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Anadis Limited v. Uden Media/Isaac A. Serar
Case No. D2005-1247
1. The Parties
The Complainant is Anadis Limited, Campbellfield, Victoria, Australia, represented by Kliger Partners, Australia.
The Respondent is Uden Media/Isaac A. Serar, South Yarra, Victoria, Australia,
represented by legal counsel.
2. The Domain Name and Registrar
The disputed domain name <travelan.com> is registered with Enetica Pty
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2005. On December 5, 2005, the Center transmitted by email to Enetica Pty Ltd. a request for registrar verification in connection with the domain name at issue. On December 19, 2005, Enetica Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 8, 2006. The Respondent sought an extension of time on the basis of his ill health and being unable to instruct his lawyer who was away on holidays. The Complainant consented to an extension of the Response due date to January 16, 2006, and, accordingly, the due date was extended to January 16, 2006. On January 13, 2006, the Respondent’s lawyer sought an extension of time on the basis of the Respondent’s ill health and supported by a medical certificate. Accordingly the due date was extended to January 23, 2006. The Respondent’s lawyer requested a further extension of time, once again, on the basis of the Respondent’s ill health. The Center granted a final extension of the Response and set a due date of February 1, 2006. A subsequent further request from the Respondent’s lawyer for a further extension of time was refused. However, in response to an informal indication that the Respondent might be prepared to voluntarily relinquish the disputed domain name, the Center invited the Respondent to record a formal agreement to that effect with the Complainant, so that the Complaint might be withdrawn prior to the appointment of a Panel. The Complainant did not choose to suspend the proceeding to pursue a settlement of the dispute, but indicated its desire to proceed to the appointment of a Panel to decide the matter. Accordingly, the Center formally notified the Respondent of the consequences of his default on February 7, 2006.
The Center appointed Philip N. Argy as the sole panelist
in this matter on February 10, 2006. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as required by the Center to ensure compliance with the Rules,
4. Factual Background
There being no Response, the following facts are uncontested.
The Complainant registered the trademark TRAVELAN in Australia in connection with pharmaceutical preparations on November 11, 1996. In addition, the Complainant holds an international registration under the Madrid Protocol, No. 0846406, designating China, the European Community, the Republic of Korea and the United States of America. National registration in those jurisdictions is still pending.
The Complainant is also the registrant of the domain name <travelan.com.au>.
The Complainant has used the TRAVELAN mark in connection with a pharmaceutical product used to reduce the risk of the medical condition known as Traveller’s Diarrhoea since at least 1996, when the mark appeared in the Complainant’s prospectus. The mark TRAVELAN is an invented word derived from “travel” and “antibodies”.
The Complainant’s TRAVELAN product gained regulatory approval in Australia on August 4, 2004, and was subsequently launched onto the Australian market. The Complainant has, since the launch of the product, expended substantial sums of money advertising and promoting TRAVELAN.
The Respondent was engaged, through a labour-hire company, to work for the Complainant from February 4, 2005. During his rather short period of employment the Respondent became familiar with the TRAVELAN product and also privy in general terms to the Complainant’s marketing plans for that product. After his alternative promotional plans for TRAVELAN were not adopted by the Complainant, he resigned on February 25, 2005, that is, after less than three weeks’ employment.
Less than five weeks later, on April 1, 2005, the Respondent registered the domain name <travelan.com>.
The Complainant’s legal representative sent
a letter to the Respondent on June 24, 2005 requesting the transfer of the domain
name at issue.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark registered and used by the Complainant, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
As noted above, the Respondent did not file a Response
to the Complaint but a communication from a person purporting to be the Respondent’s
lawyer indicated a willingness in principle on the part of the Respondent to
transfer the disputed name to the Complainant.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well accepted that in comparing trademarks and domain names the gTLD
component of a domain name can be ignored (see, for example, this Panel’s
decisions in Amanresorts Limited v. Access Bali Online, WIPO
Case No. D2001-1083, Bettina Liano and Bettina Liano Pty Limited v. Khanh
Kim Huynh, WIPO Case No. D2000-0891,
The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO
Case No. D2000-0124). Therefore the disputed domain name <travelan.com>
is relevantly identical to the trademark TRAVELAN of which the Complainant is
the registered proprietor in Australia, and the Complainant is plainly also
the owner of rights in that trademark in other jurisdictions.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by a respondent, can substantiate the respondent’s right to or legitimate interests in the domain name for the purpose of 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It has been established by WIPO UDRP panels that once a complainant establishes
a prima facie case showing that none of the three circumstances establishing
legitimate interests or rights applies, the burden of proof on this factor shifts
to the respondent to demonstrate a right or legitimate interest in the domain
name. If the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy (see amongst others Croatia Airlines d.d.
v Modern Empire Internet Ltd., WIPO
Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
In the case at hand, it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainant’s trademark TRAVELAN. Furthermore, there is no evidence that the Respondent has been commonly known by or associated with that mark. There is no plausible legitimate explanation for the Respondent’s registration of the Complainant’s trademark as a domain name in the .com gTLD, especially given that TRAVELAN is derived from the two words “travel” and “antibodies”, and has no generic meaning.
It is undisputed that the Respondent is currently not making any use, commercial or non-commercial, of the domain name in issue in a way that establishes a legitimate interest in the domain name. The Complainant contends that the domain name was used for a short time after the Respondent acquired the domain name, that is shortly after April 1, 2005. The Complainant contends that this temporary use purported to be an “online auction” site that would commence trading on July 4, 2005. The domain name was never used for this purported purpose and sometime thereafter the Respondent ceased using the domain name.
In the Panel’s view the Respondent’s temporary use of the domain name did not constitute a bona fide offer of goods and services under paragraph 4(c)(i) of the Policy. The Panel cannot ignore the fact that the Respondent, as a former employee of the Complainant, knew of the existence of the Complainant’s trademark when he registered the domain name. The Panel infers from all the circumstances that the Respondent well knew at the time and well knows now that he has no right or legitimate interest in the disputed domain name and the Panel finds that he in fact has no such right or interest.
C. Registered and Used in Bad Faith
Under the Policy, the Complainant is also required to prove the third element in paragraph 4(a)(iii), namely, that the domain name has been registered and is being used in bad faith.
As set forth in section 6B above, the Respondent only registered the domain
name following his short period of employment with the Complainant. In the circumstances
of this case the Panel has no difficulty in coming to the conclusion that the
domain name has been registered and is being used in bad faith by the Respondent.
To the extent to which the disputed domain does not presently resolve to a site
the Panel finds the continuing registration of the disputed domain to be sufficient
present ‘use’ for the purposes of the Policy. This approach has
been consistently adopted by WIPO UDRP panelists from the inception of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <travelan.com> be transferred to the Complainant.
Philip N. Argy
Dated: February 23, 2006