WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Doteasy Technology Inc. v. Dot Easy Australia
Case No. D2006-0683
1. The Parties
The Complainant is Doteasy Technology Inc., Burnaby, Canada, represented by an internal legal representative, Canada.
The Respondent is Dot Easy Australia Bass Hill, Australia, represented by an internal legal representative.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2006. On June 2, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, June 2, 2006, eNom 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 16, 2006. The Center verified that the Complaint together with the amendment to 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 June 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�11,�2006. The Response was filed with the Center on July 4, 2006.
The Center appointed David Perkins as the sole panelist in this matter on July 13, 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, paragraph 7.
Between July 5 – 7, 2006, an exchange of correspondence occurred between the Complainant and the Center in relation to the Complainant’s wish to make a further Submission in respect of the Response by way of rebuttal.
On July 13, 2006, the Complainant submitted a Supplemental Complaint with Annexes 1 to 8. On July 16, 2006, the Respondent filed a Supplemental Response to the Supplemental Complaint with additional Annexes 16 to 21. Neither of these Supplemental filings were made either at the request of the Panel or (at the time) with the approval of the Panel.
On July 17, 2006, the Panel issued a Preliminary Decision admitting the Complainant’s Supplemental Complaint and permitting the Respondent an opportunity to submit a Supplemental Response by not later than July 28, 2006. The Panel was not aware of the Respondent’s First Supplemental Response of July 16, 2006, at the time of making this Preliminary Decision.
Then on July 24, 2006, the Respondent filed a Second Supplemental Response (pursuant to the Panel’s ruling) with additional Annexes 22 to 31. Accordingly, this gives the Respondent an extra bite at the cherry, which was not the intention of the Panel’s Preliminary Decision. However, as will be apparent from this Decision, the Complainant has not been disadvantaged by not having an opportunity of responding to the Second Supplemental Response.
4. Factual Background
4.1 The Domain Name in Issue
The domain name in issue, , was registered on March 15, 2005.
4.2 The Complainant’s Business
4.2.1. The Complainant is a Canadian company, which was incorporated on March�23,�2000. Under the trademarks DOTEASY and DOTEASY.COM the Complainant offers computer services. These include managing and registering domain names for use on a global computer network and also designing, developing and hosting websites for its clients again on a global computer network. The Complainant claims first use of those trademarks in commerce from May 1, 2000.
4.2.2 While predominantly the Complainant’s customer base is in Canada and the United States, major markets outside those countries include Australia, the Netherlands and the United Kingdom. The Complainant claims to have over 150,000 customers, of whom some 4,400 are located in Australia. The Complaint annexes evidence of having registered in June 2000 its first domain name for a customer in Australia.
4.3 The Complainant’s DOTEASY Trademarks
4.3.1 The Complainant has the following registered trademarks and trademark applications:
Country
Number
Mark
Class
Date Filed
Date Registered
Canada
637,785
DOTEASY
42
August 27, 2003
April 19, 2005
Canada
638,905
DOTEASY.COM
42
May 28, 2004
May 3, 2005
United States
3,049,871
DOTEASY.COM
42
November 22, 2004
January 24, 2006
Australia
1,081,907
DOTEASY
42
October 22, 2005
Pending
4.3.2 The Canadian and US registrations claim first use in commerce on May 1, 2000. The Complainant has also provided a Way Back Machine URL archive showing search results from August 2000.
4.4 The Complainant’s Domain Name
Complainant is the registrant of which was created on August�21,1999.
4.5 The Respondent’s Business
4.5.1 The Respondent claims to have been in business in Australia since November�1999, trading under the “Dot Easy Australia” name, providing computer services similar to those provided by Complainant. In addition, Respondent also provides audio and video streaming, live and on demand. With the Response was provided a CD of nine (9) advertisements used by the Respondent in Australia. These all refer to either or both of DOT EASY AUSTRALIA and the Respondent’s Australian domain name .
4.5.2 The Respondent was first registered as a Business Name in Australia on October�12, 2005. The Respondent explains that it was not required by law to register as a Business Name prior to July 1, 2000.
4.5.3 Respondent has exhibited the Whois server for the domain name , a Lebanese organisation, which was created on May 3, 2000, and which gives Dot Easy Australia as the Administrative and Technical contact. Respondent has also exhibited an invoice dated January 4, 2000, from “Dot Easy Australia” to an Australian Company for the provision of audio streaming services.
4.6 The Respondent’s DOTEASY Trademark Application
4.6.1 On June 29, 2006, Mr. Elie Nahed [one of the representatives of the Respondent] registered DOTEASY as a trademark in the Lebanon.
