WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paessler AG v. Assured IT Pty Ltd.
Case No. DAU2015-0030
1. The Parties
The Complainant is Paessler AG of Nürnberg, Germany, represented by IP Service International Pty Ltd, Australia.
The Respondent is Assured IT Pty Ltd. of Morningside, Queensland, Australia, internally represented.
2. The Domain Names and Registrar
The disputed domain names <paessler.com.au> and <prtg.com.au> are registered with TPP Domains Pty Ltd. dba TPP Internet (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 4, 2015, the Registrar 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 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2015. The Response was filed with the Center on September 27, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 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.
On October 6, 2015, the Center received an unsolicited supplemental filing from the Complainant. Subsequently, on October 19, 2015, the Center also received an unsolicited supplemental filing from the Respondent.
4. Factual Background
The Complainant is owner of the registered trade marks in Australia:
(a) Trade Mark No. 1629346, PAESSLER, for a range of goods and services in International Classes 9, 16, 37, 38 and 42; and
(b) Trade Mark No. 1622899, PRTG, in International Class 9 for “computer software, recorded, in particular for performance, availability and bandwidth monitoring of networks”.
Both trade marks were registered with effect from March 25, 2014.
The Complainant appears to be a supplier of computer software and infrastructure and services related to monitoring information technology networks.
Both disputed domain names were registered on June 13, 2008. According to the Respondent, it has been using them continuously since that date although, from the information provided by the Registrar, it appears that the formal registration details may have changed.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a name, trade mark 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 have been registered or subsequently used in bad faith.
Before addressing the substantive requirements under the Policy, the Panel deals with the Respondent’s unsolicited supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
The Complainant’s proposed supplemental filing essentially contains material which could, and should, have been included in the Complaint. Ordinarily, that would be sufficient basis for excluding the proposed supplemental filing. It does, however, include a denial of a specific allegation made by the Respondent and, in view of the centrality of the issues addressed to the issue in the proceeding, the Panel will admit it into the record.
In view of the very late stage at which the Respondent’s unsolicited supplemental filing was received and the conclusions reached below, it is unnecessary to consider the supplemental filing in this proceeding and it is excluded from the record.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Complainant has proven that it owns the registered trade marks in Australia for both PAESSLER and PRTG referred to in Section 4 above.
The Respondent relies on the registration of the disputed domain names more than five years prior to the registration of the Complainant’s trade marks to deny this requirement. On the question of identity or confusing similarity, however, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy. Accordingly, the fact that the Complainant registered its trade marks several years after the registration of both disputed domain names is not relevant at this stage of the inquiry.
In undertaking the comparison, it is also permissible to disregard the second level and country code domain name suffix “.com.au”, see GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,above.
On that basis, the disputed domain name <paessler.com.au> is identical to the Complainant’s registered trademark No. 1629346, PAESSLER, and the disputed domain name <prtg.com.au> is identical to the Complainant’s registered trademark No. 1622899, PRTG.
B. Registered or Subsequently Used in Bad Faith
In the circumstances of this case, the Panel moves to consider the third requirement under the Policy next.
In contrast to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Complainant must establish that the disputed domain names have been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. It is not necessary for the Complainant to satisfy both requirements as is the case under the UDRP. It is sufficient to establish one or the other condition only.
Paragraph 4(b) of the Policy provides a number of examples of situations which may qualify as either registration or use in bad faith for the purposes of paragraph 4(a) of the Policy. They are as follows:
(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, trade mark 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 website 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 website or location or of a product or service on that website or location.
Although these circumstances are well known and illustrative only, the Panel has set them out in full in this case because, of the three reasons advanced by the Complainant in support of its case under this head, two are simply bald assertions effectively in terms of paragraphs (i) and (iv) above. The Complainant’s third contention in full is:
The Complainant is concerned that the Respondent’s attempt to pass off its business as the Complainant’s business is one which has already resulted in a loss to the Complainant’s business. Further, there is undoubtedly confusion in the marketplace between the Complainant’s business and the business of the Respondent, and given the names used for the identical goods and services being identical, that is likely to continue to occur.
In denying these bare allegations, the Respondent says it began marketing and reselling the Complainant’s products in Australia in 2007.
The Respondent claims it had verbally informed the Complainant of the registration of the disputed domain name and had received approval for that. The Complainant disputes this. However, the Complainant does not disclose when or how it became aware of the registration of the disputed domain names and what action, if any, it took as a result.
The Respondent would appear to have been listed on the Complainant’s homepage as a reseller/partner. In October 2008, the Complainant upgraded the Respondent’s status to “Premium Partner” as, according to the email the Complainant sent to the Respondent at that time, the Respondent was the Complainant’s “most active and committed reseller/partner in Australia”.
It would appear that the listing of the Respondent on the Complainant’s website included links to the Respondent’s website. In the email from the Complainant notifying the Respondent that it had been upgraded to “Premium Partner” status, the Complainant also authorised the Respondent to include the “Premium Partner” logo on the Respondent’s website.
