WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Minespec Services Pty Ltd v. MINESPEC.COM, Cleanrite Australia Pty Ltd, Minespec Compliance Pty Ltd

Case No. DAU2012-0019

1. The Parties

The Complainant is Minespec Services Pty Ltd, of Emerald, Queensland, Australia, represented by IP Strategies International, Australia.

The Respondents are MINESPEC.COM, Cleanrite Australia Pty Ltd, of Keswick SA, Australia, and Minespec Compliance Pty Ltd of Benowa, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <minespec.com.au> is registered with Enetica.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2012. On June 18, 20, and 22, 2012, the Center transmitted by email to Enetica a request for registrar verification in connection with the disputed domain name. On June 19 and 23, 2012, Enetica 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 Registrar’s confirmation indicated that the registrant’s was “Minespec.com”, with the contact details for that registration being Helen Patiniotis, Escape Net, with an address in South Australia (which corresponded to the address of the respondent, Cleanrite Australia Pty Ltd).

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 27, 2012. In particular, the Amended Complaint, indicated that “Minespec.com” is a business name of “Cleanrite Australia Pty Ltd”. (For convenience, the Complaint and the Amended Complaint are referred to as “the Complaint” in this decision.)

The Center verified that the Complaint and the amended 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 June 29, 2012.

In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2012. An initial Response was received by the Center June 29, 2012, prior to the formal notification of the dispute. Due to an error by the courier company used by the Center to fulfill its obligations under paragraphs 2(a) and 4(a) of the Rules, the new due date for submission of any Response was extended to July 26, 2012. A revised Response was received by the Center on July 17, 2012. In submitting the revised Response, the Respondent asked that the earlier response be ignored.

On July 18, 2012, the Complainant filed a supplemental submission, alleging ‘inconsistencies’ between the Response filed on June 29, 2012, and the Response filed on July 17, 2012.

On July 18, 2012 the Respondent sent an email to the Center challenging the supplemental submission from the Complainant and stating that the second Response superseded the former.

The Center appointed James A. Barker as the sole panelist in this matter on July 23, 2012. 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

Both the Complainant and Respondent provide services to the mining industry.

The Complainant (Minespec Services Pty Ltd) is an Australian corporation with its principal place of business in Emerald, Queensland.

Although there is some confusion in both the Complaint and Response on this point, there is no dispute that there is at least a close business relationship between the first Respondent (Cleanrite Australia Pty Ltd) and the second Respondent (Minespec Compliance Pty Ltd). The Respondent says that both entities are under “common control”. The Complaint attaches a letter dated May 24, 2012 from the second Respondent’s legal representative which stated that “our client purchased Cleanrite Australia Pty Ltd (“Cleanrite”) in June 2010 which traded as TJM Coopers Plains and ‘Minespec’”, and “when our client [Minespec Compliance Pty Ltd] purchased the company [Cleanrite] it had traded as Minespec for a number of years”. Despite these reasonably unambiguous statements, the Respondent says that the statements were “misinterpreted by the Complainant to suggest that Minespec Compliance Pty Ltd acquired Cleanrite Australia Pty td (sic) in June 2010”. How else they might have been interpreted the Respondent does not explain. In any case, registration certificates in the case file indicate that the second Respondent was registered as a company in November 2011 and the first Respondent so registered in 1998. Although the Response is not entirely clear on this point, it appears from the Response that the first Respondent is the owner of the second Respondent.

The first Respondent has been, in effect, operating a business under the name “Minespec” since 2006. The first Respondent provides a statutory declaration to this effect. The first Respondent’s website relating to its “Minespec” business, and related references in the Response, indicate that its business involves the supply and fitting of safety equipment to light vehicles used in the mining industry.

There was no evidence in this case which indicated that the registrant details of “Helen Patiniotis, Escape Net” were for an entity that was separate to first and second Respondents. As such, and unless otherwise indicated, the Panel below refers to the first and second Respondent, and Helen Patiniotis, Escape Net, collectively as “the Respondent”.

The Complainant has a registered trademark for MINESPEC, with a filing date of December 15, 2010. Although not directly explained in the Complaint, the Complainant was formerly known as “2PD Pty Ltd”. This is indicated in correspondence between the parties dated April 12, 2012 attached to the Complaint. The registration certificate for the Complainant’s mark refers to the Complainant’s former name as the registrant. (Under the Australian Corporations Act, as the Complainant’s Australian Company Number has not changed, the corporate entity remains the same despite the name change.)

The Complainant uses its mark in connection with the supply of products and services to the mining industry, as well as other services including engineering, machinery, project management and transport.