4.6.2 In Australia, on October 25, 2005. Messrs. Nahed and Makras [the Respondent’s joint representatives] filed trademark application 1,082,189 for DOT EASY AUSTRALIA and device in Class 42. That application is pending.
4.7 The Respondent’s Domain Names
4.7.1 Respondent is the registrant of the following domain names:
Name
Date Created
April 17. 2003
April 11, 2006*
March 15, 2005
* Mr. Nahed, not the Respondent, is the registrant.
4.7.2 Complainant has provided a WayBackMachine URL archive showing search results for from December 2003.
5. Parties’ Contentions
A. Complainant
5.A.1 Complainant seeks transfer of the domain name in issue on the basis that the Complaint satisfies the requirements of paragraph 4(a) of the Policy: those requirements are set out in paragraph 6.1 below.
5.A.2 Complainant maintains that it has rights in the DOTEASY and DOTEASY.COM trademarks, both by reason of the Canadian and US trademark registrations – the earliest of which dates from August 27, 2003 - and by reason of its use of those trademarks since it began trading in May 2000. See, in this respect paragraphs 4.2 and 4.3 above.
5.A.3 Complainant asserts that the domain name in issue, is to all intents and purposes identical to and/or is confusingly similar to its DOTEASY and DOTEASY.COM trademarks. The addition of a generic denomination, namely does not avoid confusing similarity.
5.A.4 Complainant says that Respondent has no rights to or legitimate interest in the domain name in issue, since Respondent cannot bring itself within any of the circumstances set out in paragraph 4(c) of the Policy. In particular, Complainant has never licensed or otherwise authorized Respondent to use the DOTEASY or DOTEASY.COM trademarks.
5.A.5 Further, Complainant maintains that the Respondent did not use, or make demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before notice of this dispute. Notice was given by Complainant’s Cease and Desist email dated October 12, 2005. Given that Complainant’s trademarks had by then been in use for over 5 years, and were widely known as associated with being a service provider of web hosting and domain name registrations, with a significant customer base in Australia, any use of the domain name in issue by Respondent to direct business to its website can not have been bona fide. Any such use would have been made during the period between registration of on March 15, 2005 and some time after receipt of Complainant’s said Cease and Desist letter sent 7 months later.
5.A.6 Complainant also suggest that, contrary to Respondent’s assertion that it has been using the Dot Easy Australia trading identity since November 1999, in fact its earliest use would appear to date from no earlier than April 2003. That is the registration date of Respondent’s domain name. That is consistent with the URL archive showing search results from December 2003: see paragraph 4.7.2 above.
5.A.7 With regard to paragraph 4(a)(iii) of the Policy, Complainant says that Respondent has registered and used the domain name in issue in bad faith. In this respect, Complainant relies on paragraph 4(b)(iv) of the Policy. For example, Complainant exhibits a Yahoo! Search (made on June 15, 2006) for an exact match of “doteasy” which returned over 460,000 references, the overwhelming majority of which identify the Complainant. Against that, Complainant says it is inconceivable that Respondent innocently registered the domain name in issue without having intention to exploit Complainant’s own well known DOTEASY.COM trademark in breach of Complainant’s rights in that trademark.
5.A.8 Each of Complainant’s registered trademarks [see, paragraph 4.3.1 above] were applied for before March 15, 2005 (registration of the domain name in issue) and both of the Canadian registrations were also advertised before that date.
5.A.9 As to bad faith use of the domain name in issue, Complainant refers to the initial use to direct visitors to Respondent’s web page as a blatant attempt to trade off Complainant’s reputation in the DOTEASY.COM trademark and thereby disrupt Complainant’s business.
5.A.10 The fact that since being put on notice of this dispute (by the October 12, 2005 Cease and Desist letter) the domain name in issue is no longer used in this way and now merely reads “cannot be found” does not escape bad faith use. This is because passive holding of a domain name which could only be used for an illegitimate purpose – e.g. to attract Internet users to the DOT EASY AUSTRALIA website by creating a likelihood of confusion with Complainant’s trademarks – can also mount to bad faith use under the Policy: see Telstra .v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5.A.11 Complainant exhibits an email from one of its partners, Cross PC, dated October�10, 2005, referring Complainant to an email Cross had received from the Respondent, which it described as a “spoofer”. Email spoofing is where an email user receives an email that appears to have originated from one source when it was actually sent from another source. According to the website, Cross PC is a US based company which provides small businesses and individuals with a variety of services, including web hosting packages, web site design, and hardware and software support. It says it was founded in 2001 on Christian principles and a spirit of fairness and has always been active in charitable works. Respondent suggests that this email appears to have been fabricated by Complainant [see, paragraph 5.B.13 below].
