WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carman's Fine Foods Pty Ltd. v. Ross Wayne Carman, Carmans Consulting
Case No. DAU2015-0041
1. The Parties
The Complainant is Carman's Fine Foods Pty Ltd. of Cheltenham, Victoria, Australia represented by Ampersand Legal, Australia.
The Respondent is Ross Wayne Carman, Carmans Consulting of Castle Hill, New South Wales, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <carmans.com.au> (the "Disputed Domain Name") is registered with Melbourne IT Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2015. On December 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 15, 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 Complainant filed an amended Complaint on December 14, 2015. The Complainant filed a further amended Complaint on December 15, 2015. The Center received pre-commencement communications from the Respondent on December 15, 2015, and December 16, 2015.
The Center verified that the Complaint together with the amended Complaints 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 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2016. The Response due date was extended to January 13, 2016. The Response was filed with the Center on January 12, 2016. The Complainant submitted an unsolicited supplemental filing on January 21, 2016.
The Center appointed John Swinson as the sole panelist in this matter on January 21, 2016. 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 Carman's Fine Foods Pty Ltd, an Australian company which produces muesli and other cereals, as well as snack foods such as muesli bars and nut bars.
The Complainant's director, Carolyn Creswell, founded the company in 1992, and the Complainant claims unregistered trade mark rights in the term "CARMAN'S" (the "Trade Mark") since that time. In addition, the Complainant claims rights in Australian registered trade mark number 1235727 for CARMAN'S, registered on April 17, 2008. Based on a search of the Australian trade mark register, the current registered owner of that trade mark is Lighthouse Asset Management Pty Ltd as trustee for the Lighthouse Trust.
The Respondent is Ross Wayne Carman. The Respondent states that he has owned and operated a number of businesses as a sole trader which have incorporated the name "Carmans" at various times over the past 28 years.
The Respondent registered the Disputed Domain Name on May 21, 1998. The website at the Disputed Domain Name is currently a holding page which contains a logo for a business named "Carmans", and which lists a number of financial and business consulting services, presumably which the Respondent intends to offer or promote via that website.
5. Parties' Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant is the owner and operator of the CARMANS brand, and is the owner of eight Australian registered trade marks which incorporate the word CARMANS. The Trade Mark is used exclusively by the Complainant in connection with this brand.
The Complainant and its predecessors in title have operated and promoted the brand continuously since 1992, and the Complainant's products bearing the Trade Mark have been sold in major supermarkets in Australia since 1997. The Complainant's products are now sold in 28 countries worldwide. The Complainant is the market leading brand in relation to muesli sales (based on 2015 survey and research data). The Complainant has invested over AUD 8.5 million in marketing and promotion of the Trade Mark since 2005. The Complainant has significant common law rights in the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark apart from the ".com.au" suffix.
Rights or Legitimate Interests
The Respondent is not trading using the name CARMENS. As such, the Respondent does not meet .au Domain Administration Ltd.'s ("auDA's") eligibility requirements to be able to hold a ".com.au" domain name. The Respondent operated a business under the name "Carmans Chartered Accountants" and "Carmans" until early 2012. This business was acquired by another accountancy business, which likely also acquired all associated intellectual property rights and goodwill. There has been no active website associated with the Disputed Domain Name since at least 2011, and the Disputed Domain Name redirected to the buyer's website from at least 2013. Further, the Respondent's former business was commonly referred to as "Carmans Chartered Accountants". As the Respondent has sold this business, he no longer has rights to use this business name.
The Respondent's surname is distinct from his former business name and the Disputed Domain Name in that it is "carman" (singular) rather than "carmans", signifying either a plural or possessive. This is a significant differentiation between the Disputed Domain Name and the Respondent's surname, which is what he is likely to have been commonly known as.
Finally, there is no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name.
Registered or Subsequently Used in Bad Faith
The Respondent contacted the Complainant in November 2014 advising that he no longer traded using the name "Carmans" and that he was seeking to sell the Disputed Domain Name to the Complainant. There was further correspondence in September 2015, in which the Respondent sought AUD 160,000 for the sale of the Disputed Domain Name.
