WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tangle Teezer Limited, Shaun Pulfrey v. Betrina Hill, The trustee for Hill Family Trust
Case No. DAU2019-0006
1. The Parties
The Complainants are Tangle Teezer Limited (First Complainant) and Shaun Pulfrey (Second Complainant) of London, United Kingdom, represented by Corrs Chambers Westgarth, Australia.
The Respondent is Betrina Hill, The trustee for Hill Family Trust, of South Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <tangle-teezer.com.au> (“Disputed Domain Name”) is registered with Uber Australia E1 Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2019. On March 21, 2019, the Center transmitted by email to Uber Australia E1 Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2019, Uber Australia E1 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” 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 April 4, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2019.
The Center appointed John Swinson as the sole panelist in this matter on May 7, 2019. 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 is Tangle Teezer Limited, a company incorporated in the United Kingdom. The First Complainant was founded in 2007 and manufacturers and sells hairbrushes. The Second Complainant is the founder of the First Complainant.
The Second Complainant is the owner of a number of trade marks for TANGLE TEEZER, including Australian registered trade mark number 1229308, registered on January 25, 2008 (the “Trade Mark”). The First and Second Complainants entered into a license agreement, whereby the Second Complainant granted the First Complainant a license to use the Trade Mark. The First Complainant is the owner of a number of domain names which incorporate the Trade Mark, being <tangleteezer.com> and <tangleteezer.com.au>.
The Respondent is Betrina Hill, the trustee for Hill Family Trust. Betrina Hill is the CEO of Phoenix Nationale Pty Ltd, a company which entered into a Distribution Agreement with the First Complainant. The Complainants submit that the Hill Family Trust and Phoenix Nationale Pty Ltd are both controlled by an individual named Betrina Hill. No response was received from the Respondent and therefore little information is known about the Respondent.
The Disputed Domain Name resolves to a website with Phoenix Nationale branding and a notice that states “We are moving to ‘www.phoenixnationale.com.au’”. This site sells a variety of hair related products.
The Distribution Agreement
On January 1, 2014, the First Complainant entered into a distribution agreement with Phoenix Nationale Pty Ltd, appointing Phoenix Nationale as the distributor of the First Complainant’s products in Australia for a period of 3 years (the “Distribution Agreement”).
The Distribution Agreement allowed the Respondent to hold a domain name for the First Complainant on trust, which could be transferred to the First Complainant upon request. The Complainants have provided evidence that the Distribution Agreement was terminated by the First Complainant on June 27, 2018.
5. Parties’ Contentions
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety.
Rights or Legitimate Interests
The Respondent was authorized to use the Disputed Domain Name until August 27, 2018. This is 60 days after the termination of the Distribution Agreement. Since this date, the Respondent has not been authorized to use the Disputed Domain Name. The Respondent no longer has any rights or legitimate interests to use the Disputed Domain Name.
Registered or Subsequently Used in Bad Faith
The Complainants accept the Disputed Domain Name was not registered in bad faith as the Respondent was authorized to do so pursuant to the terms of the Distribution Agreement. However, the Respondent is no longer authorized to use the Trade Mark and is doing so in bad faith.
The Respondents did not reply to the Complainants contentions.
6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have 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 has subsequently been used in bad faith.
The onus of proving these elements remains on the Complainants even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainants (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.
Paragraph 4(f) of the Rules establishes that the Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by auDA.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels 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.
In this instance, the Second Complainant is the owner of the Trade Mark and has licensed the use of the Trade Mark to the First Complainant. Therefore, the Complainants have a common grievance against the Respondent. The Panel finds that it is procedurally efficient to permit the consolidation.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview”)).
In this case, the Disputed Domain Name is identical to the Trade Mark, with only a hyphen added. The Panel considers that the Disputed Domain Name is identical to the Trade Mark and the Complainants succeed on the first element.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
In this case, the Respondent was authorized to use the Trade Mark in the Disputed Domain Name in accordance with the Distribution Agreement, which was signed by the Parties on January 1, 2014. The Complainants have provided evidence that the Distribution Agreement was terminated by the First Complainant on June 27, 2018. As per the Distribution Agreement, the Respondent was only authorized to use the Trade Mark in the Disputed Domain Name for 60 days after the termination of the Distribution Agreement. Therefore, from August 27, 2018 the Respondent no longer had the right to use the Trade Mark in the Disputed Domain Name.
The question of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name is determined at the time the Complaint is filed. Given the Distribution Agreement is no longer in force, and the Complainants have made it clear the Respondent does not have permission to continue using the Disputed Domain Name, it is evident that the Respondent currently has no rights or legitimate interest in the Disputed Domain Name. The panel in ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014, which involved continued use of a domain name following termination of a distribution agreement, came to a similar conclusion.
In the interest of certainty, the Panel has also given consideration to the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and the principles described in that decision in relation to bona fide use of a domain name by a reseller. The panel in Oki Data stated that a reseller or distributor (and particularly an authorized reseller or distributor) can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
The Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner, however this is an exception to a general rule (see Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd, WIPO Case No. DAU2015-0013). In this case, the Respondent does not meet the requirements of the Oki Data test because:
- the Respondent is not using the website at the Disputed Domain Name to sell any goods or services;
- the Respondent does not accurately disclose the Respondent’s relationship to the Complainants on the website at the Disputed Domain Name;
- the website at the Disputed Domain Name contains a note stating “We are moving to ‘www.phoenixnationale.com.au’”; and
- it appears that the Respondent is using <www.phoenixnationale.com.au> to sell a variety of competing hair‑related goods.
For these reasons, the Panel finds that the Respondent does not currently have rights or legitimate interests in the Disputed Domain Name. The Complainants succeed on the second element of the Policy.
D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.
Unlike the equivalent provision in the Uniform Domain-Name Dispute-Resolution Policy, the word “and” is not used in the Policy and therefore the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise.
The Complainants concede that the Respondent did not register the Disputed Domain Name in bad faith as the Respondent was authorized to do so pursuant to the terms of the Distribution Agreement.
However, since the termination of the Distribution Agreement the Respondent has not given up the Disputed Domain Name. Previous panels have found that the failure to return a disputed domain name at the end of a license or distribution agreement amounts to use in bad faith (Hill & Smith Limited v. LB International Pty Ltd, WIPO Case No. DAU2014-0008).
The Complainants have made a number of attempts to contact the Respondent to have the Disputed Domain Name returned. The Complainants have submitted evidence that the Respondent requested offers above GBP 50,000. In these circumstances, the Respondent’s offer to sell the Disputed Domain Name for an amount far in excess of its out-of-pocket costs directly related to the Disputed Domain Name is further evidence of bad faith use.
The Respondent is also using the website at the Disputed Domain Name to promote its own website at “www.phoenixnationale.com.au”, which sells products that compete with those offered by the Complainants. It is clear to the Panel that the Respondent is using the Disputed Domain Names to profit in some fashion from, or otherwise exploit, the Trade Mark.
The Respondent had the opportunity to demonstrate good faith use but did not do so. The Complainants succeeds on the third element 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 <tangle-teezer.com.au> be transferred to the Complainants.
Date: May 17, 2019