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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Platypus Wear, Inc. v. Matthew Michael, Xpress International Pty Ltd

Case No. DAU2014-0032

1. The Parties

The Complainant is Platypus Wear, Inc. of San Diego, California, United States of America ("US"), represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is Matthew Michael, Xpress International Pty Ltd of Wetherill Park, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <badboymma.com.au> (the "Domain Name") is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2014. On September 25, 2014, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. The same day, GoDaddy.com, LLC 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 October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 23, 2014.

The Center appointed Nicholas Smith as the sole panelist in this matter on October 27, 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.

On October 28, 2014 the Respondent sent a short email to the Center inquiring about the nature of the auDRP process. The Center responded on the same day. On October 29, 2014, the Respondent sent a further communication stating that "Someone has already taken the site off me … So what do I do". The Center responded the same day.

4. Factual Background

The Complainant is a US based company that was founded in 1985 and trades as "Bad Boy Brands". It is responsible for the branding and distribution of numerous products under the brand "Bad Boy" including mixed martial arts ("MMA") products, lifestyle clothing, accessories, headwear, footwear, nutritional supplements, food products, drinks, swimwear, jewellery, toiletries, beverages, stationery, gym equipment, school supplies, bags and backpacks.

The Complainant holds numerous Australian trade mark registrations for the word mark "bad boy" (the "BAD BOY Mark") including trade mark number 774278 which has been registered since September 28, 1998.

The Domain Name <badboymma.com.au> was created on January 30, 2014. The Domain Name currently redirects to a website at "www.mmafactory.com.au" (the "Respondent's Website"). The Respondent operates a specialty store selling MMA products. The Respondent's Website is an active website that offers various MMA-related accessories for sale, including clothing, fighting accessories, and general accessories such as backpacks, posters and books. The Respondent's Website does not appear to sell any product that is branded with the BAD BOY Mark.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant's BAD BOY Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.

The Complainant is the owner of the BAD BOY Mark. It owns numerous trade mark registrations for the BAD BOY Mark in Australia.

The Domain Name <badboymma.com.au> is confusingly similar to the BAD BOY Mark, reproducing the BAD BOY Mark in its entirety, with the addition of "mma" short for mixed martial arts.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for "BAD BOY" or any similar trade mark. The Respondent is not licensed or authorised by the Complainant to register the Domain Name. The Respondent does not have any other apparent rights in the Domain Name. Rather, in January 2014, the Complainant contacted the Respondent to ascertain whether the Respondent would be interested in distributing BAD BOY branded MMA products in Australia. Prior to the conclusion of any agreement, the Respondent registered the Domain Name without the authority of the Complainant. The Domain Name now points to the Respondent's Website. Such use does not give rise to rights or legitimate interests.

The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain name with the awareness of the Complainant and with the intention of selling it to the Complainant. Furthermore the Domain Name was registered to prevent the Complainant from reflecting its trade mark in a corresponding domain name and disrupt the business of the Complainant, with the ultimate aim of preventing the Complainant from using an Australian distributor other than the Respondent. Furthermore the Respondent is engaging in a pattern of conduct of registering third party trade marks in domain names.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's name, trade or service mark.

The Complainant is the owner of the BAD BOY Mark, having registrations for the BAD BOY Mark as a trade mark in Australia.

The Domain Name <badboymma.com.au> consists of the BAD BOY Mark, the letters "mma" and the country code Top-Level-Domain ("ccTLD") suffix ".com.au". Disregarding the ccTLD ".com.au" suffix, the Domain Name is confusingly similar to the BAD BOY Mark since the distinguishing letters "mma" are a common abbreviation for "mixed martial arts" which reflect the products sold under the BAD BOY Mark. Consumers interested in MMA products may think that the Domain Name redirects to a site selling MMA products under the BAD BOY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) 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); or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue." (Policy, paragraph 4(c))"

The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BAD BOY Mark or a mark similar to the BAD BOY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used the Domain Name in connection with a legitimate non-commercial use. There is no evidence that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name. Rather the Domain Name currently re-directs to the Respondent's Website, at which MMA accessories that directly compete with the Complainant's products are sold. This does not amount to a bona fide use of the Domain Name in connection with an offering of goods and services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests and has chosen not to file any evidence or submissions showing rights or legitimate interests. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on Respondent's web site or location.

The Panel finds that the Respondent, at the time of registration of the Domain Name knew of the existence of the BAD BOY Mark. The Domain Name was registered after the Complainant had contacted the Respondent to ascertain his interest in distributing the Complainant's products in Australia. The registration of the Domain Name in awareness of the Complainant and any right it had at the time in the BAD BOY Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent has claimed that a third party has taken control of the website. This claim is not supported by any evidence or other correspondence. Nor is it supported by the WhoIs record or the fact that the Domain Name remains directed at the Respondent's Website.

The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the BAD BOY Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website consisted of a website offering mixed martial arts products, including clothing and accessories, to the public. The products offered from the Respondent's Website directly compete with the Complainant's products sold under the BAD BOY Mark. Consumers interested in purchasing the Complainant's BAD BOY MMA-related products may be confused into thinking that the Respondent's Website offers the Complainant's products or is somehow connected to the Complainant. Upon visiting the Respondent's Website they may decide to purchase the Respondent's products. It is therefore highly likely that the Respondent receives revenue from Internet users who happen to come across the Respondent's Website by means of confusion with the BAD BOY Mark. The Panel finds that such use amounts to use in bad faith.

The Complainant makes further submissions that the Respondent registered the Domain Name to prevent it from reflecting its mark in a corresponding domain name, to disrupt its business or to sell the Domain Name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs. Given the finding made above, it is not necessary to consider those submissions.

The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

D. Complainant's Eligibility

The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trademark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the BAD BOY Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.

7. Decision

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 name <badboymma.com.au> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: October 30, 2014

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