WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.
Case No. DAU2015-0014
1. The Parties
The Complainant is ESET, spol. s.r.o. of Bratislava, Slovakia, represented by King & Wood Mallesons, Australia.
The Respondent is Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd. of Margate, Queensland, Australia.
2. The Domain Names and Registrars
The disputed domain names <eset.net.au> and <nod32.com.au> are registered with Tucows Inc.
The disputed domain name <eset.com.au> 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 March 27, 2015. On March 27, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 30, 2015, Tucows Inc. transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On March 31, 2015, 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 April 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on May 5, 2015. 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 an information technology security company. The Complainant manufactures and distributes IT security products, such as the antivirus software package ESET NOD32 Antivirus (commonly known as "NOD32"). The Complainant was founded in 1992. It has branch offices in a number of countries, including Australia, as well as distributors in over 180 countries. The Complainant has more than 1,000 employees worldwide. The Complainant's main website is located at "www.eset.com".
The Respondent distributed the Complainant's products from 2001 until February 2015. NOD32 was an Australian-registered business name (which has now been cancelled). Mr. Fewster was the holder of that business name and also is a director of Antivirus Australia Pty Ltd. Although attempts were made by the Complainant to document the distribution arrangement with Mr. Fewster / Antivirus Australia Pty Ltd, Mr. Fewster refused to sign any agreement with the Complainant or its related entities.
The disputed domain names are registered in different names: <eset.net.au> is registered to "Antivirus Australia Pty Ltd"; <nod32.com.au> is registered to "NOD32 Australia" (although listed 'owner information' lists the 'Organization name' as Antivirus Australia); and <eset.com.au> is registered to "ESET Pty Ltd". The Complainant says that Mr. Fewster is the proper Respondent in relation to the disputed domain name <nod32.com.au>, as the named registrant ("NOD32 Australia") is not a legal entity in Australia and that business name was cancelled in 2002. The business name holder prior to that cancellation was Mr. Fewster, who is also the registrant contact for that disputed domain name.
5. Parties' Contentions
The Complainant says that it is appropriate for a single Complaint to be brought against all the named Respondents, as both the disputed domain names and the websites to which they resolve are subject to common control. This is evidenced by the fact that Mr. Fewster is the registrant contact for the disputed domain names <eset.net.au> and <nod32.com.au>, Mr. Fewster is a director of Antivirus Australia Pty Ltd (the named registrant for the disputed domain name <eset.net.au>), and both of those disputed domain names resolved to the same website at "www.antivirus.com.au". The disputed domain name <eset.com.au> has provided a prominent link to the website at "www.antivirus.com.au". The current registrant of <eset.com.au> is ESET Pty Ltd. The sole director of that company is Mr. Fewster's daughter, Lilian Upchurch. The previous registrant of this disputed domain name was Antivirus Australia Pty Ltd. Further, ESET Pty Ltd and Antivirus Australia Pty Ltd have the same registered office and legal representative.
The Complainant owns registered trademarks in Australia (and elsewhere) for ESET and NOD32. The Complainant markets a range of security products and services, including "ESET NOD32 antivirus", "ESET Mobile Security", "ESET Smart Security" and "ESET Secure Authentication". The Complainant first began using its ESET mark in 1992. At this time, it was selling ESET branded products in the Czech Republic. NOD32 was first used as a trademark in 1998. In Australia, the Complainant has registered marks for ESET and NOD32 since at least 2003. The Complainant says that the disputed domain names are relevantly identical to its trademarks for either NOD32 or ESET.
The Complainant says that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not commonly known by the disputed domain names. While "NOD32" was registered as a business name in Australia, it was only registered for 16 months which is not sufficient time for Mr. Fewster to become "commonly known" by it. In relation to "ESET Pty Ltd", it does not appear that it has ever traded and, as such, this company is not commonly known as "ESET". The company was established in 2013 with full knowledge of the Complainant's trademark rights and, accordingly, this company does not have any rights or legitimate interests in "ESET". It is a company that was established with the purpose of trying to make legitimate its otherwise illegitimate purpose of using the Complainant's trademarks when its distributorship agreement with the Complainant ended.
