The Complainant is Futuris Automotive Interiors (Australia) Pty Ltd of Adelaide, Australia represented by Kelly & Co. Lawyers, Australia.
The Respondent is X9 Interactive LLC of Manchester, Connecticut, United States of America, represented by Dozier Internet Law, P.C., United States of America. 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 April 4, 2011. On April 4, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 4, 2011, 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” 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 April 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2011. The Response was filed with the Center on May 3, 2011.
The Center appointed Andrew D. S. Lothian, Andrew F. Christie and Michael A. Albert as panelists in this matter on June 7, 2011. 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 an Australian company with its principal place of business in the State of South Australia, Australia. The Complainant provides a wide range of goods and services in the automotive industry, particularly in respect of automotive interior fittings, solutions and systems and is Australia’s largest automotive component supplier. The Complainant is active in countries including the United States of America, the People’s Republic of China, Thailand, South Africa, Republic of South Korea, India and Brazil. The Complainant is the owner of Australian registered trademarks number 599984 for the word mark FUTURIS registered on November 19, 1993, in international class 12; and number 1075693 for the word and device FUTURIS THE FUTURE OF INTERIOR SYSTEMS registered on July 26, 2006, in international classes 9, 12 and 27.
The Respondent is a company based in Manchester, Connecticut which provides Internet services, network management and marketing strategies. The Respondent registered the disputed domain name in 1994, at which time it was conducting business under the name Futuris Networks, Inc. The Respondent still has an active division that provides web hosting services under the name “FuturisNet.” Its web hosting customers know it by that name and by the shortened form “Futuris”. The Respondent used the disputed domain name in conjunction with its business from the time of its registration until 2005, and it now retains it for future use by its FuturisNet division. Currently the disputed domain name is not connected to any active website.
On November 18, 2009, the Respondent received a letter from lawyers acting on behalf of the Complainant’s IT company requesting that the Respondent ascertain whether “the current holder” of the disputed domain name was prepared to offer the disputed domain name to the Complainant’s IT company.
On August 13, 2010, the Complainant’s representatives wrote to the Respondent noting that the Respondent’s official website referred to the Respondent’s subsidiary, FuturisNet and that the Respondent was also the registrant of the domain name . The Complainant’s representatives went on to state that they had been requested by the Complainant to determine whether the Respondent was agreeable to transferring the disputed domain name to the Complainant, in return for which the Complainant was willing to offer the Respondent payment of a reasonable sum. On September 24, 2010, the Complainant’s representatives sent a further letter indicating that they had not received a response to their original letter and stating “Our client is keen to finalise this issue as a matter of priority. Accordingly, please can you advise as soon as possible whether [the Respondent] is agreeable to accepting our client’s proposal in principal, [sic] and if so, provide our client with guidance as to the sum which it would be prepared to accept”. (Response, Annex 5). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant’s parent company, an Australian company named Elders Limited, retains rights in the “Futuris” name by virtue of the fact that it was Futuris Corporation Limited between 1978 and 2009 and that it generated a significant reputation in the market under this name. Other companies in the Complainant’s parent company’s group currently use, or have historically used, the name “Futuris” as part of their corporate names.
The Complainant has acquired significant market recognition and reputation in the “Futuris” name locally and internationally. The extensive recognition achieved by the Complainant and its parent company under its former corporate name indicates the status of these entities as leaders in their fields. The Complainant is the owner/authorized user of the common law mark FUTURIS across the world. This means that use of the name “Futuris” in the disputed domain name constitutes breach of the Complainant’s rights pursuant to Australian law including misleading or deceptive conduct and the tort of passing off. The word “Futuris” is an essential feature of the Complainant’s trademarks and use of the word “Futuris” in the disputed domain name constitutes infringement of the Complainant’s rights in the trademarks.
The Complainant is the registrant of a wide variety of domain names containing the word “Futuris” which are all very similar to the disputed domain name as the mark FUTURIS is the most distinctive and memorable element of each. The disputed domain name is identical to the registered and common law trademarks in which the Complainant and its parent company have rights. There are no distinguishing features which differentiate the disputed domain name from the Complainant’s trademarks. The disputed domain name is the gTLD equivalent of a variety of domain names registered by the Complainant or another entity in its corporate group including , and in which the relevant domain space and or country code identifier is the only differentiating feature with the disputed domain name.
Neither the Complainant nor its parent company have at any time expressly licensed to the Respondent the right to register the disputed domain name or otherwise authorized the Respondent’s registration of the disputed domain name or use of the “Futuris” name. Investigations undertaken by the Complainant indicate that while the Respondent historically used the “Futuris” name it now primarily conducts its activities under the “X9” / “X9 Interactive” name. Internet archive searches show that an active website was present at the disputed domain name by December 1996, and referred to the name “Futuris” in the context of a business known as the “Futuris Internet Business Centre”, operated by Futuris Networks Inc. In approximately March 2004, Futuris Networks Inc. ceased accepting new customers and establishing new commercial relationships, and handed management and maintenance of its existing relationships to the Respondent for it to oversee under the “X9 INTERACTIVE” name, and therefore effectively ceased trading under the “Futuris Networks” brand in 2004. This was reflected by notices uploaded to the website at the disputed domain name at the relevant time.
