WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ascom Holding AG v. The Trustee for McTex Unit Trust, Andy Tschilar, Ascom Management Pty. Ltd.
Case No. DAU2016-0025
1. The Parties
The Complainant is Ascom Holding AG of Baar, Switzerland, represented by Troller Hitz Troller, Switzerland.
The Respondent is The Trustee for McTex Unit Trust, Andy Tschilar, Ascom Management Pty. Ltd. of Carlton, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <ascomgroup.com.au> is registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2016. On May 30, 2016, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On June 3, 2016, NetRegistryPty 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” 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 June 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2016. The Respondent submitted a non-substantive email to the Center on June 8, 2016. The Respondent did not, however, submit any formal response. Accordingly, the Center notified the Respondent’s default on June 28, 2016.
The Center appointed David Stone as the sole panelist in this matter on July 11, 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 an international IT solutions provider. The Complainant is the owner of numerous national and international ASCOM trademarks across the world, including in particular three Australian trademarks: Trademark No. 205763 ASCOM (class 16) of October 25, 1966, Trademark No. 531910 ASCOM (class 9) of April 2, 1990, and Trademark No. 1523348 ASCOM of March 1, 2012 (claiming Swiss priority of September 29, 2011).
The Complainant’s ASCOM trademarks in Australia are used for alarm systems, computer hardware and software, for medical apparatus and instruments, for repair and installation services, for a wide range of telecommunication including alarm systems, for design, development, monitoring, rental and analysis of computer hardware and software and its variations including alarm systems, and for medical services, telemedicine services and monitoring patients.
The Respondent registered the disputed domain name <ascomgroup.com.au> on February 20, 2012. The disputed domain name resolves to a website advertising the services of the “Ascom Group”, including inter alia alarm installation. The website also notes the Ascom Group’s “Swiss Background”.
5. Parties’ Contentions
The Complainant submits that the disputed domain name <ascomgroup.com.au> is identical or at least confusingly similar to the Complainant’s ASCOM trademarks. It incorporates the ASCOM trademark in its entirety, differing only in the addition of the word “group”. ASCOM is a distinctive term, with no apparent meaning in English or any other language. The addition of “group”, a generic and commonly used term, is not sufficient, the Complainant says, to distinguish the disputed domain name from its own trademark. Furthermore, the Complainant contends that the addition of “group” increases the risk that Internet users may be confused into believing that the disputed domain name is linked to the Complainant and its corporate group.
The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. It argues that the Respondent was not commonly known by the name “Ascom” or by the disputed domain name at the time it registered that domain name. The Complainant further submits that the Respondent’s mere act of registering the business name “Ascom Group” does not establish that it has rights or legitimate interests in the disputed domain name. The Complainant submits that there is no evidence that the Respondent had conducted business using the name “Ascom”, “Ascom Group” or a similar name at the time that it registered the disputed domain name, nor that it has since acquired any similar trademark rights.
Finally, the Complainant submits that the Respondent registered and used the disputed domain name in bad faith. The Complainant is a well-established company with an international reputation, including in Australia. It is implausible, the Complainant says, that the Respondent was unaware of the Complainant’s company name, activities and trademarks at the time that it registered the disputed domain name, given that the parties were once physically proximate, that they are active in the same field, that the word “Ascom” is a coined term, and that the Complainant’s <ascom.com.au> domain name pre-exists the disputed domain name. Consequently, the Complainant argues that the Respondent’s use of the disputed domain name deliberately seeks to profit from confusing similarity to the Complainant’s trademarks, by deceiving consumers into believing that it is affiliated with or sponsored, approved or endorsed by the Complainant.
The Respondent did not provide any substantive reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns multiple registered trademarks for ASCOM, including Australian trademarks. It has also noted that these trademarks pre-date the Respondent’s registration of the disputed domain name.
The disputed domain name <ascomgroup.com.au> varies from the Complainant’s ASCOM trademarks only by the addition of the word “group”. The Panel notes that the addition of “group” is not sufficient to make the disputed domain name distinct from the Complainant’s registered trademark, and risks confusing Internet users into believing that the disputed domain name is linked to the Complainant’s corporate group. ASCOM and the disputed domain name are confusingly similar.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name proprietor has rights or legitimate interests in a domain name, namely if it has a:
(i) prior bona fide use in connection with an offering of goods or services; or
(ii) common association with the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
The Respondent does appear to be using the disputed domain name in connection with an offering of services, but this offering does not appear to be bona fide, as these services are similar to those of the Complainant, and yet there is no clear disclaimer of association with the Complainant on the website. Indeed, the website’s reference to the Ascom Group’s “Swiss Background” likely serves to create a misimpression of association between the Respondent and the Complainant (a Swiss company).
The Complainant has established a presumptive case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not submitted a response to the Complaint (the June 8, 2016 email to the Center being non-substantive) and thus has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name.
There is no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter. Therefore, the Panel finds that the Respondent has no right or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Bad faith constitutes the intention to register or subsequently use a domain name in order to:
(i) sell, rent, or transfer the disputed domain name to the trademark owner (or a competitor thereof) for a profit;
(ii) prevent the trademark owner from registering its trademark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The Panel accepts the Complainant’s submissions that the Respondent and Complainant are competitors active in areas such as alarm systems and servicing, and that the Respondent is disrupting the Complainant’s business by using a domain name which is confusingly similar to the Complainant’s trademark.
The Panel also accepts that that the Respondent is exploiting the reputation of the Complainant’s trademark in order to divert Internet users, for commercial gain, to a website that is not related to the Complainant. On the basis of the evidence presented by the Complainant, the homepage to which the disputed domain name resolves does not accurately and clearly disclose the fact that there is no affiliation between the Respondent and the Complainant, despite the fact that it offers similar goods and services to those offered by the Complainant.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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, <ascomgroup.com.au> be transferred to the Complainant.
Date: July 22, 2016