WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ecommerce Enablers Pte. Ltd. v. Adrian Loughnan / Loughnan, John Adrian
Case No. DAU2017-0019
1. The Parties
The Complainant is Ecommerce Enablers Pte. Ltd. of Singapore, represented internally.
The Respondent is Adrian Loughnan / Loughnan, John Adrian of Sydney, Australia, self-represented.
2. The Domain Name and Registrar
The disputed domain name <shopback.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 August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2017 and August 10, 2017, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Complainant filed an amendment to the Complaint on August 10, 2017.
The Center verified that the Complaint together with the amendment to 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 proceedings commenced on August 11, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2017. The Response was filed with the Center on August 31, 2017.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 8, 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 based in Singapore operating an affiliate marketing service website and app. It is the registered owner in Australia of the trademark SHOPBACK, No. 1738786, filed on December 3, 2015 and with a priority date of November 23, 2015.
The disputed domain name was registered on February 24, 2015. It does not resolve to an active page.
The Complainant first discovered that the Respondent had registered the disputed domain name in late 2015.
5. Parties' Contentions
The Complainant is a private limited company incorporated in Singapore which provides what it refers to as "affiliate marketing services". It operates apps and websites offering cashback promotions at various online merchants or services providers such as ASOS, Ebay, Expedia, Booking.com and Uber. Consumers browse the Complainant's website and click on the various links and banners advertising particular cashback promotions to be re-directed to a merchant or service provider's platform where they can place their order. When a consumer who maintains an account with the Complainant places an order with the relevant merchant or service provider, the Complainant credits the amount of cashback advertised to the consumer's account with the Complainant. The Complainant is paid a pre-determined commission by the relevant merchant or service provider for that successful order.
According to the Complainant, the Shopback Platforms collectively attract approximately 3 million visits per month, and its affiliate marketing generates approximately USD 20 million worth of gross merchandise value per month for the merchants concerned. The Complainant says that since its inception the Shopback name has been prominently displayed and used on all of its platforms.
The Complainant is the registered owner of the SHOPBACK trademark in Australia and it asserts that it has a wholly-owned subsidiary, Shopback Australia Pty Ltd (ACN 620 158 929) registered in New South Wales. The Complainant points out that while the Respondent contends that he intended to use the disputed domain name to launch an affiliate marketing website similar to the Complainant's, the Respondent never objected to the Complainant's registration of the SHOPBACK trademark in Australia. This is notwithstanding the fact that the Respondent maintains accounts on the Complainant's "www.shopback.sg" and "www.shopback.com" websites which he created on March 10, 2015, and that the Respondent was well aware of the Complainant and its plans to enter the Australian market following discussions with the Complainant.
According to the Complainant, the Respondent is a web developer residing in Malaysia and co-founder of a Kuala Lumpur based web solution outsourcing startup, SagaOS Sdn. Bhd. The Complainant asserts that according to his LinkedIn account, the Respondent has previously worked as a consultant to start-ups and in the online gambling industry.
In response to a request to transfer the disputed domain name, the Respondent stated that he intended to use it to launch an affiliate marketing website, a business the Complainant asserts is the exact same as the Complainant is engaged in under the Shopback name. The Respondent subsequently reneged on an original agreement reached concerning a transfer, according to the Complainant, whereupon this Complaint was filed.
The Complainant asserts that the disputed domain name is identical to the Complainant's word mark SHOPBACK, filed in Australia on December 3, 2015, with a priority date of November 23, 2015.
The Complainant points out that once it has made out a prima facie case, if the Respondent fails to meet the burden of proving that he has rights or legitimate interests in the disputed domain name, the Complainant is deemed to have satisfied the requirements of the Policy.
The Complainant asserts that there is no evidence that the Respondent could have been commonly known by the disputed domain name. The Complainant also states that the Respondent is not a licensee of the Complainant or in any other way authorized to use the Complainant's SHOPBACK trademark. Further, the disputed domain name is inactive and other than seeking to sell it to the Complainant, the Respondent has not used it in any way.
Additional to the lack of evidence of any form of use, the Complainant also points to the fact that the sole tradership under which the disputed domain name is registered in Australia had its ABN cancelled on September 12, 2016, about one and a half years after the disputed domain name was registered. There is no evidence that the Respondent had conducted any trade or taken any steps to conduct trade under that ABN. Indeed, the Complainant asserts that it was only after the Respondent reneged on his initial agreement to transfer the disputed domain name and demanded a higher sum of AUD 12,000 for the transfer, that he renewed the ABN. The Complainant alleges that this was a purely self-serving act whereby the Respondent intended to cover his actions with a veneer of legitimacy for the purposes of illegitimately extracting a higher transfer sum from the Complainant.