5.B. Respondent
5.B.1 Respondent asserts concurrent use of DOT EASY as the predominant part of its Dot Easy Australia trading name since November 1999 without notice of Complainant’s trademarks. Indeed, Respondent points to the fact Complainant only applied for its Canadian and US registered trademarks in 2003 and 2004 [see, paragraph 4.3.1 above]. Those applications were also made subsequent to Respondent’s registration on April 17, 2003, of its Australian domain name.
5.B.2 Respondent also refers to its own Lebanese trademark registration for DOTEASY [registered June 29, 2006] and its pending Australian trademark application for DOT EASY AUSTRALIA and device [filed October 25, 2005]. In addition to its Australian domain name, , Respondent also points to its Australian domain name, created April 11, 2006. Respondent urges that these illustrate the seriousness of its legitimate business.
5.B.3 Respondent explains that its business – which is conducted under its Australian domain name and its DOT EASY AUSTRALIA trading name – is confined to the Continent of Australia. It is an Australian business and well known as such within Australia. Accordingly, there cannot, the Respondent says, be any likelihood of confusion between the domain name in issue and Complainant’s DOTEASY / DOTEASY.COM trademarks.
5.B.4 Respondent claims that it has rights and legitimate interests in the domain name in issue by virtue of (1) its Lebanese registered trademark and (2) its trading under the Australian domain name since that domain name was created in April 2003. Respondent again points to its business being confined to Australia and not extending to the United States, Canada and Europe where Complainant has its customers.
5.B.5 Respondent also explains that because the domain name in issue is used as a domain name server (DNS) to host Respondent’s customers’ websites, it is not publicly advertised, nor is it for public access.
5.B.6 Respondent further contends that the combination of (1) its own current and prior (since November 1999) use of the trading identity DOT EASY AUSTRALIA and its later (April 2003) registered Australian domain name, coupled with (2) the fact that Complainant’s Canadian and US trademark registrations have no effect on entities doing business in Australia provide Respondent with rights to and legitimate interest in the disputed domain name . In the same vein, Respondent asserts that the fact that Complainant was established in Canada in 2000 with first use in commerce in Canada and Australia of the DOTEASY and DOTEASY.COM trademarks in May 2000 cannot deprive Respondent of such rights and legitimate interest in the domain name in issue.
5.B.7 Respondent also points to the fact that Complainant cannot currently offer .au domain names.
5.B.8 Because Respondent’s business is directed only (or predominantly) no need for Respondent to carry out trademark searches against DOTEASY in other countries. Accordingly, it cannot be said that Respondent is at fault for not knowing about Complainant’s Canadian and US trademarks which (as stated) have only territorial effect in those countries. Nor can Complainant say that its DOTEASY trademark was so well known – for example, like COCA COLA – that Respondent would inevitably have been on notice of that trademark before registration of the domain name in issue.
5.B.9 As to Complainant’s pending application to register DOTEASY as a trademark in Australia [see, paragraph 4.3.1. above], Respondent says it will be opposing that application on the basis of its own prior use of DOT EASY AUSTRALIA.
5.B.10 As to paragraph 4(a)(iii) of the Policy – registration and use in bad faith – Respondent again relies on its use of DOT EASY AUSTRALIA as a trading name since November 1999. Further, a Google search shows that Respondent’s Australian domain name is ranked 5 in Australia and 10 in the continent of Oceana / Australia for average server speeds. This, Respondent says, evidences how well known it is in its home territory. By comparison, Respondent says Complainant’s DOTEASY.COM mark is neither famous nor even well known in Australia.
5.B.11 Nor, Respondent says, does Complainant have any goodwill in Australia, which Respondent would want to benefit from. In that connection, Respondent exhibits prints from Forum Groups which are less than complimentary about Complainant’s services. Accordingly, Respondent has no wish to cause confusion with Complainant’s DOTEASY mark and its own website.
5.B.12 As to use in bad faith, Respondent again refers to use of only as a DNS, which it says does not constitute bad faith use. On the facts, Respondent’s case is that Complainant cannot establish the circumstances under para. 4(b) of the Policy upon which it relies, namely paras. 4(b)(iii) and (iv). Indeed, Respondent says Complainant’s case is so demonstrably untenable that a finding of reverse domain name hijacking should be made against Complainant.
