WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Australian Postal Corporation v. Pak William

Case No. D2019-0129

1. The Parties

The Complainant is Australian Postal Corporation of Melbourne, Australia, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Pak William of Tampa, Florida, United States.

2. The Domain Name and Registrar

The disputed domain name <auspostcorp.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 28, 2019.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 27, 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 operates the Australian postal service, which has existed in its present form as a company since 1975. It has about 4,356 post offices, directly employs 35,000 people, and reported revenue of AU$ 134.2 million in 2018.

The Complainant owns a number of trademarks including:

AUSPOST, Australian trademark, registered June 7, 2010, registration number 1365414, classes 35, 36, 38, 39;

AUSTRALIA POST, Australian trademark, registered August 30, 1995, registration number 759014, classes 16, 35, 36, 38, 39;

AUSTRALIA POST, Australian trademark, registered August 11, 2009 registration number 1314374, class 36;

AUSTRALIA POST, Australian trademark, registered August 25, 2009, registration number 1317044, classes 9, 35, 38, 42, 45.

The Complainant also owns 96 domain names including <auspost.com.au> and <auspost.com>.

Nothing is known about the Respondent except for such contact details as were provided to the Registrar at the time of registration of the disputed domain name, which was registered on October 10, 2018 and is held through a privacy service. The disputed domain name resolves to an otherwise blank page stating that its server is unknown.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) in the disputed domain name, in this case “.com”, should be disregarded. The remainder comprises the Complainant’s trademark AUSPOST, with the addition of “corp”, being a common abbreviation for “corporation”, which is similar to the Complainant’s business name “Australian Postal Corporation”.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant owns and has the exclusive right to use the trademark AUSPOST, which the Respondent has not been authorised by the Complainant to use or to incorporate into the disputed domain name. The Respondent is not commonly known by the disputed domain name but as “Pak William”. The Respondent’s use of a privacy service is further indicative of a lack of legitimate interest. The Complainant says the disputed domain name redirects Internet users to a website with a blank page and is therefore not in any legitimate use.

The Complainant says the registration date of the disputed domain name on October 10, 2018 is later than the filing date and effective registration date of the Complainant’s Australian trademark AUSPOST on June 7, 2010, and also significantly later than the Complainant’s first use in commerce of its trademark in 1975.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant is well known internationally and at the time of registration of the disputed domain name, the Respondent knew or should have known of the existence of the Complainant’s AUSPOST and AUSTRALIA POST trademarks. An Internet search for “auspost corp” returns multiple links referencing the Complainant and its business. The Complainant is represented on Facebook, Twitter and LinkedIn.

The Complainant says the timing of the registration of the disputed domain name is significant in indicating opportunistic bad faith and that the Respondent knew about the Complainant. The Complainant’s advertising agency launched a nationwide “Everyone Matters” campaign in Australia on July 23, 2018, and the disputed domain name was registered on October 10, 2018.

The Complainant submits, citing previous decisions under the Policy, that in all the circumstances, the non-use or passive holding of the disputed domain name does not preclude a finding that it is being used in bad faith. The disputed domain name can only be taken as intending to cause confusion with the Complainant’s trademark among Internet users. The Respondent must be holding the disputed domain name for some undefined future use, but any such use would be in bad faith and no good faith use is plausible that would not infringe the Complainant’s rights.

The Complainant says that the Respondent’s use of a privacy service to hold its registration, which may hinder the identification of the underlying registrant, is also indicative of bad faith

The Complainant has cited a number of previous decisions under the Policy that it considers should support its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith”.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the holder of the registered trademark AUSPOST. The disputed domain name is <auspostcorp.com>, of which the gTLD “.com” may be disregarded in the determination of confusing similarity. What remains is “auspostcorp”, which may be read as “auspost”, being identical to the Complainant’s registered trademark, and “corp”, being a universally recognised abbreviation for “corporation”. The entirety of the Complainant’s trademark is prominently displayed in the disputed domain name and the additional element “corp”, referring to a corporation or company, is found not to prevent confusing similarity. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted a prima facie case to the effect that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has the exclusive right to use the AUSPOST trademark, which the Respondent has not been authorised to use or to incorporate into a domain name. The registration date of the disputed domain name was October 10, 2018, which is later that the filing and effective registration date of the Complainant’s Australian trademark AUSPOST on June 7, 2010, and later than the Complainant’s first use in commerce of its trademark in 1975.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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 trademark or service mark at issue”.

The Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. The screen capture produced by the Complainant showed the disputed domain name to be redirected to a blank page and there is no evidence it has been used in bona fide commerce or for any fair or noncommercial purpose. The Respondent is not evidently commonly known by the disputed domain name, but as “Pak William”.

On the available evidence, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 trademark 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 trademark 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 website or location or of a product or service on your website or location”.

The screen capture of the website to which the disputed domain name has resolved provides no indication of its contemplated future use. The screen capture showed the message “This site can’t be reached” and “auspostcorp.com’s server IP address could not be found”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. It is not essential under the Policy to establish the use or intended use of the disputed domain name, or for it to be in active use, or for the Respondent to have decided on a future use.

On the totality of the evidence, the disputed domain name has been constructed to feature the Complainant’s trademark and a benign generic word. It was registered some eight years later than the filing date of the Complainant’s trademark and less than two months after a major advertising promotion by the Complainant, featuring its trademark. The Complainant, as the major Australian postal service, is of sufficient scale and international presence, with recent annual revenue in the region of AU$ 130 million, and with an active presence on social media such as Facebook, Twitter and LinkedIn, that it may reasonably be concluded that the Respondent was aware of it and of its trademarks.

In all the circumstances it is not reasonably possible to conceive of, and the Respondent has chosen not to advance, any plausible use by the Respondent of the disputed domain name that would not be in bad faith and in conflict with the Complainant’s rights in its trademark. In circumstances such as are found in this case, non-use of the disputed domain name for an active purpose is no impediment to a finding of use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the totality of the evidence and on the balance of probabilities, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 name <auspostcorp.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: March 7, 2019