According to the Complainant, the Respondent has been persistent in his efforts to sell the disputed domain name to the Complainant. The Complainant points out that this is plainly inconsistent with any intention to use the disputed domain name for legitimate purposes. When the Complainant indicated it would seek to utilise another domain name to enter the Australian market, the Respondent threatened to set up a site under the disputed domain name which would preempt the Complainant's entry. The Complainant stresses that the Respondent was dogged in his pursuit of a sale to the Complainant at considerable financial advantage to him. In any case, even if one were to accept (which the Complainant does not) that the Respondent intends to use the disputed domain name to launch an affiliate marketing website similar to the Complainant's, this would not give rise to a legitimate interest in the disputed domain name as such use would amount to a clear infringement of the SHOPBACK trademark. Only the Complainant owns trademark rights in Australia for SHOPBACK as of the priority date of November 23, 2015.
The Complainant notes that the Policy only requires that the disputed domain name be registered or used in bad faith, not both as the Uniform Domain Name Dispute Resolution Policy requires. Nonetheless the Complainant contends that (i) the Respondent's conduct (particularly after the Complainant approached him to transfer the disputed domain name) clearly constitutes bad faith use; and (ii) such conduct, when viewed in its proper context, shows that the Respondent had in fact initially registered the disputed domain name in bad faith also. The Complainant asserts that if a respondent continues to hold a disputed domain name in spite of a complainant's request for a transfer and in spite of no longer having any legitimate interest in it, an inference arises that he is holding the disputed domain name in bad faith to prevent other bona fide commercial users from using it. The Complainant contends that it would be appropriate for the Panel to draw such an inference in this case. The Complainant asserts that under paragraph 4(b)(v) of the Policy, bad faith would be made out if the Respondent's representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner. According to the Complainant, when the Respondent renewed his registration he did not in fact comply with the renewal requirements as his ABN had been cancelled at that time and he did not meet any of the other criteria. Also the Respondent sought to sell the disputed domain name at an amount clearly in excess of out-of-pocket expenses, which according to the Complainant indicates bad faith. The Complainant says that he used a threat to use the disputed domain name in a manner that would disrupt the Complainant's business or that would create a likelihood of confusion that would divert users away from the Complainant's website, to compel the Complainant to buy the disputed domain name from the Respondent. According to the Complainant, prior panels have found that it is important to have regard to the overall tone of correspondence. When the correspondence between the Respondent and the Complainant is considered as a whole, it is said to be clear that the Respondent was actively pursuing a sale of the disputed domain name. Such a threat is, according to the Complainant also an act of bad faith in itself. Indeed, it goes beyond merely soliciting an offer to buy the domain name but is in fact, a thinly veiled form of blackmail. According to the Complainant, this is analogous to previous cases where panels found that threatening to illegitimately use a disputed domain name in order to secure a more favourable settlement or even holding onto a domain name to obtain leverage in commercial negotiations constitutes bad faith. Also, reneging on a prior agreement or even a mere promise to transfer a disputed domain name has been found to constitute bad faith, according to the Complainant.
The Complainant also points out that for the whole period of communications between the Parties, the Respondent maintained accounts on the Complainant's "www.shopback.com" and "www.shopback.my" websites.
The Complainant submits that not only was the Respondent's subsequent use of the disputed domain name in bad faith but so was his initial registration, and advances the following facts in support: (a) The timing of the registration came shortly after the Complainant was featured in popular local news websites in Malaysia / South East Asia covering start-up and tech news; (b) The Respondent was himself a start-up owner and served as a start-up consultant for several years prior to that, and would therefore frequent the websites referred to at (a); and (c) Indeed, around the time he registered the disputed domain name, the Respondent also created accounts on the Complainant's "www.shopback.com" and "www.shopback.my" websites. He was thus clearly aware of the Complainant.
The Complainant also submits that even if one were to accept the Respondent's position that he intended to launch a cashback or price comparison website, his choice to specifically register <shopback.com.au> for this purpose suggested that he was looking to unfairly block the Complainant from entering the Australian market and/or seek to gain traffic to his website based on a false association with the Complainant. If the Respondent had a bona fide intention to launch a legitimate business, he would have known that using a domain name identical to that used by the Complainant in other countries could very well be a double-edged sword. Furthermore, his purported intent to do so is at odds with the fact that he has over the period of two years yet to use the website for commercial purposes and refrained from challenging the Complainant's registration of the SHOPBACK trademark in Australia even after knowing about the Complainant's plans to enter the market. Most telling however is his conduct and statements when negotiating over the transfer of the disputed domain name. His actions are not those of a bona fide businessman but one who is looking to make a quick and opportunistic dollar of the sale of a domain name, or so the Complainant asserts.
