WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Price Group Limited v. Peter Duncan
Case No. DAU2013-0034
1. The Parties
The Complainant is Mr. Price Group Limited of Durban, South Africa, represented by Fisher Adams Kelly Patent and Trademark Attorneys, Australia.
The Respondent is Peter Duncan of Darlinghurst, Australia.
2. The Domain Names and Registrars
The disputed domain name <mrprice.com.au> is registered with PlanetDomain Pty Ltd.
The disputed domain names <mrprice.net.au> and <misterprice.com.au> are registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2013. On October 25, 2013, the Center transmitted by email to Web Address Registration Pty Ltd and PlanetDomain Pty Ltd. a request for registrar verification in connection with the disputed domain names. On October 30, 2013 PlanetDomain 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. On November 7, 2013, Web Address Registration 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” or “.auDRP”), 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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on December 12, 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 December 17, 2013, the Panel issued a procedural order in the following terms:
“The Panel notes the submission by the Complainant of the Domain Case Summary referred to at Part V (C) (i) of the Complaint and the Complainant's offer at Part V (C) (j) of the Complaint to submit an affidavit concerning the accuracy of the statements in the Domain Case Summary. The Panel accepts the Complainant's offer in this regard and therefore requires that the Complainant files by December 26th 2013, a statutory declaration or an affidavit, as appropriate, by the Complainant's ISP which confirms and verifies the nature and content of the communications in the Domain Case Summary as detailed in the Complaint. The Respondent may submit any comment he may wish to make which strictly concerns the content of such affidavit or declaration by January 2, 2013. The Panel hereby extends the due date for its decision to one week later, namely January 9 2013.”
Upon the subsequent request of the Complainant to extend the deadlines for response in view of the intervening Christmas vacation the Panel issued the following procedural order:
“The Complainant’s deadline for filing the statutory declaration or affidavit is hereby extended to January 5, 2014. The Respondent has until January 12, 2014 to file any comment he may wish to make which strictly concerns the content of such affidavit or declaration. The Panel hereby extends the due date for its decision to one week later, namely January 19 2013.”
The Complainant filed on January 2, 2014 an affidavit by Mr. Daniel J. Greenberg in compliance with the Panel’s order.
Mr. Greenberg’s affidavit was transmitted to the Respondent by email on January 17, 2014. On the same day, the Panel issued the following procedural order:
“The Respondent has five days from today, i.e., until January 22, 2014, to file any comment he may wish to make which strictly concerns the content of the Complainant's submission. The Panel hereby extends the due date for its decision to two days later, namely to January 24, 2014.”
The Respondent did not file any comment by the requisite deadline, being January 22, 2014.
4. Factual Background
The Complainant is one of Southern Africa’s foremost retailers of clothing, footwear, fashion accessories, home wares and textiles and operates 587 MR PRICE stores across South Africa. The Complainant owns a registered logo mark in Australia under registration number 810891 for its MR PRICE trade mark dating from 1997 and various word mark registrations throughout the world for MR PRICE, including in particular South African trade mark registration 96/03066 dating from 1996. The Complainant has a very substantial social media presence and has operated a website at “www.mrprice.co.za” and owns various other domain names including <mrprice.com>and <mrprice.co.za> but now re-directs these domain names to <mrp.com>.
The Respondent owns an Australian business name registration for “Mr Price” under ABN 74816781099 dating from 2004 and a New South Wales business name registration for “Mr Price” dating from November 2012. It acquired or registered the disputed domain names as follows:
- <misterprice.com.au> on May 21, 2012;
- <mrprice.net.au> on May 18, 2012;
- <mrprice.com.au> on Febrauary 25, 2013
5. Parties’ Contentions
The Complainant submits it owns registered trade mark rights in its MR PRICE trade mark as set out above and that each of the disputed domain names are identical or confusingly similar to its trade mark.
The Complainant says that it has not authorised the Respondent to use its MR PRICE trade mark or any of the disputed domain names and as far as it is aware the Respondent is not commonly known by that name or mark or any of the disputed domain names, although it is aware that the Respondent has a business name registration in Australia. It submits that the disputed domain names are inactive and resolve to default pages and have not been used by the Respondent in connection with a bona fide offering of goods or services.
The Complainant says that it has sponsored a number of international sports events which have been televised and that its MR PRICE mark has an international reputation as a result. The Complainant has also undertaken a number of internet search engine searches for the name or mark MR PRICE and asserts that the first 100 hits on “www.google.za” and the first ten hits on “www.google.com” are associated with its mark and says that this demonstrates that the mark is not generally used by other traders but is associated with its business.
In November 2012 the Complainant’s trade mark agents sent a cease and desist letter to the Respondent and the Respondent’s legal representatives replied stating that there was no bad faith when the disputed domain name <mrprice.com.au> was purchased and that the Respondent has not advertised or actively offered the disputed domain name for sale and was entitled to register the disputed domain names on a “first come first served” basis.
