WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Woolworths Limited v. Cracka IP Pty Ltd., Calvie Brodie

Case No. D2011-1574

1. The Parties

The Complainant is Woolworths Limited of Bella Vista, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Cracka IP Pty Ltd., Calvie Brodie of Pyrmont, New South Wales, Australia, represented by Baker & Mckenzie, Australia.

2. The Domain Names and Registrar

The disputed domain names <danmerphys.com>, <danmurphyswines.com>, <danmurphywines.com> and <langtonswines.com> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2011. On September 19, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain names. On September 20, 2011, Aust Domains International Pty Ltd dba Aust Domains, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2011. On October, 21, 2011, the Center received an email communication from the Respondent, whereby it asked for an extension for submitting a response. On the same day, the Center acknowledged receipt of Respondent email communication, reminded Respondent that the due date for response was October 19, 2011 and stated that unless the Center heard otherwise from the Complainant, the Center would proceed to appoint the single-member panel to decide the case, as requested in the Complaint, and the parties would be notified accordingly. However, the Center stated that if Respondent wished to make a late Response to the Complaint, the Center would bring it to the Panel’s attention (when appointed), and it would be at the sole discretion of the Panel to consider it. On October 27, 2011, the Respondent transmitted by email to the Center its response along with its annexes. On October 27, 2011, the Center acknowledged receipt of Respondent’s late Response and stated that it would be forwarded to the Panel (upon appointment) for its consideration.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 31, 2011. 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 facts relevant to the Findings and Decision in this case are that:

The Complainant owns a nationwide chain of supermarket stores located throughout Australia.

The Complainant is also the owner of the liquor chain store, “Dan Murphy’s”, and wine auction clearing house “Langton’s”.

The Respondent is an online liquor retailer which trades under the name “Cracka Wines”.

The disputed domain names were registered during March and June, 2011.

The disputed domain names are parked and/or inactive.

There has been no commercial or other relationship between the parties.

In reply to a pre-Complaint letter of demand from the Complainant’s representative solicitors, the Respondent indicated it would sell the disputed domain names to either the Complainant or some third party.

The Complainant requests the Panel to order transfer of the disputed domain names from the Respondent to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts trade mark rights in the terms DAN MURPHY and LANGTON’S and alleges that the disputed domain names are confusingly similar to the trade marks.

The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.

B. Respondent

(i) Procedural Issue – Late Response

A preliminary issue for the Panel to decide is whether the out-of-time Response should be taken into account in reaching the Decision.

Whilst that determination is entirely at the Panel’s discretion, regard has been paid in part to factors which former UDRP panelists have regarded as influential, such as the reasons for the late response, the degree of lateness, and the character of the response.

In this case, the due date for Response was October 19, 2011. On October 21, 2011, after the Center had notified the Respondent of its default, the Center received an email communication from the Respondent’s representatives requesting an extension of time for submission of the Response. The Center properly advised the Respondent that unless the Center heard otherwise from the Complainant, the Center would appoint the Panel and if the Respondent made a late Response, it would be at the sole discretion of the Panel to consider it. On October 27, 2011 a late Response was filed.

The Rules do not provide for extensions of time for the filing of a response. As a matter of practice, the parties can mutually request suspension of the Administrative Proceedings. The reason given by the Respondent’s representatives to excuse the failure to comply with the due date was that “our client has been attempting to open a dialogue with the Complainant …but these discussions have not as yet enabled any resolution of the matter…” In the Panel’s view, the October 21, 2011 email made it plain that the Respondent had not instructed its representatives until two days after the due date for response and the Panel is of the opinion that there is nothing to support to assertions made in the October 21, 2011 email. The Complaint is counter-indicative of those assertions and the fact that the Complainant did not request suspension of the proceedings speaks for itself. The Response was filed more than a week late. The Panel weighs that significant delay within the context of the timelines of the Rules and the object of the Policy. Finally, the Panel has read the Response and finds that the submissions put forward are generally unmeritorious and do not meet the allegations of the Complaint in any compelling manner.

The Panel finds that in this case there is nothing to cause it to exercise its discretion in favor of the Respondent by way of admitting the out-of-time Response to the record.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the complainant must prove, in each case, that:

(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.

Having considered the Complaint and the accompanying evidence, the Panel makes the following findings.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trade mark.

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy¹. The Panel finds that the Complainant has rights in the trade mark DAN MURPHY by reason of Australian trade mark registration number 505479 for that word mark.

Langtons Pty Ltd is a wholly owned subsidiary of the Complainant. Langtons has sold wine under that name in Australia since 1988 and, for the purposes of the Policy, the Panel finds that Complainant has common law rights in the trade mark LANGTON’S.

The remaining question is whether the disputed domain names are confusingly similar to the respective trade marks. For the purposes of testing confusing similarity, the generic top-level domain “.com” can be ignored.² The disputed domain names then differ from the trade marks by either phonetically identical misspelling of the trade mark or by the addition of the utterly descriptive word “wines”. Countless earlier decisions under this Policy have held that the addition of a non-distinctive integer to a trade mark does little or nothing to avoid confusion.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade marks and so finds that the Complainant has satisfied the first limb of the Policy in respect of each domain name.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant needs to only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests³.

Paragraph 4(c) of the Policy states that 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, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

“(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 trademark 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.”

The publicly available WhoIs information does not support any conclusion that the Respondent might be commonly known by any of the disputed domain names. There is no evidence that the Respondent has trade mark rights in the disputed domain names, registered or not. The Respondent has not provided any evidence that it used the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute. There is no relationship between the parties and they are competitors in the same market.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Response has not been admitted and so it follows that the Respondent has failed to discharge the burden of production to show that it has rights or legitimate interests in the disputed domain names.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and therefore, the Complainant has satisfied the second element of the Policy in respect of each disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:

“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 the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, 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 the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iii) of the Policy. The Complainant provides evidence that the Respondent has not only targeted it, but other major Australian wine retailers, Cellarmasters, Vintage Cellars, and Liquorland, permutations of whose names have been registered as domain names by the Respondent. There is no credible bona fide explanation for the Respondent’s actions and, as shown, no reason why the Respondent should have any legitimate interest in the disputed domain names.

The Panel finds that the disputed domain names were registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <danmerphys.com>, <danmurphyswines.com>, <danmurphywines.com> and <langtonswines.com> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist
Dated: November 14, 2011

¹ See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

² See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

³ See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.