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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd

Case No. DAU2002-0001

 

1. The Parties

1.1 The Complainant is GlobalCenter Pty Ltd (ACN 100 184 307) of South Melbourne, VIC, 3205, Australia.

1.2 The Respondent is Global Domain Name Hosting Pty Ltd (ACN 090 772 697) c/-Morris Mackintosh & Smith P/L, VIC, 3126 Australia.

 

2. The Domain Names and Registrar

2.1 The domain names upon which this Complaint is based are <globalcentre.com.au> and <globalcentre.net.au> ("Disputed Domains").

2.2 The Disputed Domain <globalcentre.com.au> was registered on November 22, 2000, and renewed on September 1, 2002. The Disputed Domain <globalcentre.net.au> was registered on November 23, 2000, and renewed on November 23, 2002. The renewals attracted the operation of the .au Dispute Resolution Policy (the "Policy"), which only came into force on August 1, 2002.

2.3 The Registrar of the Disputed Domains at the date of the Complaint is Enetica Pty Ltd.

 

3. Procedural History

3.1 The Complaint was submitted for decision in accordance with the Policy (which was approved by the Board of .au Domain Administration ("auDA") on August 13, 2001), the Dispute Resolution Rules (the "Rules"), and the WIPO Supplemental Rules (the "Supplemental Rules").

3.2 On November 28, 2002, auDA confirmed to the Complainant’s authorised representative by email that the Disputed Domain <globalcentre.com.au> licence is subject to a mandatory proceeding under the Policy, and on December 16, 2002, that the Disputed Domain <globalcentre.net.au> licence is subject to the same mandatory proceeding.

3.3 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") via e-mail on December 20, 2002, and in hardcopy on December 23, 2002. The Center acknowledged receipt of the complaint by e-mail on December 23, 2002.

3.4 The Center sent the Notification of Complaint and Commencement of Administrative Proceedings (together with the explanatory cover sheet), in accordance with Paragraph 4 of the Rules, to the Respondent by e-mail on January 6, 2003, (with exhibits under separate e-mail of same day) and by courier (with enclosures) on January 6, 2003.

3.5 On January 25, 2003, the Respondent acknowledged receipt of the complaint by e-mail and requested a further 30 days to file a Response.

3.6 On January 25, 2003, the Center notified and sought comment from the Complainant in relation to the Respondent’s request for an extension.

3.7 On January 27, 2003, the Respondent, by email from mail@ozservers.com.au, notified the Center of its preferred contact details, including nomination of an email address for service of notices: mail@ozservers.com.au.

3.8 On January 28, 2003, the Complainant (by e-mail) forwarded its objections to the Respondent’s request for an extension.

3.9 On January 28, 2003, the Center notified the Respondent that its request for an extension had been denied in accordance with paragraphs 5(d) and 6 of the Rules. On the same day the Center requested that the parties provide a list of three preferred Panel candidates in accordance with paragraph 6(e) of the Rules.

3.10 On January 31, 2003, the Center advised the parties that, despite having received no list of preferred candidates from the Respondent, it was proceeding to appoint the Panel.

3.11 On February 4, 2003, the Respondent sent an e-mail to the Center in relation to its request for an extension and containing some material which appeared to respond to some allegations made in the Complaint.

3.12 In accordance with Paragraph 4(a) of the Rules and Paragraph 5 of the Supplemental Rules, the Center has verified that the Complaint satisfies the formal requirements of the Rules. Payment in the required amount has also been received.

3.13 Pursuant to paragraph 6(f) of the Rules, the Center notified the Complainant and the Respondent on February 10, 2003, of the appointment of the Administrative Panel and that, pursuant to paragraph 7 of the Rules, the Panelists had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

3.14 The Center sent a Transmission of Case File to the Panel on February 10, 2003. The documentation was received in hard copy by the Panel in Sydney, Australia on February 17, 2003.

3.15 On February 11, 2003, the Complainant sent an e-mail to the Center in reply to the Respondent’s e-mail of February 4, 2003.