The Complainant engaged Antivirus Australia Pty Ltd to distribute its ESET NOD32 antivirus products in Australia in mid-2001. During the term of this distribution arrangement, Antivirus Australia Pty Ltd and its related entities used the websites at the disputed domain names to market the Complainant's products in Australia. When the distribution arrangement ended in 2015, the Respondents did not cease the use of the disputed domain names or transfer them to the Complainant. Rather, the Respondents then started to use the disputed domain names to promote a competitor's antivirus product.
The Complainant says that it now appears that the Respondents had planned this bad faith use of the disputed domain names for some time. When the Complainant raised issues with Mr. Fewster about Antivirus Australia's performance as a distributor, the Complainant says that the Respondent took a series of secret steps in 2013 to try to prevent the Complainant from using the disputed domain names if the distributorship ended. This process involved the setting up of a company supposedly controlled by Ms. Upchurch, the transfer of the disputed domain name <eset.com.au> to his company, and the registration of ESET as a trademark for clothing by Ms. Upchurch. Despite the transfer of that disputed domain name to the supposed clothing company in 2013, the website at "www.eset.com.au" continued to market the Complainant's products until the distribution arrangement terminated with effect on February 1, 2015. The Complainant provided a screenshot of that website as at January 29, 2015. That website featured a picture of children and clothing and a banner "Essential Styles for Everyday Toddlers".
When the distributorship arrangement terminated, Antivirus Australia Pty Ltd and its related entities no longer had any rights to use the Complainant's trademarks, including the disputed domain names. However, instead of transferring the disputed domain names to the Complainant, the Respondents redirected them to a website that disparages the Complainant's products and directs Internet users to a website promoting a competing product. (The disputed domain names are currently inactive and error messages are displayed.) The Complainant also created a sham website at "www.eset.com.au" which appeared to advertise children's clothes, but which featured a prominent link to a website promoting a competing product to the Complainant's. The content of that website quickly changed again following a letter from the Complainant's lawyers to Ms. Upchurch (that website is currently inactive).
The Complainant says that this scenario closely resembles that in Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, WIPO Case No. DAU2012-0025. In that case, a distribution arrangement between the parties had similarly come to an end and the Panel found that the Respondent no longer had rights or legitimate interests in the disputed domain name since that termination.
The Complainant also says that the disputed domain names are being used in bad faith. At the time the disputed domain names were registered, Antivirus Australia Pty Ltd was an authorized distributor of the Complainant's products. As such, the Complainant concedes that the disputed domain names were not registered in bad faith. However, the Respondent has subsequently used the disputed domain names in bad faith. The distribution arrangement between the parties ended on February 1, 2015 and, as such, Antivirus Australia Pty Ltd and its related entities (including Mr. Fewster) would have been well aware that they no longer had any lawful entitlement to use the Complainant's trademarks in a domain name. The continued use of the disputed domain names has therefore been in bad faith. It is clear that Antivirus Australia Pty Ltd and Mr. Fewster are retaining the disputed domain names <eset.net.au> and <nod32.com.au> to prevent the Complainant from reflecting its company name and trademarks in corresponding domain names and to disrupt the Complainant's business. This is evidence of bad faith under paragraphs 4(b)(ii), (iii) and (iv) of the Policy.
In relation to the disputed domain name <eset.com.au>, the clothing business advertised at the related website was not a legitimate one. The Complainant submits that the clear inference is that the content on that website was created by the Respondents to divert Internet users looking for the Complainant, to a competitor of the Complainant. By using that disputed domain name to disparage the Complainant's products, the Respondent has disrupted the Complainant's business activities and sought to prevent the Complainant from reflecting its company name and trademark in a domain name. This activity is bad faith for the purpose of paragraph 4(b)(ii), (iii) and (iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
While the Respondent did not file a Response to the Complaint, the Complainant provided evidence of communications between the parties legal representatives. In a letter to the Complainant dated February 9, 2015 (replying to a cease-and-desist letter from the Complainant), the Respondent made a number of assertions. These included a rejection of any wrongdoing, and a claim that the exclusive distribution agreement was wrongly terminated, although limited detail was provided by the Respondent's solicitors to support that assertion. (Further correspondence from the Complainant's solicitors repeated the substance of the Complaint, and addressed other matters not within the scope of this dispute.)
