WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ledge Finance Limited v. Ledge Property Pty Ltd, Ledge Property Advisory Pty Ltd
Case No. DAU2017-0036
1. The Parties
The Complainant is Ledge Finance Limited of Subiaco, Australia, represented by Williams + Hughes, Australia.
The Respondents are Ledge Property Pty Ltd and Ledge Property Advisory Pty Ltd of Floreat, Australia, internally represented.
2. The Domain Names and Registrar
The disputed domain names <ledgepropertyadvisory.com.au> and <ledgeproperty.com.au> are registered with Synergy Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2017. On November 27, 2017, the Center transmitted by email to Synergy Wholesale Pty Ltd Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain names. On November 28, 2017, Synergy Wholesale Pty 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”), 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 December 8, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2017. The Response was filed with the Center on December 27, 2017.
The Center appointed Douglas Clark, Warwick A. Rothnie, and John Swinson as panelists in this matter on January 23, 2018. 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.
The due date for the decision was February 6, 2018. At the request of the Presiding Panelist this was extended until February 14, 2018.
4. Factual Background
The Complainant, founded in 1979, is a finance facilitator based in Western Australia. It is a facilitator of business, equipment, energy and technology finance. It specializes in equipment financing, insurance premium funding, business banking, commercial loans, project financing, importing facilities, cash flow financing, surety and performance bonds, debt restructuring, commercial property & construction and residential & home loans.
The Complainant is the proprietor in Classes 35 and 36 of three relevant trademarks in Australia, including registration number 1309631 for LEDGE as a word mark, registration no. 1317644 for LEDGE EQUIPMENT FINANCE, and registration no. 1346510 for LEDGE EQUIPMENT FINANCE: SECURE YOUR GROWTH”.
The LEDGE word mark was registered in Australia from July 15, 2009 and entered on the register from March 9, 2010. The specification includes: “property finance” and related financial services.
The Complainant is also the registered owner of the domain name <ledge.com.au>. Ledge Property Ltd is an Australian Company registered under ACN 618 748 922 on April 26, 2017. This company owns the disputed domain name <ledgeproperty.com.au>. Ledge Property Advisory Ltd is an Australian Company registered under ACN 618 748 931 on April 26, 2017. This company owns the disputed domain name <ledgepropertyadvisory.com.au>. In response to a cease-and-desist letter from the Complainant, Ledge Property Advisory Ltd changed its name to Nirrep Property Pty Ltd. Both companies have a common director, Mr. Tony Perrin.
Neither party sought to differentiate between the two Respondents and referred to them both as the Respondent. The Panel will refer to both parties as the Respondent, but if necessary refer to the individual Respondents.
The disputed domain names were registered on April 27, 2017 by the Respondent and do not currently resolve to an active page.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain names <ledgepropertyadvisory.com.au> and <ledgeproperty.com.au> and the trademark LEDGE are confusingly similar. The disputed domain names contain LEDGE in its entirety as the distinctive part of the disputed domain name. The additional English words “property” and “property advisory” do not negate the confusing similarity between the disputed domain names and the Complainant’s trademark.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for LEDGE. Further the Complainant asserts that by the Respondent’s own admission it has only used the brand “Ledge Property Advisory” for a “very limited period” and accordingly could not have common law rights in the name.
It, therefore, has no rights or legitimate interests in the disputed domain names.
Registered or used in bad faith
The Complainant submits that even if the Respondent acquired the disputed domain names without knowledge of their existence, cease and desist letters were sent to Ledge Property Advisory Ltd in July 2017, requesting Ledge Property Advisory Ltd to cease use of the LEDGE Trademark. The Respondent (i.e., both Ledge Property Ltd and Ledge Property Advisory Ltd) ceased use of the LEDGE Trademark in August 2017 and Ledge Property Advisory Limited changed its company name to Nirrep Property. The Respondent refused to transfer the disputed domain names to the Complainant. The Complainant contends that by holding the disputed domain names the Respondent is likely to confuse consumers as to whether the Complainant is the source of, has sponsored or endorsed, or is affiliated with the Respondent.
The Respondent responded to the Complaint on December 27, 2017. Its contentions are as follows.
Identical or Confusingly Similar
The Respondent contents that the word LEDGE is more closely associated with land, or shapes of rock structure and the Complainant does not own an exclusive right to use the word. The Respondent also contends that the Complainant’s business is not property related and there is a significant difference between business identified as “ledge” and business identified as “ledge property”.
No rights or legitimate interests
The Respondent contends that the Complainant has no right to force a transfer of the disputed domain names. The Respondent also claims that the Complainant is acting to unfairly assert its commercial power over the use of Ledge Property and Ledge Property Advisory without protecting its position.