None of this relationship history was disclosed by the Complainant. In its supplemental filing, the Complainant contends that none of this gives the Respondent rights in the disputed domain name. It further submits:
…. All the Respondent aimed to do and certainly did, as admitted was growing a market for the products of the Complainant in Australia but in a misleading and deceptive way, as it is absolutely uncommon in business for a mere distributor of a trade mark owner’s product, to OWN a website with the trade mark owner’s mark. It is common sense that such ownership is outside of the scope of entitlements of a distributor in relation to the producer and trade mark owner’s brand name. It would have been an implied duty of the Respondent to assign the domain name to the Complainant. If an implied agreement between the parties is found, registration of a trademarked name by a distributor and non-trade mark owner is a clear breach of an (implied) distribution agreement.
The Complainant then invokes the well-known principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The disputed domain name <paessler.com.au> redirects to the Respondent’s home page at “www.assuredit.com.au”. On that website, the Complainant is identified as one of the Respondent’s partners, along with other well-known companies such as Microsoft, IBM and Citrix. Under the “Software Solutions” tab, there is a page for “I.T. Monitoring”. It is headed:
PRTG Network Monitor – The Best!
Availability and Bandwidth Monitoring – the Easy Way.
After discussion of what the software can do, it is clearly stated at the foot of the page:
“Assured IT is a leading Australian based reseller for Paessler PRTG Network monitor, contact us for a quote today !”
According to the Respondent, it is a full service IT reseller and service provider. However, the only network monitoring products it offers are the Complainant’s products. It does not offer products which compete with the Complainant’s products.
The Respondent also states that the disputed domain name <prtg.com.au> formerly resolved to a website dedicated solely to the Complainant’s PRTG products. That website is currently undergoing some unspecified restructuring and redesign. In the meantime, the disputed domain name <prtg.com.au> resolves to the “I.T. Monitoring” page at the Respondent’s website.
No evidence of either the loss alleged or the confusion said to be occurring is provided. On the contrary, the Response includes an email from the Complainant earlier this year offering immediately to license the use of the disputed domain names back to the Respondent after they have been transferred.
So far as the evidence goes, the Respondent is using the disputed domain names essentially in the way that the Complainant appears to have accepted up until quite recently. If the circumstances are as the Respondent has outlined, it cannot be said that the circumstances identified in paragraph 4(b) of the Policy apply. It is also unclear why the Complainant contends that there is confusion in the marketplace. The Respondent appears to be reselling the Complainant’s software and makes it plain on its website that it is a reseller.
In the passage from the supplemental filing extracted above, the Complainant does not expressly acknowledge any role for the Respondent. Equally, however, it does not deny the substance of the Respondent’s contentions. Rather, the letter from the Respondent submitted with the Complainant’s supplemental filing suggests that the Complainant has recently changed, or now wishes to change, its commercial strategy in Australia. Typically, it would be the supplier rather than the distributor who would own intellectual property rights and associated indicia such as domain names. That is not, however, always the case and will depend very much on the circumstances. The resolution of such issues can turn on very fine margins. See e.g. in the trademark context Malibu Boats Inc. v Catanese  FCA 1141.
In these circumstances, the Panel finds that the Complainant has failed to show that the disputed domain names were registered in bad faith. The Panel also finds that the Complainant has failed to establish use of the disputed domain names in bad faith.
C. Rights or Legitimate Interests
As the Complainant has not made out the “bad faith” requirement, there is no purpose in addressing whether or not the Respondent has rights or legitimate interests in the disputed domain names as the Complaint must fail in any event.
D. Reverse Domain Name Hijacking
The Respondent claims a finding that the Complainant has engaged in Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides, in part:
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
Paragraph 4.17 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition indicates that a panel will rarely find a case of Reverse Domain Name Hijacking where there is a genuine dispute or where there is an arguable, but weak, case.
In the present case, it appears that there is a genuine dispute between the Complainant and the Respondent over entitlement to the disputed domain names and the basis on which the Respondent came to register and use them. In opposition to the Complainant’s position, the Respondent says it has invested substantial time and resources over the years in developing the name and reputation of the Complainant’s products in Australia. Whether that gives it an entitlement to the disputed domain names turns on the arrangements between the Parties. From the available record, the resolution of any such dispute is not clear to the Panel and beyond the scope of the Policy.
That said, the Panel considers that a finding of Reverse Domain Name Hijacking should be made in this case. In this case, the Complainant has exhibited a total lack of candour in failing to disclose the history and nature of its relationship with the Respondent going back to 2007. That failure could have left the Panel with a totally distorted impression of the nature of the dispute between the Parties and, in the Panel’s view, warrants the sanction. Accordingly, the Panel finds that the Complainant has engaged in Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: October 19, 2015