The Complainant submits that during anonymous negotiations with the Complainant’s Internet Service Provider, the Respondent indicated that the disputed domain name <mrprice.com.au> was for sale in May 2012 and elicited the following response:
“YES it is for sale.
Are you part of the Mr Price group? If you are not you may want to look at their business. They are a very large South African company ‘www.mrprice.co.za’. This will give you an indication of the price I am looking for (sic) this domain. Let me know and we can take this further”.
The Complainant says that the Respondent subsequently requested $40,000 for this disputed domain name which the Complainant submits is evidence of the Respondent’s knowledge and intent such as to support an inference of bad faith and fulfill the requirements of paragraph 4(b)(i) of the Policy.
The Complainant also submits that the Respondent’s passive holding of the disputed domain names is evidence of its bad faith and in this respect relies on the principle from Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not file a response to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Respondent owns registered trade mark rights in the MR PRICE mark as noted above under section 4. The substantive element of the respective disputed domain names, <mrprice.net.au> and <mrprice.com.au> are identical to the Respondent’s MR PRICE trade mark. The Panel finds that although the substantive element of the disputed domain name <misterprice.com.au> is not visually identical to the Respondent’s MR PRICE trade mark it is aurally identical and has an identical connotation which would be commonly understood by English speakers. As a result the Panel finds that this disputed domain name is confusingly similar to the Complainant’s MR PRICE mark.
Accordingly, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that it has not authorised the Complainant’s use of its MR PRICE mark in any of the disputed domain names and that there is no evidence that the Respondent is using any of the disputed domain names in connection with a bona fide offering of goods and services.
Although the Respondent appears to hold an Australian business name registration from 2004 and a New South Wales business name registration dating from October 2012 for “Mr Price” there is nothing before the Panel to indicate that the Respondent has ever used the business name or any of the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has not rebutted the Complainant’s case that it never authorised the Complainant’s use of its MR PRICE mark in any of the disputed domain names, nor has it explained its registration or intended use of its business names or of the disputed domain names. The Panel notes that the response in 2012 from the Respondent’s trade mark agents or legal representatives did not identify any existing bona fide use of the <mrprice.com.au> disputed domain name but merely indicated that the Respondent could produce evidence of intended plans for its use.
The Panel notes that in its opinion the name or mark “Mr. Price” or its aural equivalent “Mister Price”, although containing individual commonly used elements, as combined marks or expressions are relatively unusual and distinctive. These are therefore not in the Panel’s view expressions or marks that any trader might choose to use and in all of the circumstances and in view of the Panel’s findings concerning the bad faith use of the disputed domain names as set out below, the Panel infers on the balance of probabilities that the Respondent has no rights or legitimate interests in any of the disputed domain names and that the Complaint accordingly succeeds under the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
The third element of the Policy requires either a finding of registration, or of use in bad faith.
The Complainant asserts as set out above that, in May 2012, during anonymous negotiations with Lexsynergy Limited, the Complainant’s domain name and brand consultants, the Respondent agreed to sell one of the disputed domain names. The Respondent apparently asked the consultant whether it represented the Complainant and referred the consultant to the Complainant’s website so that it could understand the size and scale of the Complainant’s business and get an indication of the sort of price that the Respondent sought for the disputed domain name. The Complainant’s agent subsequently offered $1500 which was refused and the Respondent made a counter-offer of $40,000 for the single disputed domain name. The Complainant has subsequently filed an affidavit made by a Mr. Greenberg of Lexsynergy Limited who undertook these negotiations confirming the veracity of the Complainant’s description of these negotiations and describing the negotiations in his own words.
The Panel notes that the Respondent has been afforded every opportunity in the course of these proceedings to explain its actions and to respond to the affidavit which was made by Mr Greenberg, but has failed to do so. Accordingly the Panel infers based on this evidence that the Respondent registered or acquired not only the disputed domain name at issue (<mrprice.com.au>) but, on the balance of probabilities, also the other two disputed domain names, being identical or confusingly similar variants of <mrprice.com.au>, in bad faith and for the purpose of re-sale at a substantial profit in terms of paragraph 4(b)(i) of the Policy.
The evidence of the Respondent’s registration and use in bad faith as noted above is only reinforced by the Respondent’s failure to use and apparent passive holding of the disputed domain names in terms of the principle from Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
For these reasons the Panel finds that the Complaint succeeds in relation to 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 names <mrprice.com.au>, <mrprice.net.au> and <misterprice.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 names. Alternatively, the Panel orders that the disputed domain name <mrprice.com.au>, <mrprice.net.au> and <misterprice.com.au> be cancelled
Date: January 24, 2014