5.B.13 As to the email to Complainant from Cross PC [see, paragraph 5.A.10] above], Respondent views this as a fabrication by the Complainant. The email to Cross is addressed from offers@.au, an address which Respondent denies ever having used. By contrast, when advertising its services Respondent clearly uses its trading name DOT EASY AUSTRALIA and its Australian domain name as evidenced by an advertisement placed in Google Adwords.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c)� sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
The domain name in issue incorporates Complainant’s DOTEASY trademarks. While the additional word “server” does not make that domain name identical to Complainant’s marks, the Panel finds that the domain name is plainly confusingly similar to those marks. The mere addition of “server”, which is a descriptive word, does not make the domain name sufficiently different to Complainant’s trademarks to avoid a finding of confusing similarity. Accordingly, Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.5 Rights and Legitimate Interests
6.5.1 Here, the question is whether Respondent can bring itself within paragraphs 4(c)(i) and/or (iii) of the Policy or can otherwise demonstrate evidence of rights to and legitimate interests in the domain name in issue.
6.5.2 As to paragraph 4(c)(i), was Respondent’s use of prior to October 12, 2005 [the date of Complainant’s Cease and Desist email] in connection with a bona fide offering of goods or services? This, it seems to the Panel, brings into consideration two issues.
6.5.3 First, the domain name in issue is a gTLD. On the other hand, Respondent’s case is that its market is Australia with which Respondent appears to include the area termed Oceana / Australia. Respondent repeatedly explains that it trades under the name “Dot Easy Australia” and the Australian domain name , which clearly indicate that its sphere of activity and interest is Australia, or at least predominantly, Australia.
6.5.4 That being the case, why has Respondent chosen to register a gTLD rather than, for example, a country-code ccTLD such as which would have been consistent with its business in Australia? Respondent explains that the purpose of registering the domain name in issue was solely for use as a DNS to host its customer’s websites: see, paragraph 5.B.5 above. If that is the case then, again, the Panel can see no reason for Respondent to have registered and used a gTLD for that purpose, rather than a country-code ccTLD.
6.5.5 When registering a .com domain name, the registrant is bringing himself within the Policy under which prior trademarks – wherever they may exist and/or may be registered – can constitute potentially blocking prior rights. Consequently, use which may be bona fide when restricted to a country-code TLD may not be permissible in the context of a “.com” registration.
6.5.6 In this case, given the market in which both Complainant and Respondent compete – namely, managing and registering domain names – the Panel considers it highly unlikely that as at the date when the domain name in issue was created [March�15, 2005] Respondent was not aware of Complainant trading under its domain name.
6.5.7 Taking all these circumstances into account, the Panel cannot believe that Respondent’s use of the domain name was bona fide such as to bring it within the safe harbour of paragraph 4(c)(i) of the Policy.
6.5.8 The second consideration is whether, despite the Panel’s finding in the preceding paragraph, Respondent’s use of the domain name in issue was nevertheless bona fide because Respondent can establish concurrent or even prior use of the DOT EASY trademark.
6.5.9 In that connection, Respondent claims to have been trading in Australia under the “Dot Easy Australia” style since November 1999. However, Respondent did not register itself in Australia as a Business Name until October 2005. This, Respondent explains, is because it was not required under Australian law to register at an earlier date: see, paragraph 4.5.2. above.
6.5.10 Next, Respondent only created its Australian domain name in April 2003. This is the domain name through which it offers its services [see, paragraph 4.5.1 above]. The URL Archive exhibited by Complainant shows use of that domain name since December 2003 [see, paragraph 4.7.2. above]. By April 2003 Complainant had been trading for almost 3 years [see, paragraph 4.2.1 above] and had registered its domain name even earlier [namely, in August 1999 – see, paragraph 4.4 above].
6.5.11 What then is Respondent’s evidence to substantiate its claim to have been trading under the “Dot Easy Australia” name since November 1999? The Second Supplemental Response exhibits a copy of the Whois server for the domain name which appears to be used by a Lebanese company. The domain name was created on May 3, 2000 and the Respondent is shown as both the Administrative and the Technical Contact. However, there is no evidence that it was Respondent which registered the domain name in May�2000. Indeed, such would be inconsistent with Respondent’s explanation that its business is confined to customers in its home market of Australia.
6.5.12 The Second Supplemental Response also exhibits an invoice dated January�4,�2000 from “Dot Easy Australia” to an entity in Belmore, New South Wales for the provision of audio streaming services. Payment is directed to be made to Elie Nahed, one of Respondent’s representatives [see, paragraph 4.5.2 above]. Looking at the totality of Respondents evidence of its trading under the “Dot Easy Australia” name, the Panel is not persuaded that this copy document indicates use of that name prior to Complainant’s first use of its DOTEASY marks.
