WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Natures Organics Pty Ltd v. Anstee Dalton Pty Limited

Case No. DAU2019-0026

1. The Parties

The Complainant is Natures Organics Pty Ltd, Australia, represented by LegalVision ILP Pty Ltd, Australia.

The Respondent is Anstee Dalton Pty Limited, Australia, represented by Blueprint Law Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <earthchoice.com.au> is registered with Domain Central Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2019. On August 27, 2019, the Center transmitted by email to Domain Central Pty Ltd a request for registrar verification in connection with the disputed domain name. On September 9, 2019, Domain Central 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 9, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2019. The Response was filed with the Center on September 28, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 14, 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 the manufacturer and supplier of a wide range of affordable household, skincare, and personal care products, which are promoted as environmentally friendly.

One of the Complainant’s brands is “Earth Choice”. Products marketed under this brand include dishwash liquids and tablets, laundry liquids and powders, spray and toilet cleaners, fabric softeners, and laundry treatments. According to the Complaint, the Complainant has been selling products under the “Earth Choice” brand since 1988. Products under the “Earth Choice” brand are sold throughout Australia through national chains such as Woolworths, Coles, IGA, Foodworks, Chemist Warehouse, and Big W. In addition to Australia, the Complainant’s “Earth Choice” products are also sold in New Zealand, Viet Nam, China, Indonesia, United Arab Emirates, Singapore, and Mauritius.

The Complainant has achieved considerable success with its “Earth Choice” brand. According to the Complaint, the Complainant’s turnover under the “Earth Choice” brand exceeded:

(a) in Financial Year 2012, AUD 20 million;

(b) in Financial Year 2015, AUD 27 million;

(c) in Financial Year 2016, AUD 31 million;

(d) in Financial Year 2017, AUD 58 million;

(e) in Financial Year 2018, AUD 57 million; and

(f) in Financial Year 2019, AUD 58 million.

The Complainant has also provided evidence of two registered trade marks in Australia:

- Registered Trade Mark No. 1158402, EARTH CHOICE, which has been registered in respect of a wide range of soaps, lotions, personal care products, and cleaning products in International Classes 3 and 5 since January 30, 2007; and

- Registered Trade Mark No. 1638806, EARTH CHOICE, which has been registered in respect of retail and wholesale sales services, customer loyalty schemes and consultation services including the provision of information and advice related to, amongst other things, non-medicated personal care and toiletry products, and cleaning products in International Class 35 since August 5, 2014.

The Respondent’s principal has a long history in marketing and has been involved in a number projects exploiting the benefits of emerging technologies. He has apparently been involved in numerous start-ups and provides strategic consulting services and mentoring services to a range of organisations.

The disputed domain name was registered on July 19, 2007.

The Respondent has provided evidence that it was the registrant at that time although in correspondence with the Complainant in 2014, the Respondent’s principal claimed it had acquired the disputed domain name only in 2012.

Further, on July 25, 2007, the Respondent registered the business name “Earth Choice Solutions”.

In April 2014, the Respondent emailed the Complainant. The Respondent advised the Complainant that he had discovered they shared a common brand name and he wished to “flag” that he was planning to launch an online store later this year offering an “environmentally sustainable shopping site” across a range of products and services as part of his business operation – “earthchoiceonline”. A draft outline of the planned offering was attached. The email concluded:

“I thought as a matter of courtesy I’d bring this to your attention to avoid any possible issues and consumer confusion that, as a consequence, may result. Please let me know if you have any concerns or suggestions about managing this.”

Perhaps predictably, the Complainant did have concerns and replied warning about the risks of trade mark infringement and consumer deception under the general law.

Over the next few weeks, further communications occurred. In the course of a telephone conversation it appears that the principal of the Respondent offered to sell the disputed domain name to the Complainant for AUD 80,000 ­­– although the parties dispute whether the Respondent volunteered that offer or made it in response to a request from the Complainant. In subsequent correspondence, the Respondent appeared to reduce its price for the disputed domain name to around AUD 35,000 to reflect market value and brand changeover costs. The precise amount, however, depended on the interest of unnamed third parties and negotiation.