3.16 On February 12, 2003, the Panel granted the Respondent an extension to February 20, 2003, within which to file a formal response. This extension order was notified to both parties (in the case of the Respondent, in compliance with Rule 2(b), to the email address which it had nominated on January 27, 2003, namely, mail@ozservers.com.au).

3.17 On February 26, 2003, no Response having been filed, the Panel asked the Center to confirm that its extension order had been notified to the Respondent. The Center then emailed the Respondent at both mail@ozservers.com.au and mail@ozservers.net and also faxed the Respondent asking it to confirm that it had received notice of the extension of time within which to file a Response.

3.18 On February 26, 2003, the Respondent, by email from mail@ozservers.net, requested from the Center "a fax with what my options are as I have not had any notification of an extension before today". Having regard to the Respondent’s nomination of mail@ozservers.com.au as its address for email service and the Center’s compliance with Rule 2(b) in formally notifying the Respondent of the extension of time which the Panel had granted, the Panel declined to grant any further extension of time within which the Respondent might file a formal Response.

3.19 As at March 5, 2003, the Panel has not received a formal Response from the Respondent.

3.20 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

Activities of the Complainant

4.1 The following is asserted as fact in the Complaint:

4.2 The Complainant (previously known as RBRT (Vic) Pty Limited) currently owns the company name GlobalCenter Pty Ltd (ACN 100 184 307).

4.3 Another entity known as GlobalCenter Pty Ltd was first registered on October 28, 1997, and operated as a commercial data centre and ISP hosting centre from offices at Level 2, 190 City Road, South Melbourne, Victoria.

4.4 That GlobalCenter Pty Ltd underwent a number of changes as summarised below:

• March 13, 1998: GlobalCenter Pty Ltd changed its name to Frontier GlobalCenter Pty Ltd;

• October 14, 1999: Frontier GlobalCenter Pty Ltd changed its name to Global Crossing Internet Pty Ltd;

• December 14, 1999: Global Crossing Internet Pty Ltd changed its name to GlobalCenter Pty Ltd;

• April 23, 2002: RBRT (Vic) Pty Limited purchased the business operations formerly carried on by GlobalCenter Pty Ltd together with all of that entity’s assets and subsequently changed its name to GlobalCenter Pty Ltd on July 1, 2002.

4.5 The Complainant registered domain names <globalcenter.com.au> and <globalcenter.net.au> on December 3, 1997 and June 19, 1999.

4.6 On June 6, 2000, GlobalCenter Pty Ltd attempted to register the business name "GlobalCentre" to enable registration of the corresponding domain names <globalcentre.com.au> and <globalcentre.net.au>.

4.7 The Business Affairs Office (Victoria) would not register the name "GlobalCentre" as the name was pronounced the same and had an identical trading address to "GlobalCenter". This decision was alleged by the Complainant to have been made despite the difference in spelling between the business names and notwithstanding that both names would be owned by the same proprietor. The only evidence provided of this is a letter from Pitcher Partners Accountants and Auditors dated June 6, 2000. There is no correspondence from the Business Affairs Office Victoria annexed to the Complaint.

4.8 The Complainant submits that it has common law rights in the trademark "GlobalCenter" arising from its use of the mark since October 1997. [The Panel infers that the Complainant asserts that it acquired these rights as part of its April 2002, acquisition.]

4.9 GlobalCenter Pty Ltd was a wholly owned subsidiary of GlobalCenter Inc, a US company until April 23, 2002, when it was acquired by the Complainant. Much of the Complainant’s reputation as a data centre and ISP host under the name "GlobalCenter" was promoted through its affiliation with GlobalCenter Inc. GlobalCenter Inc has a strong international presence as one of the world’s largest Internet hosting companies.

4.10 In addition to its international presence, the Complainant says it has operated a data centre and ISP hosting centre under the name "GlobalCenter" in Victoria since October 28, 1997. The Complainant has approximately 115 customers including ANZ Bank, Netscape, Pacific Access and Melbourne IT. [The Complaint appears to use the word "Complainant" to encompass the Complainant’s predecessors in business.]

