WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MYOB Technology Pty Ltd. v. Mustard Seed eCommerce, Inc.
Case No. DBIZ2002-00282
1. The Parties
The Complainant is MYOB Technology Pty Ltd., 12 Wesley Court, Burwood East, Victoria 3151, Australia.
The Respondent is Mustard Seed eCommerce, Inc., 19 Torrance Woods, Brampton, Ontario, L6Y 2T1, Canada.
2. The Domain Name and Registrar
The Domain Name is <myob.biz>.
The Registrar is 007 Names, Inc., Bridgewater, NJ 08807, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on July 23, 2002, and in hardcopy form on July 29, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy (the "STOP"), the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the STOP.
On July 29, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was August 18, 2002.
On August 18, 2002, the Response was received by the Center by email and on August 22, 2002, in hardcopy form.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel.
4. Factual Background
MYOB Technology Pty Limited, the Complainant, is an Australian company. It is a developer of various computer related goods and services. Its house mark is MYOB. It has a variety of subsidiary companies around the world (including Canada) whose corporate names feature the mark MYOB eg MYOB Canada Inc.
The Complainant is the proprietor of a number of trade mark registrations of or including MYOB. It first registered the MYOB trade mark in 1989.
The Complainant is the proprietor of a number of ‘MYOB’ domain names including, <inter alia, myob.com> and <myob.ca>.
On the evidence put before the Panel the Complainant clearly has a substantial reputation and goodwill as a producer of computer related goods and services in many of the countries in which it conducts business, including Canada.
Mustard Seed E-Commerce Inc, the Respondent was incorporated in Canada in 1998, and is engaged or plans to be engaged in the field of property investment. Its shareholders and directors are twin brothers, Greg and Geoff McKay, who wrote and in March 1982, published a book entitled "Mind Your Own Business". In the years immediately following publication of the book the McKay brothers received a number of accolades for having written the book, including the Ontario Youth Award.
The Respondent is the proprietor of the domain name <myob.info> which it registered on September 12, 2001. The Respondent registered the Domain Name on March 27, 2002.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to a trade mark in which it has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relates the detail of various enquiries it has made which have not thrown up any reason for believing that the Respondent might have rights or legitimate interests in respect of the Domain Name.
The Complainant also refers to correspondence that it has had with the Respondent whereby it has sought without success to get the Respondent to identify what are the rights or legitimate interests that the Respondent has in respect of the Domain Name. Save to say that the Respondent registered the Domain Name in good faith, has good faith intentions etc in respect of the Domain Name, the Respondent comes forward with no detail in that correspondence.
The Complainant cites various previous decisions tending to show that in certain circumstances Respondents have an obligation to conduct trade mark searches prior to registering domain names, that where the Complainant’s trade mark is famous, Respondents may be deemed to have constructive notice of a Complainant’s trade mark rights and that in the context of .biz disputes under the STOP Policy an applicant for registration who pursues his application with knowledge of the existence of IP Claimants waiting in the wings means that in such circumstances the applicant proceeds at his peril. In one such decision NAF Case No FA0112000103042 (the Gene Logic case) the Panelist said as follows:-
"If the .biz applicant nonetheless decides to go forward with the application, he or she has to do so under the STOP Rules after acknowledging this potential conflict, in spite of the potential for litigation, and with complete knowledge of the exact mark and the precise reasons there may be a conflict between the domain and the claimed mark. This situation is completely different than the original UDRP/ICANN rules, which contain no such provisions. This Notice may, in the proper case, almost preclude any possibility of registration in good faith of a domain name under facts and circumstances like the instant case. [Emphasis added by the Complainant]"
In the absence of any actual knowledge of what the Respondent intends, the Complainant submits "that the Respondent filed and obtained registration of the <myob.biz> domain name in which it has no legitimate rights or interest with the intention of preventing the owner of the trade marks from reflecting the mark in a corresponding domain name."
Finally, the Complaint asks the Panel to infer that in the absence of any obvious rights or legitimate interests that the Respondent might have in the MYOB trade mark, that the Domain Name was registered in breach of the .biz registration restriction in that it was not registered for a commercial purpose and that on that basis the registration cannot be considered to have been applied for in good faith.
The Respondent does not appear to dispute the Complainant’s trade mark rights. The Respondent states that the Domain Name will be used for the bona fide offering of goods and services related to ICI real estate, commercial real estate and business brokerage services.
