WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Syntech Distributors Limited v. Tiger Bay Minerals Pty Limited
Case No. DAU2016-0016
1. The Parties
The Complainant is Syntech Distributors Limited of Auckland, New Zealand, represented by Simpson Western, New Zealand.
The Respondent is Tiger Bay Minerals Pty Limited of Queensland, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <syntechnz.com.au> is registered with Netregistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 24, 2016, the Center transmitted by email to Netregistry Pty Ltd a request for registrar verification in connection with the disputed domain name. On April 1 and 6, 2016, Netregistry 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"), 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 proceeding commenced on April 6, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2016. The Response was filed with the Center on April 26, 2016.
On April 28, 2016, the Complainant made a supplemental filing enclosing a copy of the .auDA Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the "Eligibility Rules").
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 6, 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 a company incorporated in New Zealand in 1989 and a provider of surface finishing and abrasive blasting products and services under the trade mark SYNTECH (the "Trade Mark"). The Complainant is the owner of Australian trade mark registration number 1399661 for the Trade Mark, registered since December 14, 2010. The Complainant is also the owner of the domain names <syntechnz.com> and <syntech.co.nz> comprising the Trade Mark.
The Respondent is a company incorporated in the State of Queensland in Australia.
C. The Disputed Domain Name
The disputed domain name was registered on September 7, 2015.
D. The Website at the Disputed Domain Name
The disputed domain name has not been used.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith.
The Respondent contends that the Complainant is ineligible to hold the disputed domain name, the disputed domain name is not identical or confusingly similar to the Trade Mark, the Respondent has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered or subsequently used in bad faith. The Respondent also requests the Panel to make a finding of Reverse Domain Name Hijacking ("RDNH") against the Complainant.
6. Discussion and Findings
6.1 Supplemental Filing
Paragraph 12 of the Rules provides that, in addition to the complaint and the response, the panel may request or permit, in its sole discretion, further statements or documents from either of the parties.
The Panel determines that it will, exceptionally, allow the supplemental filing for the following reasons:
(1) The question of the Complainant's eligibility to own the disputed domain name was unanticipated by the Complainant as relevant, the issue not being raised until receipt of the Response (see paragraph 4.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0);" and
(2) The Panel would have, in any event, referred to the Eligibility Rules in determining the question of eligibility.
The Respondent contends that, as the Complainant is not an Australian company, it is not eligible to own the disputed domain name.
Schedule A to the Eligibility Rules provides as follows:
"ELIGIBILITY AND ALLOCATION RULES FOR ALL OPEN 2LDS
First come, first served
1. Domain name licences are allocated on a 'first come, first served' basis. It is not possible to pre-register or otherwise reserve a domain name.
Registrants must be Australian
2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD…
Schedule A to the Eligibility Rules is however qualified by Schedule C of the Eligibility Rules, which provides as follows:
ELIGIBILITY AND ALLOCATION RULES FOR COM.AU
The com.au 2LD is for commercial purposes.
The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document.
1. To be eligible for a domain name in the com.au 2LD, registrants must be:
a) an Australian registered company; or
b) trading under a registered business name in any Australian State or Territory; or
c) an Australian partnership or sole trader; or
d) a foreign company licensed to trade in Australia; or
e) an owner of an Australian Registered Trade Mark; or
f) an applicant for an Australian Registered Trade Mark; or
g) an association incorporated in any Australian State or Territory; or
h) an Australian commercial statutory body.