4.11 The Complainant operates from two offices in Victoria and has developed a reputation in Australia in the name "GlobalCenter" for ISP hosting services and as a data centre. The Complainant has annexed a number of marketing materials to support its claim for reputation in Australia and the US using the name "GlobalCenter".

4.12 The Complainant owns Australian Trademark Application 919932 for the word mark "GlobalCenter" in class 38 for "computer data communication services; data broadcasting and transmission services; data hosting services; providing computer access to the Internet."

Respondent’s Activities

4.13 The Respondent has not submitted a formal response in the form prescribed in paragraph 5 of the Rules despite being granted an extension to February 20, 2003, under Administrative Panel Procedural Order No. 1. The Respondent’s e-mail of February 4, 2003, does make some informal responses to the Complaint. The Panel has taken this as the Respondent’s Response.

4.14 In summary the following is asserted as fact by the Respondent in its e-mail of February 4, 2003:

• Global Domain Hosting Pty Ltd was registered as an Australian Company on December 2, 1999, and is a sister company of Oz Servers Pty Ltd involved in a joint project nearing completion to establish a data centre in Queensland;

• The data centre will trade as "GlobalCentre" and <globalcentre.com.au> will detail the network infrastructure and will be used on all the name servers;

• The data centre is scheduled to be fully operational by the end of March 2003.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to paragraph 4(a)(i) of the Policy, the Complainant asserts that the Disputed Domains, save as to spelling, "are almost identical" to the trademark and business name "GlobalCenter" in which the Complainant has rights.

5.3 In summary the Complainant relies on the following in support of paragraph 4(a)(i):

• Business Affairs Office in Victoria did not register the business name "GlobalCentre" on the basis that it was too similar to "GlobalCenter";

• A <yahoo.com.au>Internet search for "Globalcentre" revealed hits containing press releases and other information relevant to "GlobalCenter; and

• Slattery’s Internet watch identifies the Complainant’s business as "GlobalCentre" as opposed to "GlobalCenter".

5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domains.

5.5 In summary the Complainant relies on the following in support of paragraph 4(a)(ii):

• The Disputed Domains (as at the date of the Complaint) are inactive and make no bona fide offering of goods or services;

• There is no evidence that the Respondent uses the name "GlobalCentre" as a trade name, is commonly known by that name or operates a business with any legitimate relationship to that name;

• Telephone and Internet searches reveal no results for the Respondent under the names "GlobalCentre" or "GlobalCenter";

• The Respondent was using the Disputed Domain <globalcentre.net.au> as a means to re-direct traffic to a website connected to the Respondent;

• The Respondent removed the automatic re-direction at <globalcentre.net.au> following receipt of the Complainant’s letter of demand;

• The Respondent has failed to respond to a letter of demand and made no effort to deny the allegations contained therein.

5.6 In reference to the requirements of Paragraph 4(a)(iii) of the Rules, the Complainant argues that the Respondent registered and has used the domain name in bad faith.

5.7 In summary, the Complainant relies on the following in support of paragraph 4(a)(iii);

• The international and domestic reputation of the Complainant in the name "GlobalCenter" is sufficient to argue that the Respondent would have been aware of the Complainant and viewed the Complainant as a competitor;

• The Respondent’s passive holding of the Disputed Domains and refusal to respond to the Complainant’s letter of demand equates to bad faith; and

• The Respondent registered <globalcentre.net.au> for commercial gain. It directed Internet users searching for the Complainant’s website with the Australian spelling of the Complainant’s name to access the Respondent owned site "webaccess.net.au". The Respondent removed this direction after receiving the letter of demand sent August 12, 2002. The Complainant describes this behaviour by the Respondent as engaging in "typo-piracy" by deliberately using a common misspelling of the Complainant’s mark to take advantage of the Complainant’s Internet customers.

B. Respondent

5.8 In addition to paragraph 4.13 above, the Respondent’s February 4, 2003, communication also submitted:

• GlobalCenter Pty Ltd was registered on April 11, 2002, not October 28, 1997, and does not have an Australian Business Number (which is usually needed to trade in Australia);

• The Disputed Domains are active;

• The Complainant’s web-page at "www.globalcenter.com.au" is a single page and makes no bona fide offering of goods or services; and

• The trademark registration is pending only and was applied for in July 2002, as part of an effort to "steal" the Disputed Domains.