According to the Respondent, the Complainant is attempting to manufacture an argument that the Respondent had no intention and interest in using the disputed domain name; this is simply not the case. According to the Respondent, he also never reneged on any agreed sales price, and the AUD 12,000 asked is a nominal amount considering that the Complainant's business is grossing USD 20 million per month in merchandise value. On average with a 4 percent industry standard commission the Complainant would be making USD 800,000 in revenue per month, according to the Respondent.
According to the Respondent, it was clear at the time he registered the disputed domain name that the Complainant had no interest in the disputed domain name or the Australian market as such. This has come as an afterthought. Nor does the Complainant have specific experience with the Australian market. Its operations and marketing activities solely concern the South-East Asian market.
The Respondent affirms that he created an account on the Complainant's "www.shopback.com" and "www.shopback.my" websites after he registered the disputed domain name. Further according to the Respondent, he first registered the disputed domain name on February 24, 2015, some nine and a half months before the Complainant applied to register the trademark SHOPBACK on December 3, 2015. In any case, the term "shopback" is a simple compound word comprising of "shop" for "shopping" and "back" short for "cashback".
The Respondent also asserts that he owns the disputed domain name under ABN No. 95017506533. He maintains that he has a legitimate interest in using the disputed domain name to offer a cashback affiliate commission driven service to the Australian market via a ".com.au" domain name. He points out that a similar service can be found on the website under development at domain name <rewardsbuys.co.uk>, which is owned by SagaOS SDH. BHD, a company of which the Respondent is a director. The Respondent says this technology and website would be migrated and rebranded onto the disputed domain name.
The Respondent stresses that he has the intention to offer a cashback affiliate commission driven service by way of other domain names that he owns, those being: <rewardsbuys.com.au>; <rewardsbuys.com>; <shopbackcash.com>; and <kickbackshop.com>.
The Respondent gives the following account of communications between the Parties: On November 1, 2015, a representative of the Complainant contacted the Respondent to enquire about purchasing the disputed domain name. On November 16, 2015, the Respondent enquired into what the Complainant's purpose of using the disputed domain name would be. Subsequently, the Respondent and the Complainant entered into a conversation regarding the future use of the disputed domain name. As the Respondent had legitimate interests in offering a cashback affiliate commission driven service to the Australian market, the Respondent initiated a conversation with another representative of the Complainant, a Mr. Chan, regarding the potential of working together and forming a joint venture. This collaboration would utilize the Respondent's specific knowledge and interest in the Australian market plus the technology already developed for the "www.rewardsbuys.co.uk" website. Mr. Chan had abruptly responded and made it clear during these talks that the Complainant was not interested in any form of collaboration and wished to obtain the disputed domain name itself to offer its own service.
According to the Respondent, the purchase of the disputed domain name subsequently became the topic of conversation until the final requested price of AUD 12,000 from the Respondent was communicated. The Respondent points out that a period of 86 days (from April 8, 2017 to July 3, 2017) passed during which the Respondent had to prompt the Complainant on whether there was even still an interest in purchasing the disputed domain name.
The Respondent asserts that he never registered or planned to use the disputed domain name in bad faith. The reason the disputed domain name has remained parked was the fact that the Complainant and the Respondent entered into communications regarding the purchase and transfer of the disputed domain name. Therefore the Respondent considered it unnecessary to offer a service and website during this period. The Respondent did have the option of implementing a similar website as offered at <rewardsbuys.co.uk> during this time. The Respondent also contends that if the Complainant truly believes that the Respondent registered the disputed domain in bad faith, then it would have not originally expressed an interest in purchasing the disputed domain name from the Respondent and would have simply proceeded with a dispute from the start. The Respondent reiterates that he is the current owner of many domain names that have an association with shopping and cashback. The disputed domain name is simply one of these and provides localization in respect of the Australian market. Together with this and the Respondent's knowledge of this market it would be a growing business in Australia.