At some point after this inconclusive exchange, the Respondent posted some narrative content on a website to which the disputed domain name began resolving. This website consists of three “pages” under the tabs, Store, About, and Contact. The landing page states (in part):

“Eathchoice is a new way to make decisions to reflect your desired environmental footprint

Earthchoice is a new way of thinking about our choices... what we buy, where it comes from and its environmental footprint. Now you can ensure your values and desires about our planet are reflected in what you buy and how you consume. Now we can make better choices.

A choice about what we want our impact to be on our limited resources, the choice about our future environment and what future our children will be left with. We are launching a whole new way to shop. Our earthchoice store is coming soon.

Earthchoice is a new way of consuming with the right knowledge to reflect our individual preferences. It is a new way to take care of our planet, earthchoice is a whole new approach to consuming, from the type of energy and the impact of what we use. We all need to understand the full impact of our decisions on our planet, earthchoice enables us to consume smarter to meet out desired environmental footprint.”

Much the same content is repeated on the “About” page. The “Contact” page invites people to provide their email addresses to be kept up to date with developments.

In June and July 2019, an exchange of letters between lawyers for the parties took place.

On August 27, 2019, a marketing consultant acting for the Complainant approached the Respondent with a request about the price to buy the disputed domain name.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark, or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.

The Complainant has proven ownership of the registered trade marks for EARTH CHOICE identified in section 4 above. Having regard to the volume and extent of sales of the Complainant’s products under the EARTH CHOICE trade mark, which is prominently displayed on and in relation to the Complainant’s products and services, the Panel also finds that the Complainant has established a substantial reputation in Australia, at least, in its trade mark which would give rise to rights at common law to prevent passing off and under the general law to prevent misleading or deceptive conduct.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location, or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Disregarding the Second Level Domain, “.com.au”, the disputed domain name is identical to the Complainant’s proven trade mark. Accordingly, the Panel finds that the Complainant has established the first requirement under the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.

It is not in dispute between the parties that there is no association or affiliation between the Complainant and the Respondent.

The Complainant points to the long dormancy of the disputed domain name and (to use the Complainant’s words) the “generic and vague” content of the current website to contend that it is a sham. Accordingly, it contends that the Respondent has not made any genuine use, commercial or otherwise, of the disputed domain name. The Complainant further contends that it is difficult to conceive of a commercial use which the Respondent could legitimately make of the disputed domain name at this point in time which would not involve an infringement of the Complainant’s trade mark or contravention of the Australian Consumer Law.

Having regard to the volume and extent of the Complainant’s use of its trade mark in Australia (since at least 2012), the apparent dormancy of the disputed domain name until at least 2014 and the apparently limited nature of the use since that date (although the disputed domain name was registered in 2007), the Panel finds that the Complainant has made out a prima facie case under this requirement of the Policy.

The Respondent disputes the Complainant’s allegations at many levels.

The Respondent denies that it, or its principal, had any knowledge of the Complainant’s trade mark when the Respondent registered the disputed domain name in 2007. It also points out that the Complainant has not provided any objective evidence to support its claim to use of the trade mark continuously since 1988, or any evidence of sales volumes or promotional efforts in or before 2007.

Ultimately, the Panel does not find these matters determinative as the issue under this element of the Policy is in the main directed to the legitimacy of the nature of the use the Respondent has made, or is making of, the disputed domain name, particularly where (as here) the Respondent advances its use of, or demonstrable preparations to use, the disputed domain name to rebut the allegation of lack of rights or legitimate interests.

In that connection, the Respondent says it has been developing its plans for a business of the kind currently described on its website since it registered the disputed domain name. It contends these activities fall outside the scope of any legitimate claims the Complainant could make. It says its website is an informational website which clearly describes the Respondent’s “Earth Choice Solutions” business which the Respondent has been engaged in developing since 2007. It says there is nothing unusual in long gestation periods for such businesses. By way of example, the Respondent points out that it spent some seven years developing projects related to health and ageing.

The Panel accepts that the Policy recognises a registrant has no obligation to commence using a domain name immediately or, indeed, within any specified time frame. So much follows from the recognition in paragraph 4(c)(i) that rights and legitimate interests may be established when a respondent can show demonstrable preparations to commence use in connection with a good faith offering of goods or services.

The most striking features of the present case are the very long time the disputed domain name has been registered and what has every appearance of being at best sketchy use. By the Respondent’s own admission, it had not started using the disputed domain name until 2014. At that time, the Respondent foreshadowed it was proposing to launch “an online store offering later this year of an ‘environmentally sustainable shopping site’ across a range of products and services as part of our business operation earthchoice online”.