The Respondent states that it is not in competition with the Complainant as the parties operate in completely different business areas and it asserts that its intended use of the Domain Name will not in any way infringe the Complainant’s trade marks.
The Respondent says that it has no intention to cause the Complainant any damage and is not intending to disrupt the Complainant’s business. Nor was the Domain Name registered for the purpose of preventing the Complainant from doing so.
The Respondent states that its choice of domain name was inspired by the book Mind Your Own Business published in 1982, by the Respondents’ shareholders and directors. The Respondent points out that MYOB is a common acronym for the expression "mind your own business" and the Respondent asserts that the book "Mind Your Own Business" is commonly referred to by way of the acronym.
The Respondent asserts that it does have legitimate rights and interests in respect of the Domain Name. It says that long before any notice of the dispute, the Respondent had made a significant investment in connection with a bona fide offering of goods and services in a targeted field related to the Domain Name. It says that the Domain Name is part of the Respondent’s overall marketing campaign. It says that the acronym MYOB and the associated phrase "mind your own business" are ideally associated with the Respondent’s related field of business brokerage services and ICI real estate.
The Respondent exhibits to the Response documentation to show that its purpose is to deal in property investments etc. It also produces evidence to show that on May 13, 2002, it applied to register <myob.biz> as a business name in Ontario in relation to "business listing services, on-line ICI real estate directory". The registration appears to have come through on May 15, 2002. The Respondent applied for and successfully registered that business name with the Ontario Government on the very first business day possible subsequent to being awarded the <myob.biz> domain name, there having been a strike of government workers up to then..
Further, the Respondent received a Master Business License from the Ontario Government under the myob.biz business name.
The Respondent contends that no inferences adverse to the Respondent should be drawn from the fact that it has not been able to demonstrate by way of a developed website its planned use of the Domain Name. It points out that the STOP procedure prevents it from making use of the website until all IP claims have been resolved.
The Respondent claims to have been using the domain name myob.info and the website at "www.myob.info" since September 2001, and produces a printout of a page from that site.
The Respondent dismisses suggestions from the Complainant that adverse inferences should be drawn from the manner in which the Respondent responded to the Complainant’s correspondence. The Respondent argues that the correspondence and the Respondent’s manner of dealing with it has no bearing on the Respondent’s bona fide rights and interests in the Domain Name. It says that it perceived the Complainant’s actions as adversarial and threatening in nature. It asserts that some of the correspondence appears to have been mis-directed to a Mr. Parsons [The Panel notes that the email nonetheless appears to have been correctly routed to one of the McKay email addresses].
The Respondent says that while the Complainant’s rights in the MYOB trade mark date back to 1989, the Respondent has common law rights in the MYOB trade mark that precede the Complainant’s first use date. The Respondent is here referring to the book authored by the McKay brothers in 1982.
The Respondent further refers to a Canadian trade mark application it filed on August 15, 2000, for the mark BUSINESSFORSALE.CA. It says that this clearly demonstrates the Respondent’s business intentions in a field directly related to the Respondent’s usage of MYOB. The Respondent also refers to its MYOB trade mark application in Canada filed on May 13, 2002, covering a variety of services including services in the field of real estate.
In relation to the bad faith claim the Respondent states as follows:-
"[38.] The Respondent did NOT register the ‘MYOB.BIZ’ domain in bad faith. The domain name was registered by the Respondent in good faith as part of the Respondent’s overall marketing campaign. The domain name is directly related to the Respondent’s field of business and the Respondent has been directly involved in this field of business since as early as its Federal incorporation date of January 27, 1998. Furthermore, Messer’s Greg McKay and Geoff McKay (Sole Directors, Officers and Share Holder’s of the Respondent Corporation) have demonstrated their good faith interest in the MYOB acronym for well over 20 years. Their self published book ‘Mind Your Own Business’ is clear evidence of their long standing good faith usage.
[39.] The Respondent has at no time had the intention of selling, leasing, renting or transferring the domain name. The Respondent intends to use the domain name in connection with its own marketing of goods and services related to its specific field of business. The Respondent has not offered, and currently has no intention of offering the domain for sale or lease to any party.