The parties are in dispute over whether the Respondent has infringed the Complainant’s trademark.

The Complainant’s registered mark is a stylized mark (although not highly so). The Complainant also claims that it has unregistered rights in the plain script form of that mark.

The disputed domain name was registered on January 19, 2011 (indicated by the “creation date” confirmed by the Registrar).

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is substantially identical or alternatively confusingly similar to its registered mark. The Complainant says that the services offered by the Respondent fall within the scope of its trademark registration. On this basis, the Complainant alleges the Respondent has infringed its trademark and engaged in passing off of its common law trademark rights.

The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent was not eligible to register the disputed domain name under the Domain Name Eligibility and Allocated Policy Rules, Schedule 2, Rule 2. Rule 2 requires that domain names in the “com.au” 2LD must be either (a) “an exact match, abbreviation or acronym of the registrant’s name or trademark”; or (b) “otherwise closely and substantially connected to the registrant”. (Rule 1 of Schedule C of that Policy also includes other criteria for eligibility, including that the registrant is an Australian registered company, or trading under a registered business name in an Australian State or Territory.)

The Complainant says that it was known to suppliers and customers by the name and trademark MINESPEC prior to the creation of the disputed domain name. The Respondent should have known that others had prior rights in the name MINESPEC. The Complainant says that the disputed domain name has the potential to mislead customers searching for the Complainant on the Internet, and tarnish the Complainant’s name and marks. The Complainant also says that the Respondent is using the disputed domain name as an “instrument of fraud” by suggesting a trade connection between the Complainant and the Respondent.

The Complainant says that the disputed domain name was registered or has subsequently been used in bad faith. The Complainant makes this contention, firstly, on the basis that the registration of the disputed domain name is under a business name. This, says the Complainant, hides the registrant’s identity and “could be part of a pattern of deliberate obfuscation”. The Complainant says that the name MINESPEC.COM has not been used in trade to identify any business, and that the corresponding domain name has never been used. The Complainant makes a number of other allegations relating to the domain name <minespec.com> and possible connections to the Respondent.

That the disputed domain name was registered so soon after the Complainant filed its trademark registration suggests that this was done to prevent the Complainant from reflecting its mark in a domain name. The Complainant suggests (although not explicitly) that the Respondent should have been aware of the Complainant because, prior to the registration of the disputed domain name, the Complainant had incorporated a subsidiary under the name “Minespec Fabrication Services” in April 2010, and applied for the registration of its MINESPEC mark in December 2010. The Complainant says that the registration of the disputed domain name under a business name, rather than by a named legal entity, is further indicative of bad faith.

B. Respondent

The Respondent denies the allegations against it.

The Respondent says that the First Respondent (Cleanrite Australia Pty Ltd) was the operator of “the Minespec business” in Brisbane between 2006 and 2011 and is the owner of the business name “Minespec.com” which registered the disputed domain name.

The Respondent replies to a number of minor technical arguments raised by the Complainant, including that it had deliberately used false contact details (because e.g. its address included a reference to “Aberdeen Avenue” rather than the correct street name of “Aberdeen Ct”, which the Respondent claimed was because of a “database issue”).

The Respondent states that the first and second Respondents are under common control in all practical respects. The second Respondent was established in late 2011 to take over the “Minespec” business which the first Respondent had operated for 5 years. The Respondent says that, from the perspective of the community, there has been no interruption in the continuity of the “Minespec” business, only a change in legal entity in late 2011. The Respondent provides various historical evidence of its operations under the business name “Minespec”.

The Respondent denies that the Complainant has trademark rights over the word “minespec”. Although not explained in the Response itself, in annexes to the Response the Respondent’s representative states that the term “minespec” is commonly used in the industry to describe the process of accessorizing a normal utility vehicle into one that will be allowed access on to mine sites. That letter also says that a number of companies use the term “Minespec” as part of their name. The Respondent provides evidence of a Google search for the term “Minespec” which references uses of the term by entities apparently separate to the parties in this case.

The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s mark, as it is not a trademark over the word “Minespec”, and because the Complainant’s logo is not similar to the Respondent’s. The Respondent also says that the classes for which the Complainant’s mark is registered do not correspond to the Respondent’s business, and that the parties operate in different fields of business in relation to mining.

