About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Otter Products LLC, TreeFrog Developments Inc v. SmartPhone Protection Pty Ltd

Case No. DAU2018-0028

1. The Parties

The Complainants are Otter Products LLC (“First Complainant”) and TreeFrog Developments Inc (“Second Complainant”), both of Fort Collins, Colorado, United States of America (“United States”), represented by Corrs Chambers Westgarth, Australia.

The Respondent is SmartPhone Protection Pty Ltd of Hunters Hill, New South Wales, Australia, self-represented.

2. The Domain Names and Registrar

The disputed domain names <lifeproofsuperstore.com.au> and <otterboxsuperstore.com.au> are registered with Web Address Registration Pty Ltd (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 2018, the Registrar 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 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 30, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2018. An email from the Respondent was received on September 3, 2018. No formal Response was received. The Center notified the parties the commencement of the panel appointment process on September 20, 2018.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 2, 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 First Complainant and the Second Complainant (jointly referred to as “the Complainants”) are related companies. Both belong to the OtterBox Group of companies, which also includes OtterBox Hong Kong Limited (“OtterBox Hong Kong”) and Otter Products Australia Pty Ltd (“Otter Products Australia”).

The First Complainant has, since its establishment in 1998 in the United States, operated a business manufacturing and selling mobile phone accessories, including protection cases and mobile lifestyle products, under the brand names “OtterBox” and “LifeProof”. The protection cases are made to fit mobile phones and tablets produced by Apple, Samsung, Google, Huawei, LG and OnePlus.

The First Complainant is the registered owner of the domain name <otterbox.com.au>, and it promotes and sells its “OtterBox” products from the website that resolves from that domain name. The First Complainant is the owner of a number of Australian trademark registrations that consist of or incorporate the words “otter” and “box”, including registration number 1387146 for the word trademark OTTER BOX (registered from August 17, 2010) and registration number 1503078 for the word trademark OTTERBOX (registered from April 3, 2012, being a designation to Australia of International Trademark No. 1120565).

The Second Complainant is the registered owner of the domain name <lifeproof.com.au>. The First Complainant promotes and sells its “LifeProof” products from the website that resolves from that domain name. The Second Complainant is the owner of a number of Australian trademark registrations that consist of or incorporate the word “lifeproof”, including registration number 1393652 for the word trademark LIFEPROOF (registered from October 6, 2010, being a designation to Australia of International Trademark No. 1054602).

According to the Registrar’s verification response, the two disputed domain names were “created” (i.e., first registered) on July 6, 2015 and the Respondent is the current registrant of the disputed domain names.

The Respondent is an Australian company registered on April 30, 2013. It operates a website at “www.smartphoneprotection.com.au”. On December 1, 2015, the Respondent was given an Authorized Reseller Notice by OtterBox Hong Kong, which authorized the Respondent to sell genuine OtterBox and LifeProof products from the Respondent’s website.

On May 10, 2017, Otter Products Australia (with authorization from the Complainants) entered into a License Agreement with the Respondent. The License Agreement was stated to be in connection with the Authorized Reseller Notice, and provided that, to the extent to which its provisions contradicted or altered the provisions of the Authorized Reseller Notice, the provisions of the License Agreement governed. Under the License Agreement, the Respondent was authorized to use the disputed domain names for a period of six months to market and sell authentic OtterBox and LifeProof branded products, and any additional products approved by Otter Products Australia. The License Agreement commenced on May 10, 2017, was not renewed, and thus came to an end on November 10, 2017. The License Agreement provided that the Respondent must transfer the disputed domain names to Otter Products Australia within one month following the expiration date of the License Agreement.

On May 8, 2018, the Complainants’ solicitors wrote to the Respondent requesting that the disputed domain names be transferred to Otter Products Australia. No response was given to this demand. Following a telephone call from the Complainants’ solicitors to the Respondent, the Respondent by email dated June 5, 2018, stated: “I will be ready to transfer the domains by the 30th June”. Despite repeated further requests from the Complainants’ solicitors, and indications from the Respondent that it would do so, the Respondent failed to transfer the disputed domain names.

According to the Complainants, at the date of the filing of the Complaint the disputed domain name <lifeproofsuperstore.com.au> redirected to the website at “www.techproof.com.au” (the registrant of which is the Respondent), and the disputed domain name <otterboxsuperstore.com.au> resolved to the website that the Respondent operated during the period of the License Agreement. The Complainants provided screenshots which they asserted proved these uses of the disputed domain names. However, these screenshots are undated, and show neither the URL of the website that is depicted nor that the website was reached from the respective disputed domain name as alleged.

At the date of this Decision, the disputed domain name <lifeproofsuperstore.com.au> resolves to a web page with an error message concerning “No Start Page”, while the disputed domain name <otterboxsuperstore.com.au> resolves to the Respondent’s website at “www.techproof.com.au”.

5. Parties’ Contentions

A. Complainant

The Complainants contend that they have a specific common grievance against the Respondent and that the Respondent has engaged in common conduct that has affected them by hindering them from being able to reflect their respective trademarks in Australian domain names.

The Complainants contend that the disputed domain names are confusingly similar to the OTTERBOX and LIFEPROOF trademarks in which the First Complainant and the Second Complainant, respectively, own rights, and that the additional descriptive word “superstore” does not affect the assessment of confusing similarity, as a descriptive term contained within a domain name does not distinguish the domain name from a complainant’s registered trademark. In addition, the Complainants contend that consumers, upon viewing the disputed domain names, are highly likely to expect an association with the Complainants.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names because: (i) the Respondent was authorized to use the disputed domain names only until November 10, 2017, and was obliged to return them after that date; and (ii) the Respondent no longer had any rights or legitimate interest to use the disputed domain names once the License Agreement expired.

