WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jack Brabham Engines Limited v. Sixstroke Engine Developments Pty Limited
Case No. D2007-0292
1. The Parties
The Complainant is Jack Brabham Engines Limited, Queensland, Australia, represented by Gail Casey, Australia.
The Respondent is Sixstroke Engine Developments Pty Limited, Victoria, Australia, represented by Matt Pini, Pini Patent and Trademark Attorneys, Australia.
2. The Domain Names and Registrars
The disputed domain name is registered with Intercosmos Media Group d/b/a directNIC.com and the domain names, , , and are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2007. On March 2, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com and Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On March�2,�2007, Intercosmos Media Group d/b/a directNIC.com transmitted by facsimile to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative and technical contact. On March�5,�2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names , , and and providing the contact details for the administrative 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March�27,�2007. The Response was filed with the Center on March 27, 2007.
The Center appointed The Honourable Neil Anthony Brown QC, James A. Barker and Philip N. Argy as panelists in this matter on April 11, 2007. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant is a company incorporated under the laws of Australia.
The Respondent is a company incorporated under the laws of Australia.
5. Parties’ Contentions
A. Complainant
The following is summarized from the Complaint and, in some cases, inferred from statements made in the Complaint.
The Complainant alleges that the domain names , , , and should no longer be registered with the Respondent but that they should be transferred to the Complainant. It contends that this should be done because, within the meaning of paragraph�4 of the Policy, the domain names are confusingly similar to the Complainant’s SIXSTROKE and BEAREHEAD trademarks, that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.
In support of its case on the first of these three elements, the Complainant contends that it has unregistered trademarks in SIXSTROKE and BEAREHEAD, that the domain names and are self-evidently identical to the trademark SIXSTROKE, that the domain name is confusingly similar to that trademark, that the domain name is identical to the trademark BEAREHEAD and that the domain name is confusingly similar to it.
The Complainant then contends, to establish the second element, that there has been a history of commercial dealings between the Complainant and various other parties associated with both the Complainant and the Respondent concerning the development of a particular type of engine technology generally referred to as the Beare Head six stroke engine. This history has given rise to some disputes which remain unresolved. The Complainant contends that one result of the dealings between the parties is that the Complainant owns ‘the intellectual property and all rights’ to the technology. However, the Respondent, it claims, has wrongly asserted the right to register the disputed domain names and use them to promote the technology and the claims of other competing parties to the ownership of the technology. The Complainant contends that on a proper interpretation of the facts the Respondent has no such right or interest in the domain names.
Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because the Respondent’s conduct in registering and using the domain names to display and promote the alleged rights of other parties to the technology and to make other claims is calculated to cause confusion among the Complainant’s present and future shareholders and among the public.
The Complainant also contends that the Respondent and those associated with it are using the website linked to the disputed domain names to make inflated and misleading claims about the efficiency of the technology and other false claims which the Complainant cannot rectify as it has no control over the content of those sites.
B. Respondent
The Respondent contends that, as the Complainant has not shown a registered trademark or service mark on which to base the proceeding, it is required to show an unregistered trademark or service mark and the evidence adduced by the Complainant has not established any such interest.
The Respondent then contends that the Respondent has a right or legitimate interest in the domain names. This right or interest is said to arise from the fact that Malcolm Beare, a shareholder of the Respondent, used or made demonstrable preparations to use the domain names for a bona fide offering of goods and services before receiving notice of the current dispute. Accordingly, it is contended, the matter comes within paragraph 4(c)(i) of the Policy.
The Respondent also contends that the Respondent has been and is commonly known by the domain names by virtue of the fact that its shareholder Mr. Beare has been and is so commonly known, thus bring the matter within paragraph 4(c)(ii) of the Policy.
Thirdly, the Respondent denies that it registered or has used the domain names in bad faith and that none of the criteria set out in paragraph 4(b) of the Policy can be made out. On the contrary, it contends, its activities have been meritorious, as the Complainant has abandoned its duty to develop the Beare Head and Sixstroke technology, leaving this burden to be assumed by interests associated with the Respondent in forming the Respondent company and registering the disputed domain names.
