WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bauer Hockey Ltd. v. Ben Southee, Sports Monster Pty Limited
Case No. DAU2019-0025
1. The Parties
The Complainant is Bauer Hockey Ltd., Canada, represented by React, Brazil.
The Respondent is Ben Southee, Sports Monster Pty Limited, Australia.
2. The Domain Name and Registrar
The disputed domain name <bauerhockey.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 August 23, 2019. On August 23, 2019, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Domain Name. On September 3, 2019, 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 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 September 3, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2019. The Center received an email communication from the Respondent on September 19, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 25, 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 Complainant is a Canadian company that has for over 80 years been involved in the manufacturing of ice hockey equipment, such as sticks, gloves, pads, helmets, and apparel. The Complainant is the owner of an Australian trade mark registration for the word BAUER (the “BAUER Mark”). The BAUER Mark (trade mark no. 355918) was registered on January 28, 1981, in various classes for clothing and sports equipment relating to the sport of ice hockey.
According to the verification provided by the Registrar, the Domain Name, <bauerhockey.com.au>, was registered on February 2, 2017. The Complaint states that the Domain Name was registered on March 11, 2012. This uncontested statement is supported by an email from the .au Domain Administration annexed to the Complaint. Ultimately, the decision in this matter does not turn on the date on which the Domain Name was registered and so the Panel will operate on the basis that the Domain Name was registered on March 11, 2012.
The Domain Name is presently inactive but prior to the notification of the Complaint, the Domain Name resolved to a website (the “Respondent’s Website”) located at “www.icemonster.com.au”. The Respondent’s Website prominently identifies itself as “Ice Monster” and offers various ice skating products for sale including those of the Complainant and its competitors.
The Complainant characterizes the Respondent (or the individuals behind the Respondent) as former distributors of the Complainant’s products, though the Respondent suggests that it continues to sell the Complainant’s products, which it acquires from third parties rather than the Complainant’s official Australian distributor. The distribution relationship between the parties broke down in 2010, following which on June 24, 2011, the Complainant sent a letter of demand to the Respondent requesting that it cease using images in which copyright was held by the Complainant on its website and cease passing itself off as being connected with the Complainant. The Respondent responded on July 1, 2011, indicating that it had taken down all copyrighted material but would continue to sell the Complainant’s official products through its website.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BAUER 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 BAUER Mark, having registered this mark in Australia since 1981. The Domain Name is confusingly similar to the BAUER Mark since it wholly reproduces the BAUER Mark.
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 sells the Complainant’s products does not grant the Respondent the right to use the Domain Name, since it is being used in bad faith to divert customers from the Complainant’s official distributors to the Respondent’s Website, where it sells products from several of the Complainant’s competitors. 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 and its official distributor to the Respondent. The use of the Domain Name falsely represents that the Respondent has a connection with the Complainant.
The Respondent sells ice skating equipment and its main brand sold is the Complainant’s branded Ice‑skating equipment. The Respondent, prior to 2010, purchased products from the Complainant’s official distributor, but due to issues with the distributor, now sources its authentic BAUER products from third parties. The Respondent has never tried to pass itself off as a subsidiary or official distributor of the Complainant but it does promote the Complainant’s brand and clearly identifies that it sells the Complainant’s equipment. The Respondent believes that no confusion will arise as the Respondent is just one of many resellers of the Complainant’s equipment in Australia. The Domain Name was registered (and preparations are underway) for its use to sell the Respondent’s catalogue of the Complainant’s products.
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 BAUER Mark, having registrations for the BAUER Mark as a trade mark in Australia.
The Domain Name <bauerhockey.com.au> incorporates the BAUER Mark in its entirety, along with the descriptive word “hockey”. As the BAUER Mark is wholly incorporated, the Panel finds that the Domain Name is confusingly similar to the BAUER 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BAUER Mark or a mark similar to the BAUER Mark. The Respondent does not argue that it is commonly known by the Domain Name or is making a legitimate noncommercial 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 intends to use the Domain Name for a separate website to the Respondent’s Website, apparently for the sale of the Complainant’s products.
The Domain Name has been registered for 7 years and the Response provides no evidence of any demonstrable preparations to create a separate website and, as such, ground (b) can be dismissed.
The Domain Name is currently inactive but the evidence in this matter is that prior to the proceeding the Domain Name redirected visitors to the Respondent’s Website at “www.icemonster.com.au”. The Respondent’s Website appears to be selling the Complainant’s genuine branded BAUER products. For the purpose of this decision the Panel accepts the Respondent’s evidence that the goods sold on the Respondent’s Website are genuine BAUER products, purchased 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 section 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. These 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 is a general retail website offering a wide variety of ice hockey products, including products produced by the Complainant’s competitors. The BAUER Mark is being used to bait Internet users and then switch them to other goods. By reason of this fact, 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.
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 registration 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 the 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, however in the interest of completeness the Panel has considered both whether the Domain Name has been registered and used in bad faith.
The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered, as the Respondent was and is involved in the sale of the Complainant’s products. The registration of the Domain Name in awareness of the Complainant and its rights in the BAUER Mark and in the absence of rights or legitimate interests on the part of the Respondent amounts to registration in bad faith.
The Domain Name, which wholly incorporates the Complainant’s BAUER Mark, has been used by the Respondent to redirect visitors to the Respondent’s Website, a website where the Respondent offers a wide variety of ice hockey products including 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 registered and is using the Domain Name in bad faith under 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 Domain Name <bauerhockey.com.au> be transferred to the Complainant.
Date: September 27, 2019
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.