WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Persistent Systems, LLC v. AAV Pty Ltd
Case No. DAU2016-0052
1. The Parties
The Complainant is Persistent Systems, LLC of New York, New York, United States of America (“United States”), represented by Gerard Fox Law, United States.
The Respondent is AAV Pty Ltd of Melville, Western Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <waverelay.com.au> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2016. On December 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 January 6, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2017. On January 11, 2017, the Respondent sent an informal communication to the Center requesting an extension of the due date for Response. The due date for Response was extended to January 30, 2017. The Respondent did not submit any response. On January 31, 2017, the Center informed the Parties that it would proceed with the appointment of the Administrative Panel.
The Center appointed Andrew F. Christie as the sole panelist in this matter on February 6, 2017. 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 that manufactures and sells radio communications products that create sophisticated wireless networking systems. Most, if not all, of the Complainant’s products bear, and are advertised with, the Complainant’s WAVE RELAY trademark, and are sold under the trademark to clients in the United States and several countries worldwide.
The Complainant has been actively using the WAVE RELAY trademark to market its radio communications products since 2006, and is the owner of United States trademark registrations for WAVE RELAY (both in words and in design), dating from December 18, 2012. It has promoted its products under the WAVE RELAY trademark in brochures, through its website and at trade shows.
The Respondent, AAV Pty Ltd (“AAV”), is a company registered to do business in Australia, whose principal is Anthony (Tony) William Routledge. Mr. Routledge is also the principal of AVI Pty Ltd (“AVI”), another company registered to do business in Australia. AVI purportedly provides networked radio communications products and services, including hardware and software development, and communications and physical security.
The Complaint did not identify a date on which the Respondent first registered the disputed domain name. The Complainant provided screenshots of a website resolving from the disputed domain name showing that it was used to promote the products of AVI, in competition with the Complainant’s products, but did not identify the date on which those screenshots were taken. The Panel notes that, at the date of the filing of the Complaint, the disputed domain resolved to a website that appears to be very similar in content to the website captured in the Complainant’s screenshots.
In May, 2016, the Complainant became aware that AVI had applied in Australia to register “WAVERELAY” as a trademark. On May 20, 2016, the Complainant sent a letter to Mr. Routledge at AVI, informing him of the Complainant’s rights in the WAVE RELAY trademark and demanding that he not proceed with the application. AVI abandoned the application and its status is “Lapsed”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s registered WAVE RELAY trademark because it uses the exact same words, lacking only the space between the two words and adding the Second-Level Domain (“2LD”) identifier “.com” and the country code Top-Level Domain (“ccTLD”) identifier “.au”.
The Complainant contends that the Respondent has no rights or legitimate interests regarding the disputed domain name because: (i) the Respondent’s principal, Mr. Routledge, is also the principal of AVI, a former customer of the Complainant, and knew of the Complainant’s rights to the WAVE RELAY trademark; (ii) the Respondent is using the trademark for commercial gain, diverting customers to a website that mirrors AVI’s website; (iii) neither the Respondent nor its related company, AVI, sells any goods or services using the trademark WAVE RELAY; (iv) neither the Respondent nor AVI is known by a name consisting in whole or in part of the words “wave relay”, nor are they either an agent or licensee of the Complainant; (v) the Respondent has not used the disputed domain name for a bona fide or non-commercial offering of goods or services; (vi) the Respondent cannot show a legitimate non-commercial or fair use of the disputed domain name; (vii) the Respondent uses the disputed domain name to divert customers to a website that mirrors the website for Mr. Routledge’s other company, AVI, which is a direct competitor of the Complainant; and (viii) the Complainant has been actively using the WAVE RELAY trademark to market its radio communications products since 2006, and has become commonly known as the identified source for the products carrying the WAVE RELAY trademark.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) the Respondent’s principal, Mr. Routledge, controls another company, AVI, that once purchased a substantial amount of equipment from the Complainant, and has thus been aware for years of the Complainant, its business, and its use throughout the world of the WAVE RELAY trademark in relation to its products; (ii) in May, 2016, when the Complainant learned that AVI had applied in Australia to register “WAVERELAY” as its trademark (which is identical to the Complainant’s trademark except for the space between the words), it wrote to Mr. Routledge demanding that he not proceed with the application, resulting in the abandonment of the application and the status of it now being “Lapsed”; (iii) Mr. Routledge, through AVI, refused for months to pay over “$107,000” (currency not specified) for equipment AVI purchased from the Complainant, and has registered the disputed domain name, and filed the bad-faith trademark application, in retaliation for the Complainant’s debt collection efforts; (iv) the Respondent is using the disputed domain name to divert Internet users to a website that mirrors the website of AVI, which is controlled by the Respondent’s principal, Mr. Routledge; (v) AVI’s website, and the mirror website resolving from the disputed domain name, are commercial in nature, both offering for sale AVI’s products and services in competition with the Complainant; (vi) the Respondent uses the disputed domain name intentionally to attract, for commercial gain, Internet users who are potential customers of the Complainant to a website that mirrors AVI’s website by creating a likelihood of confusion with the Complainant’s trademark; and (vi) there is no plausible explanation for the registration of the disputed domain name other than to trade on the Complainant’s goodwill and to deprive the Complainant of a domain name corresponding to its trademark.
The Respondent did not submit any substantive Response to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the ccTLD identifier “.au” and the 2LD identifier “.com” are ignored (as is appropriate in this case), the disputed domain name consists solely of the Complainant’s registered United States WAVE RELAY trademark, without the space (which a domain name cannot have) between the two words. As paragraph 1.1A of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDRP Overview 1.0”) explains, the Policy does not restrict a complainant’s trademark rights to a trademark registered with the Australian trademark authority. Thus, a trademark registered outside of Australia satisfies the requirements of the Policy. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its WAVE RELAY trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website which mirrored a website owned by the principal of the Respondent, and which offers for sale goods and services in competition with the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the Complainant’s use of the WAVE RELAY trademark and its prior dealings with the Respondent’s principal, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name.
It is clear from the evidence in the case record that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that website.
For all of the above reasons, the Panel finds that the disputed domain name is being used in bad faith.
D. Complainant’s Eligibility
The Complainant has requested transfer of the disputed domain name to it. The evidence on the record provided by the Complainant does not make clear to the Panel whether the Complainant meets the eligibility requirements for registration of the disputed domain name. However, the Panel is of the view that its responsibility does not extend to determining, definitively, whether or not the Party to whom it orders transfer of the disputed domain name in fact satisfies the eligibility requirements for such a transfer to take place. Rather, that responsibility rests elsewhere. Thus, while the Panel will order transfer of the disputed domain name to the Complainant as requested, it recognizes that such an order may be subject to the responsible entity requiring the Complainant either to demonstrate that it satisfies the eligibility requirements or to nominate another person (being a person that does satisfy the eligibility requirements) to be the person to whom the disputed domain name should be transferred under this order.
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 <waverelay.com.au> be transferred to the Complainant.
Andrew F. Christie
Date: February 20, 2017