Supplemental Filing on behalf of the Complainant
The Panel has considered correspondence between the parties and the Center concerning a Supplemental Filing on behalf of the Complainant. In the exercise of its discretion, the Panel is of the opinion that this is not an appropriate proceeding to have regard to any submissions other than the Complaint and the Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
For the Complainant to succeed it must first establish that there is a trademark or service mark in which it has rights. That is clear from the terms of the Policy.
It is here that the first problem arises in the present case, for the Complainant has not adduced any evidence at all to show that it has a registered trademark or service mark to which the domain names are identical or with which they are confusingly similar.
The Panel, however, assumes that the Complainant means to contend that it has unregistered trademarks sufficient to support its claim. The question then is whether an unregistered or common law trademark is sufficient to give the Complainant standing to bring a UDRP complaint.
The answer to this question is that it is now well established that the Policy protects rights in unregistered trademarks: for example, see: Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO Case No. D2000-0014, SeekAmerica Networks Inc. v. Tariq Masood, WIPO Case No. D2000-0131 and the cases cited by the Complainant, Brisbane City Council v.Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 and Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322.
The next question is what evidence will a panel expect to find before it is able to conclude that the evidence establishes the existence of an unregistered trademark?
The answer to this question is to be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which says:
‘1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Relevant decisions:
Uitgeverij Crux v. W. Frederic Isler WIPO Case No. D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag WIPO Case No. D2000-1314 Transfer
Amsec Enterprises, L.C. v. Sharon McCall WIPO Case No. D2001-0083, Denied
Australian Trade Commission v. Matthew Reader WIPO Case No. D2002-0786, Transfer.’
There are other decisions to the same effect such as: UK Betting PLC v. Oldfield, WIPO Case No. D2005-0637 and Ticket Specialist Inc. v. hubshift, FA. 575616 (Nat. Arb. Forum, December 5, 2005) where the three panelists said:
‘…to succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for Complainant to prove that it has, through use, acquired secondary meaning, i.e. a reputation such that members of the public associate those goods or services solely with Complainant or its licensees. British Heart Foundation v. Meyer, AF-0957 (eResolution August�22, 2001)’.
It is then necessary to consider all of the evidence and apply it to the words that are said by the Complainant to constitute the unregistered trademark.
In the present case, the Panel finds that the Complainant has established, to paraphrase the words of the Overview, that the names BEARE and BEAREHEAD have plausibly become a distinctive identifier associated with the Complainant or its goods and services. That is so for the following reasons.
Although there is a dispute between the parties and others associated with them as to the ownership of technology referred to widely as Beare and Beare Head, it is common ground that those names have been used in connection with it. Moreover, the names have been associated with the use of the technology in producing specific engines and parts of engine technology. The goods and services associated with the technology are essentially commercial in the sense that the objective of all concerned seems to have been to have the technology adopted and to encourage the sale of products that use it. Thus, the Complainant’s promotional literature which is Exhibit H to the Complaint specifically refers to ‘The Beare Head and its associated technologies’, describes it in detail, appears to invite investors to ‘ participate in our future success…’ and solicits contact from ‘investors, suppliers and partners’. Above all, the literature promotes the technology as being a product of the Complainant.
The matter is not entirely free from doubt and, as will have to be said on several occasions in the course of this decision, UDRP proceedings are an inappropriate and inadequate means of resolving disputes as to complex and contested matters of fact and the current issue may well turn out to be one such disputed matter. Accordingly, a different result might be reached after a proper forensic examination and testing of all of the evidence.
However, the Panel is of the opinion that, on the balance of probabilities and on the material put before it, the Complainant has just barely made out a case for an unregistered trademark in BEARE and BEAREHEAD.
The same however, cannot be said for the apparent claim that the Complainant has unregistered trademarks in SIXSTROKE. That is so because the expression “six stroke” is a combination of two generic words and in such cases it is more difficult to make out a case for an unregistered trademark.
The difficulties involved in resolving such issues were set out in Deutsche Post AG v. NJDomains WIPO Case No. D2006-0001 where the panel said:
‘The Complainant however has two obstacles in its way in establishing that it has or at any time has had an unregistered trademark in the name ‘Post’.
