WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brilliance Publishing, Inc. v. My Brilliance Pty Ltd / Ceinwen Schneider
Case No. DAU2013-0007
1. The Parties
The Complainant is Brilliance Publishing, Inc. of Michigan, United States of America represented by King & Wood Mallesons, Australia.
The Respondent is My Brilliance Pty Ltd / Ceinwen Schneider of Western Australia, Australia, represented by IP Strategies International, Australia.
2. The Domain Names and Registrar
The disputed domain name <brillianceaudiocollections.com.au> and <brillianceaudio.com.au> (the “Disputed Domain Names”) are registered with Crazy Domains Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 19, 2013, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain names. On March 20, 2013, Crazy Domains Pty 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”), 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 March 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2013. The Respondent requested for an extension to file a Response by email on April 10, 2013. The Complainant did not object to the Response due date being extended until April 17, 2013. Accordingly, the Response due date was set as April 17, 2013. The Response was filed with the Center on April 17, 2013.
The Center appointed Fleur Hinton, William P. Knight and John Terry as the panelists in this matter on May 13, 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.
4. Factual Background
The Complainant Brilliance Publishing, Inc. is an American corporation that deals internationally in the publication of audiobooks. Worldwide, the Complainant sells over 3 million audiobooks under the name BRILLIANCE AUDIO, across many genres, to resellers and libraries each year, as well as directly to customers by online download, and has made sales in Australia of such products since at least 2001. The Complainant has been using the domain name <brillianceaudio.com> since 1995 and continues to do so. The Complainant recently changed its name from “Brilliance Audio, Inc” to its present name, “Brilliance Publishing, Inc.”.
The Complainant is the owner of the registered trade mark BRILLIANCE AUDIO in the United States. On June 30, 2010, it applied for registration of the same mark under the Trade Marks Act 1995 (Cth). This application has been accepted and is pending registration, subject to opposition. On August 2, 2012, the Complainant’s solicitors sent a letter to the Respondent, to request consent to the Complainant’s registration of the BRILLIANCE AUDIO trade mark in Australia.
The Respondent, My Brilliance Pty Ltd, carries on business in the provision of services in the nature of spiritual guidance and emotional mapping, and related goods and services. A part of the Respondent’s business involves the sale of audiobooks. The Respondent uses the domain name <mybrilliance.com.au> for its business.
The Respondent is the owner of a number of registered trade marks, the earliest of which dates from June, 2007. Apart from IF I FEEL IT - IT IS MINE and INTENT OF DECEIT, all its marks incorporate the words MY BRILLIANCE except for the mark BRILLIANCE which was registered in respect of goods and services in classes 16 and 41, including for the distribution and production of audio recordings, with a priority date of June 4, 2007, and BRILLIANCE registered in respect of various services in class 35 including distribution and separately in class 45, for personal and social services rendered to meet the needs of individuals; horoscope casting; psychic consultancy, both with a priority date of June 5, 2007.
The Respondent did not give the consent requested by the letter from the Complainant’s solicitors dated August 2, 2012 but on August 10 and 12, 2012, lodged with IP Australia applications for registration of the marks BRILLIANCE, MY BRILLIANCE and RELEASING MY BRILLIANCE in respect of goods in class 9, including electronic publications, and on November 12, 2012 lodged with IP Australia further applications for BRILLIANCE STORE and BRILLIANCE AUDIO COLLECTIONS in respect of a range of goods and services, including electronic publications.
The Disputed Domain Names were created on September 3, 2012 and February 4, 2013. The domain name <brillianceaudio.com.au> resolves to the Respondent’s website at “www.mybrilliance.com.au” and the domain name <brillianceaudiocollections.com.au> is not in use, but is parked by the Registrar.
5. Parties’ Contentions
The Complainant asserts that the Disputed Domain Names are confusingly similar to its trade mark BRILLIANCE AUDIO. The Complainant alleges extensive use of its mark in Australia through the sale of audiobook products. The Complainant claims that the Disputed Domain Names consist of the Complainant’s trade mark in its entirety, and therefore creates a confusing similarity.
