WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Heavenly Holidays LLC v. Mark One Visual Promotions Pty Ltd
Case No. DAU2013-0028
1. The Parties
The Complainant is Heavenly Holidays LLC of Oak Creek, Wisconsin, United States of America, represented by Brann & Isaacson, United States of America.
The Respondent is Mark One Visual Promotions Pty Ltd of Western Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <treeclassics.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2013. On September 12, 2013, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On September 17, 2013, TPP Wholesale 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 September 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2013. Two informal email communications were received from the Respondent on October 8, 2013 and October 13, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on October 23, 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 is based in Delaware in the United States, and sells artificial Christmas trees and Christmas decorations through its website at “www.treeclassics.com” to customers throughout the world, including in Australia. The Complainant or its predecessor Triumph International, which it acquired in 2011, has operated this business since 1976 and has used the TREE CLASSICS mark on its website and in connection with this business since as early as 1995. The Complainant owns a word mark registered in the United States for TREE CLASSICS under registration number 85515723 dating from 2012 and it registered its domain name <treeclassics.com> in 1998.
The Respondent operates a business that sells Christmas trees and decorations in Australia from a website at the disputed domain name. The disputed domain name was registered by the Respondent on April 13, 2012.
5. Parties’ Contentions
The Complainant submits that it owns a United States trade mark registration for TREE CLASSICS as noted above and that the disputed domain name wholly contains this mark and that the substantive elements of it are identical to the Complainant’s mark.
As far as rights or legitimate interests are concerned the Complainant says that the Respondent has no legal rights or interests in the “Tree Classics” name or mark. It says that the Respondent’s website is practically identical to the Complainant’s website and contains many features and similarities to the Complainant’s website; for example, it makes unauthorized use of the Complainant’s TREE CLASSICS and REAL FEEL trade marks, incorporates many of the same icons and expressions and features the same menu on the website’s banner, and the wording on the banner is practically identical and the Respondent’s “help”, and “terms and conditions” pages are virtually identical to the corresponding pages of the Complainant’s website. Overall the Complainant says that the Respondent is using practically the identical website as the Complainant for commercial gain in direct competition with the Complainant.
Essentially the Complainant says that by this conduct the Respondent has registered and is using the disputed domain name primarily for the purpose of disrupting its business, or under paragraph 4(b)(iv) of the Policy, for the purpose of intentionally attracting, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
The Respondent asserts that its “Tree Classics” product packaging comes from a business partner in Thailand who uses that mark or name on its products and who authorised its use of the TREE CLASSICS mark in Australia. It admits that there are lots of similarities between its website and the Complainant’s website and also that it was aware of the Complainant’s website and that the Complainant did not source its products from the Respondent’s source in Thailand. It says that it only sells its products in Australia and that although it intends to change its website it will continue to use the disputed domain name because in its view it carries the “World branded name” being “Tree Classics” of Thailand.
6. Discussion and Findings
The Respondent made an informal email communication on October 8, 2013 prior to the due date of October 10, 2013 and then followed up with a more substantive email on October 13, 2013 on the basis that it had only received a response from its supplier in Thailand on October 9, 2013 and had only received the Center’s communication of proceedings on September 25, 2013. The content of the later email is relevant to the Panel’s determination of the matter and in these circumstances and on this occasion the Panel is prepared to exercise its discretion under the Policy to enter the second email into these proceedings.
A. Identical or Confusingly Similar
The Complainant owns United States trade mark registration 85515723 for the word mark TREE CLASSICS. The Panel finds that the substantive elements of the disputed domain name are identical to this registered mark. As a result the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant says that it has not authorised the Respondent to register the disputed domain name or to use its TREE CLASSICS mark.
In the Panel’s view there are very substantial similarities between the website to which the disputed domain name resolves and the Complainant’s website at “www.treeclassics.com”. These similarities include the exact duplication of marks such as, for example, TREE CLASSICS and REAL FEEL (both of which the Complainant has registered in the United States) and of various icons and other marks, the word for word copying of lines of text, the representation that the company has operated since 1976 and was first in the market in various respects, and in other cases the copying of format, product descriptions and terms and conditions.
