WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Yoogalu Pty Limited A.C.N. 002 269 132 Trading as Domayne v. ClickNotes Case No. D2008-1374 1. The Parties
The Complainant is Yoogalu Pty Limited A.C.N. 002 269 132 Trading as Domayne, New South Wales, Australia, represented by Brown Wright Stein Lawyers, Australia.
The Respondent is ClickNotes, of New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2008. On September 10, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On September 11, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
On September 17, 2008 the Center received an email communication from the Respondent as follows:
“I am Mikkel Nissen, I am Danish and residing in Denmark. I understand that Domayne is only trademarked in Australia and therefore can see no reason that I would be breaking trademark laws. Furthermore, I am a private person and not a trading company and am definitely not trading anything via . I therefore trust that the website could not conflict with any trademark laws.”
The Center acknowledged receipt of the email communication and informed the Respondent that the Center was verifying that the Complaint as filed satisfied the formal requirements under the UDRP. The Center also advised that if no further communications or formal Response were received from the Respondent by the due date of Response, the Center would forward this communication to the Panel for consideration (on appointment) in lieu thereof.
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 September 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2008.
On September 18, 2008, the Center received a further email from Mikkel Nissen stating “I realize from the recent information I have received that my webmaster has not updated my contact information, as instructed a long time ago”, and providing the Center with its updated contact information. The Center acknowledged receipt and informed the Respondent that the hard copies of the Complaint would be forwarded to the updated postal address.
The Respondent did not submit any Response. Accordingly, on October 9, 2008, the Center advised the Respondent that since the due date for filing a Response had lapsed the Center would proceed with the appointment of an administrative panel and further that consideration or otherwise of any late submission of response will be left to the discretion of the panel on appointment.
The Center appointed David J.A. Cairns, Andrew Frederick Christie and Lone Prehn as panelists in this matter on October 28, 2008. 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.
On October 30, 2008 the Panel issued Procedural Order No. 1 that: (i) requested the Complainant to submit “a further statement or exhibits as to the rights within the meaning of Rule 4(a)(i) of the Policy in the registered trademarks owned by Harvey Norman Retailing Pty Limited”; and (ii) granted the Respondent a right to reply. In response, the Complainant submitted a letter explaining that the trademark referred to in the Complaint were owned by Harvey Norman Retailing which had granted a license to the Complainant to use them and that the Complainant uses the “name or style ‘Domayne' in each state and territory in Australia, and the Trade Marks in the enterprise of the Complainant.”
Upon the further request from the Panel, the Complainant submitted a ‘Deed of Confirmation of License Agreement' between Harvey Norman Retailing Pty Limited and the Complainant on November 11, 2008. The Panel then extended the period for the Respondent's right of reply to the additional material submitted by the Complainant until November 14, 2008.
On November 13, 2009, Mikkel Nissen sent a further e-mail to the Center stating: “I have noticed that all correspondence and documentation still is addressed Harvey Norman v. ClickNotes. Mikkel Nissen does not own any company, in any country. ClickNotes is not an entity and no company exists either in Australia, Denmark nor any other country. All correspondence and documentation should therefore be appropriately addressed to Mikkel Nissen and not to ClickNotes.” 4. Factual Background
Harvey Norman Retailing Pty Limited is the owner of numerous registrations for or incorporating the word “Domayne” in Australia, Canada, Europe and the United Kingdom, including Australian trademark registration Nº 792525, consisting of the word DOMAYNE registered on April 28, 1999 in class 35 (which includes “retail, wholesale, distribution and other services...relating to furniture...”).
The Complainant has been licensed by Harvey Norman Retailing Pty Limited “to possess, use and enjoy” seven trademarks registered in Australia since their dates of registration (including trademark Nº 792525 mentioned above). The licence expressly authorises the Complainant to “take all action required by [Harvey Norman Retailing] to prevent any infringing use of the Trade Marks by any Third Party”.
The disputed domain name was registered on March 14, 2005 by ClickNotes. The Respondent's administrative and technical contact is Mikkel Nissen.
The disputed domain name hosts a website consisting of various pages of criticism of Domayne furniture. There is a moving byline at the bottom of the website that states:
“Welcome to www....This website is about Domayne Furniture Store and how Domayne Furniture Store treats there [sic] customers...” The heading on its homepage is “IMPORTANT NOTICE!!! BEFORE BUYING FURNITURE AT ‘DOMAYNE FURNITURE STORE.'” There follows a question “If your $5000 sofa broke completely in less than 2 months... what would you do?”, and the statement: “This website will warn you about how much ‘Domayne furniture store' really care [sic] about their customers!”