The Whois record in relation to the Disputed Domain Name indicates that the Respondent re-registered the Disputed Domain Name on August 26, 2014. The Complainant's rights in the Trade Mark were well established by 2014, and the Respondent almost certainly would have known of those rights. In contrast, there has been no brand awareness in relation to the Respondent's financial services business since 2012.
The Respondent's lack of use of the Disputed Domain Name since 2012, lack of rights and legitimate interests in the name Carmans and the high price offered in relation to the sale of the Disputed Domain Name indicates that the Respondent is using the Disputed Domain Name in bad faith.
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Complainant is not the owner of the Trade Mark. The Complainant is the operator of Carman's Fine Foods and the <carmanskitchen.com> domain name. The Respondent is the owner of CARMANS, various CARMANS entities and businesses, and the CARMANS brand. The Respondent's name has been CARMANS since its inception in 1988.
The Complainant is not the owner Australian trade mark registration 1235727 for the Trade Mark, and has provided no evidence of its right to use the registered Trade Mark.
The Disputed Domain Name is identical to the registered business name "Carmans", which continues to trade. That registered business name, which was registered on September 19, 1988 and the Disputed Domain Name, which was registered on May 21, 1998, are owned by the Respondent. The Disputed Domain Name was registered at least 6 years before the Complainant was incorporated on June 24, 2004.
Rights or Legitimate Interests
The Respondent lists the following as evidence of his rights to and legitimate interests in the Disputed Domain Name:
- The Respondent registered the business name "Carmans" on September 19, 1988, and commenced operating an accountancy practice, as a sole trader, trading as Carmans shortly after.
- The Respondent registered the Disputed Domain Name on May 21, 1998, and has owned the Disputed Domain Name consistently since that time.
- The Respondent established Carmans Financial Services Pty Ltd in April 1999. This entity also used the Disputed Domain Name.
- The Respondent registered the business name "Carmans Consulting" on March 27, 2012, and commenced trading as a sole trader shortly after.
- The Respondent established a number of other legal entities which included the name "Carmans" between 2002 and 2014.
- The Respondent has entered into a number of services and other agreements in his capacity as a sole trader trading as Carmans during the course of 2015.
The Respondent sold his accountancy business on March 1, 2012. Under the sale agreement, the Respondent was restrained from using the "Carmans" business name and the Disputed Domain Name for a period of two years. The purchaser maintained the business name and Disputed Domain Name during the restraint period, and returned control of them to the Respondent when that period had expired. The Respondent registered the business name "Carmans Consulting" to use during the restraint period. The Respondent currently operates some businesses as "Carmans Consulting" and others as "Carmans". The Respondent set up a corporate email service at the Disputed Domain Name on September 13, 2014.
The Respondent provided an email from Melbourne IT which confirmed that he has owned the Disputed Domain Name since 1998, and at no time has the Disputed Domain Name changed owners.
The Respondent has invested a significant amount of time and money in his business over the past 28 years. The Respondent has serviced thousands of clients, and developed substantial brand recognition in that time.
Registered or Subsequently Used in Bad Faith
The amount the Respondent sought when he contacted the Complainant in 2014 in relation to selling the Disputed Domain Name reflected an amount the Respondent required in order to fund a new business venture. When the Complainant contacted the Respondent in September and November 2015, the Respondent no longer wished to sell the Disputed Domain Name, and asked for an amount which he knew the Complainant would not accept. The Disputed Domain Name was not registered for the primary purpose of selling to the Complainant.
The Respondent registered the Disputed Domain Name for the purpose of operating and growing his businesses. The Respondent and the Complainant are not competitors. The Respondent did not register the Disputed Domain Name with the intention to disrupt the Complainant's business activities. The Respondent did not register the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant. There has never been any customer confusion in relation to the Complainant's and Respondent's businesses.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is 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 Name; and
(iii) the Disputed Domain Name has been registered or have subsequently been used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural issues
Complainant's supplemental filing
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings "with due expedition" and gives the panel the power to "determine the admissibility, relevance, materiality and weight of the evidence". Generally, panels will only accept supplemental filings in "exceptional" circumstances.
