WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stephens Valuation and Consultancy Pty Ltd v. SLR Consulting Australia Pty Ltd
Case No. DAU2013-0026
1. The Parties
The Complainant is Stephens Valuation and Consultancy Pty Ltd of Emu Plains, New South Wales, Australia, represented by Wrays, Australia.
The Respondent is SLR Consulting Australia Pty Ltd of Lane Cove, New South Wales, Australia represented by DLA Piper, Australia.
2. The Domain Names and Registrar
The disputed domain names <quarryvaluation.com.au> and <quarryvaluations.com.au> are registered with NetRegistryPty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 2, 2013 and September 10, 2013, the Registrar 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 September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. The Response was filed with the Center on October 3, 2013.
On October 9, 2013, the Complainant filed a reply to the Response. On October 10, 2013, the Respondent objected to the Complainant’s request for its supplementary submission to be considered. On the same date, the Respondent replied to the Complainant’s objection.
The Center appointed James A. Barker as the sole panelist in this matter on October 17, 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 November 5, 2013, under paragraph 10 and 12 of the Rules, the Panel issued the Administrative Panel Procedural Order No. 1 for the Complainant to provide information that was missing from an attachment to the Complaint, and extended the due date to November 14, 2013. The Complainant provided that information on November 6, 2013. In response to a communication from the Respondent on November 6, 2013, the Panel further confirmed that it did not intend to admit the Complainant’s supplemental submission of October 9, 2013. On November 8, 2013, the Respondent indicated that it did not wish to file a response to the Complainant’s filing, in response to the Administrative Panel Procedural Order No. 1, of the missing attachment.
4. Factual Background
The Complainant is a company that values quarry assets, which involves a range of disciplines, including geology, mining rights, planning, environmental issues, business, plant and machinery, infrastructure and market analyses. To a lesser extent, the Complainant provides valuation and consultancy services in other industries, such as landfill, corporate, plant and machinery, industrial, and waste management. The Complainant also operates a subsidiary business, “Quarry Sales Australia”, which offers quarries for sale. The online vehicle through which the Complainant operates its quarry sales business is at “www.quarrysalesaustralia.com”. Users of that website are referred to the Complainant’s website at “www.quarryvaluations.com”.
The Complainant is the owner of Australian trademark registration number 1455472 for WWW.QUARRYVALUATIONS.COM. That mark is registered in class 36 for “valuation of real estate”. The Complainant’s mark was registered on October 29, 2011. The Complainant’s own website at “www.quarryvaluations.com” was registered in April 2008. The Complainant provides various evidence of the use of its website and its other business activities since that date. It further provided evidence of traffic to its website, including over 19,000 hits in 2008 to over 72,450 in 2011.
Among other materials, the Complainant provides evidence (through a declaration of one of its directors) of Google search results for “quarry valuations” and “quarry value”. The Complainant claims that its own website and trademark occupies the top three search results for “quarry valuations” and the top two search results for “quarry value”.
According to the Registrar’s confirmation of registration details to the Center, the disputed domain names were first created on April 8, 2011 and April 11, 2011, and then registered to the Respondent on March 12, 2013. Although the Registrar’s confirmation also appears to refer to the registration by the Respondent occurring on March 11, 2013, that difference is immaterial for the purpose of these proceedings. Information in the Response indicates that the disputed domain names were earlier registered to Mr. Herdman (an employee of the Respondent) on April 8, 2011.
The Complainant provides evidence from the WayBackMachine Internet archive that the disputed domain names have been used by the Respondent to revert to the Respondent’s website at “www.slrconsultingaustralia.com.au”.
5. Parties’ Contentions
The following allegations are made in the Complaint:
The Complainant claims both registered and unregistered rights in its mark. The Complainant provided various evidence of its use and reputation in its mark, including a list of its customers and contacts, and advertising relating to its business. This included evidence of its business and reputation before the registration of the disputed domain names by the Respondent.
The disputed domain names are identical or confusingly similar to the Complainant’s mark.
The Respondent has no rights or legitimate interests in the disputed domain names. The websites at the disputed domain names have been used by the Respondent to divert Internet traffic to the Respondent’s own website at “www.slrconsultingaustralia.com.au”. On May 14, 2013, however, the disputed domain names were inactive.
Mr. Stephens is the sole director of the Complainant. The Complainant provided evidence that Mr. Herdman commenced work for the Respondent, specialising in quarry and mine valuation, in August 2010. Prior to Mr. Herdman commencing with the Respondent, as far as the Complainant is aware, the Respondent did not provide services relating to quarry valuations in Australia. Mr. Herdman and Mr. Stephens have been and are currently involved in various disputes in other forums. Both men have worked in the same industry for at least 20 years.
