WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Questionmark Computing Limited v. Question Mark Solutions Pty Ltd

Case No. DAU2015-0038

1. The Parties

The Complainant is Questionmark Computing Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), internally represented.

The Respondent is Question Mark Solutions Pty Ltd of Albion, Queensland, Australia, internally represented.

2. The Domain Name and Registrar

The disputed domain name <questionmark.com.au> is registered with NetRegistryPty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 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” 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 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2015. The Center received informal communications from the Respondent on November 10, 2015, November 11, 2015, November 12, 2015, and November 13, 2015.

On November 16, 2015, the Complainant submitted a request that the proceeding be suspended for seven days to explore possible settlement. The proceeding was suspended from November 16, 2015 to November 24, 2015. The Respondent sent a further communication to the Center on November 17, 2015. On November 20, 2015, the proceeding was reinstituted at the request of the Complainant. The Center received further communications from the Respondent on November 23, 2015, November 30, 2015, and December 1, 2015.

The Center appointed Alistair Payne as the sole panelist in this matter on December 1, 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 was founded in the United Kingdom in 1988 and provides software and services for reporting on the assessment of tests, surveys, quizzes and examinations. It started selling its software in 1989 in Australia and has been marketing and selling through several resellers in Australia since that time. Numerous large organisations in the government, corporate and academic spheres use the Complainant’s software or services in Australia. The Complainant owns an Australian trade mark registration for its QUESTIONMARK trade mark under registration number 1604638 with a filing date of February 6, 2014. It also owns trade mark registrations for this mark in the United States of America and in the European Union and operates a website for its business at “www.questionmark.com”.

The Respondent was a non-exclusive reseller and then a distributor of the Complainant’s products in Australia from about 1997 until 2014 when the arrangement was terminated. In 2001 the Complainant entered into an agreement with the Respondent’s sister company, Extek Pacific Pty Limited which was in common ownership with the Respondent, to register the disputed domain name on behalf of the Complainant and upon the basis that the Complainant would reimburse it for registration, parking and re-direction. Following termination of the Respondent’s distributor agreement the disputed domain name was at some point transferred to the Respondent who has failed to transfer it to the Complainant upon request.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in Australia and elsewhere as set out above and that the disputed domain name is identical or confusingly similar to the Complainant’s QUESTIONMARK trade mark.

The Complainant submits that in 2001 it wished to agree a means of using the disputed domain name since it did not seem practical at the time for the Complainant to register the disputed domain name directly due to Australian domain name registration rules as they then existed. The Complainant says that it agreed in writing with Extek Pacific Pty Ltd (the sister company to Question Mark Solutions Pty Ltd and which was and is under common ownership of Mr. Kevin Meehan) that it would hold the disputed domain name on the Complainant’s behalf and that the disputed domain name would be transferred to the Complainant in exchange for reimbursement of the costs of registration and redirection to the Complainant’s main website.

In 2002, the Complainant notes that the Respondent entered into a formal distributorship agreement with it for the Australian market. This agreement says the Complainant explicitly states that there are no rights to use its trade marks after termination, that all intellectual property rights remain the property of the Complainant and that no use of the trade marks may be made after termination without its consent.

Following the issue of the termination letter the Complainant contacted the Respondent about the transfer of the disputed domain name. The Respondent affirmed the 2001 agreement and issued an invoice on August 7, 2014 (but dated June 30, 2014). This invoice was paid in full by bank transfer on August 12, 2014; however, the Complainant asserts that in spite of numerous requests and discussions the Respondent has failed to transfer the disputed domain name to it.

Since the termination of the distributor agreement the Complainant submits that the Respondent has not been making bona fide use of the disputed domain name (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”))¹ and in summary that:

(a) The Respondent is not actually offering the goods or services at issue;

(b) The Respondent does not use the website at the disputed domain name to “sell only the trade marked goods”. In the period since July 1, 2014, the Respondent has used technical measures to forward requests to the disputed domain name to the Complainant’s website at “www.questionmark.com” and that this forwarding was still active at the time of writing of the Complaint. Therefore there is no relevant use by the Respondent for the purpose of paragraph 4(a)(ii) of the Policy. (Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, WIPO Case No. DAU2012-0025).

(c) The Respondent does not accurately disclose the registrant’s relationship with the trade mark owner. As a result of the redirection it “does not describe the Respondent at all, it describes the Complainant” Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, supra.

