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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coles Myer Limited and Myer Stores Limited v. Dominic Main and Mr. William Savage t/a SAV. Trading
Case No: D2002-0124
1. The Parties
The Complainants are Coles Myer Limited and Myer Stores Limited, both of 800 Toorak Road, Tooronga, Victoria 3146, Australia, represented by Mr. John C. Gibbs of Phillips Ormonde & Fitzpatrick of Melbourne.
The Respondents are Dominic Main of netregistry, P.O. Box 270, Chippendale, New South Wales 2750, Australia and Mr. William Savage t/a SAV. Trading of 80 Colemans Road, Dandenong 3175, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain names are <colesmyer.info> and <myer.info>.
The Registrar of both domain names is Tucows, Inc., of Toronto, Canada.
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 February 7, 2002, and in hard copy on February 12, 2002. It named as First Respondent NetRegistry Pty Ltd and as Second Respondent Mr. William Savage / SAV. Trading. It gave the address of NetRegistry Pty Ltd as PO Box 270, Broadway, NSW 2007, Australia. Receipt of the Complaint was acknowledged by the Center on February 8, 2002. On February 13, 2002 registration details were sought from the Registrar, which replied on February 14, 2002, stating that it had received a copy of the Complaint from the Complainant; that the disputed domain names are registered with it; that neither is registered in the name of NetRegistry Pty Ltd or of Mr. William Savage / SAV. Trading.
Rather, the Registrar stated that both disputed domain names are registered in the name Dominic Main of netregistry, with the address PO Box 270, Chippendale, NSW 2750 Australia and an email address of firstname.lastname@example.org. Dominic Main was also recorded as the Administrative, Billing and Technical contact for both disputed domain names; the record of both names was created on September 21, 2001, was last updated on February 11, 2002, and will expire on September 21, 2003.
The Registrar did not provide any information in response to the Center’s request as to the status of the domain names, whether the Policy applies, the language of the registration agreements and whether the registrant had submitted in his Registration Agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain names (Rules, para 1). It appears from the exhibits to the Complaint, however, that the Policy applies (by virtue of clause 7 of the Registration Agreements); the language of the Registration Agreements is English and that the registrant submitted in the Registration Agreements to the jurisdiction of the courts of Ontario but only for any action relating to the Registration Agreements.
On February 18, 2002 the Center drew to the attention of the Complainant the failure of the Complaint to nominate the registrant. On February 21, 2002, the Complainant filed an Amended Complaint by email naming as First Respondent "netregistry" rather than "NetRegistry Pty Ltd" and specifying its contact details in accordance with the information provided by the Registrar. As before, the Amended Complaint named Mr. Savage/ SAV. Trading as Second Respondent.
On February 21, 2002, the Center satisfied itself that the Amended Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Amended Complaint by post/courier (with enclosures) to netregistry and to Mr. Savage at the addresses as recorded with the Registrar, including in particular by courier to "Dominic Main, Netregistry" and by email (without attachments), including in particular by email to email@example.com.
The Center included with that material a letter dated February 21, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Amended Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was March 13, 2002. No Response was filed. On March 22, 2002, the Center notified the parties of the Respondents’ default.
The Complainant having requested a single-member panel, on April 11, 2002, the Center formally 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 April 25, 2002.
By administrative order issued on April 23, 2002, the Panel invited the Complainant to amend the Amended Complaint within 5 working days so as to name as First Respondent Dominic Main instead of Netregistry; to add Myer Stores Limited as Second Complainant and to make any necessary consequential amendments to the body of the Amended Complaint. The Respondents were given until May 3, 2002, to respond to the amendments but not to the substance of the Further Amended Complaint. The time for a decision was extended to May 11, 2002.
On April 24, 2002 the Amended Complaint was further amended in accordance with the administrative order. By May 6, 2002, no response to the amendments had been filed by the Respondents.
The Panel is satisfied that the Further Amended Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel considers the Further Amended Complaint complies with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondents of the Amended Complaint and Further Amended Complaint; no Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings is English, being the language of the Registration Agreement.
4. Factual Background
The First Complainant, Coles Myer Limited, is the largest retailing organization in Australasia and one of the largest retailers in the world. It has over 2000 stores in Australia and New Zealand and had annual sales of over $23.8 billion in the 2001 Australian financial year. It employs over 162,000 staff.
The First Complainant is the owner of the registered trade mark COLES MYER in Australia and elsewhere. The First Complainant is the owner of the Second Complainant, Myer Stores Limited, which is itself the owner of the registered trade marks @MYER, //MYER@, MYER@ and MYER (logo).
The Second Complainant has a history which dates back to 1900 when the first Myer store was opened. In 1989, Myer merged with Grace Bros to form Myer Grace Bros, the largest department store retailer with 73 sites throughout Australia, 43 of which are Myer stores including "Megamart by Myer".
The Second Respondent is the owner of the registered business name "SAV. TRADING" in the state of Victoria, registration no. 1130848V. This business name was first registered on November 9, 1993. The nature of the business "SAV. TRADING" is registered as "Auction Buyers Stock Placement".