The Complainant provided evidence that its website was visited a number of times, by someone using the Respondent’s IP address, between August 2010 to March 2011. In March 2011, the Complainant banned that IP address from visiting its website. At the time the disputed domain names were registered by the Respondent, Mr. Herdman was listed as the contact.
On October 18, 2012, the Complainant sent a “cease and desist” letter to the Respondent. In a response dated October 31, 2012, the Respondent refused the Complainant’s demands (including to transfer the disputed domain names), but noted that it had disabled the redirection of Internet users to its own website from those domain names.
The Complainant otherwise claims that WWW.QUARRYVALUATIONS.COM is distinctive of its brand. The Complainant has never authorised the Respondent to register the disputed domain names or otherwise use its mark, and the Respondent is not commonly known by the disputed domain names.
Finally, the Complainant says that the disputed domain names have been registered or are being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating confusion with the Complainant’s trademark. The Complainant’s mark is widely known within the Respondent’s and Complainant’s specialised industry, and was widely known when the disputed domain names were registered. As such, it is extremely likely that Mr. Herdman and the Respondent were aware of the Complainant’s rights when the disputed domain names were registered. The disputed domain names are so obviously connected with the trademark of the Complainant that their very use by the Respondent suggests opportunistic bad faith.
The Complainant points to other circumstances of bad faith. It says that the renewal of the disputed domain names in April 2013 were a new “registration”, because the Respondent was aware of its registered rights, had changed its use of the disputed domain names prior to the renewal in a way that amounted to cybersquatting, and there has been no subsequent legitimate use.
The following is summarised from the Response:
The Respondent submits that the Complainant’s asserted trademark rights are either invalid or of such limited scope that the Complainant does not have relevant rights to support the Complaint. The Respondent nevertheless claims that the Complainant’s mark does not cover the valuation of quarries, or to the extent that it does, it is wholly descriptive and therefore non-distinctive, and invalid. The Respondent also argues that the Complainant’s evidence does not indicate that the Complainant used WWW.QUARRYVALUATIONS.COM as a mark before registration. The Respondent submits that the Complainant has never used that web address as mark.
The Respondent further argues, among other things, that the disputed domain names are not identical or confusingly similar to the Complainant’s mark, because that alleged mark is high descriptive and any narrow rights the Complainant may have in that mark do not extend to preventing the Respondent’s registration of the disputed domain names.
The Respondent says that it has rights or legitimate interests in the disputed domain names, because it has used them in connection with quarry valuation services and the disputed domain names are descriptive of those services. The Respondent refers to Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 in support of the proposition that, “where the goods and services offered on a website specifically relate to the generic or descriptive meaning of the domain name, the registrant is making the very kind of bona fide offering that is sufficient to establish legitimate interests under the Policy.” In that connection, the Respondent provides evidence of registering a number of other domain names relating to its business, including <quarryvaluation.com> and <landfillvaluation>, among others.
The Respondent agrees that there have been disputes between Mr. Herdman and Mr. Stephens, but points out that there are no current legal proceedings between them. In relation to the Complainant’s claims that Mr. Herdman visited its website, the Respondent states that one of the disputes between Mr. Herdman and Mr Stephens concerns content placed by Mr. Stephens or the Complainant on the Complainant’s website. The Respondent said that it disabled the direction of the disputed domain names to its principal website simply to avoid incurring further costs in a dispute with the Complainant.
The Respondent denies that it was aware of any reputation and goodwill the Complainant had established in its mark, and maintains that the Respondent has no such reputation or goodwill.
Thirdly, the Respondent claims that it registered the disputed domain names before the Complainant registered its trademark, and that the Complainant did not have earlier relevant goodwill or common law rights.1 The Respondent refers to previous decisions under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) for the proposition that a trademark, which did not exist at the time of registration of a domain name, cannot serve as the basis for a claim under the Policy.
The Respondent claims that its registration of the disputed domain names was based purely on their descriptive significance, and not their association with the Complainant. The Respondent’s only use of the disputed domain names has been to direct them to its principal website.
The Respondent denies that the renewal of the disputed domain names amounted to new registrations and says that the Complainant incompletely referred to panel authority on this point. In any case, that prior reasoning can be distinguished because it was a decision under the UDRP which requires registration and use in bad faith.
The Respondent says that the Complaint has been brought in bad faith and makes a claim of “reverse domain name hijacking” against the Complainant.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names were registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below, immediately following a procedural discussion regarding the Complainant’s supplemental filing. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
The Panel notes that both the Complainant and the Respondent made a variety of allegations. The Panel has confined the discussion below to the matters it considers directly relevant to resolve the dispute.
A. Supplemental Filing
On October 9, 2013, the Complainant filed a reply to the Response, to which the Respondent has objected. The Complainant’s further filing sought to rebut a number of matters in the Response.
