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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southcorp Wines Pty Ltd and J.Y.Tulloch & Sons Pty Ltd v. Resource Capital Australia Pty Limited
Case No. D2001-1393
1. The Parties
The Complainants are Southcorp Wines Pty Ltd and J.Y.Tulloch & Sons Pty Ltd, both of Level 23, 91 King William Street, Adelaide, South Australia, Australia, represented by Southcorp Limited, the parent company of the Complainants.
The Respondent is Resource Capital Australia Pty Limited of Level 4, 20 Loftus Street, Sydney, New South Wales, Australia, represented by Mr. Marcus Boland, Director.
2. The Domain Name and Registrar
The disputed domain name is <www.tullochwines.com>.
The Registrar is Melbourne IT, Ltd. (d/b/a. Internet Names Worldwide) of Melbourne, Australia.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 23, 2001, and in hard copy on November 27, 2001. The Complaint was acknowledged on November 23, 2001. On November 27, 2001, registration details were sought from the Registrar. On November 28, 2001, the Registrar replied that the disputed domain name is registered with it in the name of the Respondent; the record was created on September 14, 2001; the Policy applies to the disputed domain name; the current status of the domain name is active and the language of the Registration Agreement is English.
On November 29, 2001, the Center satisfied itself that the Complaint was filed in formal compliance with the Rules and on November 30, 2001, dispatched copies of the Complaint by courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email. The Center included with the material dispatched to the Respondent a letter dated November 29, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was December 20, 2001. A Response was filed on December 22, 2001, by email and on January 9, 2002, in hard copy. The Respondent explained that the emailed version of the Complaint was received after business hours on Friday, November 30, 2001, and was not seen until the following Monday morning, December 3, 2001. The hard copy arrived later that day. The Respondent submitted the correct date for the Response should be December 23, 2001. On December 27, 2001, the Center acknowledged receipt of the late Response and informed the parties that the Panel would decide in its sole discretion whether to consider the Response in deciding the Case.
On January 8, 2002, the Complainants sought leave to file a Reply and the Respondent sought leave to file a Rejoinder. The Center stated that this would be a matter for the discretion of the Panel.
On January 16, 2002, the Center notified the parties of the appointment of Alan L Limbury as Panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of January 30, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; the Response was filed outside the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
The second Complainant, established in 1895 by the Tulloch family, has been making wines since 1896. Since 1982 it has been the registered proprietor in Australia of the trade mark TULLOCH in Class 33 in relation to wines, Registered No. A341 357. It is also the registered proprietor of other trade marks incorporating the name TULLOCH, including in New Zealand. Both Complainants are wholly owned subsidiaries of Southcorp Limited, a publicly-listed Australian company ("Southcorp"). For the purposes of this decision, both Complainants are referred to compendiously as "the Complainant".
In August 2001, the Complainant advertised in Australian newspapers an offer to sell that part of its business that exploits these trade marks, namely "TULLOCH WINES Glen Elgin Estate…one of Australia’s most famous wineries…". That winery is in the Hunter Valley.
The Respondent registered the disputed domain name on September 14, 2001, and that day telephoned the IP Manager of Southcorp, offering to sell the disputed domain name to Southcorp, together with the domain name <tullochwines.com.au>, which is not the subject of this proceeding. The Respondent confirmed this by letter dated September 18, 2001, in which he sought a price for the disputed domain name of $50,000 (presumably Australian dollars) and stated that failing acceptance within 7 days "we will offer the domains to the general public and wine industry marketplace accordingly."
In response to a cease and desist letter from Southcorp, the Respondent wrote on October 2, 2001, to the Managing Director of Southcorp, stating, inter alia:
"…all your wine assets are not in fact sufficiently protected by appropriate registration in all respects, including appropriate and sufficient domain registration.
"…the sale price of your Tulloch operation may not be maximized, due to your failure to so properly and fully protect the brand name, and thereby represents a serious failure to maximize and oversee full value of these assets on behalf of shareholders".
5. Parties’ Contentions
A. The Complainant
The Complainant requests the Panel to direct that <www.tullochwines.com> be transferred to "the Complainant" (not specifying which of the Complainants) and it invokes the following legal grounds as the basis of the relief sought:
Identity or confusing similarity
The disputed domain name is confusingly similar to the Complainant’s trade mark TULLOCH because, apart from the usual URL prefix and suffix material, it is identical to the mark TULLOCH, with "wines" added. The goods in relation to which the mark is registered are wines.