Since 2004, neither Futuris Networks nor the Respondent has substantively used or re-commenced use of the “Futuris” name. In particular, an active website is not presently located at the disputed domain name and the Internet archive suggests that the last website located at the disputed domain was in approximately February 2005, and contained the notice directing visitors to the Respondent as described in the preceding paragraph. Though an entity associated with the Respondent was previously using the “Futuris” name in its activities, and may historically have had a right or legitimate interest in the domain name, this entitlement does not extend to the Respondent. There is no evidence that since 2004, the Respondent (or an entity connected with the Respondent) has used, or made any demonstrable preparations to again use, the disputed domain name in connection with a bona fide offering of goods or services. Further, there is no evidence that since 2004, the Respondent, or an affiliated entity, has made or is making a legitimate noncommercial or fair use of the disputed domain name.
It is submitted that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and/or the Complainant’s parent company, by diverting Internet users searching for the business of the Complainant’s parent company or the Complainant to a website unrelated to the Complainant or the Complainant’s parent company, and generating income from this process.
Given the significant reputation in the “Futuris” name, accruing to the Complainant’s parent company and/or the Complainant, prior to the initial date of registration of the disputed domain, it is submitted that the Respondent registered the disputed domain name primarily in order to prevent the Complainant and/or the Complainant’s parent company from reflecting the mark FUTURIS in a corresponding domain name.
Further, it is submitted by the Complainant, that the Respondent’s passive holding and maintenance of the disputed domain name despite the fact that the business conducted under the “Futuris Networks” name has not been active since approximately 2004, comprises evidence of bad faith as it leads to the inference that the Respondent is holding the disputed domain name for the sole purpose of preventing registration by the Complainant.
In particular, the Complainant submits that the FUTURIS trademark, exclusively owned by the Complainant’s parent company and/or the Complainant, has a strong reputation and is widely known and this circumstance existed as at the date of registration of the disputed domain name; there is no actual or contemplated good faith use by the Respondent of the disputed domain name; and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by passing off, an infringement of consumer protection legislation or an infringement of the rights of the Complainant and/or the Complainant’s parent company under trademark law. B. Respondent
The Respondent contends that the Complainant’s two registered trademarks are solely in relation to the automotive industry. The Complainant also has two trademark applications under examination, which expand the scope of goods and services to which the registered trademarks apply. Even if the two pending trademark requests are accepted, they will still be in a different class of goods and services than those provided by the Respondent.
The Respondent is an American company that provides Internet consulting services and under its FuturisNet division provides web hosting services, primarily to domestic United States customers. The Respondent is using, and has always used, the “Futuris” name for a wholly different class of goods and services. The Respondent has never used the disputed domain name in connection with automotive services. As a result, it is unreasonable to claim that the Respondent’s use of the name is likely to be confused with the Complainant’s use of the name. The Respondent and the Complainant are not competitors. They have entirely different businesses in unrelated industries.
Although the Complainant owns numerous other domain names containing the word “futuris” the Respondent owns the domain name , which the Complainant has acknowledged, and by implication does not contest. Other companies around the world are using domain names that include the word “Futuris,” without any apparent action by the Complainant, for purposes including the Futura Futuris font family, a band, financial services, and hydraulic hoses. The word “futuris” is simply the dative plural and ablative plural case of the Latin word futurus, meaning “about to be”.
The Respondent registered the disputed domain name in 1994, at which time it was conducting business under the name Futuris Networks, Inc. By the Complainant’s own statements, the Respondent was making legitimate use of the disputed domain name until at least 2005. Therefore, the disputed domain name was clearly not registered for the purpose of disrupting the Complainant’s business nor for the purpose of selling it to the Complainant or to a competitor of the Complainant or in bad faith. The Respondent still has an active division that provides web hosting services under the name “FuturisNet.” Its web hosting customers know it by that name and by the shortened form “Futuris.”
A representative of the Complainant sent a letter to the Respondent on November 18, 2009, requesting the rights to the disputed domain name. Again on August 13, 2010, a representative of the Complainant sent a letter offering a “payment of a reasonable sum” for the transfer of the domain name and a follow-up to that letter on September 24, 2010. The Respondent did not reply to these letters.