 

6. Discussion and Findings

6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the onus of proving, on the balance of probabilities, that all three elements are present.

Domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights [(4(a)(i) of the Policy]

6.2 The Panel notes the Complainant has incorrectly quoted paragraph 4(a)(i) of the Policy as "The domain names are confusingly similar to a name and trademark in which the Complainant has rights" (our emphasis). This is more onerous than the Policy actually requires. The Panel has applied the words of the Policy in reaching its decision. We note that the Complaint also incorrectly cited this ground as paragraph 4(a)(ii) of the Policy.

6.3 Trademark application No 919932 is currently under examination and is the subject of an adverse examiner’s report which has not been provided to the Panel. In addition the Panel finds that the Complainant has failed to provide sufficient evidence of use or reputation in the trademark to justify reliance on a common law trademark, except to the extent that such rights were acquired in 2002, from its predecessor.

6.4 It is unnecessary in this case for the Panel to determine whether the Complainant has established trademark rights. However, it is necessary under this limb of the Policy to determine whether the Complainant has rights in a name and the Complainant must show that this name is "identical or confusingly similar" to the Disputed Domains. That is one key difference between the Policy and the UDRP.

6.5 The Complainant asserts that it has operated under its current name since 1998. The Complainant has submitted evidence of its Australian company name registration for GLOBALCENTER PTY LIMITED. The Panel notes that the Complainant only acquired the former business of GlobalCenter Pty Ltd in April last year. This point is not raised in the Respondent’s e-mail of February 4, 2003, except obliquely (identifying that the Complainant was not registered in 1998). Although the Complainant did not acquire its present name until after the domain names were registered, the Panel has formed the view that it would have acquired the rights of its predecessor in any causes of action it had, which would have included the goodwill in the corporate name which existed prior to the registration of the Disputed Domains. The Panel finds that the Complainant has rights in the name "GLOBALCENTER".

6.6 As is the case under the UDRP, 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.

6.7 Likewise, the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No.D2001-1480; Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No.D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No.FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121 and the cases there cited.

6.8 The Disputed Domains comprise the word "GlobalCentre" together with the relevant .au 2LD suffix. They are therefore identical to the name "GlobalCenter" but for the use of the Australian rather than the American spelling. The Panel finds that the Disputed Domains are confusingly similar to the name "GlobalCenter".

6.9 The Panel therefore finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

No rights or legitimate interests in respect of the domain name [4(a)(ii) of the Policy]

6.10 Global Hosting Pty Ltd is not, in that exact form, named as the registrant of "www.globalcentre.net.au" on the whois information annexed to the Complaint. The registrant is named as "Global Domain Hosting Centre". However, the Respondent has acknowledged in its e-mail dated February 4, 2003, that it is the owner of both the Disputed Domains and the Panel has proceeded on the assumption that this is so. The Complainant asserts that the Respondent has no legitimate interest in the Disputed Domains. The Complainant’s search of the website " www.globalcentre.com.au" as at December 13, 2002, shows the web page as inactive. The Panel’s more recent searches show that the Disputed Domains resolve to sites with identical content (although hosted on different servers). However, there is nothing about the sites to indicate that they were active prior to the Respondent being notified of the substance of the complaint. The Panel notes that another difference between the Policy and the UDRP is that the Policy requires notice of the "subject matter of the dispute" to predate any use by a respondent, rather than simply notice of the dispute itself.[1]

6.11 The Respondent was registered as an Australian Company on December 2, 1999. There is no evidence that this company has ever been known by the Disputed Domains. In particular, there is nothing to explain the use of the word "Centre" in "GlobalCentre" by the Respondent. Although Respondent set out in its email of February 4, 2003, "details of the false statements made by the Complainant", it did not deny the assertions in the Complaint that the parties are competitors and that the Respondent must have been aware of the Complainant’s name before registering the Disputed Domains. 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.

6.12 The Panel notes paragraph 4(d) of the Rules which sets out grounds upon which the Respondent is able to demonstrate rights or a legitimate interest in a domain name.