The Respondent has no legitimate interest in the disputed domain name. It is not involved in the wine industry.
The disputed domain name was registered and is being used in bad faith. It is not feasible that the Respondent was unaware of the existence of the Complainant’s trade marks before registering the disputed domain name. The offer to sell the disputed domain name for a price far exceeding the registration costs constitutes bad faith under the Policy.
B. The Respondent
(The Panel admits the Response under Rule 10(b), in order to ensure that it has a fair opportunity to present its case, notwithstanding that the Response was filed out of time, as calculated by reference to Rules 5(a), 4(c), 2(a), 2(f) and 2(g).)
Identity or confusing similarity
The disputed domain name is not identical to or confusingly similar to the Complainant’s trade mark, which is merely TULLOCH, whereas the domain name is "Tullochwines". The Complainant has not offered any evidence that its mark is known outside Australia and New Zealand.
The Respondent registered the business name "Tulloch Wine Supply" from which was derived the domain name "Tullochwines". The Respondent is a corporate advisory and investment company with a genuine interest in the wine industry. It is associated with other companies that operate a vineyard in the Hunter Valley. The Respondent’s director’s family have had wine land holdings in Australia for nearly 150 years.
Should the disputed domain name be incorporated in a site, it will be outside Australia and New Zealand, where the Complainant has trade marks.
From the business name itself, it can be seen the Respondent did not intend to cause confusion with the Complainant’s mark.
No website has yet been built and such a site would spell out the business name. To date no use has been made of the disputed domain name.
As the Respondent made clear to the Complainant in the initial conversation, the Respondent registered the disputed domain name on behalf of a third party client domiciled in both Australia and the U.K. The Respondent suggested that the domain name be offered first to Southcorp, they being the owners of the Tulloch wine business, before any planned development of the site took place, in the knowledge and belief that they had a duty to their shareholders to ensure that the intellectual property of all their corporate operations were [sic] properly protected and maximized in the best interests of their shareholders.
At no time was the domain taken out with merely or primarily with a sale or any type of venture with Southcorp in mind. They were at best a polite after-thought to the process. The primary purpose of the registration was firstly to secure the domain on behalf of the client and then to properly enable and develop the site as a wine supply business overseas. The Respondent only offered the domain to the Complainant before as a gesture of respect and good faith for a fellow wine grower and producer.
The Respondent searched the Australian trade mark office (IP Australia) records for "tullochwines" and found no registration. At no time was the Respondent even aware of the Complainant’s mark as a result thereof [emphasis added by the Panel], before carrying out the registrations or before making any representations to the Complainant in respect of selling the domain, and this further demonstrates that such registration was not "primarily" for the purposes of selling to the Complainant, the Respondent being unaware that the Complainant was in fact even an owner of trade mark for the name "Tulloch".
No further submissions
The Panel denies the request by the Complainant for leave to file a Reply and, in consequence, the Respondent’s request to file a Rejoinder. The Rules permit the Panel to request further submissions but the Panel considers the Response does not raise issues to which it is appropriate that the Complainant be permitted to reply. See Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151) and the cases there cited.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The disputed domain name <www.tullochwines.com> is not identical to the TULLOCH trade mark. However, the prefix "www" and the suffix ".com", associated as they are with the functioning of the Internet and the Domain Name System, do nothing to detract from the trade mark, which is wholly incorporated in the disputed domain name.
Having regard to the undisputed fact, as asserted in the Complaint, that the Tulloch family name and mark have been associated with the Australian wine industry for over 100 years, the addition of the word "wines" acts to reinforce, rather than to detract from, the association with the Complainant which the disputed domain name conveys to anyone having knowledge of the wine industry in Australia.
The Panel finds that the disputed domain name is confusingly similar to the trade mark TULLOCH, in which the Complainant has rights. It is not to the point to argue that the mark is not registered or may not be well known in many countries. The Policy applies to any trade mark, registered or unregistered, in which a Complainant can establish that it has rights.
The Complainant has established this element.
The Complainant’s mark is well known in the Australian wine industry, with which the Respondent claims to have corporate and family associations. The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The Respondent’s corporate name is not the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited.