Registered or used in bad faith
The Respondent contends that the disputed domain names were registered without bad faith or malicious intent. The disputed domain names are currently not in use and because of the material difference in the Complainant and Respondent’s business nature, will not present any competition with the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 is being use in bad faith.
A. Identical or Confusingly Similar
For purposes of this case, it is sufficient to consider the confusing similarity between the disputed domain names and the Complainant’s word mark for LEDGE. The other two marks which incorporate the words “equipment finance” do not advance the Complainant’s case any further than the word mark LEDGE.
The disputed domain names <ledgepropertyadvisory.com.au> and <ledgeproperty.com.au> are confusingly similar to the Complainant’s trademark LEDGE. These disputed domains incorporate the Complainant’s LEDGE mark in its entirety with the addition of the descriptive terms property and advisory.
Paragraph 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”) provides:
“The inclusion in the domain name of additional terms that are common or descriptive typically is regarded as being insufficient to prevent threshold Internet user confusion, except where the trademark or name itself is a common or descriptive term or where the additional terms have the effect of changing how a typical Internet user would read the domain name.”
The addition to “ledge” of “property” or “advisory” which are descriptive terms does not prevent threshold Internet user confusion.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the auDRP Overview 1.0 provides:
“The general position is the same as that under the UDRP.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. The complainant will usually make out a prima facie case by establishing that none of the paragraph 4(c) circumstances are present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy …. If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant.”
The Complainant has established trade mark rights to LEDGE in Australia which include property finance services.
The Respondent accepts that it has no business or any other kind of relationship (licensor, distributor) with the Complainant and has in fact agreed not to use LEDGE in, at least, the business of Ledge Property Advisory Ltd. The Respondent has also ceased use of the website at the disputed domain name registered to Ledge Property Ltd.
The Complainant has therefore made out a prima facie case that the Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish it has rights and legitimate interests. Paragraph 4(c) provides:
“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.”
The relevant provision in this case is paragraph 4(c)(i). There is no evidence the Respondent has been commonly known by the domain name to satisfy 4(c)(ii), nor was the use that was made prior to the websites being taken down non-commercial use to satisfy 4(c)(iii). There is no evidence or reason to believe that any use that would be made in the future would be non-commercial use.
The Respondent has not provided an explanation to justify the registration of the disputed domain names in its Response. The Respondent has pointed to the meaning of “ledge” as being associated with land, or shapes of rock structure and that there is a locale called “Ledge Point” in Western Australia. However, the Respondent, notably, does not deny knowledge of the Complainant prior to the registration of the Respondent companies and the disputed domain names.
Following the receipt of the Complainant’s cease-and-desist letter, and after taking legal advice, the name of “Ledge Property Advisory Ltd” was changed to “Nirrep Property Ltd”. The Respondent also ceased displaying content on the websites under the disputed domain names. Notably, in the correspondence between the parties no reason was given for the choice of the name “Ledge”.
Considering (a) the Respondent’s failure to provide any reason for the choice of the name Ledge, (b) the Respondent’s agreement to stop making use of “Ledge” and (c) the change of the name “Ledge Property Advisory Ltd” to “Nirrep Property Ltd.”, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered or Subsequently Used in Bad Faith
Under the auDRP, unlike the UDRP, it is only necessary to establish that the registration or use of a disputed domain name is in bad faith. In this case, the Complainant has relied, principally, on use in bad faith.
In July 2017, the Complainant sent a cease and desist letter (“the letter”) to the Respondent requiring the Respondent to, inter alia, cease use of the LEDGE marks.
On August 7, 2017, the Respondent, by way of its legal representative, refused to comply with the demands set out in the letter. However, on August 18, 2017, the Respondent agreed to cease using “Ledge” as part of the “Ledge Property Advisory Ltd” name, and to cease use of the disputed domain names. The Respondent also took down the website previously operating at (at least) the second disputed domain name, but refused to transfer ownership of the disputed domain names.
As aforementioned, Ledge Property Advisory Ltd has since changed its name to “Nirrep Property Pty Ltd.”
On August 28, 2017, the Complainant sent further correspondence to the Respondent with respect to the Respondent’s continued ownership of the disputed domain names and requested a transfer of the disputed domain names.
The Panel is of the view that it is impossible to find any bona fide explanation as to why the Respondent seek to hold onto the disputed domain names with good intent given their agreement to cease using “Ledge” (and taking down a website).
While the disputed domain names do not presently resolve to any page, this does not prevent a finding of bad faith. The passive holding of the domain names may amount to bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (<telstra.org>). See also paragraph 3.2 of the auDRP Overview 1.0.
Having examined all the circumstances of the case, the Panel finds that the disputed domain names <ledgepropertyadvisory.com.au> and <ledgeproperty.com.au> are being used in bad faith within the meaning of the Policy.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ledgepropertyadvisory.com.au> and <ledgeproperty.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Date: February 14, 2018