WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Immihelp, LLC v. Babak Shahafar
Case No. DAU2013-0041
1. The Parties
The Complainant is Immihelp, LLC of Plano, Texas, United States of America, represented by Davies Collison Cave, Australia.
The Respondent is Babak Shahafar of Sydney, New South Wales, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <immihelp.com.au> (“the Domain Name”) is registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 18, 2013, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On December 23 and 24, 2013, Web Address Registration Pty Ltd transmitted by email to the Center verification responses 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 December 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2014. On January 6, 2014, the Respondent sent an email communication, to which the Center replied on the same day. An informal Response was filed with the Center on January 19, 2014.
On January 30, 2014, the Complainant sought leave to file an unsolicited Reply.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 31, 2014. 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 provides information services relating to immigration to the United States. It is the registered proprietor of several IMMIHELP trademarks, of which the earliest is United States registration No. 3,052,819, registered on January 31, 2006, claiming first use in 1999. It is also the registered proprietor of Australian registered trademark IMMIHELP, No. 1515210, registered on March 30, 2012 for “Providing consumer information in the field of immigration, insurance and visas”.
The Complainant is also the registrant of several generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) domain names incorporating “immihelp”, including <immihelp.com>, through which it has provided services since December 1999.
The Respondent is a registered Migration Agent in Australia, i.e. a person employed to promote migration to Australia, to assist with immigration visas and in the settlement of immigrants. The Respondent registered the Domain Name on November 18, 2009. It resolves to an “under construction” web page.
In correspondence with the Complainant’s representatives in 2013, the Respondent acknowledged that there is no active website and stated that the Domain Name is actively used for email communication. A report commissioned by the Complainant found some evidence to suggest use of the Domain Name by the Respondent for email since April, 2011 and some evidence to suggest that the Respondent was preparing to launch a website but no evidence of an actual launch.
5. Parties’ Contentions
In addition to its registered trademark rights, the Complainant has acquired common law trademark rights in IMMIHELP through extensive use since 1999. In particular, it has provided services under the IMMIHELP mark to Australians, including:
- Australians applying for green cards;
- Dual citizenship for Australia and the United States;
- Recognition of Australian qualifications in the United States and other countries;
- Airline/airport experiences of Australians travelling to the United States and other countries;
- Removalist information for Australians moving to the United States and other countries;
- Transferring of money between Australia and the United States and other countries;
- Recognition of Australian schooling certificates/diplomas in the United States and other countries;
- Duty free information for Australians travelling; and
- Passport services for Australians travelling.
The Complainant says the Domain Name is identical or confusingly similar to its IMMIHELP mark and that the Respondent has no rights or legitimate interests in relation to the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the trademark IMMIHELP is an invented or coined word and therefore not one that other traders would legitimately choose unless they were trying to create a false association with the Complainant.
The Respondent must have known of the Complainant’s prior rights and reputation when he registered the Domain Name. Those rights pre-date the Domain Name by 10 years. As a registered Migration Agent, then and now, the Respondent’s business inherently involves dealing with individuals in overseas countries. The Respondent told the Complainant’s investigation agent that all his clients hail from overseas and that the services he provides are specialised and focused on challenges faced by overseas individuals attempting to enter or otherwise reside in Australia. Further, the Complainant’s website has been widely accessed by Australian users since 2006 and the Complainant provides a wide range of services to Australian users. In these circumstances there is no doubt the Respondent was aware of the Complainant’s IMMIHELP trademark and the services it provides thereunder.
The Respondent has no relationship or connection with nor any permission from the Complainant and is not commonly known by the Domain Name.
Nor has he, prior to notice of this dispute, made a bona fide use of or demonstrable preparations to use the Domain Name. In this respect, the Respondent must have known of the Complainant’s rights and reputation in its IMMIHELP mark and these suffice to constitute notice to the Respondent of the subject-matter of the dispute. None of several business names associated with the Respondent are registered for GST, suggesting that he does not trade to a significant extent. The Domain Name has never resolved to an active website. Passive use does not confer rights or legitimate interests.
The Complainant’s enquiries reveal that a person called Babak in Sydney engaged somebody in March, 2010 to develop a logo containing “immihelp” for a website for an immigration consultancy. There is no evidence that such a logo was used. Given the Complainant’s substantial reputation and rights throughout the world, including Australia, in 2010, any adoption of IMMIHELP by the Respondent is not a bona fide use.
The Complainant accepts that use as an electronic address over a long period of time can give rise to legitimate interests in a domain name but says that here there has been virtually no such use; “immihelp” is not a common name; and the Respondent must have been aware of the Complainant’s mark.
As to bad faith, the Complainant says the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its distinctive IMMIHELP mark in the “.com.au” space and that, by using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s name and distinctive IMMIHELP trademark as to the source, sponsorship, affiliation or endorsement of that website or location or service offered on that website or location.