The Complainants contend that the disputed domain names, whilst not having been registered in bad faith as the Respondent was authorized to register them, are now being used in bad faith because: (i) the failure of the Respondent to return the disputed domain names is ostensibly borne out of the desire to prevent them from being used by a potential competitor; (ii) the Respondent’s conduct in failing to return the disputed domain names following the expiry of the License Agreement is an act of bad faith; and (iii) the Respondent is directing traffic aimed for the disputed domain name <lifeproofsuperstore.com.au> to the Respondent’s competing business.

B. Respondent

On September 3, 2018, the Respondent sent an email communication to the Center stating “Hi, can I just delete my sites? Kind regards Marilyn”. The Respondent did not submit a formal Response to the Complaint.

6. Discussion and Findings

A. Procedural Issue – Consolidation of Complaints

As explained in paragraph 4.16(i) of the of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), while the Policy and the Rules neither expressly permit nor expressly prohibit a consolidation of multiple complainants in a single complaint against a respondent, such a consolidation will be permitted where the multiple complainants have a “common grievance” against the respondent, subject to the general requirement that it is equitable and procedurally efficient to have consolidation.

It is clear to the Panel that the Complainants have a common grievance against the Respondent. The Complainants are part of the same corporate group. Another member of that corporate group entered (with the Complainants’ authorization) a License Agreement with the Respondent concerning the disputed domain names. The grievance that each Complainant has against the Respondent thus arises out of the same transaction, and is therefore common to them both.

It is also clear to the Panel that it is equitable and procedurally efficient for each Complainant’s complaint to be prosecuted in the consolidated Complaint. The facts of each complaint are very largely the same and the issues arising for consideration under the Policy are very largely the same. Furthermore, the Respondent has not objected to the Complainants’ complaints being consolidated.

For these reasons, the Panel permits the consolidation of each Complainant’s complaint against the Respondent.

B. Identical or Confusingly Similar

The disputed domain name <lifeproofsuperstore.com.au> incorporates the whole of the Second Complainant’s registered word trademark LIFEPROOF, and adds the word “superstore”. Similarly, the disputed domain name <otterboxsuperstore.com.au> incorporates the whole of the First Complainant’s registered word trademark OTTERBOX, and adds the word “superstore”. The distinctive component of each disputed domain name is the respective Complainant’s trademark that it incorporates. The addition of the descriptive word “superstore” does not prevent a finding of confusing similarity of the disputed domain names with the respective Complainant’s trademark. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which one of Complainants has rights.

C. Rights or Legitimate Interests

By virtue of the May 10, 2017, License Agreement that it entered with Otter Products Australia (which was acting with the authorisation of the Complainants), the Respondent agreed that the disputed domain names were the “exclusive property” of Otter Products Australia, and that within one month of the expiration of the License Agreement the Respondent “shall transfer, and hereby does transfer,” the disputed domain names to Otter Products Australia. The Complainants asserted, and the Respondent did not contest, that the License Agreement was not renewed after the initial six months of its term, and that it therefore came to an end on November 10, 2017. Despite numerous requests from Otter Products Australia, the Respondent has failed to transfer the disputed domain names in accordance with the License Agreement. In the absence of any argument by the Respondent to the contrary, the Panel finds that the terms of the License Agreement, and the Respondent’s failure to transfer the disputed domain names in accordance with the License Agreement, establishes that the Respondent currently does not have any rights or legitimate interests in the disputed domain names.

D. Registered or Subsequently Used in Bad Faith

The Complaints acknowledge that the Respondent was authorized to register the disputed domain names, and so their registration was not in bad faith. The Complainants assert, however, that the disputed domain names were subsequently, and are currently being, used in bad faith.

The Complainants’ evidence is insufficient to enable the Panel to determine with any certainty what use the Respondent made of the disputed domain names before, during and after the term of the License Agreement. However, the Panel has observed that, at the date of this Decision, the disputed domain name <lifeproofsuperstore.com.au> resolves to a web page with an error message, while the disputed domain name <otterboxsuperstore.com.au> resolves to a website at which the Respondent appears to offer for sale products that compete with the Complainants’ products.

As explained in paragraph 3.2 of the auDA auDRP Overview 1.0, where a domain name is initially registered in good faith pursuant to an agreement (e.g., a distributorship) between the complainant and respondent, and the respondent passively retains the domain name after the agreement concludes, this may constitute use in bad faith. This is particularly so if the domain name is seen as being retained by the respondent to assist in its negotiations over a dispute with the complainant. On these points, reference is made to the decisions in Cobb International Limited v. Cobb Australia & New Zealand (Pty) Ltd., WIPO Case No. DAU2013-0005; and Hill & Smith Limited v. LB International Pty Ltd., WIPO Case No. DAU2014-0008.

The Respondent’s repeated refusals to transfer the disputed domain name <lifeproofsuperstore.com.au>, despite assurances that it would soon do so, is strongly suggestive that the Respondent is retaining the domain name for the purpose of exercising bargaining leverage over the Complainants. In the Panel’s view, the retention of the disputed domain name for this purpose is a bad faith use of it.

The Respondent is using the disputed domain name <otterboxsuperstore.com.au> to resolve to a website at which it appears to offer for sale products that compete with the Complainants’ products. In the Panel’s view, such a use of the disputed domain name is in bad faith.

Accordingly, the Panel finds that both of the disputed domain names are being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, and consistent with the Complainants’ requests, the Panel orders that the disputed domain name <lifeproofsuperstore.com.au> be transferred to the Second Complainant, and that the disputed domain name <otterboxsuperstore.com.au> be transferred to the First Complainant.

Andrew F. Christie
Sole Panelist
Date: October 16, 2018

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/