The first obstacle is that set out in one of the postal cases already referred to, namely: Postecom spa v. smartphone sa (supra) where the issue was whether the complainant had established an unregistered trademark in . The panel said:
“Complainant …has not established that POSTE is a distinctive mark. The Panel finds the word POSTE is a generic term used in several languages with different meanings. Therefore, POSTE is incapable of acting as a common law trademark without a showing of significant secondary meaning.” See SOCCERPLEX, INC. v. NBA Inc., File No. FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name , as it contains two generic terms and is not exclusively associated with its business); Rollerblade, Inc v. CBNO, WIPO Case No. D2000-0427 (August�24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”) …
Secondly, there is no evidence showing that the word ‘Post’ has come to be identified with the Complainant and its business…(T)o establish a common law trademark, which will in effect deny all other users, the use of a generic word on the internet, a complainant must establish far more than that, especially in an industry that is international and where the use is to be by a medium that is itself international, namely the internet.… In this case, there is no evidence to that effect and the evidence falls far short of those requirements …’
Those remarks are applicable in several ways to the present case. First, the expression “six stroke” is clearly made up of two generic words and even in combination they might be used to refer to a wide variety of goods and services that have nothing to do with the so-called six stroke engine and a Google search shows some 6 million references to the expression. As a corollary, there is no evidence to show that the expression has taken on a significant secondary meaning associated with engines. Moreover, there is no compelling evidence showing that the expression “six stroke” has come to be distinctly identified with the Complainant and its business.
Exhibit H to the Complaint, which seems to be the main promotion of the Complainant, repeatedly refers to its product as The Beare Head, not the Six Stroke and uses the latter term only in the expression ‘Termed a six-stroke due to …( the description which is then given)’. That explanation of the term would seem to suggest that the Complainant itself regards the term not as the product’s name but as a description of it, in the same way that a motor car manufacturer would describe its products as ‘motor cars’. Certainly, there is no sign of any attempt by the Complainant to appropriate the name Six Stroke to itself.
For all of these reasons the Panel finds that the Complainant has not made out a case for an unregistered trademark in the expression Six Stroke.
Again, it must be said that a different conclusion might be reached after a proper forensic examination of all of the evidence.
Accordingly, the Panel finds that the domain name is identical to the unregistered trademark BEAREHEAD in which the Complainant has rights, as the two expressions are themselves identical.
The Panel finds that the domain name is confusingly similar to the unregistered trademark BEARE in which the Complainant has rights, as the BEARE mark is associated solely with technology and invoking the name BEARE inevitably invokes the technology associated with it, to the extent that the consumer could well be confused as to whether the domain name is referring to the same goods and services as the trademark.
The Panel finds that the domain names , , are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(iii) Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the two disputed domain names remaining for consideration.
But by virtue of paragraph�4� of the Policy, it is open to a respondent to establish its rights or legitimate interest in the disputed domain names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the disputed domain name it will have established, Complainant will have failed to discharge its onus and the Complaint will fail.
But at all times the onus remains on the Complainant to satisfy the Panel that on the balance of probabilities the evidence shows that the Respondent has no rights or legitimate interests in the domain names.
The Panel concludes that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the two remaining disputed domain names. That is so for the following reasons.
The essence of the case relied on by the Complainant appears to be, first, that there has been a history of commercial dealings between the Complainant and various other parties associated with both the Complainant and the Respondent concerning the development of a particular type of engine technology generally referred to as the Beare Head six stroke engine.
It appears that Mr. Malcolm Beare had a major part in the development of this technology and that he subsequently became a shareholder and a director of the Complainant for its further exploitation. However, over time, the relationship gave rise to some disputes which remain unresolved and in the course of these disputes Mr. Beare resigned his position as a director.
The Complainant contends that one result of the dealings between the parties is that the Complainant now owns ‘the intellectual property and all rights’ to the technology and that consequently neither Mr. Beare nor the Respondent have any ownership of them. However, the Respondent, it claims, has wrongly asserted the right to register the disputed domain names and use them to promote the technology and the claims of other competing parties to the ownership of the technology. Thus, the Complainant says that:
“ It is to be noted that Malcolm Beare has not paid a financial consideration for his 30% shareholding in the company and now purports to own the technology outright at “www.” and is identified by a photo and the Australian flag.”
