, which would enable the Respondent to maintain registration of the disputed domain name whilst resolving consumer confusion; (iii) the Respondent’s subsequent failure to consider a technical solution at no cost to itself suggests that its underlying motivation is to allow a continuation of the clearly prevalent confusion amongst the Complainant’s customers in the hope of extracting significant financial gain which is using the disputed domain name in bad faith; (iv) the Complainant only wishes to resolve the issue of customer confusion rather than deprive the Respondent of the disputed domain name, but given the Respondent’s unwillingness to employ a technical solution at no cost to itself, the Complainant is left with the option of seeking to remove the disputed domain name from the Respondent; and (v) the Complainant’s conduct prior to and throughout this proceeding does not allow a finding of “reverse domain name hijacking”, and the Respondent has not provided any evidence to support this allegation.
D. Respondent’s Supplemental Filing
The Respondent did not avail itself of the opportunity granted by Administrative Panel Procedural Order No. 1 (as extended by Administrative Panel Procedural Order No. 2) to provide evidence establishing the volume, the financial value, and the type of the business conducted by the Respondent under the name “McQuarie Group Pty Ltd” from July 2005 to the present time, and the uses by the Respondent of the disputed domain name from July 2005 to the present time. It did, however, provide evidence establishing that it had received some emails sent to addresses ending in “mcquarie.com.au”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates almost the whole of the Complainant’s registered trademark MACQUARIE – the omission being the first of the letters “a” – and adds the ccTLD identifier “.com.au”. This Panel finds these minor changes do not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark, because the distinctive part of the disputed domain name (“mcquarie”) is aurally identical and visually very similar to the Complainant’s trademark. In this Panel’s opinion, it is highly likely that many Internet users could, in haste, read “mcquarie” as being “macquarie” and/or misspell “macquarie” as “mcquarie”. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The fact that a domain name consists of part of a respondent’s personal or business name does not, of itself, establish that the respondent has a right or legitimate interest in the domain name. More is required. In this Panel’s opinion, where a respondent’s claim to a right or legitimate interest in a domain name is based on a commonality between the domain name and the respondent’s personal or business name, it is necessary to show that there is some meaningful practical connection between the domain name and the activities (whether personal or commercial) carried out under the respondent’s personal or business name. Paragraph 4(c) of the Policy provides some examples of such meaningful practical connections – bona fide use of (or preparation to use) the domain name in connection with an offering of goods or services; being commonly known by the domain name; and legitimate noncommercial or fair use of the domain name. Although the circumstances specified in paragraph 4(c) of the Policy are not limiting of the circumstances in which the respondent can demonstrate a right or legitimate interest in a domain name, they do illustrate that more than a coincidence between the domain name and the respondent’s personal or business name is required for a right or legitimate interest to be established.
The evidence in the case record before this Panel is such as to satisfy this Panel, on the balance of probabilities, that the Respondent does not have a right or legitimate interest in the disputed domain name. The Complainant asserted that the Respondent lacked a right or legitimate interest in the disputed domain name because it no longer traded under its corporate name, and it provided evidence capable of supporting that assertion. The Respondent contested that assertion, and provided by way of evidence in support three Remittance Advices in its favor. However, these Remittance Advices were for unspecified amounts, and did not disclose the reason for which the payments were being made. Thus, it was not possible to discern from the Respondent’s evidence if these Remittance Advices were for payments for supply of goods or services in business by the Respondent, or were for some other reason. In this Panel’s opinion, the Respondent’s evidence on whether it had a right or legitimate interest in the disputed domain name lacked clarity and persuasiveness.
Accordingly, by way of Administrative Panel Procedural Order No. 1, the Respondent was expressly invited by this Panel to provide evidence addressing the Complainant’s assertion that the Respondent lacked a right or legitimate interest in the disputed domain name. In particular, the Respondent was expressly invited by this Panel to provide evidence of the volume, the financial value, and the type of the business conducted by the Respondent under its name, and to provide evidence of the use to which the Respondent had put the disputed domain name. Despite indicating its intention to provide such evidence, and despite requesting and being given an extension of time in which to do so, the Respondent failed to submit any evidence of relevance.
The failure of the Respondent to provide any relevant evidence establishing the substance of the business it alleges to have conducted under its corporate name, and the nature of the use to which it has put the disputed domain name, leads this Panel to conclude that no substantive business activities have been conducted by the Respondent under its corporate name, and that no substantive use of the disputed domain name has occurred in connection with a substantive business, since the Respondent registered the disputed domain name in July 2005. Accordingly, this Panel concludes, on the balance of probabilities, that the Respondent does not have a right or legitimate interest in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
Both the Complainant and the Respondent acknowledge that some customers of the Complainant confuse the disputed domain name with the Complainant’s name and trademark, leading those customers to misdirect emails intended for the Complainant to the Respondent. The Complainant on a number of occasions has offered, at the Complainant’s expense, to assist the Respondent to implement a technical solution that would avoid emails being misdirected while allowing the Respondent to retain ownership of, and the ability to make legitimate use of, the disputed domain name. The Respondent has refused to accept the Complainant’s offer, has refused to consider any other means for preventing the confusion and misdirection of emails, and has insisted that the only way to solve the problem is for the Complainant to purchase the disputed domain name for the sum of AUD 145,500.00 (this being the alleged cost to the Respondent of the necessary consequential name change and rebranding exercise).
The Respondent did not support with any evidence its assertion that AUD 145,500.00 reflects the true cost of it changing its name and branding. Furthermore, despite being expressly invited by the Panel to do so, the Respondent did not provide any evidence establishing the size of its business. In these circumstances, this Panel concludes that the sum of AUD 145,500.00 is significantly in excess of what would be the true cost to the Respondent of changing its name and branding. This Panel considers that the Respondent’s refusal to implement a technical solution (at no cost to itself) that would avoid emails being misdirected while retaining ownership of, and the ability to make legitimate use of, the disputed domain name, together with the Respondent’s insistence that the only solution to the acknowledged problem is for the Complainant to purchase the disputed domain name for AUD 145,500.00, is evidence that the Respondent’s real intention in holding the disputed domain name is to sell it to the Complainant for a sum significantly in excess of the Respondent’s out-of-pocket expenses associated with preventing confusion between the disputed domain name and the Complainant’s trademark. Taking into account all the evidence and circumstances of the case, this Panel is satisfied, on the balance of probabilities, that the Respondent is using the disputed domain name in bad faith.
D. Reverse Domain Name Hijacking
Given this Panel’s finding that the Complainant has made out its case for a remedy under the Policy, it follows that the Respondent’s request for a finding that the Complainant has engaged in reverse domain name hijacking must be denied.
For all 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 <mcquarie.com.au> be cancelled.
Andrew F. Christie
Date: March 8, 2013