Both disputed domain names were registered in the name of the First Respondent, of NetRegistry Pty Ltd, on September 21, 2001. The First Respondent is also the Administrative, Billing and Technical Contact for both domain names.
In a telephone conversation with an employee of the First Complainant in late November 2001, the Second Respondent offered to transfer the domain name <colesmyer.info> to the First Complainant and suggested that, for an undisclosed fee, he may be willing to transfer the domain name <myer.info>.
On December 10, 2001, the Complainants’ representative asked NetRegistry Pty Ltd to confirm the name and contact details of the owner of the disputed domain names. On December 13, 2001, NetRegistry Pty Ltd named the Second Respondent as the registrant of the disputed domain names.
On December 19, 2001, the Complainants’ representative asked the Second Respondent to assign the domain name <colesmyer.info> to the First Complainant and to indicate what he had in mind in relation to a fee for the transfer of <myer.info>.
On January 15, 2002, Second Respondent stated that he had not perused the request to transfer the domain name <colesmyer.info> because it was the Christmas Holiday period, and that:
"[t]ransfer of Domain "myer.info" is open to offer. Please respond at your earliest convenience".
On January 30, 2002, the Complainants’ representative asked the Second Respondent to complete a Deed of Assignment for the transfer of both disputed domain names to the First Complainant. On February 1, 2002, the Second Respondent said:
"…myer.info" domain may go offshore shortly. Please respond if your client still has any interest".
On February 14, 2002, (after the commencement of this proceeding) the Center received an email from the Second Respondent, saying:
"I have agreed to transfer "myer.info" to the dot com registered owner. This agreement was in place prior to receiving notice of complaint from "coles myer", who are NOT the dot com holders. What happens now?
"colesmyer.info" will probably be transferred to coles myer soon."
5. Parties’ Contentions
Both Respondents are joined in this Complaint because the General Manager of NetRegistry Pty Ltd informed the First Complainant that despite various Whois databases listing the NetRegistry Pty Ltd as the registrant of the disputed domain names, the actual registrant is the Second Respondent.
The Complainants request the Panel to direct that the domain names <colesmyer.info> and <myer.info> be transferred to the First and Second Complainants respectively upon the following legal grounds:
The domain name <colesmyer.info> is identical to two registered trade marks which are owned by the First Complainant. The domain name <myer.info> is identical to over 30 registered trade marks which are owned by the Second Complainant.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. Neither of the Respondents is commonly known by the names Colesmyer or Myer. Neither of the Respondents has used or made preparations to use the websites www.colesmyer.info or www.myer.info in connection with a bona fide offering of goods or services or for any other legitimate reason.
The Respondents have registered the disputed domain names in bad faith. The Second Respondent’s intention to benefit financially from the registration of the domain name <myer.info> is demonstrated in his correspondence. Further, it is clear from the tone in the Second Respondent’s correspondence that it was his intention to register the domain name <colesmyer.info> for the purpose of commercial gain, having full knowledge of the Complainants’ statutory and common law rights in the names COLES MYER and MYER. The Second Respondent’s willingness to communicate with the Complainants without agreeing to transfer the disputed domain names and the failure of the Second Respondent to provide a reason for initially registering the disputed domain names supports the contention that the domain names were registered in bad faith: EFG Bank European Financial Group SA v Jacob Foundation, WIPO Case No. D2000-0036.
The First Respondent appears to have collaborated with the Second Respondent, acting as the Second Respondent’s agent by providing its own address in the Registrant details which were then listed in various whois databases. The First Respondent has on the NetRegistry website, <www.netregistry.com>, a webpage which contains answers to the question "What are the domain name rules and restrictions?" In answer to this question, the First Respondent has published the following statement in relation to the registration of international domain names including .com, .biz, .net, .info and .org:
"..anyone can register any domain name, regardless of their rights to that domain name. If you own a company name, or a trade mark, it does not prevent someone registering that name."
This statement is misleading, and is against the Policy, para 2b:
" to [the applicant’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;…"
Accordingly, the First Respondent has acted in bad faith by promoting registration of generic top level domain names against ICANN’s UDRP. Further, the First Respondent has registered the disputed domain names in bad faith, or is holding them on behalf of the Second Respondent who has registered the disputed domain names in bad faith.
B. The Respondents
No Response was filed.
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.
Nominally, these proceedings involve two separate disputes between two different sets of parties, over two different trade marks and two different domain names. However, the two Complainants are parent and wholly-owned subsidiary and both disputed domain names are effectively under the control of the Second Respondent. The Panel considers it appropriate to treat the two proceedings as consolidated under paragraph 4(f) of the Policy, treating the two Complainants as one economic entity. There can be no prejudice to the First Respondent, since his organization has asserted that the registrant of the disputed domain names is the Second Respondent. Nor can there be prejudice to the Second Respondent since he has been content to deal with the First Complainant in communications concerning both domain names, over which he asserts control.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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.