6.5.13 However, this is not, in the Panel’s view, determinative of the bona fide issue arising under paragraph 4(c)(i) of the Policy. The reason, quite simply, is that whether or not Respondent has used in Australia since November 1999 and has rights in Australia to use the words DOT EASY as part of its trading name is not relevant to use of the gTLD in issue. What may be bona fide offering of goods or services in Australia under the Dot Easy Australia trading style cannot justify such offering under the gTLD . For the same reason, concurrent use of Respondent’s Australian domain name does not render use of the domain name in issue bona fide under this paragraph of the Policy.
6.5.14 Similarly, as regards paragraph 4(c)(iii) of the Policy, what may be a legitimate or fair use of Respondent’s Australian domain name - which is not an issue in this administrative proceeding – is not relevant to use of the “.com" domain name in issue.
6.5.15 In all the circumstances, the Panel finds that Respondent has not brought itself within paragraph 4(c) of the Policy and the Complaint satisfies the requirements of paragraph 4(a)(ii) of the Policy.
6.6 Registered ad Used in Bad Faith
6.6.1 Complainant’s case is that by the time the domain name in issue was registered [March 15, 2005], its DOT EASY trademark was well known internationally, its two Canadian trademark application had been advertised and it is simply inconceivable that Respondent was unaware of Complainant’s trademark rights. Hence, both registration and subsequent use by Respondent of the domain name in issue cannot be bona fide. Also, as to use, the inference must be that paragraph 4(b)(iv) of the Policy is established.
6.6.2 In assessing this requirement of the Policy, as with the preceding requirement, the legitimacy of Respondent’s use in Australia of the trading style Dot Easy Australia and/or of its Australian domain name and the period of use of those indicia of the Respondent’s business should be disregarded. The dispute concerns registration and use of the gTLD in issue . Accordingly, the notoriety of Respondent’s Australian domain is not relevant for these purposes [see, paragraph 5.B.10 above]. Given the Panel’s finding that Respondent has no rights to or legitimate interests in that domain name, it tends to follow that Respondent will not succeed in demonstrating registration and use in good faith.
6.6.3 It is not justification for Respondent to say that, because is business is focused (primarily) on Australia, it can ignore other parties’ trademark rights outside Australia when registering a gTLD. Nor is it necessary for Complainant to have to establish that its trademark is well-known in the sense of the COCA-COLA mark. When assessing whether a trademark is well-known, it is the particular market where that trademark is used that falls to be considered. In this case, the Panel is satisfied on the Complainant’s evidence that in the market for managing and registering domain names its DOT EASY trademarks were well known by March 2005, when Respondent registered the domain name in issue.
6.6.4 As to Respondent’s use of the domain name in issue only as a DNS to host its customers’ websites [see, paragraphs 5.B.5 and 5.B.12 above], again good faith is not established by saying that it is not a public use nor a use outside Australia. In fact, it appears to be both, as the Whois server for the domain name and screen shot of the display panel both illustrate [see, paragraph 6.5.11 above].
6.6.5 As to the exchange of emails between Complainant and Cross PC [see, paragraphs 5.A.10 and 5.B.13 above], it is not necessary to come to a finding.
6.6.6 It appears that, at least pending the Decision in this administrative proceeding, the domain name in issue no longer resolves to Respondent’s Australian domain name [see, paragraph 5.A.10 above]. In other words, it is not being used. This does not, however, escape the requirement of the Policy that Complainant must demonstrate that the domain name “… is being used …”. Complainant points to the Telstra case [see, again paragraph 5.A.10 above]. Given the Panel’s findings in relation to the lack of Respondent’s rights to or legitimate interests in the domain name in issue and to its findings that that domain name was registered in bad faith, the Panel considers that any resumed use of the domain name by Respondent would in all likelihood be illegitimate.
6.6.7 Respondent refers to its Lebanese DOT EASY trademark registration as, generally, validating its registration and use of the domain name in issue. But that trademark was not registered until June 2006, over a year after registration of the domain name in issue. Accordingly, the Panel cannot see how the Lebanese trademark registration assists Respondent’s case.
6.6.8 In the light of the forgoing, the Panel finds that the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.
7. Reverse Domain Name Hijacking
In the circumstances, Respondent’s request that this be found against Complainant is rejected [see, paragraph 5.B.12 above].
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: August 3, 2006
Full & Egal Universal Law Academy