In relation to its rights or legitimate interests, the Respondent says that it was entitled to register the disputed domain name as it had traded for several years under the business name “Minespec”. The Respondent says that it was unable to earlier register the disputed domain name in 2007 as it was then owned by another entity – Minecorp Pty Ltd – which the Respondent describes as the industry leader in “minespec” vehicles. As support, the Respondent provides a statutory declaration of a former employee of Minecorp. The declaration states, among other things, that Minecorp was the former registrant of the disputed domain name, which Minecorp “owned for a number of years until it was released in 2010”. The declaration provides no explanation as to why the disputed domain name was released by that former registrant.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

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

The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below, immediately following a procedural discussion regarding the Complainant’s supplemental filing. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.

A. Supplemental filing

On July 18, 2012, the Complainant filed a supplemental submission, alleging “inconsistencies” between the Response filed on June 29, 2012, and the Response filed on July 17, 2012. In effect, the Complainant merely sought to make comment or argue relatively minor technical points of difference between those versions of the Response.

Neither the Policy nor the Rules provide for supplemental submissions from either party, in addition to the Complainant and the Response. The Policy is intended to provide an efficient and streamlined mechanism for resolving claims of cybersquatting. In general, allowing supplemental submissions is inconsistent with this intent of the Policy. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), question 4.2, most panels that have allowed unsolicited filings have tended to require some showing of "exceptional" circumstances. The Complainant made no argument that there were exceptional circumstances justifying the supplemental submission. As such, the Panel has not further considered that submission in the discussion which follows.

B. Identical or Confusingly Similar

A notable feature of the Policy is that, unlike the UDRP, it allows a complaint to be prosecuted on the basis of a name in which a complainant has rights, in addition or as an alternative to trademark or service mark rights. The Complainant relies on having trademark rights in MINESPEC. There is no dispute that the Complainant has such rights. The Complainant provided a copy of a registration certificate to that effect.

The question then is whether the disputed domain name is identical or confusingly similar to the Complainant’s mark. For the purpose of this question, it is well-established that the “.com.au” extension is not relevant. Also for the purpose of this question, the comparison is between the dominant textual features of the Complainant’s mark and the disputed domain name. See WIPO Overview 2.0, question 1.11; Hero v. The Heroic Sandwich, WIPO Case No. D2008-0779.

This means that the relevant comparison is between the mark, MINESPEC, and the relevant element of the disputed domain name “minespec”. These elements are relevantly identical.

For these reasons, the Panel finds that the disputed domain name is identical to the Complainant’s mark.

The Respondent denies that there is confusing similarity. But this denial is by reference to factors that are not relevant under the Policy: including the degree of similarity between the Complainant’s trademark and the Respondent’s logo, and the classes for which the Complainant’s mark is registered.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's case. (See WIPO Overview 2.0, question 2.1.)

The Panel finds that the Complainant has made out a prima facie case, but that the Respondent has provided substantial evidence to rebut it. As such, the Complaint cannot succeed.

The Respondent provides various evidence of trading under the name “Minespec” before the registration of the Complainant’s mark. This evidence includes:

- company valuations (for Cleanrite Australia Pty Ltd) in 2008 and 2010 providing photographs of vehicles with the “Minespec” logo appended;

- a statutory declaration of a former employee who states he was employed by Cleanrite in 2006 as a sales representative for its “Minespec business”;

- a business card which includes its “Minespec” logo;

- invoices under the “Minespec” logo from 2010;

- quotes provided by Cleanrite in 2008 and 2009 under its “Minespec” logo;

- a statutory declaration of an employee of a competitor of Cleanrite. The competitor is named in the statutory declaration as “Minecorp Vehicle Solutions Pty Ltd”, and the declaration states that this entity was the previous registrant of the disputed domain name.

In the face of this evidence, the Panel cannot conclude that the Respondent lacks rights or legitimate interests in the disputed domain name.

Much of the Complainant’s case is based on arguments that go to the issue of trademark infringement. It is not the role of the Panel to make a decision in this respect. The Panel’s role is narrower. That role is to decide the Complaint against the three elements of paragraph 4(a) of the Policy.

The Complainant also makes arguments that the Respondent was not entitled to register the disputed domain name under the policy that applies to the “.com.au” 2LD. Relevantly, that policy provides that a person is entitled to register a domain name which includes a word which matches the registrant’s name or “otherwise closely and substantially connected to” that person. This is a test closely connected to the issue of rights or legitimate interests. While rights in this respect are strictly separate to the issues for the Panel to determine, the Respondent’s evidence, outlined above, provides a compelling case against that put forward by the Complainant.

For these reasons, the Panel finds that the Complainant has failed to establish this second element under the Policy.

D. Registered or Subsequently Used in Bad Faith

Because of the Panel’s findings above, it is not necessary to address the issue of bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

James A. Barker
Sole Panelist
Date: August 6, 2012