WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION EMU (AUS) Pty Ltd and EMU Ridge Holdings Pty Ltd v. Antonia Deinert Case No. D2010-0963 1. The Parties
The Complainant is EMU (AUS) Pty Ltd and EMU Ridge Holdings Pty Ltd (hereafter “the Complainant) of South Geelong, Australia, represented by Bryan Cave, LLP, Germany.
The Respondent is Antonia Deinert of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2010. On the same day, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On June 12, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 15, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On June 18, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. On July 19, 2010, the Complainant, EMU (AUS) Pty Ltd submitted a request to add EMU Ridge Holdings Pty Ltd as an additional Complainant to the Complaint. 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on July 15, 2010. 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. Factual Background
The Complainant Emu (AUS) Pty Ltd is an Australian based company that engages in the field of sheepskin footwear and apparel. The Complainant's products are being sold in various countries around the world.
The Complainant EMU Ridge Holdings Pty Ltd, is an affiliated company of Emu (AUS) Pty Ltd, that holds the Complainant's trademarks as a trustee.
The Complainant owns multiple trademark registrations for the mark EMU in many countries around the world. For example: Australian trademark registration No. 335503 – EMU, with the registration date of 1979; Community trademark registration No. 3640018 – EMU, with the registration date of 2005; Community trademark registration No.3611787– EMU, with the registration date of 2005; Community trademark registration No. 3640117 – EMU AUSTRALIA, with the registration date of 2005; and others.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the word “emu”. For example: , , , and . The Complainant is using these domain names in connection with their activities.
The disputed domain name was registered by the Respondent on January 25, 2010.
The disputed domain name resolves to a parking webpage, which displays the following error announcement: “Internet Explorer cannot display the webpage”. 5. Parties' Contentions A. Complainant
The Complainant argues that they established significant goodwill in the EMU mark, which has become well-known for sheepskin boots.
The Complainant further argues that the EMU mark is used broadly and extensively in connection with sheepskin boots, which is known by the public as a unique fashion product originating from Australia.
The Complainant further argues that the disputed domain name fully incorporates and make use of its EMU and EMU AUSTRALIA trademarks.
The Complainant further argues that the disputed domain name is comprised of the distinctive word “emu”, which is identical to the Complainant's trademark, and of the descriptive terms “Australia” and “boots”. The Complainant claims that the mere addition of the words “Australia” and “boots” does not distinguish the disputed domain name from the EMU trademark.
The Complainant further argues that registering the disputed domain name many years after the Complainant has registered their trademarks is an indication that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent knew of the Complainant's EMU and EMU AUSTRALIA trademarks upon registering the disputed domain name and that registering a domain name containing well-known trademarks like the EMU trademark is a clear indication for bad faith.
The Complainant further argues that the Complainant has not licensed or authorized the Respondent to use the EMU and/or EMU AUSTRALIA trademarks.
The Complainant further argues that the Respondent is using the disputed domain name in bad faith to offer counterfeit EMU boots for sale, while claiming that they are an original product by the Complainant.
The Complainant further argues that the Respondent copied copyright protected content from the Complainant's website, without Complainant's authorization.
The Complainant further argues that the content in the disputed domain name amounts to a commercial “personality theft”.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceedings should be in English.
The Panel cited the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceedings:
a) The website operating under the disputed domain name does not incorporate the Chinese language;
b) The disputed domain name incorporates words in the English language, which relate to the nature of goods sold in the websites that operated under the disputed domain name;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of the proceedings. B. Additional Complainant
On July 19, 2010, the Complainant Emu (AUS) Pty Ltd submitted a request to add EMU Ridge Holdings Pty Ltd as an additional Complainant.
Paragraph 10(a) and (d) authorizes the Panel to administrate the proceedings in a manner as it considers appropriate and determine the admissibility, relevance, materiality and weight of the evidence. Indeed, under the Rules, the Panel may conduct the administrative proceeding in such manner as it considers appropriate (See e.g. Al Ghurair Group LLC v. Ghurair Group,WIPO Case No. D2004-0532; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray,WIPO Case No. D2002-0624; Voigtländer GmbH v. John Voigtlander,WIPO Case No. D2003-0095).
The Panel has considered the evidence and concluded that EMU Ridge Holdings Pty Ltd is an essential party in this case, as it is the holder of the Complainant's EMU and EMU AUSTRALIA trademarks. The Panel is of the opinion that adding EMU Ridge Holdings Pty Ltd as an additional Complainant does not prejudice the Respondent, as it merely serves to clarify the issue of Complainant's rights in its trademarks. The Panel therefore allows the incorporation of EMU Ridge Holdings Pty Ltd as an additional Complainant in these proceedings. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark EMU. For example: Australian trademark registration No. 335503 – EMU, with the registration date of 1979; Community trademark registration No. 3640018 – EMU, with the registration date of 2005; Community trademark registration No. 3611787– EMU, with the registration date of 2005; Community trademark registration No. 3640117 – EMU AUSTRALIA, with the registration date of 2005; and others.
The disputed domain name differs from the registered EMU trademark by the additional words “boots” and “Australia”, and by the additional gTLD “.com”.
The Panel notes that the disputed domain name differs from the registered EMU AUSTRALIA trademark only by the additional word “boots” and the additional gTLD “.com”.
The additional word “boots” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's EMU AUSTRALIA trademark, especially as boots are goods that are regularly sold under the EMU AUSTRALIA trademark by the Complainant.
Previous WIPO UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant has established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the EMU or EMU AUSTRALIA trademarks, or a variation thereof. The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that are sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. E. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered their EMU and EMU AUSTRALIA trademarks. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owns registrations for the EMU trademark since the year 1979 and for the EMU AUSTRALIA trademark since 2005. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the domain name is resolved to.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name led Internet users to websites, which promoted the sale of boots, some of which carry the EMU mark. The Respondent's use of the name “emu” to promote similar or identical goods to the goods being sold by the Complainant clearly evidences that the Respondent registered this disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the EMU and EMU AUSTRALIA trademarks and subsequent intent to trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name to offer quasi-identical goods to the ones the Complainant manufacture and market (as well as seemingly counterfeit goods) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The fact that the Respondent ceased the use of the disputed domain name does not preclude the Panel from finding bad faith, having taken into consideration all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867. The Panel cites the following similar case with approval: “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic' bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
In addition, previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Furthermore, the Panel makes notice of the Complainant's contention that the Respondent has infringed upon its copyrights. Previous panels have ruled that an intentional infringement of a complainant's copyright may amount in itself to bad faith (TPI Holdings Inc. v. JB Designs,WIPO Case No. D2000-0216).
Based on the evidence presented to the Panel, including the use of the EMU and EMU AUSTRALIA trademarks in the disputed domain name and the use made by the Respondent of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met their burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 28, 2010
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