Neither the Policy nor the Rules provide for supplemental submissions from either party, in addition to the Complaint and the Response. The Policy is intended to provide an efficient and streamlined mechanism for resolving claims of cybersquatting. In general, allowing supplemental submissions is inconsistent with this intent of the Policy. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, most panels that have allowed unsolicited filings have tended to require some showing of “exceptional” circumstances. The Complainant made no argument that there were exceptional circumstances justifying the supplemental submission. The bulk of the Complainant’s supplemental submission sought to respond to particular matters raised in the Response, but which either were or might have been contemplated in the Complaint. As such, the Panel has not further considered that supplemental submission in the discussion which follows.
B. Date of Registration
An important, although not by itself determinative, issue in this case is the date at which the Respondent first registered the disputed domain names. The Registrar in this case has confirmed that the named registrant is the Respondent, SLR Consulting Pty Ltd, and that the creation of the disputed domain names was in April 2011 and the registration was in March 2013. Evidence in the case file indicates that the disputed domain names were registered by Mr. Herdman on behalf of the Respondent in April 2011. Mr. Herdman was then an employee of the Respondent. The disputed domain names are self-evidently related to the business of the Respondent and the capacity in which Mr. Herdman is employed. Given this relationship, the Panel finds that the Respondent was the beneficial owner of the disputed domain names and the registrant in fact from April 2011.
Further, both parties appear to accept that Mr. Herdman’s registration of the disputed domain names in April 2011 was, in effect, registration on behalf of the Respondent. For example, the Complainant in its “cease and desist” letter to the Respondent in October 2012, referred to the Respondent registering the disputed domain names “through its director, […] Herdman”.
C. Identical or Confusingly Similar
Rights in a Name or Mark
Unlike the UDRP, the Policy allows a complaint to proceed on the basis of a name in which a complainant has rights, in addition or as an alternative to trademark or service mark rights. However, the Complainant does not rely on rights in a name.
Instead, the Complainant relies on having both registered and unregistered trademark rights in WWW.QUARRYVALUATIONS.COM. The Panel finds that the Complainant has at least registered rights. The Complainant provided a copy of a registration certificate to that effect. As such, the Panel finds that the Complainant has sufficiently established that it has rights in a registered mark.
The Respondent’s argument that the Complainant’s mark is not valid, or is of limited scope, is without foundation. The Complainant has a registered mark and is entitled to rely on it. The consensus of UDRP panels’ view is relevantly that “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview 2.0, paragraph 1.1.
Given the Complainant’s demonstrated registered rights, it is not strictly necessary for the Panel to consider whether it also has common law rights which predated its registration, for the purpose of a finding under paragraph 4(a)(i) of the Policy. However, the Panel has considered the issue of common law rights because it is potentially relevant to the other two grounds of the Policy.
The Panel considers that the Complainant’s evidence is equivocal as to whether it has common law rights in that mark. Much of the Complainant’s evidence in this respect was that it operates a website which corresponds to its mark, and uses that website in connection with its business. But this evidence did not clearly establish that the Complainant was using that domain name as a mark or identifier of its services in a trademark sense. For example, some of the Complainant’s evidence was of its address in a business directory, together with its website address appended after its street address and phone number. The presentation of the Complainant’s website address in this way is little different to the presentation of its street address or phone number. In this context, its website address is likely to be seen as merely another form of contact detail rather than a mark. Therefore based on the case record, the Panel finds that the Complainant has not established sufficient evidence to claim common law rights in WWW.QUARRYVALUATIONS.COM.
Comparison between the Complainant’s Registered Mark and the Domain Names
The next question is whether the disputed domain names are identical or confusingly similar to the Complainant’s registered mark. For the purpose of this question, it is well established that the “.com.au” extension is not typically relevant. Also for the purpose of this question, the comparison is between the dominant textual features of the Complainant’s mark and the disputed domain names. See WIPO Overview 2.0, paragraph 1.11; Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779.
For similar reasons for disregarding the “.com.au” extension in the disputed domain names, the Panel also considers that the dominant textual features of the Complainant’s mark to be the conjoined words “quarryvaluation”. The “www” and “.com” components of the Complainant’s mark are likely to be viewed for what they are – letters which associate the Complainant’s mark with a particular web address, but which are not the principal feature of that mark.
This means that the relevant comparison is between the QUARRYVALUATION component of the Complainant’s mark, and the relevant element of the disputed domain names “quarryvaluation” and “quarryvaluations”. The former disputed domain name is self-evidently identical to the dominant component of the Complainant’s mark. The latter, plural form is virtually identical to that component of the Complainant’s mark. As stated in i2 Technologies Inc v. Richard Alexander Smith, WIPO Case No. D2001-0164, “it is trite law and basic common sense that the mere change from singular to plural or vice versa is not sufficient to avoid confusion for trademark purposes or passing off purposes.”
