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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Infotechnology Pty Ltd v. Estore Pty Ltd
Case No. D2002-0069
1. The Parties
The Complainant is Infotechnology Pty Ltd, trading as Adelong Computers, of 127 York Street, Sydney, New South Wales, Australia.
The Respondent is named as Estore Pty Ltd of Level 2, 1-3 Gurrigal Avenue, Mosman, New South Wales, Australia.
2. The Domain Names and Registrar
The contested domain names are <adelong.com>, <adelong.net> and <adelong.org>.
The registrar is Tucows Inc., OpenSRS 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
The hard copy version of the Complaint was received on January 14, 2002. The electronic version of the Complaint was filed on February 26, 2002.
On February 25, 2002, the Center transmitted via email to Tucows Inc., ("Tucows") a request for registrar verification in connection with this case and on February 25, 2002, the Center received a verification response confirming that the domain name is registered with Tucows and that the registrant for the domain name is the Respondent.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On March 4, 2002, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
In accordance with the ICANN Rules, the last day for submitting a Response was March 24, 2002. The Respondent failed to submit a Response by that date and on March 25, 2002, the Center formally notified it of its failure to submit a Response by that deadline.
The Panel’s decision is required to be handed down by April 22, 2002 (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with Paragraph 2(b) of the ICANN Rules; the Respondent was properly notified of its failure to submit a Response within the time period allowed in the Notification of Complaint and Commencement of Administrative Proceeding in accordance with Paragraph 2(b) of the ICANN Rules and the Administrative Panel was properly constituted.
4. Factual Background
The Complainant is an Internet retailer of computer hardware and software.
The Complainant operates the website at <adelong.com.au>, which is branded "Adelong Computers". It is also the holder of a current business name registration in New South Wales for "Adelong Computers".
The Respondent is an online seller of a range of goods, including computer hardware and software. It operates a website at <estore.com.au>, which describes E-store as "Australia’s largest Internet SuperStore".
The Respondent registered the contested domain names on June 21, 2001.
The contested domain names resolve to <estore.com.au>.
The Respondent offered to sell the contested domain names to the Complainant in correspondence between the parties in September through November 2001, on the condition that the Complainant did not publicize the matter.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant is the owner of Australian trademark registration no. 774743 for a logo that includes the words "Adelong Australia". The trademark registration was applied for in 1998 and registered in respect of goods in class 9 (computers) and services in class 42 (computer programming and networking) in 2000.
The Complainant says it has been trading under this trademark since October 6, 1998.
The contested domain names are identical to the Complainant’s trademark, as the main focus of the trademark is the word "Adelong".
The Complainant has developed the "Adelong Computer" brand through promotion and advertising over a ten year period. While "Adelong" is also the name of a town in New South Wales, the "Adelong" brand name used by the Complainant is more widely known as a brand than as a place.
The Respondent has never been commonly known by the disputed domain names and is a direct competitor of the Complainant for the goods and services the subject of the registered trademark.
The Respondent is using the contested domain names to redirect users to its own website. This has created confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products. Redirection of users to the Respondent’s website is disrupting the Complainant’s business.
The Respondent has also offered to sell the contested domain names to the Complainant.
The Respondent has not submitted a Response.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(i) the domain names are 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 names; and
(iii) the domain names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant.
6.1 Identical or confusingly similar to a trademark or service mark
The Panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the contested domain names are identical or confusingly similar to that trademark or service mark.
The Complainant says that its complaint is based on registered trademark no. 774743. The trademark is registered for the words "Adelong Australia" along with an image of stars, namely the well-known Southern Constellation. The registered owners of the trademark are Formosa Enterprise Pty Ltd and the Complainant. Registration is jointly held by the both parties. The trademark was registered on October 5, 2000.
The registered trademark also appears on the Complainant’s website, located at <adelong.com.au>.
The Complainant’s website is also branded "Adelong Computers". The Complainant is the registered holder of a business name registration in New South Wales for "Adelong Computers". The business name was registered on August 5, 1999.
The Panel finds that the Complainant has trademark rights in "Adelong Computers" and "Adelong Australia".
It is noted that Adelong is also a geographical location, namely a town in Australia. That does not prevent the Complainant having trademark rights in a trademark that includes that location. See Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932.
