WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sunbeam Corporation Limited and Sunbeam Products Inc. d/b/a Jarden Consumer Solutions v. Rabbit Tracks Pty Limited

Case No. DAU2016-0005

1. The Parties

The Complaint is brought jointly by Sunbeam Corporation Limited of Altona, Australia, hereinafter referred to as the First Complainant, and Sunbeam Products Inc. d/b/a Jarden Consumer Solutions of Boca Raton, Florida, United States of America (“United States”), hereinafter referred to as the Second Complainant, and both referred to together as “the Complainants”, represented by Katrina O’Leary, Australia.

The Respondent is Rabbit Tracks Pty Limited of Potts Point, Australia.

2. The Domain Name and Registrar

The disputed domain name <foodsaver.com.au> is registered with Drop.com.au Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2016, 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 February 10, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2016.

The Center appointed Keith Gymer as the sole panelist in this matter on March 9, 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 First Complainant in this administrative proceeding is Sunbeam Corporation Limited, a proprietary company incorporated and doing business in Australia.

The Second Complainant in this administrative proceeding is Sunbeam Products, Inc. doing business as Jarden Consumer Solutions, a company incorporated under the laws of the State of Delaware, United States of America (“US”).

They have a common legal interest in the rights on which this Complaint in relation to the disputed domain name <foodsaver.com.au> is based, and have a common grievance against the Respondent.

The First Complainant is the licensee, and the Second Complainant is the owner and the licensor, of a number of trademark registrations in Australia for the trademark FOODSAVER.

The First Complainant is a leading developer and marketer of small electric appliances for Australian and New Zealand households, including FOODSAVER vacuum packing machines and accessories for food preservation.

The Second Complainant is a wholly owned subsidiary of Jarden Corporation, a US-based company in the Fortune 500 list of the five hundred largest US industrial corporations. The Second Complainant is the owner of numerous registrations around the world, including in the US and Australia, for the trademark FOODSAVER in respect of vacuum packing machines and accessories. The earliest of the US trademark registrations for the FOODSAVER trademark was filed in 1986, and the earliest of the Australian trademark registrations for the FOODSAVER trademark was filed in 2000. Relevant Australian Registrations are:

AU 859204 FOODSAVER in Classes 7 & 21, Filed 1 December, 2000; Registered 23 September, 2002.

AU 895519 FoodSaver in Class 16, Filed 20 November, 2001; Registered 23 September, 2002.

AU 895520 FOODSAVER in Class 16, Filed 20 November, 2001; Registered 23 September, 2002.

The First Complainant has been granted a non-exclusive license to use the FOODSAVER trademark in Australia, New Zealand and South Pacific Islands in relation to home vacuum packaging machines and accessories. It has sold home vacuum packaging machines and accessories under the FOODSAVER trademark in Australia and New Zealand since at least 2004.

According to the AusRegistry Whols database, the Respondent in this administrative proceeding is Rabbit Tracks Pty Limited, which is a proprietary company, limited by shares, incorporated in Australia. According to auDA records, the creation date of the disputed domain name <foodsaver.com.au> was September 17, 2009.

5. Parties’ Contentions

A. Complainant

The domain name is identical to a name, trademark or service mark in which the Complainant has rights

The disputed domain name <foodsaver.com.au> consists solely of the Complainants’ FOODSAVER trademark, once the country code Top-Level Domain (“ccTLD”) identifier “.au” and the second-level extension “.com” are ignored. Thus, the disputed domain name is identical to a trademark in which the Complainants have rights.

The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent has no commercial or legal association with either of the Complainants or the products they sell under the FOODSAVER trademark, and neither Complainant has licensed the Respondent to use the FOODSAVER trademark.

The Respondent is using the disputed domain name to resolve to a generic landing page at “www.searchingmagnified.com”. This landing page is headed “foodsaver.com.au”, and contains what appears to be pay-per-click (“PPC”) links with various titles that use the FOODSAVER trademark – namely, “Foodsaver Machine”, “Foodsaver Vacuum Sealers”, “Foodsaver Accessories”", “Foodsaver Bags” and “Foodsaver Rolls”. These PPC links resolve to further generic pages that contain links to various third-party sites. Some of these third-party sites (e.g., “ask.com”, “whoisbest.com”) are search sites at which are displayed Iinks to other sites offering food vacuum-sealing products that compete against FOODSAVER products sold by the Complainants, while others of these third-party sites (e.g., “helpfulhint.com”, “uptodatecontent.net/Free_iPad”, “Facebook.com”) are unrelated to the Complainants’ FOODSAVER products. (Screenshots of the landing page to which the disputed domain name resolves, a representative selection of the pages to which the links on the landing page resolve, and a representative selection of the third-party sites to which the links on those pages resolve, taken on December 3, 2015, were provided with the Complaint.)

The Respondent’s use of the disputed domain name to resolve to a page containing PPC links, some of which are to sites providing information about products competing with the Complainants’ FOODSAVER products and some of which are unrelated to the Complainants’ FOODSAVER products, is neither a noncommercial or fair use of the disputed domain name, nor a bona fide use of the disputed domain name. According to section 2.6 of the auDRP Overview 1.0, “use of a domain name to resolve to parking or landing pages, or to generate revenue through pay-per-click (PPC) links advertising, is generally not considered a bona fide offering of goods or services under the auDRP”.

There is no evidence to suggest that the Respondent, as Rabbit Tracks Pty Limited, is commonly known by the disputed domain name.

