WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Peacock Media Group Pty Ltd v. Ben Joseph McInerney
Case No. DAU2017-0006
1. The Parties
The Complainant is Peacock Media Group Pty Ltd of Brighton, Australia, represented by HWL Ebsworth Lawyers, Australia.
The Respondent is Ben Joseph McInerney of Sydney, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <gosolarquotes.com.au> the (“Domain Name”) is registered with TPP Domains Pty Ltd. dba TPP Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2017. On March 1, 2017, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the Domain Name. On March 8, 2017, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Respondent also sent several email communications to the Center on April 3, 2017 and April 4, 2017.
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 March 13, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2017. The Respondent did not submit any response prior to the due date. Accordingly, the Center notified the Respondent’s default on April 3, 2017. The Respondent, following a series of further communications with the Center, filed a Response on April 4, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 18, 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 an Australian company that operates a business under the name “Solar Quotes”. Consumers who are interested in solar electricity and hot water systems visit the Complainant’s website at “www.solarquotes.com.au” (“Complainant’s Website”) and obtain quotes from local suppliers. The Complainant was established in 2009, shortly after the business (at that stage operated by the Complainant’s director J. F. Peacock) commenced. As of 2017, 290,000 members of the public had registered their details with the Complainant to receive quotes from solar suppliers.
The Complainant holds Australian trade mark registrations for the word mark SOLARQUOTES.COM.AU (the “SOLAR QUOTES Mark”) including trade mark number 1338093, with a priority date on December 22, 2009 for services in class 35 being “Arranging business introductions; advertising being the provision of product information to customers; all of the foregoing in relation to solar energy technology”. The Complainant has since November 30, 2015, registered the word mark SOLARQUOTES.
The Domain Name <gosolarquotes.com.au> was created on November 2, 2016. The Domain Name currently points to a website at “www.gosolarquotes.com.au” (the “Respondent’s Website”) which provides customers who enter their details with a number of quotes for solar systems. The Respondent asserts (and the Panel has confirmed by a search of the Australian Securities and Investments Commission website) 1 that the Respondent operates a business under the name “Go Quote Group”, with the business name having been registered on November 21, 2014. The Respondent operates similar websites for tree removal quotes and landscaping quotes under the domain names <gotreequotes.com.au> and <golandscapingquotes.com.au>. The Respondent has applied to register “GO SOLAR QUOTES” as a trade mark, with the application having been filed on January 23, 2017.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SOLAR QUOTES Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant is the owner of the SOLAR QUOTES Mark and a separate mark for SOLARQUOTES. The Domain Name <gosolarquotes.com.au> contains the entirety of the SOLAR QUOTES Mark with the addition of the word “go” which does not distinguish the Domain Name from the SOLAR QUOTES Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not licensed or authorized by the Complainant to register the Domain Name. The Respondent is not commonly known by the Domain Name. To the extent that the Respondent has used the Domain Name, such use appears to constitute infringement of the Complainant’s registered trade marks and therefore cannot be bona fide. The Respondent is not using the term “Go Solar Quotes” in a descriptive capacity rather it is being used as a trade mark.
The Respondent must have been aware of the Complainant at the time it registered the Domain Name, indeed the Respondent has, in communications with the Complainant, referred to the Complainant’s market dominance. The evidence therefore suggests that the Respondent registered the Domain Name to exploit the value of the Complainant’s trade marks and a lack of good faith must be inferred. Furthermore the fact that a respondent has registered a business name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name or the company name if that respondent has not traded in good faith, which is the case here. In particular the Respondent only registered a corresponding business name after being made aware of the dispute with the Complainant.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name after the Complainant registered the SOLAR QUOTES Mark and after it had become well known in the industry. Furthermore the Respondent has been put on notice of the Complainant’s rights in its name, and its continued use of the Domain Name is use in bad faith. The fact that the Respondent, in an effort to boost its business, has also been sending misleading emails to suppliers is further evidence of bad faith. The Respondent must have both been aware of the Complainant at the time of registration and has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or a service on the Respondent’s Website. Furthermore the Respondent has also registered and used the Domain Name to disrupt the business of a competitor, being the Complainant.