2. Domain names in the com.au 2LD must be:
a) an exact match, abbreviation or acronym of the registrant's name or trade mark; or
b) otherwise closely and substantially connected to the registrant, in accordance with the categories of "close and substantial connection" set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs…"
The Panel finds that the Complainant appears to be eligible to own the disputed domain name under paragraphs 1(e) and 2(a) of Schedule C to the Eligibility Rules subject to the authority of auDA to determine otherwise. Accordingly, the Respondent's challenge on the grounds of ineligibility is rejected.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name is identical to the Trade Mark. Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by many years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has exhibited to the Response a copy of the Certificate of Incorporation of Syntech Limited, a company incorporated in New Zealand on March 4, 2015 as well as a copy of WhoIs search results for the domain name <syntech.nz> apparently registered by Syntech Limited on March 30, 2015. The Respondent asserts (it would appear – for the reasons set out in section 6.2 above – erroneously) that Syntech Limited cannot register a ".com.au" domain name, and for this reason Syntech Limited requested the Respondent to register and host the disputed domain name with Syntech Limited's approval.
The Respondent has also exhibited to the Response a copy of a one page letter dated April 26, 2016 (the same date as the Response) (the "Letter") which states as follows:
"To whom it may concern
We confirm that Syntech Ltd is the owner of www.syntech.nz
We also confirm that we have reached an agreement with Tiger Bay Minerals Pty Ltd that they can distribute any related software that is developed by Syntech Ltd in Australia and with our permission to do so with syntech.com.au"
The Respondent also asserts that the disputed domain name was registered or acquired primarily for the purpose of selling the products of Syntech Limited, but no evidence regarding the actual or intended products of Syntech Limited has been exhibited to the Response.
The Panel does not find the above evidence and submissions persuasive. It is noteworthy that the date of the Letter is the same date as the Response. Aside from the Letter, there is no other evidence, other than bare assertion, to demonstrate that either Syntech Limited or the Respondent, Tiger Bay Minerals Pty Ltd, currently possess rights or legitimate interests in the disputed domain name. In this regard, assertions of intended future plans for the disputed domain name (and unsupported by any documentary evidence) are not sufficient. The Panel also notes that the reference to distribution of related software in the Letter is inconsistent with (and makes no mention of) the stated primary purpose of the Respondent of securing and developing mineral deposits – see section C below.
The Respondent has failed to show that it has acquired any genuine trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. The disputed domain name has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish genuine rights or legitimate interests in the disputed domain name.
For the reason given in section C below, the Panel finds that no other evidence is available to establish rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The word "syntech" does not have any ordinary meaning in the English language. The Trade Mark has no other relevant meaning other than as a reference to the Complainant and its goods and services. The Complainant's reputation and goodwill in the Trade Mark relate to a specialised market. Furthermore, the Complainant has registered and used several domain names comprising the Trade Mark.
The Complainant has submitted evidence to demonstrate that the sole director and shareholder of the Respondent is also the director of a New Zealand company:
(1) that is a competitor of the Complainant in the surface finishing and abrasive blasting industry; and
(2) which previously registered the <syntech.co.nz> domain name.
The Complainant has exhibited to the Complainant a copy of the decision under the .nz Dispute Resolution Service whereby the <syntech.co.nz> domain name was transferred to the Complainant.
The above evidence submitted by the Complainant was not challenged by the Respondent in the Response – the Respondent simply asserting (in its submissions filed in response to the first element under paragraph 4(a) of the Policy) that the director and shareholder of the said New Zealand company is a director of a number of companies in New Zealand and Australia, and that the Respondent is conducting unrelated business "to secure and develop minerals deposits in conjunction with developing related software".
There can be no question therefore that the Respondent was aware of the Complainant and of its prior rights in the Trade Mark prior to the Respondent's registration of the disputed domain name. The above circumstances provide incontrovertible evidence of bad faith registration on the part of the Respondent.
The Panel finds that, in all the circumstances, the Respondent's passive use of the disputed domain name, together with the factors outlined above, are sufficient to amount to bad faith registration for the purposes of the third limb under paragraph 4(a) of the Policy.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered in bad faith. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) of the Policy.
The Panel has found in favour of the Complainant and ordered transfer of the disputed domain name. There is no basis whatsoever for a finding of RDNH against the Complainant.
For 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 <syntechnz.com.au> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 18, 2016