The Complainant states that it has not authorized the use of the Disputed Domain Names by the Respondent. The Complainant notes the dates of registration of <www.brillianceaudio.com.au>, one month after correspondence in which the Complainant requested consent for the registration of the BRILLIANCE AUDIO trade mark and speculates that, based on the timeline of events, the Disputed Domain Names were either registered for the purpose of transferring ownership to the Complainant for valuable consideration or for the purpose of creating a likelihood of confusion with the Complainant’s trade mark. The Complainant submits that neither purpose constitutes a legitimate interest in the Disputed Domain Names.
The Complainant argues that it is self-evident that the Disputed Domain Names have been registered in bad faith. The Complainant again points to the timeline of events and speculates that the Respondent sought to either sell the Disputed Domain Names to the Complainant or intentionally cause a likelihood of confusion with the Complainant’s trade mark.
The Respondent initially requests that the Complaint be dismissed in limine, claiming that it is not an “Applicable Dispute” as described in paragraph 4(a) of Schedule A to the Policy. In a footnote to paragraph 4(a)(i) of the Schedule, there is a clarification that the name in which the Complainant claims rights must be either “a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant’s personal name”.
The Respondent argues that the Complainant has no relevant registered or common law trade mark rights in Australia and notes the Complainant’s recent name change to Brilliance Publishing, Inc. The Respondent is highly critical of the Complainant’s evidence in support of the Complaint, including an assertion that there is an inconsistency between that evidence and the Complainant’s first use declaration for the purpose of its registration of the mark BRILLIANCE AUDIO in the United States, and other matters. Further than these criticisms, the Respondent asserts that the Complainant’s evidence shows that the Complainant’s products and use of the mark BRILLIANCE AUDIO have a minimal presence in Australia, and that it has made no marketing efforts to establish a common law trade mark in Australia. The Respondent also suggests that overseas companies should not be permitted to establish trade mark rights in Australia simply by making products internationally available online, but must at the least in such online presence be shown to target Australian consumers specifically.
The Respondent denies that the Disputed Domain Names are identical or confusingly similar to the Complainant’s BRILLIANCE AUDIO mark. The Respondent refutes the existence of any trade mark rights on the part of the Complainant, not only because of an absence of sufficient trading “notoriety” in Australia, but also on the grounds that the mark of the Complainant could only be limited to the word BRILLIANCE, because the word “audio” is not used as a trade mark component by the Complainant but as a bare description of the goods sold.
In addition, the Respondent contends that the domain name <brillianceaudiocollections.com.au> is not confusingly similar due to the additional word “collection”, as the Complainant is not associated with collections of audiobooks.
The Respondent argues that it has a legitimate interest in the Disputed Domain Names, by virtue of its registered trade marks BRILLIANCE and its sale of audio-based products, as well as its own name. The Respondent contends that the fact that one of the Disputed Domain Names is redirected to the Respondent’s website under the domain name < mybrilliance.com.au> is standard Internet practice and is not evidence of illegitimate use and that the parked status of the other Disputed Domain Name is as a consequence only of the pending development of a separate website.
The Respondent denies that the Disputed Domain Names were registered in bad faith. The Respondent cites its purported legitimate use of the Disputed Domain Names and refutes the Complainant’s speculation that it sought gain by transferring the Disputed Domain Names or by creating confusion with the Complainant’s trade mark.
6. Discussion and Findings
Procedural Question - Supplemental Filing of Complainant
The purpose of the auDRP is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Only if the Respondent has raised entirely new facts or in otherwise exceptional circumstances should a supplemental filing be accepted. This is in order to discourage protracted exchanges of argument; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.2.
The Panel has reviewed the Supplemental Filing of the Complainant solely in order to determine its admissibility or otherwise. Had the Respondent’s Response raised significant new matters which were likely to be material to the determination, the Panel would, in its discretion, have admitted the Supplemental Filing and allowed the Respondent an opportunity to file an answer to it. However, the Supplemental Filing is largely argumentative, adding nothing of factual substance to the Complaint. There is nothing in the Response that requires a reply from the Complainant for the purposes of this determination. The Supplemental Filing is accordingly rejected.