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. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
The Panel has considered each of the circumstances under paragraph 4(a) of the Policy as set out below, immediately following a consideration of the Complainant's request to consolidate the Complaint against multiple Respondents.
A. Multiple Respondents
In this case the Complainant has sought to consolidate the Complaint against multiple named Respondents.
Paragraph 4(f) of the Policy provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. However, the Policy and Rules proceed on the basis that a single complaint must be filed against a single respondent (which may include a complaint involving multiple domain names). As such, paragraph 1 of the Rules defines the "respondent" in the singular: as "the holder of a domain name registration against which a complaint is initiated". Paragraph 3(c) of the Rules also provides that "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder"(emphasis added).
In this case, the issue therefore is whether there is, as a matter of fact, a "single" respondent. Neither the Policy nor Rules require that separate complaints be filed simply because differently named registrants are recorded in the WhoIs database (when there is in fact one entity). There are good reasons of policy for such an approach – otherwise, a respondent could register domain names under multiple aliases to frustrate the intent of the Policy.
Previous UDRP panels have considered it appropriate to consolidate a complaint against notionally multiple respondents in certain circumstances. Those circumstances usually constitute some evidence of there being a single respondent in fact. For example, as noted by the panel in Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699, the relevant question "is whether, regardless of the details recorded on the register, the domain names are de facto controlled by the same entity."
The Complainant also argues that it is appropriate that a single complaint be brought against the multiple Respondents in this case, as both the disputed domain names and the related websites are subject to common control. The Complainant refers to Smart Voucher Ltd T/A Ukash v. Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd, WIPO Case No. DAU2013-0006, in which the then panel accepted a complainant's argument to that effect.
The Panel has considered that the facts of this case support a conclusion that the disputed domain names are subject to a common control, and therefore that it is appropriate for there to be a single complaint. The relevant facts supporting this conclusion are as follows:
- the Respondents provided no response to the Complaint. As such, the prima face case of the Complainant (that the disputed domain names are subject to a common control by Mr. Fewster / Antivirus Australia Pty Ltd) has not been challenged.
- the Complainant has established a persuasive circumstantial case on this issue.
- two of the disputed domain names are relevantly identical.
- the disputed domain names include similar contact details.
- (as stated in the Complaint) at one point, all of the disputed domain names resolved to websites with similar content.
- the Respondents' legal representative suggests that it was acting for all the named Respondents in this case.
Some similar factors have been considered relevant in previous UDRP decisions: see e.g. FragranceX.com, Inc. v. Argosweb Corp a/k/a Oleg Techino in this name and under various aliases, WuWeb Pty Ltd, Alichec Inc., Belroots Pty Ltd, Crystal Image Pty Ltd, Elarson & Associates Pty Ltd, Lidnick Webcorp, Liquid SEO Limited, Loshedina Inc, Luchichang Pty Ltd, Netmilo Pty Ltd, Orel Hlasek LLC, Volchar Pty Ltd, Web Pescados LLC, Webatopia Marketing Limited, ZincFusion Limited, Chin-Hui Wu, Domain Administrator, Denholm Borg, Denesh Kumar, Marcelos Vainez, Alex Ovechkin, Vlad Obchikov, WIPO Case No. D2010-1237.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the first thing which the Complainant must prove is that the disputed domain names are identical or confusingly similar to a mark in which it has rights. The Complainant provides evidence of its registered rights for its ESET and NOD32 trademarks.
It is well-established that the country code Top-Level Domain extension ".com.au" or ".net.au" is to be disregarded for the purpose of comparison. With those elements disregarded, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered marks. As such the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Secondly, 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 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 shifts to the Respondent to refute it. This general position under the Policy is the same as that under the UDRP: see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Panel finds that the Complainant has established a prima facie case against the Respondent. The Respondent has chosen to submit no reply and so the Complainant's case stands unrebutted. The Complainant's case is, essentially, that any prior right the Respondent had as a distributor of the Complainant's products ended in February 2015, with the termination of the agreement between the parties.