B. Respondent
The Respondent makes the following contentions:
(i) The Respondent has worked in the job lead industry since 2014 with his business registered as “Go Quote Group”. He has operated a number of websites that consumers can obtain quotes from including websites under the domain names <gotreequotes.com.au> and <golandscapingquotes.com.au>. The Respondent has also registered “Go Solar Quotes Australia” as a business name and has sought to register GO SOLAR QUOTES as a trade mark, lodging the application on January 23, 2017.
(ii) The “Go Solar Quotes” business is a natural progression from the other businesses operated by the Respondent providing quotes to customers.
(iii) The Respondent is using the Domain Name for a website that provides solar quotes. The Complainant is trying to monopolise the entire solar quote industry by its name. There are numerous businesses in the solar quoting industry that use the descriptive term “solar quotes” in their names including “Ezy Solar Quotes”, “Solar Quotes Easy”, “Your Solar Quotes”, “Australlian Solar Quotes Easy”, “Solar Quote Company” and “Get Solar Quotes”.
(iv) The Respondent is not trying to pass itself off as the Complainant. The websites operated by each of the parties are starkly different to each other.
6. Discussion and Findings
A. Admissibility of the Response
The deadline to file a Response in the present proceeding was April 2, 2017. The Response in this matter was filed by email on April 4, 2017. It is apparent, from the communications between the Respondent and the Center, that the Respondent was initially under the misapprehension that he had to pay a fee of AUD 2,250 in order to file a Response. Upon being informed that such a fee was only applicable if the Respondent sought to have the matter decided by a three-member panel and that there was no fee if the Respondent sought to file a Response without seeking a three-member panel, the Respondent was able to file a response within 24 hours.
In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the Complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. However, the Panel refers to AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-08302 in which, although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules of the Uniform Domain Name Dispute Resolution Policy (“the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”) on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.” Paragraph 10(b) of the Rules is identical to the paragraph 10(b) of the Rules of the Uniform Domain Name Dispute Resolution Policy.
The Panel considers that the fact that the Response was merely 2 days late, as a result of a misunderstanding by the self-represented Respondent of the fees charged by the Center, has not prejudiced the Complainant nor has it delayed the Decision in this proceeding. The Panel therefore has admitted and considered the evidence and submissions in the Response.
B. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the SOLAR QUOTES Mark, having registrations for the SOLAR QUOTES Mark as a trade mark in Australia. The Domain Name <gosolarquotes.com.au> consists of the SOLAR QUOTES Mark and the prefix “go”. The addition of the prefix “go” does not distinguish the Domain Name from the SOLAR QUOTES Mark in any significant way.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s SOLAR QUOTES Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.” (Policy, paragraph 4(c))”
The Panel considers that the evidence before the Panel establishes that the Respondent has since 2014 run a series of job quote businesses through various specialist websites, usually involving the following formulation “go-[‘one word summary of job’]-quotes.com.au”. In November 2016, it registered the Domain Name and put up a website in strikingly similar form to the other websites operated by the Respondent; i.e. it used an existing template and adapted it to the solar quotes market. The Respondent’s Website provides quotes for various solar services and absent any information to the contrary, the Panel accepts that the Respondent’s business is legitimate, in that it does provide the services that it purports to offer. The Respondent has registered the business name “Go Solar Quotes Australia”, and has sought to register the trade mark GO SOLAR QUOTES, but these actions took place after the Complainant first made the Respondent aware of its concern with the Respondent’s operation. The Panel also notes that the reason the business name “Go Solar Quotes” was not available to be registered by the Respondent (hence necessitating the registration of “Go Solar Quotes Australia”) is that an organization represented by the Complainant had registered it in January 2017 and, while the Complainant’s conduct is not the subject of the proceeding, it is notable that the Complaint contains no evidence or submissions to the effect that the Complainant is seeking to operate a business under the business name “Go Solar Quotes”. Finally the Panel also accepts that the Respondent’s business directly competes with the Complainant’s business, which has operated since 2009, under the SOLAR QUOTES Mark and has some reputation in the market, however it appears that a number of players in the market for providing solar price quotes use the words “Solar Quote(s)” as part of their business names. The question therefore is whether the Respondent is using the Domain Name in a bona fide manner in connection with an offering of services.
The auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), says in response to the question 2.1A: When will a respondent be making a bona fide use of a domain name in connection with an offering of goods or services?
The general position is similar to that under the UDRP.
Paragraph 4(c)(i) of the auDRP states that a respondent will be taken to have demonstrated rights or legitimate interests in a domain name where, before any notice of the subject matter of the dispute, it has bona fide used, or prepared to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services. Unlike the equivalent provision in the UDRP, paragraph 4(c)(i) of the auDRP expressly states that “an offering of domain names that it has acquired for the purposes of selling, renting or otherwise transferring” is not a bona fide offering by the respondent for this purpose.
If the domain name contains the whole or a significant part of the respondent’s personal name, the respondent is likely to have rights or legitimate interests in it, even if the respondent cannot establish it has been “commonly known” by the domain name [see also question 2.1B below]. If a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word. It is not necessary for the respondent to do business under the exact term incorporated in the domain name – it is sufficient if there is a “connection” between the domain name’s descriptive meaning and the respondent’s offering of goods or services. However, the respondent’s use of the domain name must not be a “sham”; panels have been alert to disregard a respondent’s use of the domain name to resolve to a website that is “spurious” or a “shell”.
The key issue is whether the respondent’s use of the domain name is bona fide – i.e., is in good faith. To determine whether a respondent’s use of a domain name is in good faith requires a consideration of the respondent’s motivation for undertaking that use; which, in turn, requires an evaluation of all the facts and evidence. Relevant facts include: the degree of similarity of the domain name to the complainant’s mark; the respondent’s awareness of the complainant’s business conducted under its mark; the likelihood of customer confusion; and whether the domain name is genuinely being used for its descriptive meaning. [See also question 2.3 below.]
Where there is evidence that the respondent registered the domain name to exploit the value of the complainant’s trademark that it incorporates, a lack of good faith will be inferred in respect of the respondent’s use of the domain name. Where the respondent or associated persons have registered other domain names similar to other well-known trademarks, the generic nature of the words constituting the domain name will most likely not be sufficient to give the respondent a right or legitimate interest in it. At least one panel has held that where the disputed domain name is identical to the complainant’s registered trademark, a rebuttable presumption is raised that the domain name is being used by the respondent to trade off the complainant’s rights in that trademark, rather than for its descriptive value [see also question 2.2 below].
On the face of it the Respondent is using the Domain Name for the offering of services. On its website it is known as “Go Solar Quotes” and is using a domain name corresponding to its business name (minus the “Australia” which the Panel has discounted for the reasons set out above) to offer its services, which can be described as solar quotes. The Respondent’s business appears not to be a sham for the purposes of establishing rights under the Policy. The Panel accepts the Respondent’s evidence that the term “solar quotes” is used in the industry as a term to describe quotes for various solar services and is included in the name of numerous providers of quotes for solar services to consumers.
The question therefore is whether the Respondent’s use of the Domain Name is bona fide. The Complainant’s arguments that the Respondent is not making a bona fide use of the Domain Name fall into two broad categories:
a) The Respondent’s use of the Domain Name and its business generally involves the infringement of the Complainant’s trade marks and is therefore not bona fide;
b) The Respondent registered and uses the Domain Name to take advantage of the Complainant’s reputation and confusion has resulted.