Preliminary Question – “Applicable Dispute”
In the Panel’s opinion, the footnote to paragraph 4(a)(i) of the Schedule to the Policy was not intended to restrict the relevant names in which a complainant claims rights to those which are registered at the date of the complaint or the personal name of the complainant. In the Panel’s opinion, the intention of this footnote was to indicate names that are sufficient for the purpose of making a complaint under the Policy but not to prescribe that only names that are registered in some form or another may be the basis of a complaint. All that is required is such registered rights or some “other legal or trading name”; see John Kolenda v. 1300 Phonewords Pty Ltd, WIPO Case No. DAU2009-0001. Were it otherwise, many would-be complainants with legitimate objections to a domain name registered by another would be precluded from making a complaint under the policy, potentially including Australian businesses having unregistered, or “common law”, trade mark or related rights. It would also mean that the eligibility rules for registration of a com.au domain name, for example, would appear at odds with the Policy, as the former permits the registration of any name to which the applicant for registration has a “close and substantial connection”, not just names the applicant has registered on an Australian government register, including a product that the applicant manufactures or sells, a service that the applicant provides, an event that the applicant organizes or sponsors, an activity that the applicant facilitates, teaches or trains, a venue that the applicant operates and a profession that the applicant's employees practise.
Furthermore, it is clear that the right to lodge a complaint under the policy relates to a “name” only, and not only a name that has been publicly used to develop reputation or goodwill, as the inclusion of “name” within the criteria under paragraph 4(a)(i) of the Policy was adopted deliberately to broaden the scope of protection compared to that available under the UDRP; see John Kolenda v. 1300 Phonewords Pty Ltd, WIPO Case No. DAU2009-0001. The learned panel in that decision clearly doubted the requirement for any specific registration, in the sense of a condition precedent to a complaint, with which the Panel respectfully concurs.
In these circumstances, the Panel is prepared to find that the Complainant’s established trading history in Australia is sufficient to found the Complaint.
A. Identical or Confusingly Similar
There can be no doubt that the Disputed Domain Name <brillianceaudio.com.au> is identical to the Complainant’s name BRILLIANCE AUDIO. The addition of the country code Top Level Domain indicators does not suffice to distinguish between them.
The question of whether the Complainant has established a sufficient reputation to make the registration or use of the Disputed Domain Name <brillianceaudiocollection.com.au> confusingly similar may deserve more careful consideration, given the established trading history of the Respondent.
In the Panel’s opinion, notwithstanding the criticisms of the Complainant’s evidence by the Respondent, the Complainant has amply established by its evidence of sales and distribution in Australia that it has sufficient presence in Australia to establish a common law trade mark.
The Panel rejects the Respondent’s argument that, in order to enjoy common law rights in an unregistered trade mark, the mark must have enjoyed undisturbed use over an extended period, while being promoted to a wide market. This statement reflects neither the Policy, the decisions of many panels under it, nor the common law.
It is the distinctiveness of the name that is significant. Contrary to the arguments of the Respondent, there is no requirement under Australian law that an unregistered trade mark be in any sense famous or universally recognized in order to support a claim for passing off. Rather, a trade mark, or sign, must have become an identifier of the Complainant’s goods or services sufficient to distinguish it from the goods or services of other traders. The same is true under the UDRP; see WIPO Overview 2.0 paragraph 1.7.
Whatever the criticisms of the Respondent of the Complainant’s evidence, the Complainant has amply demonstrated that a wide range of Australians have purchased the Complainant’s products labelled BRILLIANCE AUDIO and by reference to that name. The quantity of those sales may be small, but they clearly predate the Respondent’s use of the word BRILLIANCE my some years, they are continuous and they are real.
In this regard, it is noted that the Complainant’s application to register the trade mark BRILLIANCE AUDIO under the Trade Marks Act 1995 (Cth) has now been accepted under the provisions of s 44(4) of the Act. This indicates that the Registrar of Trade Marks was satisfied that the Complainant has used the BRILLIANCE AUDIO trade mark continuously in respect of the same or similar goods and services (in this case, publications and electronic publications, publishing and electronic publishing) for a period predating any earlier cited mark up to the date of the Complainant’s application. The Respondent incorrectly states that the Complainant’s application for registration of the trade mark BRILLIANCE AUDIO has been “refused”. At the most, at the date of the Response, the Complainant’s application may have been the subject of one or more adverse examiner’s reports. It has never been “refused”. Furthermore, it has now been accepted for registration.
