WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Supersprint Holding S.R.L. v. Speedline Imports Pty. Ltd.
Case No. DAU2018-0004
1. The Parties
The Complainant is Supersprint Holding S.R.L. of Mantua, Italy, represented by Rossi & Martin Studio Legale, Italy.
The Respondent is Speedline Imports Pty. Ltd. of Castle Hill, New South Wales, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <supersprintexhaust.com.au> (“Domain Name”) is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2018. On January 18, 2018, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Domain Name. On January 19, 2018, TPP 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.
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 January 24, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2018. The Response was filed with the Center on February 14, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 20, 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.
4. Factual Background
The Complainant is an Italian company founded in 1955 that develops components for automobile exhaust systems. The Complainant is the owner of an Australian trade mark registration for a device mark consisting of the stylized word “supersprint” and the image of horses galloping (the “SUPERSPRINT Mark”). The SUPERSPRINT Mark (trade mark no. 805259) was registered from August 27, 1999 for “high performance exhaust systems”.
According to the verification provided (and later confirmed) by the Registrar, the Domain Name, <supersprintexhaust.com.au>, was registered on March 9, 2016. The Response states that the Respondent (or entities related to the Respondent) owned the Domain Name since 2010. This statement is supported by various emails indicating the use of the Domain Name between 2010 and 2016. Ultimately the decision in this matter does not turn on the date on which the Domain Name was registered and the Respondent’s evidence of its use of the Domain Name between 2010 and 2016 will be taken into account.
The Domain Name is presently inactive (it resolves to a site that states “The website you were trying to reach is temporarily unavailable”) but prior to the notification of the Complaint resolved to a website (the “Respondent’s Website”) which prominently featured the SUPERSPRINT Mark (including the image of horses galloping). The Respondent’s Website did not identify itself as being connected to the Respondent, rather it appears to pass itself off as an official website of the Complainant by including, inter alia, the statements “Welcome to Supersprint” and “© Copyright Supersprint”. By clicking on the “Contacts” link of the Respondent’s Website, a visitor would be directed to another business website at “www.tuningworld.com.au”, operated by the Domain Name’s administrative contact, Andrew Ochudzawa, and offering repair and replacement car parts including exhaust systems produced by the Complainant’s competitors.
The Complainant characterizes the Respondent as a former distributor of the Complainant’s products, though the Respondent suggests that it continues to sell the Complainant’s products, which it acquires from third parties. Following communications between the Parties, the Respondent initially offered to transfer the Domain Name to the Complainant for the fee of EUR 12,000 (though the amount may have been reduced following further negotiation).
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 SUPERSPRINT 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 is subsequently being used in bad faith.
The Complainant is the owner of the SUPERSPRINT Mark, having registered this mark in Australia since 1999. The Domain Name is confusingly similar to the SUPERSPRINT Mark, incorporating the words “supersprint” and the additional word “exhaust” which merely describes the products sold by the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has no licence or right to use the Domain Name and has never been granted any permission by the Complainant for the registration of the Domain Name. The fact that the Respondent was a dealer does not grant the Respondent the right to use the Domain Name since it is being used in bad faith to divert customers and damage the Complainant’s reputation. The use of the Domain Name for the Respondent’s Website does not generate any rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered and is being used with the intention of preventing the Complainant from registering the corresponding Domain Name. It is used for diverting customers from the Complainant to the Respondent. The Respondent has offered to sell the Domain Name to the Complainant for a price clearly disproportionate to the costs incurred by the Respondent directly related to the Domain Name.
B. Respondent
As a procedural matter, the Panel notes that the Response was filed shortly after the due date for submission of a Response. In the interests of fairness between the Parties, the Panel has determined in its discretion under paragraph 10 of the Rules to admit the Response. The Respondent contends the following: The Domain Name consists of the word “supersprint” which is a descriptive word and has not been trademarked by the Complainant.
The Domain Name has been registered since 2010 and has been owned by various entities connected with or under the control of Andrew Ochudzawa. The Respondent has distributed the Complainant’s products and in 2014 gave notice to the Complainant that it would be using the Domain Name for the Respondent’s Website. This was met with no objection which constitutes an oral/written agreement for the Respondent to use the Domain Name for its stated purpose.
The Domain Name is used to sell the Complainant’s products, purchased from third parties.
The Complainant first sought to take the Domain Name from the Respondent in 2016, without providing compensation. The Complainant could have registered numerous other available domain names incorporating the SUPERSPRINT Mark. Instead the Complainant indicated that it would (and did) refuse to supply the Respondent with parts unless it transferred the Domain Name. The Respondent has invested considerable energy in developing the Domain Name including content, links and search-engine-optimisation so its offers to sell the Domain Name for EUR 12,000, EUR 9,800 and eventually EUR 3,000 were very reasonable.
In summary the Domain Name was registered and used with the consent of the Complainant. The Complainant now wishes the Domain Name be transferred without compensation.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have a name, 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 SUPERSPRINT Mark, having registrations for the SUPERSPRINT Mark as a trade mark in Australia.
