WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Pants Co Pty Ltd ACN 071 213 682 as trustee for the General Pants Co Trust, Bleach Group USA Holdings Inc, Kenleet Investments Pty Ltd, Maybury Valley Pty Ltd as trustee of the Jacqueline Vidor Family Trust, Modara Willows Pty Ltd as trustee of the Philip Staub Family Trust, Fashion Trademark Pty Ltd v. Bradley Jelfs
Case No. DAU2017-0024
1. The Parties
The Complainant is General Pants Co Pty Ltd ACN 071 213 682 as trustee for the General Pants Co Trust of Alexandria, New South Wales, Australia / Bleach Group USA Holdings Inc of Los Angeles, California, United States of America / Kenleet Investments Pty Ltd of South Yarra, Victoria, Australia / Maybury Valley Pty Ltd as trustee of the Jacqueline Vidor Family Trust of South Yarra, Victoria, Australia / Modara Willows Pty Ltd as trustee of the Philip Staub Family Trust of South Yarra, Victoria, Australia / Fashion Trademark Pty Ltd of South Yarra, Victoria, Australia, represented by KCL Law, Australia.
The Respondent is Bradley Jelfs of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <insight51.com.au> is registered with Web Address Registration Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2017, 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 August 24, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 25, 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 first named Complainant General Pants Co Pty Ltd ACN 071 213 682 ("General Pants") operates a fashion business in Australia with 52 stores. The first named Complainant was founded in 1995 and operates under exclusive licence from the other named Complainants whose common law partnership holds registrations for the trademark INSIGHT51 in Australia, which it uses to designate various fashion items in classes 14, 18 and 25 and fashion retail services in class 35. Registration has been in effect in since 2004.
The Complainant is also the owner of, inter alia, the domain name <insight51.com>, registered in 2003, which resolves to a website about the INSIGHT51 fashion offerings.
The disputed domain name <insight51.com.au> was registered on December 21, 2015. The disputed domain name resolves to a website displaying content similar to an earlier version of Complainant's website, but with the addition of links to a third-party website.
5. Multiple Complainants Filing Against a Single Respondent
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, the general position under the auDRP is the same as that under the Uniform Domain Name Dispute Resolution Policy ("UDRP") (see auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0"), section 4.16(i)).
Panels under the UDRP tend to look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
This Panel is satisfied that the Complainants have a specific common grievance against the Respondent, and that the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. This Panel is also satisfied that it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.1). For ease of reference the first named Complainant, General Pants, shall be referred to as the Complainant.
6. Parties' Contentions
The Complainant cites its trademark registrations of the trademark INSIGHT51 in Australia as prima facie evidence of ownership.
The Complainant submits that the mark INSIGHT51 is distinctive and that its rights in that mark predate the registration of the disputed domain name <insight51.com.au>. It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the INSIGHT51 trademark and that its business operated for 20 years before the Respondent registered the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in, or license to use, the INSIGHT51 mark.
Finally, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3).
On the issue of registration in bad faith, the Complainant contends that the Respondent could not have registered the disputed domain name without having the INSIGHT51 trademark in mind given that the Complainant's fashion retail business has operated for 20 years before the Respondent registered the disputed domain name.
On the issue of use in bad faith, the gist of the Complainant's contention is that the Respondent uses the disputed domain name to intentionally attract Internet users then divert traffic to a website selling products that have nothing to do with genuine INSIGHT51-branded fashion goods. In this case, when the disputed domain name <insight51.com.au> is typed in, it redirects traffic to a landing page in part containing content scraped from the Complainant's website where the Respondent's website sells "Turkish towels".
The Respondent did not reply to the Complainant's contentions.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the "UDRP"), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the INSIGHT51 trademark acquired through use and registration which predate the date of registration of the disputed domain name by 20 years pursuant to Australian trademark Registration No. 1024778 registered on October 12, 2004, in local classes 14 and 18 for jewellery, watches, clocks, and goods such as leather bags and wallets, and in class 25 for clothing, footwear and headgear.
The Panel finds that the disputed domain name, which contains the INSIGHT51 trademark in its entirety, is identical to the INSIGHT51 trademark.
In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that "[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website". Further, in The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that "the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases."
Further, unlike the UDRP, the Policy extends protection expressly to "names" as well as trademark rights. For the purposes of the Policy, a "name" is defined by note 2 as referring to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant's personal name.
The Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the disputed domain name would be caused to wonder if there was an association with the Complainant's trademark rights. The disputed domain name <insight51.com.au> is identical to the INSIGHT51 trademark.
Accordingly, the Panel finds that the Complainant has established the first element 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 the Respondent has rights or legitimate interests in the 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 organisation) has been commonly known by the disputed domain name even if the Respondent has acquired no trademark 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 trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the INSIGHT51 trademark. The Complainant has prior rights in the INSIGHT51 trademark which precede the Respondent's registration of the disputed domain name by 20 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 (see Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001; ESPN, Inc. v. IMCO Corporation Pty Ltd, WIPO Case No. DAU2005-0005; auDA auDRP Overview 1.0, section 2.1).
The Respondent has failed to respond and so has not shown that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of a website which features prominently the INSIGHT51 trademark, contains scraped copyright content owned by the Complainant, links to "Turkish towels" for sale, and appears to generate advertising revenue for the Respondent using PPC links. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.
Neither is the Respondent a reseller or distributor of the Complainant's INSIGHT51 fashion goods. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name, nor does any of the evidence demonstrate that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
"b. Evidence of Registration or Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), [relevantly,] the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(ii) [respondent has] registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, [respondent has] intentionally attempted 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 a product or service on that website or location."
The evidence that the Respondent registered and has used the disputed domain name in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: "It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights". The name registered by the Respondent, the unlikelihood that registering a domain name containing the Complainant's trademark that has been used in the same country for 20 years prior to registration by the Respondent and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else's trademark, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, (see Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies, WIPO Case No. DAU2010-0014; Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012; auDA auDRP Overview 1.0, section 3.1B).
In this Panel's assessment, two conclusions can therefore be drawn about the Respondent from its use of the disputed domain name resolving to the Respondent's website. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, a gap of ten years between registration of a complainant's trademarks and respondent's registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the disputed domain name two decades after the Complainant established registered trademark rights in the INSIGHT51 mark.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. Steering unsuspecting Internet visitors to competing services, taking advantage of the confusion created by the similarity of the disputed domain name to the Complainant's trademark is the very essence of bad faith use under the Policy (see, e.g., Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031; Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420; GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001; auDA auDRP Overview 1.0, section 3.1D).
This Panel finds that the Respondent must have been aware of the relevant trademark. This Panel finds that the Respondent has taken the Complainant's trademark and incorporated it into the disputed domain name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users away from the Complainant's webpage to parked pages or alternatively to the Respondent's "Turkish towels" website for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <insight51.com.au> be transferred to the Complainant, General Pants Co Pty Ltd ACN 071 213 682 as trustee for the General Pants Co Trust.
Date: October 9, 2017