The Complainant submitted an unsolicited supplemental filing in these proceedings. This filing provides further information in relation to the Complainant's rights to the registered Trade Mark, and offers rebuttal arguments in relation to the Response. It also makes an incorrect statement regarding the Respondent's failure to submit a sworn statement to support his submissions. Because the Response includes a certification (see paragraph 5(b)(viii) of the Rules and paragraph 12 of the Supplemental Rules), there is generally no need for additional sworn testimony.
The Panel considers that these supplemental submissions do not contain sufficient new or previously unavailable information which would incline the Panel to accept these submissions as part of the record in this proceeding. The Complainant clearly had access to the information in relation to its rights in the registered Trade Mark at the time it filed the Complaint. This is highly relevant information which should have been included in the original Complaint if the Complainant intended to rely on those rights.
Accordingly, the Panel declines to accept the supplemental filing as part of the record in this proceeding.
In any event, even if the Panel accepted this filing, it would not change the outcome of this case.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The first limb that the Complainant must establish is that it has rights in the Trade Mark (or in a relevant business or personal name). There are a number of ways in which the Complainant can do this. One is by providing evidence of a registered trade mark which the Complainant owns or has a right to use.
The Complainant claims that it owns registered rights in the Trade Mark, when in fact it does not. An entity named Lighthouse Asset Management Pty Ltd as trustee for the Lighthouse Trust owns the registered trade mark to which the Complainant refers. There is no evidence in the Complaint as to the relationship, if any, between the Complainant and the Lighthouse Trust. As such, the Complainant cannot rely on that registration to ground its rights in the Trade Mark. (The Panel notes that the Complainant further addressed its rights in relation to the registered Trade Mark in a supplemental filing, which, for the reasons stated above, the Panel has declined to accept.)
However, as the panel noted in Marshmallow Skins, Inc. v. Piipiinoo Australia Pty Limited, WIPO Case No. DAU2013-0015, "[t]he Policy as written does not restrict the Complainants' rights to a trade mark registered with an Australian government authority."
The Complainant also claims common law rights in the Trade Mark. In order to successfully assert common law or unregistered trade mark rights the Complainant must show that CARMEN'S has become a distinctive identifier associated with the Complainant or its goods or services (i.e., that this terms has acquired a secondary meaning) (see e.g. Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean, WIPO Case No. D2013-1883). The Panel considers that the Complainant has a sufficient reputation to demonstrate common law or unregistered rights in "CARMAN'S", and the Disputed Domain Name is confusingly similar to this.
Accordingly, the Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Respondent has rights or legitimate interests in the Disputed Domain Name.
The Complainant submits that any rights the Respondent may previously have had in the Disputed Domain Name ceased when the Respondent sold his accountancy business in 2012. The Complainant also submits that the Respondent's surname is distinct from the Disputed Domain Name as the Respondent's surname is "Carman", and not "Carmans" (plural). The Panel considers the Complainant has made out a prima facie case.
However, the Respondent has provided more than sufficient evidence of his business dealings in which he has used the name "Carmans" as a business or trading name to show that he is commonly known by the Disputed Domain Name. The fact that the Respondent at times combined that name with a descriptive term such as "Financial Services" or "Consulting" does not mean the Respondent was not commonly known by the name "Carmans". The Respondent's rights in this name are extensive, and date as far back as 1988, which is before the Complainant or its predecessors were operating.
The Respondent has provided sufficient reason why he ceased to use the Disputed Domain Name in 2012 for a two year period. This does not demonstrate that the Respondent ceased to have rights or legitimate interests in the Disputed Domain Name at that time. In any event, in 2012, the Respondent could demonstrate rights by virtue of his ownership of the business name "Carmans Consulting".
Further, the Respondent has rights or legitimate interests in the Disputed Domain Name as the Disputed Domain Name reflects his personal name. In Erk Pazarlama ve Giyim San. Ve Tic. A. Ş. v. Jake Messinger, WIPO Case No. D2015-0807, this Panel found that the respondent had rights or legitimate interests in the domain name <colins.com>, as the domain name reflected the given name of the respondent's son, Colin. The Panel finds that the addition of an "s" on the end of the Respondent's surname does not prevent a finding that the Respondent is commonly known by the Disputed Domain Name.