The Domain Name <supersprintexhaust.com.au> contains the word element of the SUPERSPRINT Mark in its entirety with the addition of the word “exhaust” (descriptive of the Complainant’s products) and “.com.au”. As the Domain Name reproduces the word element of the SUPERSPRINT Mark in its entirety the Panel finds that the Domain Name is confusingly similar to the SUPERSPRINT Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. 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 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 Respondent does not argue that it is commonly known by the Domain Name or is making a legitimate non-commercial use of the Domain Name. In essence, the Respondent claims rights or legitimate interests on two grounds, being:
a) That it has made a bona fide use of the Domain Name for a website offering the Complainant’s products; and
b) That it registered and held the Domain Name with either the express or implied consent of the Complainant.
The Respondent’s Website appears to be selling/distributing the Complainant’s genuine branded SUPERSPRINT products. For the purpose of this decision the Panel accepts the Respondent’s evidence that the goods sold on the Respondent’s Website were genuine Complainant products, initially purchased from the Complainant and later from third parties. This potentially indicates that the Respondent may have rights or legitimate interests in the Domain Name, provided that the Respondent is able to prove that it is a reseller or distributer of the Complainant’s trade marked products only, and that it meets certain other requirements such as adequately disclosing its relationship with the trade mark owner (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) 1 ; see also paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), in which the Oki Data case is cited as representative of the majority view of auDRP panelists.
In Oki Data, the panel set out four minimum factor requirements in helping to decide whether a respondent is making a bona fide use of a disputed domain name being:
- The respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (the respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use);
- The site must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of the complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. And Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official website for Quaife, an English company; moreover, the respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 (no bona fide use when the respondent suggested that it was the manufacturer of the complainant’s products);
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
In this case the Respondent’s Website does not accurately disclose the lack of a relationship between the Respondent and the Complainant. The Respondent’s Website displays the SUPERSPRINT Mark prominently, contains the statement “Welcome to Supersprint” and the words “© SUPERSPRINT” at the bottom of the webpage. There is no disclaimer indicating that the Respondent’s Website is connected to an entity other than the Complainant, indeed the whole tone of the website is that of the official website of the Complainant, which is not the reality.
Furthermore, while the Respondent’s Website initially only appears to refer to the Complainant’s products when a visitor clicks on the “contact page” link, they are redirected to another site operated by or connected to the Respondent at “www.tuningworld.com.au” offering products including exhausts by companies competing with the Complainant.
By reason of the matters set out above, the Oki Data factors have not been met and the Respondent cannot be said to have made a bona fide use of the Domain Name in connection with the offering of goods or services.
With respect to the second argument, the Complainant denies that it ever provided the Respondent with any permission to register or operate the Domain Name. The Response does not provide any written agreement in which a clear grant of rights or permission was made.
The Respondent relies on an email to the Complainant dated in 2014 where the Respondent indicated that it would use the Domain Name to sell the Complainant’s products. In the Complainant’s response to the 2014 email, the Complainant did not comment on the Respondent’s use of the Domain Name, rather it denied the Respondent’s broader request to be the exclusive distributor of the Complainant in Australia. In essence the Respondent is arguing that the failure of the Complainant to take action in 2014 (and/or its delay in tacking action until 2016) is unreasonable and for that reason it has legitimate interests; in short the defence of laches.
Even if the Respondent’s evidence was taken at its highest:
a) As noted in section 4.10 of the auDA auDRP Overview 1.0., auDRP panels have recognised that the doctrine or defence of laches does not generally apply under the Policy.
b) Even if the Panel were to imply some sort of licence or consent arising from the failure of the Complainant to take any action in respect of the Respondent’s use of the Domain Name until 2016, such a consent or licence would not be a bare consent, allowing the Respondent to use the Domain Name for whatever period and for whatever purpose. In particular it would not extend to using the Domain Name for a website that attempts to pass itself off as the official website of the Complainant.
As the Respondent does not meet all the requisite criteria set out in the Oki Data case, nor does it show any other basis on which it may have acquired rights or legitimate interests, the Panel finds that the Respondent lacks rights or legitimate interests in the Domain Name.
C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or
(iii) the 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on Respondent’s website or location; or
(v) if any of 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.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the disputed domain name in bad faith. In the present case it is not necessary to consider whether the Domain Name was registered in bad faith or whether, as the Respondent seeks to argue, the Complainant has given some implied consent for the Respondent to register and use the Domain Name. Such permission, even if given, has certainly been withdrawn.
The Domain Name is used by the Respondent for a website in which the Respondent passes itself off as the Complainant, including reproducing the SUPERSPRINT Mark, the statement “Welcome to Supersprint” and the words “© SUPERSPRINT” at the bottom of the webpage. The Respondent does so for commercial gain, being a seller of the Complainant’s exhaust products and various third party products. The Panel finds that by using the Domain Name in this manner the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or of a product or service on the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. Decision
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 Name <supersprintexhaust.com.au> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: February 26, 2018
1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases, where appropriate.