As far as bad faith is concerned the Complainant says that the Respondent has acted in bad faith by:

(a) promising to transfer the disputed domain name, receiving a substantial sum of money from the Complainant then refusing, by its conduct, to transfer the disputed domain name;

(b) charging in excess of the Respondent’s documented out-of-pocket expenses directly related to the disputed domain name.

The Complainant further sets out the timeline concerning its request for transfer as follows:

(a) On April 3, 2014, the Complainant emailed the Respondent asking for the transfer of the disputed domain name to the Complainant.

(b) On April 7, 2014, the Respondent agreed to transfer the disputed domain name after June 30, 2014 providing parking costs were paid.

(c) On August 7, 2014, the Respondent sent an invoice to the Complainant for AUD 5,000 for parking costs of AUD 500 per year for ten years.

(d) The Complainant says that it felt that this charge was excessive and should have been limited to “reimbursement” and was much higher than the actual costs of the Respondent, but in order to close down the matter the Complainant says that it sent payment within a few days, but no transfer of the disputed domain name occurred.

(e) The Complainant states that it chased the Respondent several times. On September 22, 2014, the Respondent stated in response to the Complainant’s requests that “This is a low priority item. I’ll get to it in due course”. By an email dated October 22, the Complainant offered to pay any net registry fee directly. In response, on December 5, 2014 the Respondent simply quoted its earlier email “This is a low priority item. I’ll get to it in due course”.

(f) The Complainant sent pre-completed forms for a transfer to the Respondent on April 14, 2015 to make it easy to do the transfer. The Respondent confirmed receipt of the form by an email of April 15, 2015, but neither completed, nor signed nor returned the form. Rather, the Respondent stated in a two line email “Previous advice is unchanged”. (In other words says the Complainant, the Respondent meant that “This is a low priority item. I’ll get to it in due course”.)

(g) Further chasing emails have not had any impact.

(h) In October 2015, the Complainant notes that there was further email correspondence between the Respondent and the Complainant in which the Respondent raised further concerns, including the possibility of charging more for the transfer of the disputed domain name. The Complainant submits that the Respondent seemed to want to breach its agreement to transfer the disputed domain name and then to charge the Complainant more for that privilege. In that email the Respondent also suggests that it cannot transfer the disputed domain name before “conducting a risk assessment ondoing business with Netregistry.”

The Complainant says that the Respondent has had ample opportunity to transfer the disputed domain name and has manifestly failed to do so within a reasonable time. The Respondent’s failure to transfer the disputed domain name, coupled not only with the lack of any credible reason but also with the proffering of incredible ones (“low priority item”, wanting to charge yet more money, “conducting a risk assessment on doing business with Netregistry”), is, according to the Complainant, evidence of the Respondent’s bad faith.

B. Respondent

The Respondent has not filed a formal response but the Panel will treat the Respondent’s email of November 23, 2015 as its response per the Center’s email to the Respondent of November 24, 2015 confirming as such, but to which no acknowledgement was received by the Center until after the deadline for submission of a response.

The Respondent acknowledges that it has an agreement (via an associated company) to transfer the disputed domain name and says that it has never refused to transfer the disputed domain name or threatened to refuse to transfer the disputed domain name. The transfer of the disputed domain name has been delayed according to the Respondent by the Complainant’s failure to notify the Respondent that it had registered an Australian trade mark and has been further delayed by the Complainant’s submission of an unauthorised, incomplete Registrant Name Change (RNC) request form to the Registrar, which the Registrar processed on September 24, 2015.

The Respondent says that the Complainant’s contention that the Respondent has refused to transfer the disputed domain name is false. The Respondent contends that the Complaint was brought primarily to harass the domain name holder and the reinstitution of administrative proceedings following failed settlement discussions is further harassment of the Respondent which amounts to an abuse of the administrative proceedings under paragraph 15(e) of the auDRP.

On the basis that the Complainant has failed to accept the Respondent’s latest quotation (which according to the Respondent involves a further payment by the Complainant of AUD 1,100 to a charity and a refund of AUD 240)the Respondent submits that the Panel should dismiss the Complaint on the basis that it is vexatious, intended to harass the Respondent and was brought in bad faith and thus constitutes an abuse of these administrative proceedings. Alternatively, the Respondent requests that the Panel denies the Complaint for the same reasons.