The homepage contains various links. There is a “story” of two customers that purchased a sofa and their unhappy experience of the quality and service of the vendor. There are photos of the sofa. There are also links to the Queensland Office of Fair Trading, and to two television channels. In two places in the website a photo appears of what appears to be a catalogue or brochure relating to Domayne products.
There are no links on the website to the Complainant or any of its retailers, or any other website that markets or sells any products. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the DOMAYNE trademarks and that the Respondent intends to create confusion amongst customers of Domayne by registering a domain name that is so similar to the DOMAYNE trademarks and other domain names registered by Domayne. The Complainant states that “Domayne” is a well recognised brand in Australia and has been so for many years.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it was registered to divert customers from legitimate Domayne websites and to tarnish the DOMAYNE trademarks.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith because: (i) it was primarily registered and is being used to disrupt the business of Domayne by intentionally confusing Domayne customers into thinking that the Respondent's website is related to Domayne; (ii) registration and use of the disputed domain name are causing damage to the DOMAYNE brand, reputation and business; (iii) the Respondent appears to be attempting to remain anonymous; (iv) it is possible that the disputed domain name was registered in order to prevent the trademark's owner from registering the disputed domain name or for the purpose of selling the disputed domain name to the Complainant at a future date; (v) the catalogue that appears in the disputed domain name's website violates the Copyright Act 1968; and (vi) the Respondent did not respond to the Complainant's counsel letter. B. Respondent
The communications of Mikkel Nissen, on behalf of the Respondent, are set out in full above (under Procedural History). 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the DOMAYNE trademark owned by Harvey Norman Retailing Pty Limited to the extent of its license to possess, use and enjoy the seven DOMAYNE trademarks registered in Australia and listed in the Deed of Confirmation of the License Agreement.
The disputed domain name is not identical with the DOMAYNE trademark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870). However, this is another case of the addition to a registered trademark of a prefix or suffix descriptive of products sold by the Complainant under the trademark which, as many UDRP decisions demonstrate, will almost invariably be insufficient to prevent the disputed domain name from being confusingly similar to the registered trademark.
In the present case, the disputed domain name is confusingly similar to the DOMAYNE trademark for the following reasons: (i) DOMAYNE is neither a common nor descriptive word, and is inherently distinctive; (ii) “furniture” is an ordinary descriptive word; (iii) “furniture” describes a type of product sold under the DOMAYNE trademark; and (iv) Internet users will associate the disputed domain name with the Complainant's trademark, and indeed the content of the website makes it clear that the Respondent is intending to refer to the Complainant and the Complainant's products.
Therefore the suffix “-furniture” does not avoid a confusing similarity between the DOMAYNE trademark and the disputed domain name.
Although the Respondent did not submit a formal Response to the Complaint, Mikkel Nissen wrote to the Center stating that he was Danish and residing in Denmark and that, since the DOMAYNE trademarks were only registered in Australia, no trademark laws had been infringed. It is true that the Complainant only has rights in the Australian DOMAYNE registrations, but the Complainant's rights under the Policy are not confined to the geographical area of its trademark rights. The Internet is a worldwide phenomenon and it is sufficient for the Complainant to demonstrate rights in a trademark in one jurisdiction, and not necessarily the jurisdiction of the Respondent's domicile, to satisfy the first element of the Policy. In any case, the Panel notes that Mikkel Nissen's address was located in Australia at the time of registration of the disputed domain name.
For these reasons, the first element of the Policy is satisfied. B. Rights or Legitimate Interests
While the overall burden of proof that the Respondent lacks rights or legitimate interests in the disputed domain name rests with the Complainant, panels have recognized that this can involve proving a negative. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
The Panel notes in relation to rights or legitimate interests of the Respondent in the disputed domain name that there is no evidence of any of the following circumstances: (i) that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding to the disputed domain name; (ii) that the Respondent is authorized or licensed by the Complainant to use the DOMAYNE trademark or to register and use the disputed domain name; (iii) that the Respondent has been commonly known by the disputed domain name.
