WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd Case No. D2009-1066 1. The Parties
The Complainant is Layby Services Australia Pty Ltd, Sydney, Australia, represented by Horton Rhodes Lawyers, Australia.
The Respondent is Chrisco Hampers Australia Ltd, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2009. On August 11, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On August 19, 2009, Melbourne IT Ltd 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” or “UDRP”), 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 August 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2009.
The Center appointed Ross Wilson as the sole panelist in this matter on September 28, 2009. 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. 4. Procedural Order
On October 26, 2009 a Procedural Order was issued to establish whether or not the Complainant and the Respondent were competitors and whether or not the Complainant had evidence of the fame of the HAMPER KING trademark at the time of registration of the disputed domain name.
The Complainant responded on October 29, 2009 providing evidence that the Respondent is currently a direct competitor. However, the Complainant indicated it could not provide any evidence of the fame of the HAMPER KING trademark at the time of the disputed domain name registration as the Complainant did not own the business at that time. The Complainant pointed out that it bought the business in August 2008 and stated that it had been established by the previous owner in 2005. According to the Complainant the Respondent registered the disputed domain name as a direct reaction to the previous owner establishing the Hamper King business in 2005. 5. Factual Background
The Complainant is an Australian company that supplies Christmas hampers, toys, gifts, home furnishings and electronics through its website at “www..au”. It is the owner of the trademark HAMPER KING which was registered in Australia on March 27, 2006.
The Respondent is a New Zealand company registered in Australia as a foreign company. It registered the disputed domain name on January 12, 2006.
The Complainant's representative issued a letter of demand to the Respondent on October 30, 2008 notifying that the Complainant was the registered owner of the trademark HAMPER KING. The letter informed the Respondent that it was in breach of the Complainant's trademark rights through using the disputed domain name to divert internet traffic to the Respondent's website. The Respondent was requested to cease using the domain name and transfer it to the Complainant.
On October 31, 2008 the Respondent's representative agreed to cease using the domain name but would not agree to transfer it to the Complainant. 6. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its registered trademark and that any use by the Respondent in circumstances where the Respondent is a direct competitor will breach the Complainant's rights as the registered trademark owner.
According to the Complainant, the Respondent has no legitimate interests in respect of the domain name and there is no evidence as far as the Complainant is aware of any bona fide use of the domain name.
The Complainant further contends that in October 2008 the Respondent, a direct competitor, established the website that automatically redirect Internet users to the Respondent's primary website under its Chrisco branding. The Respondent used the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. B. Respondent
The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the trademark HAMPER KING since March 27, 2006.
The disputed domain name consists of the Complainant's trademark in full together with the suffix gTLD “.com”. As previously held by numerous panels the suffix “.com” only indicates that the domain name is registered under this gTLD and is not distinctive.
Also, it has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics Corp. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the Complainant's trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. The Respondent has apparently chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name . In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The correspondence between the Complainant's representative and the Respondent provides prima facie evidence that the Respondent was using the disputed domain name to divert Internet users to its website. The act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant's trademark through a domain name that incorporates a trademark to a website unconnected to the trademark owner, does not constitute bona fide offering of goods and services (see Fox News Network, LLC v. Warren Reid,WIPO Case No. D2002-1085, Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt,WIPO Case No. D2007-0819 and Lance Armstrong Foundation v. Chris Angeles,WIPO Case No. D2005-0888, Baudville, In. v. Henry Chan,WIPO Case No. D2004-0059 and Sanofi-aventis v. Milton R. Benjamin,WIPO Case No. D2005-0544).
Given the opportunity through this dispute process the Respondent has failed to rebut the Complainant's case or assert any rights in the domain name.
Based on the above the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent's action to cease using the disputed domain name to redirect Internet users to its website as a response to the cease and desist letter from the Complainant's representative clearly indicates that the disputed domain name was being used in bad faith. However, even if so, according to the Policy registration in bad faith must also be proved.
The disputed domain name was registered on January 12, 2006, more than two months before the Complainant registered its trademark. Generally, in these circumstances the WIPO panelists' consensus view is that when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant's non-existent right. However, in response to the Procedural Order, the Complainant provided sufficient evidence for the Panel to accept that the Respondent is a direct competitor. Also, the Complainant, by providing the history to the Hamper King business, has revealed that the Respondent registered the disputed domain name one year after the business was established.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there has to be a strong probability that the Respondent's awareness of the Hamper King business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the words HAMPER KING was not merely coincidental but was to gain some sort of advantage in relation to a competitor. In this case the Respondent intentionally redirects Internet users to its website for commercial gain.
In view of the above, and on a balance of probabilities, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. 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.
Ross Wilson
Sole Panelist
Dated: November 3, 2009
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