The Respondent, with premises in Australia, claims to have registered the business name "Tulloch Wine Supply", from which it says the disputed domain name is derived, yet offers no concrete evidence of having done so nor any explanation as to how use of that business name in Australia in connection with the supply of wines would not infringe the Complainant’s trade mark or avoid passing off or fail to contravene the prohibition against misleading or deceptive conduct contained in s.52 of the Australian Trade Practices Act 1974 and comparable provisions of Australian State Fair Trading Acts.
The Respondent also fails to explain how, being associated with the Australian wine industry, it could have chosen the name Tulloch as part of that business name without having the Complainant in mind. In any event, the only relevance of any such business name for present purposes is to the question whether a Respondent is commonly known by the disputed domain name. Even if the Respondent has registered the business name "Tulloch Wine Supply" there is no evidence that the Respondent is commonly known by that name.
The Policy affords a remedy to a trade mark owner in one country against a domain name holder in another. Accordingly, in asserting that any web site developed will be outside the countries in which the Complainant has trade mark rights, the Respondent does not establish a legitimate interest in the disputed domain name.
The Panel finds the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
The Respondent claims to have been unaware of the trade mark TULLOCH when registering the disputed domain name on behalf of an unidentified client for the purposes of securing that domain name and later developing a web site. The Respondent claims that it made the suggestion (presumably to the unnamed client) that the name should be offered for sale to Southcorp before any web site development, "they being the owners of the Tulloch wine business".
Here the Respondent seeks to portray itself as the friend of the Complainant, persuading the unnamed client to do the right thing "as a gesture of good faith for a fellow wine grower and producer". In so doing, the Respondent appears to draw a distinction between its necessarily prior knowledge of the "Tulloch wine business" and its asserted lack of knowledge of the TULLOCH trade mark.
According to this story, the client must have agreed to abandon its plans to develop a web site because on the very day the disputed domain name was registered, and presumably with the authority of the client, the Respondent offered to sell the disputed domain name to Southcorp and a few days later it put the offer in writing (with a $50,000 price tag) together with a threat to offer the domain name for sale to others if its offer were not accepted. The Respondent does not explain how the idea of offering the disputed domain name for sale to others accords with the claimed purpose of developing a web site after first offering the domain name to Southcorp as a gesture of good faith.
In the absence of any evidence as to the existence or identity of the Respondent’s client nor as to the instructions given by that client to the Respondent, the Panel is not persuaded that the Respondent was acting on behalf of a client when it registered the disputed domain name in its own name.
Having regard to the family and corporate associations of the Respondent with the wine industry in Australia and in particular in the Hunter Valley, the Panel finds that (putting it mildly) it is more likely than not that the Respondent was well aware, prior to registering the disputed domain name, of the wine company J.Y.Tulloch & Sons Pty Ltd and of its wines sold under the trade mark TULLOCH. This conclusion is supported by the Respondent’s correspondence with Southcorp, which makes it clear that the Respondent regarded the name Tulloch as a valuable asset of the Complainant, which the Complainant had failed properly to protect, as the Respondent had demonstrated by registering the disputed domain name.
The statement: "the sale price of your Tulloch operation may not be maximized, due to your failure to so properly and fully protect the brand name" shows beyond doubt that the Respondent knew the Tulloch winery assets were for sale and appreciated Southcorp’s need to ensure the sale would go smoothly, uncomplicated by doubts as to the ownership of assets.
Having regard to the offer to sell the disputed domain name to Southcorp, made on the very same day as the disputed domain name was registered, and to the price of $50,000 sought in the letter confirming that offer, the Panel finds that the Respondent’s primary purpose in registering the disputed domain name was to sell it to the Complainant or to the parent company, Southcorp, for more than the Respondent’s out-of-pocket costs directly related to the domain name. Under paragraph 4(b)(i) of the Policy, this is evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).
The Complainant has established this element.
The Panel concludes that, in registering the disputed domain name, the Respondent deliberately sought to make a quick and large profit at Southcorp’s expense by taking advantage of an opportunity presented by the impending sale of the Tulloch winery assets. There could be no clearer case of cybersquatting.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <www.tullochwines.com> be transferred to the second Complainant, J.Y.Tulloch & Sons Pty Ltd.
Alan L. Limbury
Dated: January 30, 2002