The Complainant asserts in the Complaint that the use of the Domain Name by the Respondent appears contrary to the Complainant’s registered trade mark rights. The Panel notes that there is no evidence of legal proceedings for trade mark infringement being commenced against the Respondent and the Respondent, in its response, raises defenses of the nature of those set out in s 122 of the Trade Marks Act 1995. While the Panel notes that the Complainant, in the Complaint, has made submissions to the effect that the Respondent is in fact using the Domain Name and “Go Solar Quotes” as a trade mark and not in a descriptive sense, the issue of whether the Respondent is engaged in trade mark infringement is a complex one that is appropriate to be resolved in the courts. The Policy as derived from the Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see Clockwork IP LLC, One Hour Air Conditioning Franchising, LLC v. Elena Wallace, WIPO Case No. D2009-0485 (“UDRP proceedings are for clear cases of cybersquatting, not for resolving trademark infringement and/or trademark dilution disputes or other matters more appropriately dealt with through the courts”). In the absence of court findings and in the presence of several possible defenses, the Panel cannot accept the Complainant’s assertion that the conduct of the Respondent must amount to trade mark infringement.
The Panel also cannot accept, on the balance of probabilities, the submission that the Respondent registered and uses the Domain Name to take advantage of the Complainant’s reputation in its Solar Quotes Mark. The Respondent’s evidence is that it registered the Domain Name as part of a general business pattern of starting job quote sites using the formulation “go-‘job title’ quotes.com.au”. The term “solar quotes” is clearly in common usage in the market for job quotes for solar systems, with no less than six other entities using the term as part of their business name. While the Respondent did not register a business name until after the Complainant had made its concerns known to the Respondent, this fact alone does not render the Respondent’s use of the Domain Name and corresponding business name a sham. In short the Respondent uses a domain name that reflects its business name and offers services that are described in its business and the Domain Name. There are no other aspects of the Respondent’s conduct that suggest that the Respondent is specifically acting to take advantage of the Complainant and its broader reputation, as opposed to using the term “solar quotes” for its descriptive qualities as part of its broader business strategy. In particular the Respondent’s Website does not closely resemble the Complainant’s Website (and is based on a template used for other websites operated by the Respondent), and the email sent on January 10, 2017 referred to in the Complaint does not contain any material that suggests that the Respondent is seeking to pass itself off as the Complainant. While the Panel accepts that there may be confusion between the Complainant and the Respondent’s businesses, such confusion may arise from the fact that the term “solar quotes” has been used broadly in the relevant market.
The Panel considers that the present proceedings arise in different factual circumstances from the cases referred to in the Complainant, being Peacock Media Group Pty Ltd v. Robert Tapping, WIPO Case No. DAU2013-0029 and Peacock Media Group Pty Ltd v. Darrell Wilson auDRP_12_02. In neither of those cases was a response filed in which the then respondent asserted their interests in the domain name or set out the descriptive and common use of the term “solar quotes” in the industry. Furthermore in the second case, the then respondent appeared to have taken deliberate steps to get in contact with the Complainant and seek referrals prior to registering the subject domain name. Equally this case differs significantly from QSoft Consulting Limited v. B.S.P., WIPO Case No. DAU2009-0003, as the term “solar quotes” is clearly in common use in the industry with a number of different entities using the term as part of their business names, and significantly more evidence of its use as a descriptive term within the industry.
As noted above, the Policy is designed to deal with clear cases of cybersquatting. If the Complainant wishes to bring proceedings against the Respondent for trademark infringement, or question the assertions and evidence of the Respondent’s conduct contained in the Response, such a proceeding is more appropriately brought in a court of competent jurisdiction. The Panel finds that the Complainant has failed to establish, on the balance of probabilities, that the Respondent has no rights nor any legitimate interests in respect of the Domain Name.
D. Registered or Subsequently Used in Bad Faith
Given the Panel’s finding that the Respondent has rights or legitimate interests in the Domain Name, it is not necessary to make a finding under this element.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: April 21, 2017
1 As noted in the auDA Overview of Panel Views on Selected auDRP Questions First Edition, “Panels have undertaken limited factual research into matters of public record where it has considered this necessary to reach the right decision.”
22.The Panel notes that the Policy is largely based on the Uniform Domain Name Disputed Resolution Policy and finds it appropriate to refer to its jurisprudence where instructive.