The Respondent also points out that the Complainant and the Respondent are not competitors and/or the disputed domain name was not registered by the Respondent primarily to disrupt the business or activities of another person, especially considering that at the time of registration the Complainant had no interest in the Australian market. It is also said that the disputed domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The Respondent quotes, "[D. If appropriate and the allegation can be substantiated with evidence, the Rules provide that a Respondent may ask the Panel to make a finding of reverse domain name hijacking. (Rules, para. 15(e))]" but makes no express request to that effect.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is to all intents and purposes identical to the SHOPBACK trademark registered by the Complainant in Australia. The disputed domain name was registered on February 24, 2015. The SHOPBACK trademark of the Complainant was registered from December 3, 2015. Acceptance was advertised on April 14, 2016. However, the only question that need concern the Panel is whether the disputed domain name is identical or confusingly similar to a registered trademark at the present time. It is not required that the trademark be registered before the date of registration of the disputed domain name.
Therefore the Panel holds that the disputed domain name is identical to the Complainant's Australian registered trademark SHOPBACK.
B. Rights or Legitimate Interests
The Respondent registered the disputed domain name on February 24, 2015. The Respondent has to date not used the disputed domain name in any manner. The Respondent maintains in his Response that it was his intention to develop an affiliate marketing scheme by way of a website resolving to the disputed domain name. The Respondent never in fact did anything of the sort. He is now not in a position to develop such a website to do business in Australia using the disputed domain name without impacting the trademark rights of the Complainant. The Respondent has at no point opposed or sought revocation of the trademark registered in the name of the Complainant, which would otherwise indicate an asserted right or an interest in conducting business under that mark in Australia. The Respondent initially set out to enter into a joint venture with the Complainant for the sake of developing an affiliate marketing scheme in Australia by utilizing the disputed domain name. However, when the Complainant declined his approaches in this regard, he turned to selling the disputed domain name instead. Either way he sought to put himself in a position of power in relation to the Complainant's potential entry into the Australian market under its SHOPBACK brand. He indicated in communication with the Complainant that he would go ahead with his affiliate marketing plan in Australia if the Complainant did not enter into an agreement on his stated terms. His actions appear to have been focused on selling the disputed domain name to the Complainant or piggybacking on the Complainant's business experience in this regard, rather than on developing a legitimate business or service in Australia by means of the disputed domain name. There is no evidence of him preparing or having initiated such a business or using the disputed domain name in any manner at all. In the circumstances there is nothing before the Panel to indicate that the Respondent has rights or any legitimate interests in the disputed domain name – his only apparent interest being in selling that name to the Complainant for a sum of money allowing him a considerable windfall profit.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
There are clear indications that the Respondent was fully aware of the affiliate marketing scheme operated by the Complainant overseas. He registered and created accounts on the Complainant's SHOPBACK websites on March 10, 2015, very soon after registering the disputed domain name. He has been active in business in Malaysia and in relation to online start-up businesses and consultancy work prior to the registration of the disputed domain name. The Complainant's SHOPBACK operations extend to Malaysia as well as Singapore and a number of other Asian countries. It is apparent that it is highly likely that the Respondent was aware of the trademark and business of the Complainant at the time of registration of the disputed domain name in Australia. Although it remains the case that at that time the Complainant was not conducting its business in Australia under the SHOPBACK trademark, the chronology of events and the subsequent attempts of the Respondent to sell the disputed domain name are consistent with an attempt to preempt the entry of the Complainant into the Australian market and then hold the Complainant to ransom by squatting on the disputed domain name. The Complainant's trademark is a distinctive one and it seems unlikely that the Respondent arrived at it independently, certainly given the fact that he is very conscious of this business segment, and owns a number of other relevant domain names as well.
Although he registered an ABN and that was the apparent basis for the registration of the disputed domain name, no evidence has been put before the Panel that the Respondent has actually conducted any business in Australia relevant to this matter. The ABN appears to have been allowed to lapse and then to have been renewed in congruence with the Respondent's attempts to sell the disputed domain name to the Complainant. He asserts that he owns some other domain names that are used for affiliate marketing purposes in other jurisdictions, and all that is required is to migrate those operations to the disputed domain name. However, he has not in fact done anything of the sort.
Taking all the evidence before the Panel together, it appears that the Respondent has acquired the disputed domain name with an eye to blocking its use by the Complainant for the purpose of entering the Australian market. The only aim of which there is any real evidence before the Panel was to sell the disputed domain name to the Complainant, rather than to use it himself for an Australian affiliate marketing scheme. It appears unlikely on the facts that the Respondent ever genuinely intended to use the disputed domain name to develop such a business scheme in Australia. He ramped up his demands and effectively held the Complainant to ransom, even when he knew that it would have been highly unlikely if not impossible for him, due to the acquisition of trademark rights in Australia by the Complainant, to develop a legitimate business under the name Shopback.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <shopback.com.au> be transferred to the Complainant.
William A. Van Caenegem
Date: September 22, 2017