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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yakka Pty Ltd v. Carlton Handyman & Hardware Centre
Case No. D2002-0903
1. The Parties
The Complainant is Yakka Pty Ltd of 26 King William Street, Broadmeadows, Victoria 3047, Australia, represented by Mr. Greg M. Chambers of Phillips Ormonde & Fitzpatrick of Melbourne, Australia.
The Respondent is Carlton Handyman & Hardware Centre of 142 Elgin Street, Carlton, Victoria 3053, Australia.
2. The Domain Name and Registrar
The disputed domain name is <yakka.com> and the Registrar 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 September 30, 2002, and in hard copy on October 3, 2002. It named as Respondent Mr. Paul Steinberg of 142 Elgin Street, Carlton, Victoria 3053, Australia. Receipt of the Complaint was acknowledged by the Center on October 1, 2002, when registration details were sought from and supplied by the Registrar, which stated that it had received a copy of the Complaint; the disputed domain name is registered with it in the name of Respondent (Mr. Steinberg being the administrative and technical contact); the Policy applies to the disputed domain name, which will remain locked during this proceeding; the language of the registration agreement is English and the Respondent has submitted to the jurisdiction of the principal office of the Registrar.
On October 3, 2002, the Center drew to the attention of the Complainant the failure of the Complaint to nominate the registrant as respondent. On October 10, 2002, the Complainant corrected this deficiency by filing an Amended Complaint.
On October 10, 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 the Respondent at the address as recorded with the Registrar, and by email (without attachments). The Center included with that material a letter dated October 10, 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 October 30, 2002. No Response was filed. On October 31, 2002, the Center notified the parties of the Respondents’ default.
The Complainant having requested a single-member panel, on November 4, 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 November 18, 2002.
The Panel is satisfied that the Amended Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel considers the 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 Respondent of the 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 Complainant, Australia’s largest supplier of industrial workwear and corporate clothing, was incorporated in 1947 under the name D.K. Laidlaw & Sons Limited. By the early 1990s it had changed its name to Yakka Pty Ltd to reflect the aboriginal word "yakka", meaning hard work. On August 16, 1991, it registered the word YAKKA as a trademark in Australia for a term of 7 years in respect of clothing including trousers, overalls, jeans, shirts, tops, coats, jackets and underwear; footwear including boots and shoes and all other goods in class 25. The Complainant has since registered the YAKKA mark in Canada, Japan, Hong Kong, France, Germany, The United Kingdom and the United States of America. The Complainant’s goods marketed under the YAKKA mark are often associated in its advertising with the slogan "hard yakka" as in the expression "Aussies love Hard Yakka" and "unwinding with a coldie after a hard days’s yakka". The Complainant asserts trademark rights in the slogan "hard yakka" but has produced no evidence of this.
On April 28, 1999, the disputed domain name was registered in the name of the Respondent. On March 15, 2002, the Respondent was found by the Complainant to be operating a website at "www.yakka.com" which prominently displayed the mark YAKKA and the slogan "hard yakka" and offered for sale under the YAKKA mark both the Complainant’s goods and those of two of the Complainant’s competitors, Blundstone Pty Ltd and Driza-Bone Pty Ltd, (owners of the Australian registered trademarks BLUNDSTONE and DRIZA-BONE respectively). The site contained statements inviting feedback and suggestions to be sent to Mr. Paul Steinberg and that "<www.yakka.com> is a distributor of yakka clothing".
The Respondent registered the domain name <blundstoneboots.com> on November 20, 2000.
In response to a "cease and desist" letter to the Respondent dated March 18, 2002, which included a request for cancellation of the disputed domain name, Mr. Steinberg said he had made "immediate and obvious changes" to the website and "the necessary changes to comply with ICANN domain name policy". Mr. Steinberg did not agree to cancel the disputed domain name. On March 26, 2002, in response to another letter from the Complainant’s representative, Mr. Steinberg sought a telephone conversation "as soon as possible". The Complainant asserts that a telephone conversation did take place that day, in which Mr. Steinberg made an offer to sell the disputed domain name to the Complainant for the sum of $5,000.
In a subsequent email on July 16, 2002, responding to a further request to cancel or assign the disputed domain name, Mr. Steinberg acknowledged that "most users… commonly think that yakka is only a clothing brand", argued that ‘yakka’ in modern Australian vernacular means ‘work’ and contended that he was entitled to use generic words to sell his products. He added: "It is my right to operate a business as a going concern and if your client wants to make me a fair offer on part of my business then I am prepared to sell any part of my business which will turn me over a profit".