[40.] There was no attempt on the Respondent’s part to register the domain name in an effort to prevent the Complainant from using it. The Respondent has in no way tried to disrupt the business of the Complainant. The Respondent did not register the domain name with the intent of capitalizing on the Complainant’s trade mark interest. On the contrary, the Respondent solely registered the domain for its own good faith use in a dissimilar field of commerce. The Respondent and Complainant are in two completely different areas of business offering completely dissimilar wares and services. The Respondent does not in any way consider the Complainant to be a competitor. The Respondent is not trying to create confusion with the Complainant or its registered mark(s). In fact, there is virtually no possibility of confusion, as the parties are involved in completely dissimilar wares and services. Furthermore, the Respondent is not trying to attract or gain Internet users who might mistakenly be looking for the Complainant or its goods and services. The Respondent registered the ‘MYOB.BIZ’ domain name in good faith, based upon an obvious and memorable connection between the domain name and the Respondent’s field of commerce. The Respondent has invested a great deal of time and money in developing its company and marketing strategies. The registration of the domain name is just one of many, many demonstrable steps taken over an extended period of time to further develop the Respondent’s business in the field of "Business Brokerage Services, ICI Real Estate, and Commercial Real Estate".
[41.] The registration of the ‘MYOB.BIZ’ domain name was done in good faith, and the Respondent has legitimate, long standing, demonstrable rights and interests in the mark MYOB."
6. Discussion and Findings
According to paragraph 4(a) of the STOP, the Complainant must prove that
(i) The Domain Name is identical to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Respondent’s Rights and Legitimate Interests
The Panel finds it regrettable that in the initial correspondence between the parties the Respondent did not provide the Complainant’s representatives with a reasonably detailed response to their request for information as to the Respondent’s claimed rights and legitimate interests in respect of the Domain Name. Had it done so, the Panel is reasonably confident that the Complainant would not have pursued this Complaint, even if only because those behind the Respondent, the directors and shareholders, have an obvious association with the acronym ‘MYOB’ and the Complainant owns and has since September 2001, been using the domain name <myob.info>.
In the absence of any assistance from the Respondent, it is not surprising that the Complainant had serious doubts as to the Respondent’s bona fides. Indeed, the Respondent’s failure to answer the Complainant’s correspondence properly has caused the Panel to have suspicions in the matter. The Panel did not find the childish ‘Mr. Parsons’ excuse helpful. The Panel wondered whether the Government workers strike was the true reason for the Respondent’s activity re business names and trade marks in mid-May 2002, or whether it was because the Respondent first heard from the Complainant’s lawyers on May 13, 2002.
Additionally, while the Respondent has produced evidence to show that it was incorporated to conduct business in the field it identifies, it has not produced any substantial evidence to demonstrate the nature of the business that the Respondent has in fact conducted since incorporation in 1998.
Nonetheless, and notwithstanding the Panel’s frustration at not being able to impose some sanction on the Respondent for its conduct in its dealings with the Complainant’s representatives, which has put the Complainant to substantial and unnecessary expense, the Panel finds it difficult to say that the Respondent has not done enough to demonstrate a legitimate interest in respect of the Domain Name. Certainly, the Complainant has not proved to the satisfaction of the Panel that the Respondent does not have a legitimate interest in respect of the Domain Name.
This is a case where there are multiple IP claimants and it is therefore necessary under sub-paragraphs 4(l)(2)(ii) and (iii) of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the Domain Name. The Panel has found that the Respondent has legitimate interests in respect of the Domain Name, but there is nothing before the Panel to show that the Respondent has anything approaching a right to the Domain Name. Such a right may materialize in due course, following use of the Domain Name and/or on the MYOB trade mark application maturing into a registration, but no such right exists to-day. The Panel permits further challenges to the Domain Name.
Given the Panel’s finding that the Respondent has a legitimate interest in respect of the Domain Name, the bad faith claim must fail. In any event, it is quite clear that the motivation for selection of the MYOB name stemmed from the book Mind Your Own Business published by the directors/shareholders of the Respondent when they were students. There is nothing to suggest that the Respondent had the Complainant in mind when registering the Domain Name.
Insofar as the previous decisions cited by the Complainant are concerned, the Panel comments that they cannot be of any assistance to a Complainant where, as here, the Respondent is able to demonstrate a genuine, independent reason for having selected the domain name, independent in the sense that it owed nothing to the Complainant’s trade mark and irrespective of how well known that trade mark might be.
The Complaint is dismissed, but subsequent challenges shall be permitted according to STOP paragraph 4(l)(ii).
Dated: September 11, 2002