WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Power On Group Pty Ltd and Power On Australia Pty Ltd ACN 110 752 442 v. Power On Batteries Pty Ltd

Case No. DAU2016-0034

1. The Parties

The Complainants are Power On Group Pty Ltd and Power On Australia Pty Ltd of Coopers Plains, Queensland, Australia, represented by Bennet & Philp Lawyers, Australia.

The Respondent is Power On Batteries Pty Ltd of Sydney, New South Wales, Australia, represented by McBride Legal, Australia.

2. The Domain Name and Registrar

The disputed domain name <powerongroup.com.au> (the “Disputed Domain Name”) is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2016. On August 29, 2016, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On August 31, 2016 and September 5, 2016, Web Address Registration Pty Ltd transmitted by email to the Center its verification responses 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 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2016. The Center received a total of four email communications from the Respondent on September 27, 2016; September 29, 2016; and September 30, 2016.

The Center appointed John Swinson as the sole panelist in this matter on October 11, 2016. 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 Complainants are Power On Group Pty Ltd and Power On Australia Pty Ltd. Both Complainants are part of the same group of companies, which is informally known as the “Power On Group”. The Complainants supply power and power system products and solutions (including uninterruptible power supplies, batteries, chargers and generators) to other businesses.

The First Complainant was incorporated on June 13, 2014. According to the Complainants, the Complainants’ group of companies has been known as “Power On Group” since at least 2008, when the Second Complainant registered the business name “Power On”.

The Respondent is Power On Batteries Pty Ltd, a company which supplies forklift batteries and chargers. The Respondent was incorporated on January 25, 2013, as Bassi Batteries and Chargers Australasia Pty Ltd. The Respondent changed its name to Power On Batteries Pty Ltd on September 11, 2014.

The Respondent registered the Disputed Domain Name on April 16, 2015.

The website at the Disputed Domain Name currently redirects to the Respondent’s website at “www.poweronsystems.com.au”, where the Respondent offers products and services including forklift batteries and chargers.

5. Parties’ Contentions

A. Complainants

The Complainants make the following submissions.

Identical or Confusingly Similar

The First Complainant is “Power On Group Pty Ltd”. According to Note 1 of paragraph 4(a)(i) of the Policy, a name in which the Complainant has rights includes the Complainant’s company, business, or other legal or trading name, as registered with the relevant Australian government authority.

The company name Power On Group is identical, or at the very least, confusingly similar, to the Disputed Domain Name.

Further, the Second Complainant is associated with the First Complainant, both of which are members of a group of related companies with names commencing “Power On”. As such, the Second Complainant has also been known as “Power On Group”.

Rights or Legitimate Interests

The First Complainant is a company registered on June 13, 2014. The Complainants’ group of companies has been known and informally referred to as “Power On Group” since at least 2008.

The Respondent was incorporated on January 25, 2013. As at the date of its incorporation it was known as Bassi Batteries and Chargers Australasia Pty Ltd. It changed its name to Power On Batteries Pty Ltd on September 11, 2014.

The Respondent has no business names or registered trade marks for “Power On Batteries”, “Power On Group”, or “Power On”. There is no evidence that the Respondent used any of those terms prior to September 11, 2014. The Disputed Domain Name was registered on April 16, 2015. It seems unlikely that the Respondent would not have known of the Complainants’ existence at the time of its rebranding in 2014.

Further, the registration and use of the name “Power On Batteries” does not give the Respondent rights or legitimate interests in the name “Power On Group”.

Registered or Subsequently Used in Bad Faith

The Respondent would, or should, have been aware of the Complainants at the time it registered the Disputed Domain Name. If this was the case, then the registration of the Disputed Domain Name despite the confusion it would be likely to cause would constitute bad faith.

B. Respondent

The Respondent makes the following informal submissions.

Rights or Legitimate Interests

The phrase “Power On” in the Respondent’s business is used to denote the provision of power to forklifts through batteries. There is a clear connection between the Disputed Domain Name and the goods and services being offered by the Respondent, and as such, the Respondent has rights or legitimate interests in the Disputed Domain Name.

Registered or Subsequently Used in Bad Faith

Prior to the Disputed Domain Name being redirected to “www.poweronsystems.com.au”, the website at the Disputed Domain Name was the Respondent’s primary online presence. The Disputed Domain Name was being used for its descriptive meaning to describe the Respondent’s business and services.

“Power On” is not a unique name. It is held by over 30 Australian businesses and companies. The Respondent operates a business which is distinctly different from the Complainants’ business, so it cannot be said that the Respondent’s use of the Disputed Domain Name would cause customer confusion.

The Respondent did not register the Disputed Domain Name in bad faith. The Respondent was aware of other businesses using the name “Power On” when it commenced rebranding, but was not concerned about confusion given the niche nature of the Respondent’s business. The Respondent registered the Disputed Domain Name in April 2015. The First Complainant was registered in July 2014. As such, had the Complainants wished to register the Disputed Domain Name themselves, they had sufficient time in which to do so.