6.13 The Respondent provides some information in its e-mail of February 4, 2003, in relation to the Disputed Domains being used to detail network infrastructure and for "use on all name servers as part of a joint venture with Oz Servers Pty Ltd". However, there is nothing to demonstrate that these intentions for use of the Disputed Domains were initiated prior to the Respondent being contacted by the Complainant in relation to the Disputed Domain Names.

6.14 The word "GlobalCentre" comprises two words both of which are generic and could be utilised legitimately in a variety of business contexts. The feature of the Policy that enables complainants to challenge domain name registrations based on names which are identical or confusingly similar to a complainant’s name makes it more difficult to prove the element of lack of legitimacy.

6.15 However, the Panel finds that the Complainant has established that the Respondent and the Complainant were competitors offering web hosting services in Melbourne over similar periods of time. From this perspective, the Respondent is likely to have known of the Complainant’s name and business at the time of its application for the Disputed Domains. This knowledge, in conjunction with the fact that the name "GlobalCentre" does not appear in the Respondent’s company name and is not used in any of the Respondent’s online material shifts the onus to the Respondent to provide some evidence of legitimate use of the Disputed Domains. In the absence of such evidence, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Rules.

The Respondent has registered the domain name or is subsequently using it in bad faith [4(a)(iii) of the Policy]

6.16 The Panel notes that Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Disputed Domain was either registered or subsequently used in bad faith. This reflects another difference from the UDRP.

6.17 The Complainant appears largely to rely on the circumstances set out in paragraph 4(b)(iii) and (iv) of the Policy to establish bad faith registration and use.

6.18 The Complainant argues that the slight differentiation in spelling between the Complainant’s name and the Disputed Domains would mean that Customers would be diverted away from the Complainant’s business and this would have been known to the Respondent, as a consequence of the Complainant’s reputation, at the time of registering the Disputed Domains and subsequently.

6.19 The Panel notes that re-direction is not of itself evidence sufficient to satisfy 4(a)(iii) of the Policy. However, where the Respondent is using a "virtually identical" or "confusingly similar" name to redirect customers to a competitor of the Complainant, and no response or evidence of any legitimate use of the Disputed Domains is provided, the Panel can draw adverse inferences against the Respondent. The Panel has given the Respondent ample opportunity to respond to the Complainant’s allegations.

6.20 The Respondent’s inaction with respect to use of the web-site until after receipt of the Complaint supports the Complainant’s contention that the Disputed Domains were registered in bad faith.

6.21 On the evidence presently before the Panel and absent any evidence from the Respondent to the contrary, the Panel finds the current evidence sufficient to meet the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

7.1 The Panel finds the Complainant has proven all of the requirements of paragraph 4(a) of the Policy and accordingly orders that the Disputed Domains be transferred to the Complainant.

 

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Philip N. Argy
Presiding Panelist

Alan Limbury
Panelist

Alistair Payne
Panelist

Dated: March 5, 2003

 

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1. Panelist Limbury takes the view that the Panel is precluded by Rules 10(a) and 15(a) from conducting its own factual investigations and may not therefore visit websites unless invited by a party to the dispute to do so as part of its submission. Quite apart from this requirement of the Rules, a visit to a Respondent's site after the commencement of proceedings inevitably raises the question, as it has here, whether the site has changed since notice of the subject matter of the dispute was given to the Respondent. See: Jazid, Inc./Michelle McKinnon v. Rennemo Steinar, eResolution Case No.AF-0807:

"[It is not] the burden of the Panel to seek further evidence (other than judicial knowledge) to sustain the parties' allegations, as this may be disruptive of the arbitration process. Therefore, the burden rests on the parties to either support or sustain their allegations with the appropriate documentation whenever possible".

Panelist Argy takes the view that the Panel is entitled to have regard to any freely available online public material that is germane to an issue in dispute. Although not relevant in this case, resort to the Wayback Machine at "www.archive.com" would be an example of a tool that Panelist Argy would regard as legitimate for a Panel to use to view prior versions of websites where there is a dispute as to their content.