As the Complainant contends, that does not appear to be the same type of use which is now foreshadowed on the website to which the disputed domain name resolves.

The Panel agrees with the Complainant that the business case and the content of the Respondent’s website are quite vague. Neither reflects what one would expect from someone with the expertise and years’ of experience of the Respondent’s principal. They do not reflect the years of work which the Respondent claims it has been investing in developing its plans. In the 2014 correspondence, the Respondent justified the very substantial price it indicated it would be prepared to sell the disputed domain name for by reference to the registration and set-up fees for the business which had been incurred to that date as well as interest from unspecified third parties. Similar claims to the expenditure of money, time, and effort underlie the Response. However, the Respondent has not sought to identify what expenditures have been incurred or in what ways the time and effort have been spent. Identification of these types of matters supported by objective, contemporaneous records such as receipts or the like are vital in a case such as the present where the evidence of use that has been provided appears inconsistent and tenuous, especially having regard to the time frames and expertise involved.

In addition, it is to be recalled that the Respondent proposed to sell the disputed domain name; initially for a sum of AUD 80,000 and, on being challenged, intimated offers in the range of AUD 35,000 might be received positively. The Respondent has not provided any evidence of the third parties who were allegedly interested in the disputed domain name at that time or of the nature of their proposed businesses. Most importantly, by the time the Respondent advanced these amounts, whether as offers or invitations to treat in response to a request from the Complainant, the Respondent was clearly aware of the Complainant and its trade mark. As noted above, the Complainant had developed a very substantial reputation in its trade mark by that time. As the Complainant’s business was well established and successful, it appears likely that, at that point, the Respondent fully appreciated that the value of the disputed domain name lay in its correspondence to the Complainant’s trade mark.

Panels have not been willing to countenance such conduct qualifying as good faith use under the Uniform Domain Name Dispute Resolution Policy (UDRP). See e.g. Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540 and Christopher Lane v. JInsoo Yoon (Kukmin), WIPO Case No. D2019-1388 (both in the context of registration and use in bad faith). In view of the similarities of wording and objectives between the Policy and the UDRP, the Panel considers their reasoning is equally applicable under the Policy.

The Panel therefore considers the Respondent has not established the justification provided by paragraph 4(c)(i) of the Policy in rebuttal of the Complainant’s prima facie case.

The Respondent points out that the Complainant’s application to register the trade mark in class 35 was made only after the Respondent disclosed the nature of its intended business in 2014. The difficulty with this argument is that the Complainant’s trade mark is registered and subsisting. The Respondent has not sought to have that registration revoked on the grounds of bad faith or some other applicable ground. Nor has the Respondent advanced evidence which would support such a claim. Rather, it argues (or at least suggests) that the Complainant has not disproved bad faith on the Complainant’s part.

The fact that the Complainant operates other brands in addition to “Earth Choice” or markets its “Earth Choice” range under the “Nature’s Organics” flag also does not assist the Respondent in light of the Complainant’s clearly established rights in EARTH CHOICE, both through trade mark registration and at common law.

Accordingly, the Panel finds that the Complainant has established the second element under the Policy.

C. Registered or Subsequently Used in Bad Faith

Unlike the UDRP, the requirements of registration in bad faith and use in bad faith are disjunctive. It is only necessary for the Complainant to prove that the disputed domain name was either registered or used in bad faith. It is not necessary to prove both elements.

Whatever may have been the case in 2007, it is clear that the Respondent was well aware of the Complainant and its activities in 2014 when the Respondent contacted the Complainant to advise it was planning to launch an online shopping site later that year. The reasons which led the Panel to conclude in section 5B that the Respondent’s conduct did not qualify as good faith use, or demonstrable preparations to use the disputed domain name in good faith, lead correspondingly to the conclusion that the Respondent has been using the disputed domain name in bad faith as that term is understood under the Policy.

The Panel notes that the time which has elapsed since the communications in 2014 is not so long as to exceed the statute of limitations prescribed for trade mark infringement or for actionable contraventions of the Australian Consumer Law - six years. Moreover, in the circumstances outlined above, the Respondent has not pointed to prejudice it has suffered as a result of the passage of time.

Accordingly, the Panel finds that the Complainant has established the third element under the Policy.

6. 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 disputed domain name <earthchoice.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: October 21, 2019