6. Discussion and Findings

To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have 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 has subsequently been used in bad faith.

The onus of proving these elements is on the Complainants.

6.1. Procedural Issues – Informal Response

On September 27, 2016, the Respondent sent an informal email communication to the Center which contained an extract of a letter the Respondent’s solicitor had sent to the Complainants’ solicitor. This letter responds to a cease-and-desist letter sent to the Respondent on behalf of the Complainants.

On September 30, 2016, the Respondent provided the Center with the complete letter in response to the Complainants’ cease-and-desist letter. The Respondent requested that the Panel treat this letter as its formal Response in this proceeding.

Neither of these communications constitutes a formal Response. The solicitor’s letter provided by the Respondent does not fully address the elements of the Policy, nor does it contain the required certification. Further, the letter addresses matters of Australian trade mark and consumer law which are not appropriate for determination by the Panel (and have not been raised by the Complainants in their Complaint).

Despite this, the Panel has taken into account the parts of the letter relevant to this proceeding in making its decision.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights.

As the panel noted in Marshmallow Skins, Inc. v. Piipiinoo Australia Pty Limited, WIPO Case No. DAU2013-0015:

“The relevant section of the Policy states that ‘your domain name is identical or confusingly similar to a name [Note 1], trademark or service mark in which the complainant has rights’. Note 1 being ‘[1] For the purposes of this policy, auDA has determined that a ‘name […] in which the complainant has rights’ refers to: a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant’s personal name.”

The Policy as written does not restrict the Complainants’ rights to a trade mark registered with an Australian government authority.

The Complainants do not claim to own a registered trade mark for POWER ON GROUP or similar. However, the First Complainant’s registered company name, “Power On Group Pty Ltd”, is substantially identical to the Disputed Domain Name.

Accordingly, the Complainants succeed on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Complainants have provided evidence that, at the time of its incorporation on January 25, 2013, the Respondent was known as Bassi Batteries and Chargers Australasia Pty Ltd. It rebranded in 2014, and on September 11, 2014, formally changed its name to Power On Batteries Pty Ltd. The Respondent does not trade under, and is not commonly known by, the name “Power On Group”.

The Respondent refers to paragraph 2.1A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), and in particular, to the following statement:

“If a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word. It is not necessary for the respondent to do business under the exact term incorporated in the domain name – it is sufficient if there is a ‘connection’ between the domain name’s descriptive meaning and the respondent’s offering of goods or services.”

The Respondent submits that it is using the Disputed Domain Name for its descriptive meaning (i.e., that “power on” refers to the Respondent’s powering of forklifts through batteries).

However, the Disputed Domain Name contains the words “Power On Group”. This specific phrase is not descriptive of the Respondent’s services, nor does it reflect a business or trading name or trade mark owned by the Respondent. In fact, it is identical to the First Complainant’s company name. In these circumstances, the Respondent’s use of the Disputed Domain Name to redirect Internet users to the Respondent’s website is not bona fide. As such, the Panel considers that the Respondent has no rights to or legitimate interests in the Disputed Domain Name.

If the domain name the subject of this dispute contained only the words “Power On”, then the outcome would likely have been different. The Panel also notes that the Complainants’ do not make any allegations in relation to another domain name owned by the Respondent, being <poweronsystems.com.au>.

The Panel finds that the Complainants have made out a prima facie case which has not been rebutted by the Respondent. The Complainants succeed on the second element of the policy.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered or used the Disputed Domain Name in bad faith.

As stated above in relation to the second element of the Policy, the Respondent registered the Disputed Domain Name in April 2015, following its rebranding in September 2014. Further, at that time, the Respondent’s company name was changed to Power On Batteries Pty Ltd, and not “Power On Group”.

The First Complainant, Power On Group Pty Ltd, was incorporated on June 13, 2014. According to the Complaint, the Complainants’ group of companies has been informally known as “Power On Group” since 2008.

The Respondent uses a domain name which does not reflect its own company or trading name or trade mark, but which exactly reflects the First Complainant’s name.

The website at the Disputed Domain Name is the Respondent’s primary business website. The Panel considers that the Respondent is using the Disputed Domain Name to attempt to attract, for commercial gain, Internet users to this website by creating a likelihood of confusion with the Complainants’ name as to the source of this website, or of a product or service on this website (see paragraph 4(b)(iv) of the Policy).

In light of the above, the Panel finds that the Respondent has used the Disputed Domain Name in bad faith. A finding of bad faith use is sufficient for a finding of bad faith under the Policy.

The Complainants succeed on the third element of the Policy.

The Panel makes no finding in relation to the other legal matters referred to in the Respondent’s informal response.

7. 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, <powerongroup.com.au>, be transferred to the First Complainant, Power On Group Pty Ltd.

John Swinson
Sole Panelist
Date: October 26, 2016