In this regard the Complainant says that, since prior to the registration of the Domain Name, the Respondent has been in a field closely related to that of the Complainant and must have been aware of the Complainant’s prior rights. Consumers are being confused and deceived into believing that the Respondent’s electronic email address and domain name are associated with the Complainant to the detriment of the Complainant’s business activities.
The Respondent states that to provide immigration assistance in Australia a person must be registered with the Australian Government’s Migration Agents Registration Authority (“MARA”). It is a serious offence for anyone who is not a registered migration agent to give immigration assistance in Australia. The Complainant is not and has never been registered or authorized to provide immigration assistance in Australia.
Inspired by the official Australian Government’s Immigration website, “www.immi.gov.au”, the Respondent registered the Domain Name on November 18, 2009. The name he chose explained the Respondent’s services. The official Government’s site is “immi” so the Respondent registered the name “immihelp”.
The Respondent established an email address and contracted for the design of material to use in marketing, including logo, business card and website design. He distributed business cards and provided his email address to numerous potential clients.
Prior to going further with the new name the Respondent obtained legal advice that the Domain Name could unlawfully infer a relationship with the Australian Government’s Department of Immigration and mislead individuals into thinking the Respondent was a representative of the Government. The Respondent intended to do neither. To err on the side of caution the Respondent decided to proceed no further with the website development and any further marketing. Although confident he would have established his site within all legal boundaries, he decided that it would be more appropriate to register a different domain name.
He had already distributed his email address and is still generating income through it.
In denying bad faith, the Respondent notes that the Complainant applied for an Australian Trademark some 28 months after the Respondent registered the Domain Name. He accepts that the Complainant had a trademark in the United States prior to this date, however this by no means provides jurisdiction in other countries, nor is the Complainant permitted to operate an Immigration firm in Australia based on owning a trademark. As mentioned, the Complainant is not authorized by the Australian Government to provide immigration assistance in Australia.
The Respondent accepts the statement of the Complainant’s investigator:
“We determined that Mr Shahafar had a core focus of offshore immigration issues as distinct to local matters. That is to say all of Mr Shahafar’s clients hail from overseas countries and the services he provides are specialized and focused on challenges faced by overseas individuals attempting to enter or otherwise reside in Australia.”
The Respondent says he has been in that line of work for over a decade. He deals with people from overseas who wish to obtain a lawful Australian visa. The Complainant is not in the same line of work, being neither registered with the Australian Government nor providing any legal representation for visa applicants.
The Respondent says he registered the Domain Name in good faith and has never claimed any association with the Complainant, nor does he wish to do so. He has never even hosted a site at the Domain Name and his reasons for registering the Domain Name and for failing to host a site are outlined above.
C. Complainant’s Reply
In seeking leave to file a Reply, the Complainant submitted that the Response insinuates that the Complainant is trading illegally in Australia. Since the Complainant could not reasonably have anticipated such a suggestion, the Panel admits the Complainant’s Reply to the extent set out below.
The Complainant submits that the jurisdiction of MARA pertains only to persons providing assistance regarding Australian immigration issues and Australian visas. As it has done since 1999, long before the Respondent registered the Domain Name, the Complainant provides immigration services to Australian consumers and to other persons worldwide through its “www.immihelp.com” website about travelling or immigrating to the United States. The Complainant only provides information relating to United States immigration and does not provide assistance with respect to Australian immigration or Australian visas. Therefore there is no requirement for the Complainant to be registered with or licensed by MARA.
The Respondent has been careful not to say in his Response that he was not aware of the Complainant at the time he registered the Domain Name and the strong inference is that he was aware and did so knowing of the Complainant’s established rights, for his own commercial gain and to prevent the Complainant from reflecting its trademark in the corresponding “.com.au” domain name.
The Response does not certify that the information it contains is accurate. This is not merely an informal Response because it contains false statements and material omissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove:
(i) the Domain Name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Note 2); and
(iii) the Domain Names has been registered or subsequently used in bad faith.
For the purposes of this Policy, auDA has determined that a “name … in which the complainant has rights” refers to:
(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.
For the purposes of this Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
A. Identical or Confusingly Similar
The Complainant has shown that it has registered trademark rights in IMMIHELP, in Australia and elsewhere, notably in the United States.
As under the Uniform Domain Name Dispute Resolution Policy, “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; and the gTLD and ccTLD extensions “.com” and “.au” may generally be disregarded in determining identity or confusing similarity: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Since the Domain Name comprises solely the Complainant’s IMMIHELP mark with the gTLD and ccTLD extensions, the Panel finds the Domain Name to be identical to the Complainant’s IMMIHELP mark.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the Domain Name. Here, the Complainant’s assertions suffice to establish a prima facie case of absence of rights or legitimate interests in relation to the Domain Name on the part of the Respondent. Accordingly, the burden of production shifts to the Respondent to demonstrate rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. These circumstances include:
“before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring)”.