5. Parties’ Contentions
Apart from the ".com" extension, which should be disregarded, the disputed domain name is identical to the Complainant’s trademark YAKKA registered in 8 countries.
This dispute arose when the Complainant’s representative informed the Respondent of the concerns of the Complainant through the "cease and desist" letter of March 18, 2002: R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v Bill Luton, WIPO Case No. D2000-1201.
Clearly the Respondent was aware of the Complainant’s rights to and extensive reputation in the trademark YAKKA.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name Yakka. No relationship between the Complainant and the Respondent exists other than the supply of goods manufactured by the Complainant for sale by the Respondent’s business. The Complainant has not authorised the Respondent to use the mark in respect of any website so as to give the impression that the website is either the primary authorised website of the Complainant or the website of the primary distributor, online or otherwise, of goods manufactured by the Complainant. Neither has the Complainant authorised the Respondent to use its trademark in connection with offering for sale goods manufactured by other manufacturers.
Although the Respondent has used the website "www.yakka.com" in connection with the offering for sale of goods, the use cannot be considered bona fide. That website was set up and presented with the trademark of the Complainant in order to lead consumers mistakenly to believe that the website was authorised by or affiliated with the Complainant. Accordingly it can be inferred that the website was set up primarily for the purpose of diverting consumers over the Internet to the website under a false impression in order to increase sales by the Respondent of goods offered for sale by the Respondent which include goods from manufacturers other than the Complainant and which are competitors of the Complainant.
The offering for sale under the trademark YAKKA of goods manufactured by Blundstone Pty Ltd and Driza-Bone Pty Ltd cannot be considered a bona fide use of the website "www.yakka.com" since this creates a likelihood of confusion that those goods are somehow associated with the Complainant and falsely represents that those manufacturers are associated with the Complainant.
The inclusion of information on the website relating to the aboriginal derivation of the word yakka does not amount to a legitimate reason for obtaining the disputed domain name. Such information was included on the website after the dispute arose. It is clearly an attempt to create an impression of legitimacy as to the reasons for setting up the website which at all times has been primarily directed to the offering for sale of goods and not as a source of such information.
The Respondent has registered the disputed domain name in bad faith. The Respondent registered the disputed domain name in order to prevent the Complainant, the owner of the trademark YAKKA, from registering a domain name corresponding to its trademark. The Respondent has engaged in a pattern of such conduct. The Respondent’s retail business is engaged in offering for sale goods manufactured by Blundstone Pty Ltd, primarily footwear. The Respondent is also the registrant of the domain name <blundstoneboots.com>. Blundstone Pty Ltd is the registered owner of the trademark BLUNDSTONE in respect of various goods in class 25, primarily footwear and retailing services in class 35 including on-line retailing.
The Respondent has indicated that he would be prepared to sell part of his business to the Complainant for a profit, which by implication and given the subject of the dispute refers to the disputed domain name. Further, the Respondent has indicated that the Complainant’s request to refrain from infringing the Respondent’s trademarks and the rules of ICANN in relation to the registration of domain names merely amount to an attempt to obtain the disputed domain name for free. The resultant inference is that, in addition to non bona fide use, a further reason for registering the disputed domain name by the Respondent was to attempt to make a profit from selling the domain name to the Complainant. The Respondent’s admission that the word YAKKA is synonymous amongst the general public with the goods manufactured by the Complainant, notwithstanding the aboriginal origin of the word, provides further evidence that the Respondent registered the disputed domain name in bad faith.
The Respondent’s intention to benefit financially from the registration of the domain name is demonstrated by comparing the print outs of the website before and after the "cease and desist" letter; by the Respondent’s correspondence and by the express offer for sale of the disputed domain name made by the Respondent to the Complainant’s representative in their telephone conversation of March 26, 2002. Further, it is clear from the tone in the Respondent’s correspondence that it was the Respondent’s intention to register the domain name for the purpose of commercial gain, having full knowledge of the Complainant’s statutory and common law rights in the names YAKKA and HARD YAKKA. The Respondent’s willingness to communicate with the Complainant without agreeing to transfer the disputed domain name and the failure of the Respondent to provide a reason for initially registering it supports this contention: EFG Bank European Financial Group SA v Jacob Foundation, WIPO Case No. D2000-0036.
Bad faith is further demonstrated in that subsequent to receiving the "cease and desist" letter, the Respondent modified the website in an attempt belatedly to comply with the Policy.
B. The Respondent
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.
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, July 13, 2000). 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 trademark registration certificates exhibited to the Amended Complaint, it appears that the Complainant was the registered proprietor of Australian trademark No. A561774 YAKKA in Class 25 for a period of 7 years from August 16, 1991. There is no evidence before the Panel that the registration has been renewed.