6. Discussion and Findings

The Respondent submitted two further emails to the Center after the due date for Response. There appears to be no exceptional circumstances to support the admission of these emails to the record and in any event they add nothing material in addition to the Respondent’s earlier email by way of Response. Accordingly the Panel declines to admit these emails into the proceedings.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its QUESTIONMARK trade mark under Australian trade mark registration number 1604638. The disputed domain name wholly incorporates the Complainant’s trade mark and has no distinguishing element. As a result the Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Respondent’s sister company registered the disputed domain name according to an agreement with the Complainant to hold it on the Complainant’s behalf as its agent and upon the basis that the Complainant would reimburse it for registration, parking and redirection and that it would transfer the disputed domain name to the Complainant upon request. This registration was undertaken in the context of the Respondent acting first as a non-exclusive distributor for the Complainant’s products in Australia and subsequently under the terms of a formal exclusive distribution agreement. It is notable that the distribution agreement contained provisions stating that the Respondent had no rights to use the Complainant’s trade marks after termination, that all intellectual property rights remained the property of the Complainant and that no use of the trade marks could be made after termination without the Complainant’s consent. It is also notable that the Respondent has not denied that it is under an obligation to transfer the disputed domain name to the Complainant, but rather appears to have refused to do because it has not yet secured the Complainant’s agreement with its particular conditions for doing so.

The Respondent does not appear to deny the basis on which the disputed domain name was originally registered upon the Complainant’s behalf or that the QUESTIONMARK trade mark that is wholly incorporated in and is the sole distinguishing feature of the disputed domain name belongs to the Complainant.

In Oki Data, supra,, the panel set out four minimum factor requirements in helping to decide whether a respondent was possibly making a bona fide use of the disputed domain name, or not:

“- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fideuse when respondent suggested that it was the manufacturer of complainant’s products);

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) (‘a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark’).”

An analysis of the Oki Data factors indicates that the Respondent is not currently and has not for some time offered the Complainant’s products for sale under the disputed domain name. Further, the website to which the disputed domain name resolves does not disclose the basis on which the Respondent holds the disputed domain name but does indicate that the “website is closed for renovation and renewal”. There is, however, no suggestion that the Respondent has tried to corner the market in other similar domain names.

The fact that (a) the Respondent is not currently offering the Complainant’s goods for sale at the website to which the disputed domain name resolves; (b) that its sister company registered the disputed domain name on the Complainant’s behalf and in what amounts to a type of agent or trust arrangement in order to facilitate the registration while the Respondent acted as its Australian distributor; and (c) that the Respondent has not denied that this was the basis upon which it registered the disputed domain name but has not managed to re-transfer the disputed domain name to the Complainant after numerous requests and the Complainant’s payment of an invoice on the contracted basis, points to both non-compliance with the first Oki Data factor, contrary to the basis on which the disputed domain name was registered in the first place and to the terms of that arrangement. On this basis the Panel considers that the Respondent has not rebutted the prima facie case made out by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under this element of the Policy.

C. Registered or Subsequently Used in Bad Faith

The Policy requires that the Complainant demonstrate that the disputed domain name has either been registered or used in bad faith.

In this case the Respondent has acknowledged that it has an agreement (via an associated company) to transfer the disputed domain name but says that it has never refused to transfer the disputed domain name or threatened to refuse to transfer the disputed domain name. It has, however, refused to transfer the disputed domain name to the Complainant in spite of the latter’s many attempts to request transfer and the payment of a substantial invoice by the Complainant for the Respondent’s supposed ongoing renewal and redirection costs. It appears to the Panel that the Respondent has subsequently contrived excuses and reasons not to transfer the disputed domain name in terms of the agreement. It has done so for its own ends, whatever they may be and on repeated occasions. This is not legitimate or acceptable commercial behaviour and parties in these circumstances cannot just impose conditions upon conditions before choosing to comply with their admitted contractual obligations, i.e., it is not good faith use of the disputed domain name by the Respondent for the purposes of the Policy. In the Panel’s view, this sort of conduct amounts to a form of cybersquatting in bad faith and as a result the Panel finds that the Complaint also succeeds under the third element of the Policy.

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 disputed domain name <questionmark.com.au> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: December 15, 2015

¹ In light of the substantive and procedural similarities between the auDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited authorities decided under the UDRP where appropriate.