The Respondent did not register the disputed domain name with the intent to prevent the Complainant from using it. The Respondent was not even aware of the Complainant’s business at the time of registration. The Respondent registered the disputed domain name with the intent to use it in conjunction with its business, and in fact did actually use it in conjunction with its business from the time of its registration in 1994 until at least 2005. It has maintained the disputed domain name not to prevent the Complainant from registering it, but rather for future use by its FuturisNet division.
The Respondent has not generated, and is not generating, any income from Internet searches from the disputed domain, as indeed there is no website available at the disputed domain name. The disputed domain has never been parked with any third-party domain parking service and has never displayed advertisements from any ad service. The disputed domain has been used in the past solely to promote the Respondent’s own services, to provide visibility for its customers’ websites, and for new servers in a test mode prior to moving them to their own domain names through the use of subdomains.
The Complainant turned to the UDRP process because it was unsuccessful in purchasing the disputed domain name from the Respondent and the Respondent requests that the Panel find that the Complainant is attempting to reverse hijack the domain by abusing the UDRP process because the Complainant knew, by its own admission in its Complaint, that the Respondent had not registered the disputed domain name in bad faith. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 has established trademark rights in the name “Futuris” arising from its Australian registered trade mark number 599984 for that term. The disputed domain name is identical to the Complainant’s mark, disregarding the generic top level domain “.com” for the purposes of comparison as is customary in cases under the Policy.
In these circumstances, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this second element by making out a prima facie case not rebutted by the respondent. However, in the present case, rather than establishing such a prima facie case, the Panel finds that the Complainant has conceded that the Respondent or its corporate predecessor operated a business initially trading as the “Futuris Internet Business Centre” and that the Respondent or its corporate predecessor went on to use the name “Futuris” between at least 1996 and 2004. The Complainant also expressly states, “the Respondent (or an entity associated with the Respondent) historically used the ‘FUTURIS’ name”. Furthermore, the Complainant notes in its letter to the Respondent of August 13, 2010, that the Respondent currently has a corporate subsidiary named FuturisNET.
In effect, the Complainant has made out much of the Respondent’s case under paragraph 4(c)(i) and (ii) of the Policy. The Respondent’s own submissions that the word “futuris” is the dative and/or ablative plural case of the Latin word “futurus”, (“about to be”), that it was not aware of the Complainant’s business at the time of registration of the disputed domain name, that it registered the disputed domain name with the intent to use it in conjunction with its business and that it has maintained the disputed domain name along with domain name for future use by its FuturisNet division are entirely credible and indeed are consistent with and supported by the Complainant’s researches, submissions and correspondence.
Accordingly the Complainant has failed to persuade the Panel that the Respondent does not have rights and legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted in the preceding section, all of the evidence before the Panel demonstrates that the Respondent or its corporate predecessor did not register the disputed domain name to target the Complainant or its trademark. On the contrary, the evidence shows that the disputed domain name was registered by the Respondent for the purposes of operating an entirely legitimate business unrelated to that of the Complainant. The Respondent went on to operate this business between the date of registration of the disputed domain name in 1994 and 2005. The Panel finds that the Respondent’s submission regarding its ongoing retention of the disputed domain name for future use by its FuturisNet division is entirely credible.
The Complainant provided no evidence that shows the Respondent has engaged in activities of the type specified in paragraph 4(b) of the Policy or that otherwise demonstrates registration and use of the disputed domain name in bad faith. In these circumstances, the Complainant has failed to persuade the Panel that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
On the subject of Reverse Domain Name Hijacking, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides inter alia as follows:
“Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
UDRP panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the Policy in such circumstances.
UDRP panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP ” Id.
The Complainant made two principal assertions regarding bad faith: (i) that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant; and (ii) that the Respondent registered the disputed domain name primarily in order to prevent the Complainant and/or the Complainant’s parent company from reflecting the mark FUTURIS in a corresponding domain name.
As the evidence provided by the Complainant itself showed, however, neither of these assertions had any basis in fact. On the contrary, the Complainant’s own researches as described in the Complaint clearly demonstrate that the Respondent (or its corporate predecessor) began to use the disputed domain name in the context of a business using the term “Futuris” within a short period after registration of the disputed domain name and furthermore that this use continued over a period of many years. The general tenor of the Complainant’s representatives’ prior correspondence with the Respondent also suggests that the Complainant was perfectly aware that the disputed domain name had not been registered in bad faith and the obvious inference that the Panel must make is that the present Complaint was brought purely because the Complainant’s overtures to purchase the disputed domain name from the Respondent had been rebuffed or ignored. Finally, the Complainant should reasonably have appreciated that in the circumstances of the present case it matters not that the disputed domain name has not pointed to an active website since 2004; the Policy may not be used to deprive a legitimate registrant of a domain name purely because that registrant has chosen not to use the domain name in conjunction with a website.
Accordingly, it is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Presiding Panelist
Andrew F. Christie
Panelist
Michael A. Albert
Panelist
Dated: June 20, 2011
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