The Complainant says that the domain names are identical to its registered trademark, because the "main focus" of the trademark is the word "Adelong". The Panel does not agree that they are identical. Clearly the domain names and the registered trademark are not exactly the same. The question is whether the contested domain names are confusingly similar to the Complainant’s mark.
The only differences between the domain names in dispute and the Complainant’s registered trademark are the omission of the word "Australia" and the logo, and the addition of the generic top level domain name identifiers <net>, <com> and <org>. Neither difference deflects from the essential similarity of the Complainant’s mark. Addition of a geographic identifier to a domain name does not prevent a finding of confusing similarity. See Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046. ("…as many cases have now concluded, the addition of a geographic descriptor does not change the confusing nature of the similarity, see eg Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc.v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117. I see no reason to depart from this line of authority.")
Equally, the omission of a geographic identifier in a domain name (the word "Australia" in this case) should not prevent a finding of confusing similarity.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s "Adelong Australia" mark. For similar reasons, the Panel also finds that the disputed domain names are confusingly similar to the "Adelong Computers" mark in which the Complainant has common law rights.
Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain names by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain names or names corresponding to the contested domain names in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as an individual, a business, or other organization) has been commonly known by the contested domain names, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests. The Respondent had the opportunity to respond and present evidence, for example, that it has a legitimate business and registered the domain names without knowledge of the Complainant’s rights. The Respondent chose not to respond or present evidence. The Complainant is not entitled to win simply by default, but the Panel can and does draw evidentiary infancies from the failure to respond.
The Complainant contends that the Respondent has never been commonly known by the domain names. The Panel visited the website at <estore.com.au>, which is operated by the Respondent. The site is branded with the e-store name. The Panel could not see any reference to "Adelong" on the site. If the Respondent were commonly known by the name "Adelong", one would expect to find some reference to "Adelong" on that website (especially so in view of the fact that it’s business is solely or largely conducted from the website). The Panel concludes that the Respondent is not commonly known under that name.
On typing each of the contested domain names, the Panel was directed to the Respondent’s website. It is clear from looking at the Respondent’s website that it is a competitor of the Complainant. Both the Complainant and Respondent sell computer hardware and software via the Internet. In the circumstances, the inescapable conclusion is that the Respondent registered and is using the domain names in order to create an inference of association or connection with the Complainant, and to attract internet users attempting to visit or find the Complainant’s site. This is supported by evidence submitted by the Complainant regarding actual customer confusion with the Respondent’s website.
As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service…..to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the contested domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registrations 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 the Respondent’s documented out-of-pocket costs directly related to the contested domain names; or
(ii) the Respondent has registered the contested domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Based on the evidence presented, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel also finds that the use of the contested domain names by the Respondent has the effect of disrupting the business of the Complainant.
Correspondence tendered by the Complainant reveals that the Respondent offered to sell the contested domain names to the Complainant for various sums (AUD$1,000, AUD$700). It is highly likely, based on the evidence presented, that these amounts are in excess of the Respondent’s out of pocket costs directly related to the domain names.
Additionally, the correspondence in evidence shows that the Respondent did insist on the Complainant keeping the issue of the contested names and their registration and use by the Respondent confidential, and in particular that the matter not be publicized in a local computer magazine. Having registered and used the names to attract internet users for its own benefit, it appears that the Respondent wanted to prevent this fact from being publicized. It was not prepared to transfer the names unless the Complainant agreed to this condition. When the Complainant did agree to this condition, the Respondent further prevaricated.
The Panel also finds that the Respondent’s conduct would be in breach of section 52 of the Australian Trade Practices Act. This is also evidence of bad faith.
In short, the Respondent, a seemingly reputable online store operating as Estore, has acted in bad faith by registering the trademark of a competitor as three of its domain names, and then redirecting Internet users who wished to shop at the Adelong site to the Estore site. This is clear cybersquatting.
The Panel finds that the Respondent has registered and is using the domain names in question in bad faith, in accordance with the ICANN Policy.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and Paragraph 15 of the ICANN Rules, the Panel orders that the contested domain names <adelong.com>, <adelong.net> and <adelong.org> be transferred to the Complainant.
Dated: April 22, 2002