WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Entrust Corporation (formerly Entrust Datacard Corporation) v. Unicard Systems Pty Ltd

Case No. DAU2021-0003

1. The Parties

The Complainant is Entrust Corporation (formerly Entrust Datacard Corporation), United States of America (“United States”), represented by Spruson&Ferguson Lawyers, Australia.

The Respondent is Unicard Systems Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <datacardaustralia.com.au> is registered with Synergy Wholesale Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2021. On January 15, 2021, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On January 18, 2021, Synergy 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” 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 January 21, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 23, 2021. 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 manufactures and supplies systems for the production of credit cards and associated products. It claims to provide its products and services to financial services providers, governments, corporations and other organisations. According to the Complaint, some of these customers include Microsoft, Mastercard, Visa, VMware and Polycom, amongst others.

The Complainant has some 2,500 direct employees. It operates its primary website from the domain name <datacard.com>. In Australia, it also uses <datacard.com.au>. It also has numerous other domain names.

In Australia, the Complainant has registered the following trade marks:

(a) Trade Mark No. 519036, DATACARD, in respect of “Automatic inserters for inserting plastic cards into transmittal forms; machines for embossing metal plates” in International Class 7 which has been registered from September 13, 1989;

(b) Trade Mark No. 519037, DATACARD, in respect of a range of apparatus and goods in International Class 9 which has also been registered since September 13, 1989; and

(c) Trade Mark No. 815110, DATACARD, in respect of a wide range of goods and services in International Classes 7, 9, 16, 17, 37 and 42 and which has been registered since November 24, 1999.

The Complainant has provided evidence indicating it has registered trade marks for, or relating to, DATACARD in numerous other countries around the world as well, including the United States, the European Union and China.

The Respondent appears to be a distributor of products for manufacturing equipment for the production of credit card type products, components and supplies therefor and associated maintenance and repair services. According to the Complainant, at some point in the past the Respondent acted as a reseller for one of the Complainant’s then distributors. That distributor is no longer an authorised distributor of the Complainant’s products and has not been for many years.

The Respondent registered the disputed domain name in May 2008.

Insofar as records crawled and stored by the Wayback Machine at the Internet Archive disclose, the disputed domain name appears to have been inactive until 2014.

From about December 2014, the disputed domain name began redirecting to the website at <unicard.com.au>, the Respondent’s website. From this website the Respondent offered for sale both the Complainant’s products and products of the Complainant’s competitors.

More recently, in 2020 the disputed domain name resolved to a webpage headed “Unicard”. The page then sets out information about several of the Complainant’s products with links to the Complainant’s website relating to those products. The Respondent’s page also included hyperlinks “Sale. Special Offer” and “Enquire Now”. Clicking on these links displayed a page stating:

“Salles Enquiries.
Call XXXXXXXXXXfor an immediate quote.”

“Unicard supplies a full range of consumables, from cards and printer ribbons, to all types of accessories. Please fill out the form below and ‘Submit’ to enquire further about Unicard and ordering details.”

Clicking on the “Home” hyperlink took one to the Respondent’s website at <unicard.com.au> where credit card production equipment and services are promoted. These are not products of the Complainant, but other brands.

In August 2020, the Complainant’s lawyers sent a cease and desist letter to the Respondent. No response to that letter was received.

At the time this decision is being prepared, the disputed domain name redirects to the Complainant’s homepage at <entrust.com>.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The physical co-ordinates to which written notice was sent include the address shown as the principal place of business in a Current and Historical Extract from the records of the Australian Securities and Investment Commission (ASIC). The courier deliveries were delivered and signed for. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

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 Complainant has proven ownership of three trade marks registered in Australia for DATACARD as well as in numerous other countries.

The disputed domain name contains the whole of that trade mark, clearly recognizable within the disputed domain name. In addition, the disputed domain name includes the geographic term “Australia” and the Second Level Domain, “.com.au”.

As the test of confusing similarity is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade marks and the Complainant’s trade mark is clearly recognizable as a whole within the disputed domain name, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trade mark: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. In addition, the Top-Level Domain component can be disregarded in undertaking the comparison as a functional requirement of the domain name system. See for example auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 1.2. In the context of the disputed domain name, the addition of the geographical term “Australia” may be disregarded too. See for example auDA auDRP Overview 1.0, section 1.9.

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. The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.

The Complainant states that it has not licensed or authorised the Respondent to register or use the disputed domain name. Nor is the Respondent in any way affiliated with the Complainant or its current distributor in Australia.

The disputed domain name is not derived from the Respondent’s name or, so far as the record in this case shows, any name which the Respondent has registered or by which it is commonly known.