The Respondent’s assertions relating to an alleged difference between the Complainant’s first use declaration for the purpose of the United States trade mark restoration and the Complainant’s evidence in this administrative proceeding are irrelevant. There could be any number of reasons why the USPTO accepted evidence of a different date from that now asserted by the Complainant.
The Response does not accurately represent the Complainant’s evidence of use of its mark BRILLIANCE AUDIO, in seeking to diminish its significance. In turn, the Respondent has not provided any evidence to suggest that it has used the mark BRILLIANCE AUDIO from a date earlier than the Complainant’s commencement of distribution and use in Australia of goods and services under the mark BRILLIANCE AUDIO.
The Respondent’s argument (put at its highest and perhaps more clearly than the Respondent) that the trade mark of the Complainant is BRILLIANCE, because the word AUDIO is merely descriptive and of no weight in the Complainant’s trade mark, overlooks the fact that a trade mark should be taken as a whole, and all the Complainant’s evidence shows that it has used the mark BRILLIANCE AUDIO as a whole. The Respondent’s characterization of that evidence is not accurate or well-founded.
The fact that the Complainant has changed its name is irrelevant in the present circumstances. This does not necessarily signal abandonment of the trade mark BRILLIANCE AUDIO.
Therefore, the Panel finds that the Disputed Domain Name <brillianceaudio.com.au> incorporates the Complainant’s trade mark BRILLIANCE AUDIO in its entirety. The addition of the generic “collections” to the Disputed Domain Name <brillianceaudiocollections.com.au> and the domain indicators “.com.au” cannot suffice to enable the Respondent to distinguish its use from that of the Complainant.
The first ground is satisfied.
B. Rights or Legitimate Interests
The Respondent argues that the Respondent’s name includes the word “Brilliance” but not “Brilliance Audio”. In fact, it would appear that it never occurred to the Respondent, so far as the Response reveals, to use the mark BRILLIANCE AUDIO in any way as a trade mark before the correspondence from the Complainant’s solicitors alerted the Respondent to the Complainant’s interest in this trade mark.
A Complainant is required to make out an ínitial príma facie case that the Respondent lacks rights or legitimate interests. Once such a case has been made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the auUDRP. See similar circumstances under the UDRP in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110.
The Respondent has failed to do this. The Panel rejects the Respondent’s argument that the Complainant’s trade mark is restricted to the word BRILLIANCE. It is irrelevant to this issue that the Complainant has changed its corporate name and style. There is no requirement in the Policy that the Complainant be trading under the name upon which the Complainant is based; many companies trade under a name different from that of their trade marks. There is no evidence from the Respondent that the Complainant has ceased to use or abandoned the mark BRILLIANCE AUDIO.
The Panel finds that the Respondent has never used or identified itself or its products or services with the mark BRILLIANCE AUDIO and, having had the opportunity to do so in its response, has failed to demonstrate any rights or legitimate interests in the Complainant’s trade mark BRILLIANCE AUDIO to justify its registration or use of the Disputed Domain Names.
The second ground is satisfied.
C. Registered or Subsequently Used in Bad Faith
The Respondent claims that its use is of its own trade mark, BRILLIANCE together with the descriptive term “audio”. The Panel rejects this argument. The Complainant has a reputation in BRILLIANCE AUDIO in Australia. In view of the Respondent’s knowledge of the Complainant’s trade mark, the only reasons the Respondent could have for selecting the Disputed Domain Names would seem to be:
(a) to gain some commercial advantage over the Complainant, such as an opportunity to sell the Disputed Domain Names to the Complainant; and/or
(b) to divert internet users seeking the Complainant’s products and services to the Respondent’s website to the commercial disadvantage of the Complainant and advantage of the Respondent.
For all the reasons set out above, the Panel finds registration and use in bad faith.
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 names <brillianceaudio.com.au> and <brillianceaudiocollections.com.au> be transferred to the Complainant.
William P. Knight
Date: May 28, 2013