The Complainant contends that on a proper interpretation of the facts set out in the Complaint and in several legal documents annexed to the Complaint, the Respondent “…has no ownership, patents or right, title or interest in the technology to support any identified domain names…” and can be shown to have no rights or interests in them.
To this the Respondent contends that it has a right or legitimate interest in the domain names. This right or interest is said to arise from the fact that Mr. Beare, in his capacity as a shareholder of the Respondent, used or made demonstrable preparations to use the domain names for a bona fide offering of goods and services before receiving notice of the current dispute. Accordingly, it is contended, the matter comes within paragraph 4(c)(i) of the Policy.
The Respondent also contends that the Respondent has been and is commonly known by the domain names by virtue of the fact that its shareholder Mr. Beare has been and is so known, thus bring the matter within paragraph 4�(ii) of the Policy.
The Respondent also maintains that Mr. Beare resigned his directorship because he became ‘disillusioned with a lack of progress in the development of his technical achievements and resigned as a Director of the Complainant in around late 2005 and that Mr. Beare and an associate formed the Respondent company “which has as its aims to be a vehicle for furthering the development of Malcolm Beare’s innovations.”
In support of this case, the Respondent, like the Complainant, has annexed a series of legal agreements that it maintains support its case.
The Panel’s task is to take all of this evidence into account and decide if on the balance of probabilities it shows that the Respondent has ‘no rights or legitimate interests in respect of the domain names’ in question. The Panel’s view is that it is impossible to say that the evidence shows the Respondent has no rights or legitimate interests in the two domain names in question. That is so because the evidence properly presented and analysed may show that the Respondent does in fact have such a right or interest, either because the facts bring the case within one of the provisions of paragraph 4� of the Policy or because it shows that in a more general sense the Respondent has a right or interest in the domain names. In other words, in this particular case as things stand at present on the evidence, it is impossible to say that the Respondent could have no arguably relevant rights or interests at all, based on its historical role in the evolution of the technology and the evidence and arguments set out in the Response.
The resolution of such an arguable issue can be made only by a Court or other tribunal in proceedings where evidence can be given by witnesses who are subject to cross-examination and where discovery and interrogatories can further elicit the true intentions of the parties and the significance of what they said and did during the course of the commercial dealings between them and the disputes between them which are clearly still extant.
Moreover, the rights and wrongs of this whole matter will be able to be determined only after argument on the proper interpretation and meaning of the documents and agreements appended to the Complaint and the Response.
Only by such means will it be possible to conclude whether the parties associated with the Respondent have an interest in the technology that justify their registration and use of the domain names. At the moment, the parties are at loggerheads, there are arguments as to the meaning and effect of the documents appended to the Complaint and Response and there are allegations of lying. In those circumstances it would be clearly unjust to the Respondent and outside the proper role of the Panel to reach a final conclusion on this issue.
It has been said on many occasions that UDRP proceedings such as the present, encompassed as they are by the strict limitations of the ICANN Policy and without the assistance of oral evidence, cross-examination, discovery, interrogatories and argument, are singularly inappropriate to answer these sorts of questions: see for example Edward G. Linskey Jr. v. Brian Valentine WIPO Case No. D2006-0706 and the cases cited there. All that the Panel can do on this occasion is determine if it is clear on balance that there is no right or interest on the part of the Respondent in the domain names. The difficulty in reaching that conclusion at this juncture is that the Respondent does not have to establish a better right than the Complainant. It need establish only that it has some right even if it is an inconclusive one and on the facts of the present case it is at least arguable that there is evidence sufficient to establish this element.
Moreover, although it would be unwise and unhelpful for the Panel to make any further comments about the merits of the case, it is appropriate to say that on a proper presentation, the case may well turn out to be one more related to contractual and patent issues rather than a case strictly concerned with the Policy on domain names.
Accordingly, the Complainant has failed in the present proceeding to discharge its onus of establishing that the Respondent has no rights or legitimate interests in respect of the domain names and .
The Complainant has therefore failed to make out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
In view of the foregoing findings, the Complainant cannot make good an allegation of bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied. The Honourable Neil Anthony Brown QC
Presiding Panelist
James A. Barker
Panelist
Philip N. Argy
Panelist
Dated: April 25, 2007
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