For all the reasons given above, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The domain name was registered or is subsequently being used in bad faith

On December 4, 2015, the holding company for the First Complainant, wrote to the Respondent saying that the Respondent’s use of the disputed domain name is an infringement of the various intellectual property rights that subsist in the FOODSAVER trademark, and that its registration and use of the disputed domain name constitutes conduct of the type for which remedies are available under the Policy. No response to this communication was received.

According to a reverse Whols search, undertaken at Domain Tools on January 2, 2016, the Respondent owns more than 1,500 other domain names, all of which appear to be in the .au ccTLD space. The Complainants assert that it is therefore clear that the Respondent is a domain name speculator – that is, one who registers domain names for the purpose of generating revenue by using them to divert Internet traffic to websites containing PPC links and/or by on-selling them to third parties.

According to auDA records, the creation date of the disputed domain name <foodsaver.com.au> was September 17, 2009. The Second Complainant first obtained registration of its FOODSAVER trademark in the US on December 30, 1986, and in Australia on September 23, 2002 – nearly 25 years and 7 years, respectively, before the Respondent registered the disputed domain name.

The First Complainant has been distributing products in Australia under the FOODSAVER trademark since at least as early as 2004. For the eight years from July 1, 2007, to June 30, 2015, the First Complainant sold a total of 1,469,438 units under the FOODSAVER trademark. Nearly 100,000 have been sold in the current financial year.

Given that the Respondent is a company incorporated in Australia whose registered office and principal place of business is in Australia, it is implausible that the Respondent was unaware of the FOODSAVER trademark at the time the Respondent registered the disputed domain name.

The Respondent has used the disputed domain name to resolve to a landing page containing links with various titles that use the FOODSAVER trademark. Some of the sites to which those links resolve provide information about products competing against the FOODSAVER products sold by the Complainants, while others of those sites are unrelated to the Complainants’ FOODSAVER products.

These links appear to be PPC links. It is clear that the Respondent is using the disputed domain name to capitalize on the trademark value of the Second Complainant’s FOODSAVER trademark. This is an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation or endorsement of that website. Pursuant to paragraph 4(b)(iv) of the Policy, this is evidence of the registration and use of the disputed domain name in bad faith.

The landing page to which the disputed domain name resolves also contains a link titled “Enquire about this domain”. This link resolves to a page headed “Inquire about foodsaver.com.au”, which contains a form for contacting the owner of the disputed domain name via Rook Media AG. While a “disclaimer” on the form page contains the text “This form does not express any intention to sell this domain name”, it is clear that the purpose of the “Enquire about” link and the form page to which the link resolves is to solicit offers to purchase the disputed domain name. These circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Pursuant to paragraph 4(b)(i) of the Policy, this is further evidence of the registration and use of the disputed domain name in bad faith.

Remedy

The Complainants request that the disputed domain name <foodsaver.com.au> be transferred to the Second Complainant.

B. Respondent

The Respondent made no response whatever to the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy the Complainants are required to prove:

(i) the domain name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name (Note 2); and

(iii) the domain name has been registered or subsequently used in bad faith.

Note 1

For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:

a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

b) the complainant’s personal name.

Note 2

For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainants of the burden of proving their Case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The Complainants have demonstrated registered trademark rights in FOODSAVER, including by virtue of Australian trademark registrations 859204, 895519 and 895520.

It is well established for the purposes of the Policy that the domain suffix (“.com.au”) is to be discounted in consideration of the identity or similarity of the disputed domain name.

The Panel therefore finds that the disputed domain name <foodsaver.com.au> is effectively identical to the trademark, FOODSAVER, in which the Complainants have rights.

The Complainants have established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence to indicate that the Respondent registered the disputed domain name <foodsaver.com.au> innocently on the basis of any prior rights of its own, nor that it did so in ignorance of the Complainants’ rights and reputation in the mark, and neither has the Respondent offered any explanation which might support a claim to some alternative bona fide intended use for the disputed domain name.

The Panel therefore accepts the Complainants’ assertion and finds that, on the balance of probability, the Respondent has no genuine rights or legitimate interest in the disputed domain name.

The Complainants have established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

Taken overall, the evidence provided by the Complainants satisfies the Panel that the Respondent has sought to use the disputed domain name for its own profit and has obstructed the potential use of the domain name by the Complainants. In doing so, the Respondent has misappropriated the Complainants’ rights and goodwill in their mark. (The evidence supporting the Complainants’ assertions that the Respondent is a domain name speculator and that the invitation to “Enquire about this domain” on the landing page implies that the Respondent must be seeking excess payment for the disputed domain name is not strong, but the nature of the use of the site via the domain monetization services of Rook Media AG is sufficient support for the Complainants’ case.)

The Respondent’s conduct would therefore appear to fall squarely within the examples of “Registration or Subsequent Use in Bad Faith” given at paragraph 4(b) of the Policy.

The Panel finds that, on the evidence, the disputed domain name has been registered or subsequently used in bad faith.

The Complainants have established the requirement of paragraph 4(a)(iii) 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 <foodsaver.com.au> be transferred to the Second Complainant. However, should auDA determine that the Second Complainant would not be eligible to maintain the registration of <foodsaver.com.au>, the Panel orders that the disputed domain name <foodsaver.com.au> may be transferred to the First Complainant.

Keith Gymer
Sole Panelist
Date: March 21, 2016