Against that case, the Policy sets out a number of circumstances which, without limitation, might be taken to demonstrate a respondent's rights or legitimate interests in a domain name. The Panel does not consider that any of those circumstances apply here, for the following reasons:
One circumstance is where, before any notice to the Respondent of the subject matter of the dispute, the respondent has made a bona fide use of the domain name in connection with an offering of goods or services: paragraph 4(c)(i) of the Policy. The Complainant's evidence in this case is that the Respondent, for a period until around 2013, was using the disputed domain names for a bona fide purpose, in connection with its distribution arrangement with the Complainant. After that time, the Complainant sets out that the Respondent undertook a number of activities that were not a bona fide. The Complainant provides evidence that the disputed domain name <eset.com.au> was used for a website purporting to sell children's clothing (although also containing a link to the Respondent's Antivirus Australia PTY Ltd website). The disputed domain names <eset.net.au> and <nod32.com.au> were, at least for some time after the arrangement between the parties was terminated, used to promote products of the Complainant's competitors.
Paragraph 4(c)(i) of the Policy does not explicitly address a case where circumstances change: such that a respondent has, before notice of a dispute, both used a domain name consistently with a distribution agreement, but then used the domain name outside the scope of that agreement. But there are a number of past UDRP decisions in which panels found that the termination of a distribution agreement meant that a respondent no longer had relevant rights or legitimate interests: See e.g. Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals, WIPO Case No. D2003-1029. This Panel takes a similar approach. The evidence in this case suggests that the Respondent has (among other things) used the disputed domain names without the Complainant's authorization to divert traffic to competing products. The Panel considers that such a use is not bona fide, for the purpose of paragraph 4(c)(i) of the Policy.
Another circumstance arises where the respondent has become "commonly known" by the dispute domain name: paragraph 4(c)(ii) of the Policy. There was no evidence that the Respondent in this case ever became commonly known by any of the disputed domain names.
The Complainant also addresses the issue of the registration, for 16 months, of "NOD32" as a business name by one of the Respondents, and argues that this was insufficient time for the Respondent to become commonly known by that name. Regardless, the Panel notes that, as paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition explains, the fact that a respondent has registered a business name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name. This is because registration of a business name does not provide proprietary rights in the name; rather, the registration of a business name is a legislative requirement that needs to be satisfied where an entity trades under a name that is not its own personal name or company name.
In relation to the Respondent ESET Pty Ltd, the Complainant states that it appears that this entity has never traded and, as such, cannot be commonly known by the disputed domain names that incorporate that term. The Respondent provided no evidence to the contrary. In addition, the Complainant provided evidence that this entity was established to provide a veneer of legitimacy to the Respondent's use of the disputed domain names <eset.com.au> and <eset.net.au>. Such a use cannot be a basis for rights or legitimate interests under the Policy.
A final circumstance that might demonstrate rights or legitimate interests is where a respondent is 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 trademark or service mark at issue: paragraph 4(c)(iii) of the Policy. As outlined above, the Respondent registered the disputed domain names in connection with the commercial distribution of the Complainant's products. It is self-evident that these registrations were not undertaken for a non-commercial fair use.
For these reasons, the Panel finds that the Respondent does not currently have rights or legitimate interests in the disputed domain names.
D. Registered or Subsequently Used in Bad Faith
The Policy provides that bad faith may be found where a disputed domain name was registered in bad faith or subsequently used in bad faith. The unrebutted case in the Complaint is that the disputed domain names have at least been used in bad faith, since at least 2013.
The Complaint argues that the disputed domain names <eset.net.au> and <nod32.com.au>, before becoming inactive shortly before the Complaint was filed, resolved to websites disparaging the Complainant's products and directing Internet users to a website promoting a product in competition with the Complainant's. The Complainant provides evidence that the disputed domain name <eset.com.au> was also used from 2013 in connection with a sham website, purporting to sell children's clothing, and also containing a link to the Respondent's Antivirus Australia Pty Ltd website.
For similar reasons to those set out above in relation to paragraph 4(a)(ii) of the Policy, the Panel finds that the Respondent used the disputed domain names in bad faith. The record indicates that the Respondents are not well-motivated toward the Complainant, for whatever reason, and have used the disputed domain names in that context.
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 <eset.com.au>, <eset.net.au> and <nod32.com.au> be transferred to the Complainant.
James A. Barker
Date: May 19, 2015