As the redirection of the disputed domain name to the Complainant’s website appears to have occurred after the Complainant sent its cease and desist letter, that redirection is not as relevant as the previous use and, occurring after notice of the dispute, would not serve as a basis for finding the Respondent has rights or legitimate interests.

As noted above, the disputed domain name did resolve to a web page headed “Unicard” which displayed information about some of the Complainant’s products and invited potential purchasers to “Enquire Now”.

First, the Complainant contends that the Respondent does not in fact actually offer for sale and sell the Complainant’s genuine products. The Complainant claims this partly because neither it nor, apparently, its Australian distributor supply the Respondent. The Complainant also points to the page linked from the “Enquire Now” text and contends that this indicates that the Respondent is offering only to supply consumables and is really a “bait and switch” exercise. Accordingly, the Complainant contends that the Respondent cannot rely on the legitimacy accorded resellers which comply with the so-called Oki-Data test (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; auDA auDRP Overview 1.0 section 2.3). These requirements are:

(i) the respondent must actually be offering goods or services related to the trademark in respect of which the domain name is confusingly similar;

(ii) the respondent must offer only those goods or services in connection with the disputed domain name;

(iii) the respondent must have disclosed its true relationship with the owner of the trademark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and

(iv) the respondent must not have attempted to “corner the market” in domain names that reflect that trademark.

The Panel notes the Complainant’s claims that the Respondent does not in fact offer for sale the Complainant’s products so that, if that is the case, it would be clear that the disputed domain name is being used to attract prospective customers for the relevant card production equipment in an attempt to divert them to the other brands the Respondent apparently does supply.

In the circumstances, however, it is only necessary to find that at least the third Oki-data factor is not satisfied. The website to which the disputed domain name resolves does not clearly disclose the nature of the Respondent’s relationship, if any, with the Complainant. On the other hand, the use of the disputed domain name strongly suggests that the Respondent is the Complainant’s official representative in Australia. In addition, the Panel notes that the composition of the disputed domain name carries a very high risk of implied affiliation with the Complainant.

Accordingly, the Panel finds that the second requirement under the Policy has been satisfied also.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. That registration in bad faith or use in bad faith are disjunctive, not conjunctive requirements.

Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Paragraph 4(b) of the Policy provides that:

For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a 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 that website or location or of a product or service on that website or location; or

(v) if any of your 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 instances of bad faith set out in paragraph 4(b) of the Policy are examples only, intended to illustrate types of conduct which is caught by the Policy. See Do The Hustle, LLC v Tropic Web WIPO Case No. D2000-0624.

It appears that the Complainant’s products, and hence its trade mark, had been in use and available in Australia long before the Respondent registered the disputed domain name. It also appears, given the Respondent’s apparent involvement with one of the Complainant’s previous Australian distributors, that the Respondent was well aware of the Complainant and its trade mark before the Respondent registered the disputed domain name.

The registration of the disputed domain name, which is confusingly similar to the Complainant’s trade mark, in circumstances where the Respondent did not have the Complainant’s permission and does not otherwise have rights or a legitimate interest in the disputed domain name qualifies as registration in bad faith under the Policy.

Further, the form of the Respondent’s website for a number of years after December 2014 in which the disputed domain name redirected to the Respondent’s website at <unicard.com.au> which offered, without the Complainant’s permission, both brands competing with the Complainant’s products as well as the Complainant’s products constitutes use in bad faith under the Policy. Such conduct has the potential to divert customers and potential customers of the Complainant’s products to other brands. At the very least, such conduct directs the potential customer’s attention to products which are not the Complainant’s products and which might not otherwise come to the potential customer’s notice. That risk is further increased in the example pages in evidence as products from competing brands were listed before the Complainant’s products. Moreover, given the similarity of the disputed domain name to the Complainant’s trade mark, potential customers could well mistakenly think they were dealing with the Complainant or its agent.

The change in form of the website in 2020 also constitutes use in bad faith. As discussed in section 5B above, the Respondent at the least did not properly disclose the nature of its relationship (if any) with the Complainant on that form of website. Therefore, it was use of a domain name which was confusingly similar to the Complainant’s trade mark without the Complainant’s permission and could well mislead potential customers into thinking they were dealing with the Complainant or someone endorsed by or associated with the Complainant. Accordingly, it was seeking to take advantage of the Complainant’s trade mark without the Complainant’s permission for the Respondent’s commercial benefit. The bad faith nature of the use would be even clearer if, as the Complainant contends, the Respondent was not actually dealing in the Complainant’s products at all.

For these reasons, the Complainant has established the third requirement 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 domain name, <datacardaustralia.com.au>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: March 9, 2021