Even perfunctory preparations have been held to suffice for this purpose: SHIRMAX RETAIL LTD./DÉTAILLANTS SHIRMAX LTÉE v. CES MARKETING GROUP INC., eResolution Case No.AF-0104; Lumena s-ka zo.o. v. Express Ventures LTD (www. Skarbiec.com), NAF Claim No. 0094375 and ROYAL BANK OF CANADA v. XROSS, eResolution Case No. AF-0133.
The Respondent asserts that he made preparations for a website and marketing materials, including business cards bearing the Domain Name which he distributed, but has produced no evidence to support his assertions. However, as set out in the Complaint, the Complainant’s own enquiries revealed that a person called Babak in Sydney, Australia, engaged somebody in March, 2010 to develop a logo containing “immihelp” for a website for an immigration consultancy. The Panel infers that the Respondent did make preparations to use the Domain Name approximately 4 months after he registered it.
The questions remain whether such preparations took place before notice to the Respondent of this dispute and, if so, whether the use to which the Respondent intended to put the Domain Name was in connection with a bona fide offering of goods or services.
The Complainant says the Respondent must have known of the Complainant’s rights and reputation in its IMMIHELP mark when he registered the Domain Name and these suffice to constitute notice to the Respondent of the subject matter of the dispute.
The Panel does not accept that mere awareness of a complainant’s identical mark is sufficient to constitute notice of a domain name dispute under the Policy. Whether or not the Respondent was aware of the Complainant’s rights when he registered the Domain Name in November, 2009, the Respondent did not receive notice of this dispute until the Complainant’s United States representative wrote to him on March 14, 2013 seeking transfer of the Domain Name.
The Complainant’s business is helping people with immigration to the United States. The Respondent’s business is helping people with immigration to Australia. These businesses cater to different markets. People seeking the services of the Complainant are unlikely to be interested in the services of the Respondent and vice versa.
Although the ccTLD “.com.au” suffix is generally not relevant to the issue of identity or confusing similarity, in the present case it is of relevance to the issues of legitimacy and bad faith, since the <immihelp.com.au> Domain Name is likely to convey to the Internet user the idea of help with immigration to Australia, a service that the Respondent is qualified to provide and which the Complainant apparently does not and is not entitled to provide.
The Panel does not accept the Complainant’s contention that because the trademark IMMIHELP is an invented or coined word it is not one that other traders would legitimately choose unless they were trying to create a false association with the Complainant. The Panel finds the Respondent’s assertion that the word is coined by combining the first two syllables of the ordinary dictionary word “immigration” with the ordinary dictionary word “help” convincing. The Complainant was not alone in using “immi” as an abbreviation for “immigration”. The Australian Government did so for the purposes of its official Immigration Department website at “www.immi.gov.au”. Accordingly the Respondent’s explanation that he was inspired by that website to register the Domain Name in order to provide immigration services to people contemplating immigration to Australia is plausible. The Respondent is a registered Migration Agent and the Panel accepts that his purpose in registering the Domain Name was to promote his migration advisory business. This was a bona fide offering of services.
The Complainant places much emphasis on its assertion that the Respondent must have been aware of the Complainant’s rights in the IMMIHELP mark when he registered the Domain Name and therefore lacks rights or legitimate interests and must have acted in bad faith. The Panel does not find it necessary to reach a conclusion on this issue because even if the Respondent was aware of the Complainant’s rights as they stood at that time (before the Complainant registered its Australian trademark), the Respondent could reasonably have considered that the Domain Name would not adversely affect the Complainant’s interests both because of the meaning, mentioned above, likely to be conveyed by the ccTLD “com.au” suffix and because the Complainant’s business does not involve help with immigration to Australia.
Accordingly the Panel is not satisfied that the Complainant has established that the Respondent lacks rights or legitimate interests in respect of the Domain Name.
C. Registered or Subsequently Used in Bad Faith
The Policy, paragraph 4(b) provides that, for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and [sic] use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location.
The Complainant invokes paragraphs 4(b)(ii) and (iv) of the Policy.
As to paragraph 4(b)(ii) of the Policy, the Panel considers that it is more likely than not that the Respondent’s primary purpose in registering the Domain Name was to promote his own business of helping people with immigration to Australia.
As to paragraph 4(b)(iv) of the Policy, since the Domain Name has never resolved to an active website, merely to an “under construction” page, and has otherwise been used for email, the Panel is not satisfied that the Respondent has used the Domain Name intentionally in the way described in that paragraph.
Accordingly the Complainant has failed to establish that the Respondent registered or has subsequently used the Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Date: February 4, 2014