Failure to file a Response
The Panel draws two inferences where the Respondent has failed to submit a Response: (a) the Respondent does not deny the facts which the Complainant asserts and (b) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Rights in a trademark
From an examination of the trade mark registration certificates exhibited to the Further Amended Complaint, the Panel is satisfied that the First Complainant is and has been since October 28, 1998, the proprietor in Australia of the registered trade mark COLES MYER and that the Second Complainant is the proprietor of the registered trade marks @MYER (since September 28, 1995), //MYER@ and MYER@ (both since October 30, 1998) and MYER (logo) (since October 28, 1998). Numerous registrations of the trade mark MYER in the name of Myer Emporium Limited dating from 1970 are not shown by any evidence before the Panel to have come under the ownership of the Second Complainant, either by change of name or by assignment.
Identity or Confusing Similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., WIPO Case No. D2000-0113, Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., (WIPO Case No. D2000-0802; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 and Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Koninklijke Philips Electronics N.V. v. In Seo Kim. WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA101000096364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc. ,WIPO Case No. D2001-1121 and the cases there cited.
The Panel finds the domain name <colesmyer.info> to be virtually identical to the First Complainant’s trade mark COLES MYER and the domain name <myer.info> to be confusingly similar to the Second Complainant’s trade marks @MYER, //MYER@, MYER@ and MYER (logo).
Each Complainant has established this element of its case.
The Respondents must be taken to accept the Complainants’ assertions that they are not licensees of either Complainant, nor otherwise authorized to use either Complainant’s trade mark; that they are not known by and have no connection with the name "Coles Myer" or "Myer" and are not using the disputed domain names in connection with a bona fide offering of goods or services.
These circumstances are sufficient to constitute a prima facie showing by the Complainants of absence of rights or legitimate interests in the disputed domain names on the part of the Respondents. The evidentiary burden, therefore, shifts to the Respondents to show that at least one of them does have rights or legitimate interests in the domain names whether by reference to the examples set out in paragraph 4(c) of the Policy or otherwise: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondents have made no such showing and accordingly, the Panel finds the Respondents have no rights or legitimate interests in respect of either of the disputed domain names.
Each Complainant has established this element of its case.
Bad faith registration and use
Although both disputed domain names are registered in the name of the First Respondent, it is clear that the First Respondent, an employee or officer of NetRegistry Pty Ltd, is holding those registrations on behalf of the Second Respondent. The Registration Agreement contemplates such a situation arising and provides in paragraph 10:
"AGENCY. Should you intend to license use of a domain name to a third party you shall nonetheless be the domain name holder of record…
You shall accept liability for harm caused by wrongful use of the domain name. You represent that you have provided notice of the terms and conditions in this agreement to a third party licensee and that the third party agrees to the terms hereof"
The panel concludes from the email from NetRegistry Pty Ltd to the First Complainant of December 13, 2001, that the First Respondent acted as mere agent of the Second Respondent in registering the disputed domain names and that the issue of bad faith registration and use is to be determined on the basis that it is the Second Respondent’s conduct that needs to be considered.
The Panel accepts the Complainants’ uncontradicted assertions that the Second Respondent’s intention to benefit financially from the registration of the domain name <myer.info> is demonstrated in his correspondence and that he also registered the domain name <colesmyer.info> for the purpose of commercial gain, having full knowledge of the Complainants’ rights in the trade marks COLES MYER and MYER. The Second Respondent’s failure to offer a plausible explanation for registering the disputed domain names supports the contention that they were registered in bad faith: EFG Bank European Financial Group SA v Jacob Foundation, WIPO Case No. D2000-0036.
Following registration of the disputed domain names, the Complainants had no way of knowing of the connection between the Second Respondent and those domain names, since they were registered in the name of the First Respondent. The Panel therefore concludes that it was the Second Respondent who approached the First Complainant in November 2001, only two months after registration of the domain names, offering to transfer the domain name <colesmyer.info> to the First Complainant and indicating a willingness, for an undisclosed fee, to transfer the domain name <myer.info>. In these circumstances the Panel finds that the Second Respondent (by his agent, the First Respondent) registered the domain name <myer.info> primarily for the purpose of selling that domain name to the owner of the trade mark MYER (or marks incorporating the word MYER) for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
Because the Second Respondent (by his agent, the First Respondent) registered both domain names on the same day and himself mentioned both domain names in the same conversation in which he indicated a willingness to transfer <myer.info> for a fee, the Panel comfortably draws the conclusion that the Second Respondent also registered the domain name <colesmyer.info> primarily for the purpose of selling that domain name to the owner of the trade mark COLES MYER for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
Accordingly, pursuant to paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Each Complainant has established this element of its case.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <colesmyer.info> be transferred to the First Complainant, Coles Myer Limited and that the domain name <myer.info> be transferred to the Second Complainant, Myer Stores Limited.
Alan L. Limbury Esq.
Dated: May 6, 2002