The Respondent is using the disputed domain name to host a criticism site. The Panel notes that site contains no advertisements, no sponsored links, and no links to any site selling any kind of products. There are no links to any competitors of the Complainant, and no recommendation that Internet users purchase their products from another source. The purpose of the site is simply to relate an individual experience of the Complainant's products and service.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions has identified two views in cases where a domain name that is confusingly similar to a trademark is being used for the purposes of genuine and non-commercial criticism. The first group of decisions has concluded that the right to criticize does not extend to creating rights or legitimate interests in a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with the mark. The second group has considered that “irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial”. The Panel in Howard Jarvis Taxpayers Association v. Paul McCaulay,WIPO Case No. D2004-0014 noted that the first view has been mainly followed in cases that did not involve US parties or panelists, whereas the second view is usually supported in cases involving US parties or panelists.
In the present case, the Panel is satisfied that the website hosted at the disputed domain name has no commercial purpose. However, the non-commercial nature of its site and its purpose as a criticism site only becomes apparent after the Internet user enters the website. The disputed domain name itself suggests a commercial website relating to the Complainant's products as it: (i) fully incorporates the trademark DOMAYNE; (ii) refers to the Complainant's products by use of the suffix “furniture”; (iii) uses the TLD “.com”, which is commonly understood to refer to a commercial site; and (iv) does not contain any other element that identifies to the Internet user that this is a criticism site, or corrects the initial impression of a website promoting Domayne products.
Accordingly, while Internet users will unmistakably recognise the site as a criticism site once they have landed there, the disputed domain name causes initial confusion by suggesting a site relating to the promotion and sale of the Complainant's products. There is further evidence of the Respondent's intention to attract the Complainant's potential customers in the headline displayed in the home page of the site: “Important Notice!!! Before Buying Furniture at ‘Domayne Furniture Store'”.
This is not a “legitimate noncommercial or fair use” of the disputed domain name referred to in paragraph 4(c)(iii) of the Policy. In reaching this decision the Panel is not assessing the legitimacy of the site's content nor, ultimately, the right of consumers to criticise products and services they have purchased. It is the Respondent's use of the disputed domain name, and not the legitimacy of its expression of dissatisfaction with the products or services of the Complainant, upon which the Panel bases its decision.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
The Complainant has not alleged that the Respondent's conduct falls into any of the precise circumstances set out in paragraph 4(b) of the Policy. However, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith because (i) it did so “primarily for the purpose of disrupting the business of Domayne by intentionally confusing customers of Domayne into thinking that the Domain Name and the Infringing Website are related to Domayne”; (ii) it is possible that the disputed domain name was registered in order to prevent the trademark owner from registering it or for the purpose of selling it to the Complainant in the future.
The Panel considers that the Respondent's conduct does not fall into any of the four categories listed in Paragraph 4(b) of the Policy since there is no evidence that the Respondent: (i) intends to sell the disputed domain name; (ii) has engaged in a pattern of registering domain names to prevent the owner of the mark from reflecting it in a corresponding domain name; (iii) is a competitor of the Complainant; or (iv) there is any commercial gain derived from the registration and use of the disputed domain name.
However, bad faith registration and use may be found in other circumstances, as the Policy expressly acknowledges. In The Laurel Pub Company Limited v. Peter Robertson / Turfdata,WIPO Case No. DTV2004-0007 the Panel, after considering that the Respondent's conduct did not fall ‘strictly' within those four criteria, considered that the fact that the Respondent had chosen a domain name reflecting the Complainant's trademark when it could have chosen a domain name which on face value would not be thought to be owned by the Complainant “suggests that the Respondent intended to disrupt the business of the Complainant and to divert traffic intended for the Complainant's site to his own.” Similarly, the Panel in Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776 considered that “registration of a domain name comprising the name and trade mark of another and specifically with a view to causing damage and disruption to that other cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trade mark owner's site into visiting the registrant's site.”
Similar reasoning applies in the present case. The initial deception caused by the disputed domain name, which the Panel finds to be intentional, as explained above, constitutes bad faith in registration and in use.
Further circumstances in the present case corroborate a finding of bad faith registration and use. The Respondent registered the disputed domain name on March 14, 2005. Since the Respondent has not alleged otherwise and the webpage does not appear to have any purpose other than criticizing DOMAYNE products, the Panel assumes that the ‘incident' referred to in the webpage took place before March 14, 2005. More than three years have elapsed since the event giving rise to the creation of the webpage occurred and there have been no visible updates of the story or other use of the website. Since no other good faith use of the disputed domain name can be conceived given the clear reference to the Complainant's business in the disputed domain name, the Panel finds that this inactivity corroborates bad faith.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. 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 J.A. Cairns
Presiding Panelist
Andrew Frederick Christie
Panelist
Lone Prehn
Panelist
Dated: November 21, 2008
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