For these reasons, the Panel finds that both disputed domain names are identical or confusingly similar to the Complainant’s mark. It follows that the Respondent’s arguments directed toward a lack of confusing similarity, and alleged descriptiveness of the Complainant’s mark, are not relevant to resolving this issue.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain names. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview 2.0, paragraph 2.1.
Under the Australian “.com.au” domain naming policies, a person is entitled to register a domain name which includes a word “otherwise closely and substantially connected to” that person. So the question of whether the Respondent lacks a right or legitimate interest in the disputed domain names is a more difficult one for the Complainant to establish. This is because the disputed domain names self-evidently relate to part of the business of the Respondent.
From the case file, the following appear to be the essential facts of this case:
- Both parties offer quarry valuation services in Australia;
- The Complainant has a registered mark relating to those services;
- The Respondent registered the disputed domain names in April 2011;
- At the date of registration of the disputed domain names, the Respondent was aware of the Complainant.
- The Complainant’s mark was registered from October 2011;
- The Complainant is aggrieved by the Respondent’s registration of the disputed domain names, and believes the Respondent is seeking to trade on the Complainant’s goodwill.
- The Respondent believes that the Complainant has no monopoly over words which it claims have a descriptive meaning in connection with its business.
The Respondent’s argument principally rests on the descriptive nature of the term “quarry valuation”, and its use of that term in connection with the principal website that advertises its business. There is no doubt that such a use can be a basis for a legitimate interest, if this was in fact the Respondent’s motive. If however, the Respondent intended to use the disputed domain names to take commercial or other unfair advantage of the disputed domain names’ trademark associations, then the registrations would not be legitimate.
It is relevant in this context that when the disputed domain names were registered in April 2011, the Complainant did not have a registered mark. As outlined above, neither does the evidence clearly establish that the Complainant had unregistered rights in that mark, and the Complainant has not argued that it had relevant rights in a name. From this, it is difficult to conclude that the Respondent registered the disputed domain names to take unfair advantage of their associations with a mark or name in which the Complaint had rights.
The evidence in the case file indicates that the Respondent used the disputed domain names to direct traffic to its website at “www.slrconsultingaustralia.com.au” and there is little evidence in this case that the Respondent’s motivations changed after the disputed domain names were registered.
On balance, the Panel has concluded that the Respondent registered the disputed domain names because, at least in part, they related to its business. For this reasons, it is likely that the Respondent was entitled to register the disputed domain names under the “.com.au” naming policies because the disputed domain names are “closely and substantially connected to” the Respondent’s business. It is also difficult to conclude that the conjoined terms “quarry valuation” are inherently distinctive, especially having regard to the use of those terms by both the Complainant and the Respondent in relation to a pre-existing business of each, and the obvious meaning suggested by the terms. The Respondent operates in the same field of business as the Complainant, and has at least done so since the registration of the disputed domain names.
Accordingly, the Panel finds that the Complainant failed to establish that the the Respondent has no rights or legitimate interests in respect of the disputed domain names.
E. Registered or Subsequently Used in Bad Faith
Because of the Panel’s finding above, it is unnecessary to consider whether the disputed domain names were registered or have been used in bad faith.
F. Reverse Domain Name Hijacking
The Respondent seeks a finding of reverse domain name hijacking against the Complainant. Paragraph 15(e) of the Rules relevantly provides that: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Panel does not find that the Complaint was brought in bad faith. As noted in Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309: “[a]llegations of reverse
domain name hijacking have been upheld in circumstances where a respondent's use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy (see Goldline International, Inc v. Gold Line, WIPO Case No. D2000-1151). See also Deutsche Welle v. DiamondWare Limited, WIPO Case No. D2000-1202, where an allegation of reverse domain name hijacking was upheld in circumstances where the complainant knew that the respondent used the at-issue domain name as part of a bona fide business, and where the registration date of the at-issue domain name preceded the dates of the complainant's relevant trademark registrations.”
While some elements identified in those cases are present in this one, the Panel declines to make a finding of reverse domain name hijacking. Both parties admit a history of disputes between them. The Complainant has rights in a mark which is relevantly identical to the disputed domain names. The Complainant’s business and principal website were in operation well before the Respondent’s registration of the disputed domain names. The Respondent no doubt would have known these registrations would have been contested by the Complainant. In these circumstances, there is insufficient evidence to suggest that the Complainant brought the Complaint in bad faith.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Date: November 14, 2013
1 The Panel notes that the Respondent appears to confuse the Respondent, being SLR Consulting Australia Pty Ltd which registered the disputed domain names in March 2013, with its employee, Mr. Herdman who registered the disputed domain names in April 2011.