There is no requirement in the Policy that a Respondent must be using a domain name at the time a complaint is filed to be able to demonstrate rights or legitimate interests in the domain name.
The Panel considers the Respondent's extensive business dealings and the use of his personal name are sufficient to demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name, both when the Disputed Domain Name was first registered in 1998 and when the Complaint was filed in 2015. The Respondent has rebutted the prima facie case made out by the Complainant.
Therefore, the Complainant does not succeed in establishing the second element of the Policy.
D. Registered or Subsequently Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element of the Policy. However, the Panel will briefly address the key aspects of this element for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
The Complainant does not seem to argue that the Respondent registered the Disputed Domain Name in bad faith. Indeed, the Panel considers it is clear that the Respondent registered the Disputed Domain Name in 1998 in good faith, in the course of operating his accountancy practice.
However, the Complainant argues that the Respondent's bad faith is evidenced by:
- the fact that he attempted to sell the Disputed Domain Name for an amount in excess of his out of pocket expenses in relation to the Disputed Domain Name;
- the fact that he "re-registered" the Disputed Domain Name in 2014, when he would have been aware of the Complainant and the Trade Mark; and
- his lack of use of the Disputed Domain Name since 2012 and lack of rights and legitimate interests in the name "Carmans".
In relation to the Complainant's first argument, the Panel has reviewed the correspondence associated with these offers to sell the Disputed Domain Name and does not consider them to be indicative of bad faith. The Panel accepts the Respondent's explanations for the amounts he proposed. When the Complainant declined his offers, he did not harass the Complainant or propose counter-offers. In view of the Respondent's long history of using the Disputed Domain Name, the Panel does not consider these offers to be evidence that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of his out of pocket costs directly associated with the Disputed Domain Name (as required for paragraph 4(b)(i) of the Policy).
The Complainant's submission that the Respondent "re-registered" the Disputed Domain Name in 2014 can be easily dismissed. The Complainant refers to the "last modified" date on the Whois record, which does not necessarily refer to the re-registration of a domain name. Even if the Respondent did re-register the Disputed Domain Name at that time, he clearly did so with the intention to continue to use it in the course of his business operations, which he has done.
It is not necessarily bad faith for a party to register a domain name that is similar to their personal name or business name, even if that party is aware that someone else has a similar trade mark, provided that the party does not intend to trade off the reputation of the trade mark.
Similarly, the Panel does not consider the periods of non-use in relation to the Disputed Domain Name to be evidence of bad faith. The Respondent was still carrying on a business which incorporated the name "Carmans" during that time, and the Respondent has provided evidence that he has been using the Disputed Domain Name for email purposes since September 2014.
The Complainant does not succeed in establishing the third element of the Policy.
E. Reverse Domain Name Hijacking
In coming to a decision, the Panel must have regard to paragraph 15(e) of the Rules, and the following passage in particular:
"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 and abuse of the Administrative Proceeding."
Reverse domain name hijacking ("RDNH") is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
The Respondent has not sought a finding of RDNH in this case. However, it is open to the Panel to make such a finding without a request from the Respondent. In fact, the Panel in Dumankaya Yapi Malzemeleri SAN. VE TiC. A.S v. Domain Administrator, Name Administration Inc. (BVI), WIPO Case No. D2015-1757 stated that "[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it".
The Panel considers the Complainant launched the proceedings following several failed attempts to purchase the Disputed Domain Name at what it considered to be a reasonable price. The Complainant ought to have known its Complaint was doomed to fail.
The Panel considers that the Complainant neglected to address the fact that the registered trade marks it claimed to own are in fact not registered in the Complainant's name but are governed by a license. This fact was only brought to light by the Respondent, and the Complainant addressed this only through a supplemental filing. Further, the Complainant misrepresents the statements, and the effect of the statements, made by the Respondent in email correspondence in relation to the sale of the Disputed Domain Name.
There is nothing in the evidence to suggest that the Respondent has been targeting the Complainant or the Trade Mark, or that would otherwise support a finding of bad faith. If nothing else, the Complainant is greatly overreaching with respect to its perceived rights in this name.
The Panel finds that the Complainant is guilty of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Date: February 2, 2016