This degree of similarity (or plagiarism as suggested by the Complainant), could only have come about if the Respondent had seen the Complainant’s website or a third party website that emulated the Complainant’s website. Therefore the Panel does not accept the Respondent’s implicit assertion in its late filed emails that it only realized the similarities when it reviewed and compared the two websites and that it operated on the basis that its use of the TREE CLASSICS mark and of the disputed domain name was authorised by its Thai distributor. Of course it is possible that the Thai distributor operates a similar website, however, even in those circumstances it is likely that an Internet search for “Tree Classics” would have shown up the Complainant’s website and use of the mark and domain name when the Respondent registered the disputed domain name in 2012.
On the balance of probabilities, it seems to the Panel that the evidence and circumstances point to an inference that the Respondent copied substantial elements of the Complainant’s website, including the Complainant’s marks with a view to emulating the Complainant’s United States based business in Australia. In these circumstances the Panel considers it more than likely that the Respondent knew of and copied the Complainant’s TREE CLASSICS mark. Had the circumstances and evidence pointed to independent creation by the Respondent of its Australian business, without blatant website content copying, then the Panel might have been minded to give the Respondent the benefit of the doubt on the basis that the TREE CLASSICS mark, comprising commonly used words, could have been developed independently whether in Australia, or by the Thai product manufacturer. However in this case and for the further reasons outlined below, the overwhelming inference is that the Respondent’s use is not bona fide and that it has sought in setting up its Australian business to trade on the coat tails of the Complainant’s success in the United States and elsewhere. Furthermore, even if the Respondent were to be considered as a reseller of the Complainant’s products, it could not have a right or legitimate interest in the disputed domain name, as the website does not disclose the Respondent’s relationship with the Complainant. Therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
The Respondent registered the disputed domain name in 2012 many years after the Complainant commenced its business in the United States and developed its international web presence. Considering the degree of similarity and what appears to be blatant copying of material from the Complainant’s website, the overwhelming inference is that the Respondent chose the disputed domain name having seen the Complainant’s domain name and website with a view to emulating the Complainant’s business in Australia. The fact that the Complainant’s trade mark in the United States was only registered in 2012 is not material in this regard. Although the Respondent says that it was authorised by its Thai distributor to use the TREE CLASSICS mark there is no explanation for such substantial copying of the Complainant’s website. The suggestion that upon comparing the websites the Respondent was surprised by the similarities is in these circumstances just not credible. Therefore the Panel finds that on the balance of probabilities that the Respondent knowingly registered the disputed domain name and that it was registered in bad faith.
Although it is not necessary under the Policy for there to be both registration and use in bad faith it follows from this discussion that the Panel considers that the Respondent’s conduct in blatantly copying a substantial amount of content from the Complainant’s website, together with the unauthorised use of the Complainant’s TREE CLASSICS mark both on the website and in the disputed domain name, amounts to use in bad faith. The Panel notes in this regard that although the Complainant operates from the United States, it sells its products internationally through its website, including into Australia. In particular, under paragraph 4(b)(iv) of the Policy, the Panel finds that there is a likelihood that Internet users searching for the Complainant’s website and products could be confused into thinking that there is some connection or affiliation between the Respondent and the Complainant and end up being incorrectly diverted to the Respondent’s website.
For these reasons the Panel finds that the disputed domain name has been registered or used in bad faith and that the Complaint succeeds under the third element of the Policy.
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 <treeclassics.com.au> be transferred to the Complainant provided the Registrar is satisfied that the Complainant fulfills the eligibility criteria set out in Schedule C of the Australian Domain Name Authority’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) for ownership of the disputed domain name. Alternatively, the Panel orders that the disputed domain name <treeclassics.com.au> be cancelled.
Date: October 29, 2013