The Canadian registration of the Complainant’s trademark YAKKA was made after the Respondent registered the disputed domain name. In the absence of an English translation, it is not possible to discern the date of registration of the mark in Japan. The mark was registered in Hong Kong on August 20, 1996, and appears to be subsisting. It was registered in France on April 9, 1993; in Germany on June 27, 1994, and in the U.S.A. on May 17, 1994, in each case for a term of 10 years. It was registered in the U.K. as of August 15, 1991, for a term of 7 years under the Trademarks Act 1938 (U.K.) and there is no evidence before the Panel of renewal under the 1994 Act.
Rule 15(a) does not permit the Panel to make its own independent investigation of the facts, even matters of official record, to ascertain whether the Australian and U.K. registrations have been renewed.
The Panel finds that the Complainant has registered trademark rights in the word YAKKA in Hong Kong, France, Germany and U.S.A. and did so prior to the registration of the disputed domain name.
The Respondent’s concession that "most users… commonly think that yakka is only a clothing brand" enables the Panel to draw the conclusion that, in Australia, the Complainant has common law rights in the trademark YAKKA and did so at the time of registration of the disputed domain name.
Identity or Confusing Similarity
It is well established that essential or virtual identity is sufficient for the purposes of the Policy and that the ".com" extension is to be ignored.
The Panel finds the domain name <yakka.com> to be identical to the Complainant’s trademark YAKKA.
The Complainant has established this element of its case.
The Panel accepts that changes made by the Respondent to its website after it received notice of this dispute on March 18, 2002 cannot be taken into account in determining this issue.
The Respondent has not denied the Complainant’s assertions that it is not a licensee of the Complainant, nor otherwise authorised to use the Complainant’s trademark and that it is not known by and has no connection with the name "Yakka", otherwise than as a retailer of YAKKA brand goods.
These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The evidentiary burden, therefore, shifts to the Respondent to show that it does have rights or legitimate interests in the domain name, 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, August 21, 2000) and the cases there cited. The Respondent has not filed a Response but its arguments are contained in exhibits to the Complaint. It argues that ‘yakka’ is a generic word meaning ‘work’ and that it is free to register that generic word to sell workwear at its website. The flaw in this argument lies in the Panel’s finding that the Complainant has trademark rights in the word YAKKA, including in particular common law rights in Australia, based on the Respondent’s own admission that "most users… commonly think that yakka is only a clothing brand.
It was not until after this dispute arose that the Respondent sought to introduce to its website any reference to the aboriginal derivation of the word. Until then, it was content to use the Complainant’s trademark to give an ‘official’ appearance to its website and to sell goods of the Complainant’s competitors under the Complainant’s mark. The Respondent cannot have been unaware of the trademark significance of the word ‘yakka’ because it also offered for sale the goods of the Complainant under that mark and claimed to be a distributor of ‘yakka" clothing. Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO case D2000-0847 (October 12, 2000).
The Complainant has established this element of its case.
Bad faith registration and use
The Complainant’s offer on March 26, 2002, to sell the disputed domain name to the Complainant was made so long after the disputed domain name was registered that the Panel is not satisfied that sale to the Complainant for a profit was the Respondent’s primary purpose in registering it.
The Respondent’s registration of one other domain name incorporating the trademark of one of the Complainant’s competitors, even if sufficient to constitute a pattern, does not enable the conclusion to be drawn that the disputed domain name was registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name. There is no evidence that this was the Respondent’s purpose in registering either domain name.
The parties are not trading competitors, since they operate respectively at the wholesale and retail levels of trade. They are competitors in the sense that each wishes to be the registrant of the disputed domain name. However the Panel is not satisfied that disruption of the business of a competitor was the Respondent’s primary purpose in registering the disputed domain name.
The only evidence of the Respondent’s conduct between registration of the disputed domain name on April 28, 1999, and March 18, 2002, when the Complainant notified the Respondent of this dispute, is that on March 15, 2002, the Respondent’s website "www.yakka.com" prominently displayed the Complainant’s mark YAKKA in such a way as to be likely to convey that it was the "official" site of the Complainant, and there offered for sale under the YAKKA mark not only the goods of the Complainant but also the goods of its competitors. The Panel finds on this evidence that the Respondent has used the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website and of products on that website. Under paragraph 4(b)(iv) of the Policy, such a finding shall be evidence of registration and use of the disputed domain name in bad faith.
Accordingly, pursuant to paragraph 4(b)(i) of the Policy, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
The 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 <yakka.com> be transferred to the Complainant.
Alan L. Limbury Esq.
Dated: November 11, 2002