The Complainant is Magnamail Pty Limited of New South Wales, Australia, represented by Middletons Lawyers, Australia.
The Respondents are Domain Admin, PrivacyP ID#10760 of Queensland, Australia and Luis Vicente Rodrigues, Grupo JBS SA of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Power Brand Center Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2011. On November 18, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 22, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 28, 2011. The effect of this amendment was to add the second Respondent to this procedure.
The Center verified that the Complaint together with the amendment to 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”).
As a result of the amendment referred to above two entities are identified as Respondents in this procedure. As no response has been filed by either Respondent it is not necessary to distinguish between them and the term "Respondents" in this decision refers to either or both of the Respondents as necessary.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 20, 2011.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 12, 2012. 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 relevant facts are straightforward. Since 1974, the Complainant has carried out a mail order catalogue business providing various goods in Australia and New Zealand under the name Magnamail. Since 2002, the Complainant has also sold its goods via its website at “www..au”.
The Complainant has rights in the MAGNAMAIL mark. The Complainant is the owner of registered Australian trade mark no. 708990 MAGNAMAIL (the "Complainant's Trade Mark”), registered on May 21, 1999.
The Disputed Domain Name is used by the Respondents to provide a web page which provides "click through" links to sites offering for sale a range of products, at least some of which compete with products the Complainant offers for sale in its catalogue or via its website. 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Name is identical to its trade mark. In light of the Complainant's continuous conduct and promotion of its business under or by reference to MAGNAMAIL since at least 1974 and its trade mark registration dating from 1996, the Complainant asserts that it is almost impossible that the Respondents were unaware of the existence and use of the Complainant's Trade Mark when the Disputed Domain Name was created in 1999. Given the Complainant's Trade Mark is an invented word with no meaning in any language, the Respondents clearly registered the Disputed Domain Name in order to;
a. attract, for commercial gain, Internet users to the Respondents' Website by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' Website or location or of a product or service on the Respondents' Website;
b. obtain the benefit of the Complainant's reputation in the mark MAGNAMAIL, and the Complainant's Trade Mark, to attract traffic for the benefit of the businesses subscribing to the Respondents' Website; and/or
c. sell, rent, or otherwise transfer the Disputed Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondents' documented out-of-pocket costs directly related to the Disputed Domain Name. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Disputed Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has rights in the term MAGNAMAIL. It is a made up word with no meaning in any language. Further it is highly distinctive. The Complainant has an Australian registered Trade mark in respect of the word. The Disputed Domain Name is identical in that it comprises the same word with the addition of the top level domain identifier ".com", which is to be ignored for these purposes. The Panel accordingly finds that Disputed Domain Name is identical to the name in which the Complainant has rights. B. Rights or Legitimate Interests
There is no evidence before the Panel in this case that the Respondents have any legitimate interest in the Disputed Domain Name for the purposes of paragraph 4(c) of the Policy. The Complainant has not licensed or otherwise permitted the Respondents to use its trademark or to apply for any domain name incorporating any such mark. The Disputed Domain Name comprises a highly distinctive word which has no meaning apart from in relation to the Complainant's business. The Complainant has therefore established a prima facie case that the Respondents have no rights and legitimate interests in the Disputed Domain Name and thereby shifted the burden to the Respondents to produce evidence to rebut this presumption (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). No such evidence has been provided. The Panel concludes that the Respondents have no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel has not been provided with detailed evidence as to the size of the Complainant's business. However the Panel accepts that the evidence establishes the Complainant has been in business under its name in Australia and New Zealand since 1974. The Panel also accepts that the nature of that business, being a mail order catalogue business, indicates the business has been carried on nationally in those countries. The business has also been carried out online under the same name since 2002. In those circumstances, given the highly distinctive nature of the Complainant's name, and absent any explanation from the Respondents, the Panel infers that Respondents must have been aware of the Complainant's business and the Disputed Domain Name was chosen by the Respondents because it was the same as the Complainant's name. In the circumstances, the fact that the Disputed Domain Name was registered prior to the registration of the Complainant’s Trade Mark (March 3, 1999 and May 21, 1999, respectively) does not preclude a finding of bad faith registration against the Respondent. See paragraph 3.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and the decisions ExecuJet Holdings Ltd. v. Air Alpha America, Inc.,WIPO Case No. D2002-0669, Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc),WIPO Case No. D2003-0320 and others.
The website operated by the Respondents at the Disputed Domain Name comprises a series of "click through" links to other third party websites. The Panel infers that some consumers, once at the Respondents' website will follow the provided links and "click through" to other sites which offer products which compete with those of the Complainant. The Respondents presumably earn "click through" linking revenue as a result. The Panel suspects the Respondents' website is probably automatically generated and it is not clear to the Panel whether this is being arranged by the Respondents directly or by a third party provider. This does not however matter. It is well established that where a Domain Name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the names association with the Complainant, such use amounts to use in bad faith, see for exampleShangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315, , Owens Corning v. NA,WIPO Case No. D2007-1143, , McDonald's Corporation v. ZusCom,WIPO Case No. D2007-1353, , Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, , Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396, .
The Panel notes that the Disputed Domain Name has been in existence since 1999. It is not clear to the Panel why it is that the Complainant has waited until now to take action. However (absent any response from the Respondents seeking to raise this point) the Panel concludes that delay in itself is not a ground for altering a finding of use in bad faith. See for example The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616, , Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560 .
Accordingly the Panel concludes that by using the Disputed Domain Name, the Respondents intentionally attempted to attract, for commercial gain, Internet users to the Respondents' website, by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondents website or location or of a product or service on the Respondents’ website or location. This amounts to registration and use in bad faith, see paragraph 4(b)(iv) of the Policy. 7. Decision
For 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.
Nick J. Gardner
Sole Panelist
Dated: January 16, 2012
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