The Complainant is Capricorn Society Limited of Perth, Australia, represented by Wrays, Australia.
The Respondent is Webcruzer Limited of Melbourne, Australia, represented by Watermark Intellectual Property Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2013. On April 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2013, the Registrar 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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Response was filed with the Center on May 1, 2013.
The Center appointed Michael J. Spence as the sole panelist in this matter on May 8, 2013. 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.
The Complainant filed a Supplemental Submission with the Center on May 9, 2013. On May 14, 2013, the Panel issued an Administrative Panel Procedural Order (the “Procedural Order”) accepting the Complainant’s Supplemental Submission under paragraph 10(d) of the Rules and gave the Respondent an extra two weeks from the date of notification to file a Supplemental Response. The Respondent filed a Supplemental Response with the Center on May 27, 2013, in accordance with the Procedural Order. 4. Factual Background
The Complainant is the registered proprietor of several registered trade marks for the word ‘capricorn’. Since 1975, it has been trading in several fields under that name, beginning as a cooperative of service station proprietors. It has for almost four decades been involved in the automotive industry, currently has over 13,000 members and authorized purchasers with a combined turnover in excess of USD 1 billion Australian dollars. The Complainant is a business intermediary and does not deal directly with the public. The Respondent is a software company whose services “include providing hosting and online access to … online platforms across a wide range of industries and languages”. On April 3, 2013, the Respondent made a proposal to the Complainant to host an online platform for the Complainant under the disputed domain name. In order to make this proposal, the Respondent prepared ‘test pages’ incorporating, amongst other things, device trade marks belonging to the Complainant. These ‘test pages’ were available to users of the internet, the Respondent claims by error, on at least March 15, 2103, and April 3, 2013. The Complainant contends that they were available throughout this period. The Respondent launched a whole series of ‘Zodiac Websites’ on April 24, 2013, including a website under the disputed domain name, which it claims had been in preparation since February 2013. The website operated under the disputed domain name provides online trading and advertising services to the public at large. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its registered trade mark ‘capricorn’ with the addition of the suffix ‘auto’ being irrelevant as merely descriptive material; that the Respondent has no rights or legitimate interests in the disputed domain name, and that the fact that the disputed domain name, and other zodiac related domain names, were registered after the Respondent’s dealings with the Complainant, indeed after the filing of this Complaint, shows that the Respondent had not been making bona fide preparations for the use of the disputed domain name, but that the ‘Zodiac Website’ plan was a fiction designed to justify the registration of a domain name identical or confusingly similar to the Complainant’s trade mark; and that the registration or continued use of the disputed domain name is in bad faith because it exhibits an intention to profit from consumer confusion. The Complainant contends that this intention can, at least in part, be demonstrated because of the Respondent’s use of the Complainant’s device marks on the so-called ‘test pages’. B. Respondent
The Respondent contends that the Complainant has no trade mark rights in the words ‘capricorn auto’ and that the categories of goods and services for which it has rights in the word ‘capricorn’ do not correspond to those for which the disputed domain name is being used; that it has been making bona fide preparations for the use of the disputed domain name as part of its suite of ‘Zodiac Websites’ and that it has chosen those domain names because of the global popularity of the astrological symbols to which they refer, even if the idea for the ‘Zodiac Websites’ was suggested by its dealings with the Complainant; and that it had not registered or is using the disputed domain name in bad faith. The Respondent claims that the ‘test pages’ with the Complainant’s device marks were intended to be available only to the Complainant and were available more generally only by accident. The Respondent also emphasizes that the Complainant deals only with businesses, and the Respondent with the general public and claims that there can therefore be no intention to profit from consumer confusion. Moreover, it points out that the presentation of the website operating under the disputed domain name is very different to anything that might be associated with the Complainant’s business. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights, however weak, in the word ‘capricorn’ as it relates to various goods and services in the automotive industry. The addition of the descriptive suffix ‘auto’ is insufficient to distinguish the disputed domain name from the Complainant’s CAPRICORN trade marks. Indeed, alluding as it does to the general field of activity in which the Complainant both commenced and continues operations, it may well be thought to reinforce that connection.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455 , Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
Satisfying this element of paragraph 4(a) of the Policy in this particular case rests upon a difficult judgment of fact. The Respondent is asking the Panel to believe that it has been in bona fide preparation of a suite of online platforms intended to operate under a series of domain names referring to the various zodiac signs, and the fact that it made an approach to the Complainant for the use of one of these domain names is irrelevant. The Complainant is asking the Panel to believe that these preparations were bogus and that this is evinced both by the use of the Complainant’s more distinctive device marks on the so-called ‘test pages’, and by the fact that the disputed domain name, along with the Respondent’s other ‘zodiac’ domain names, was registered after the Respondent’s dealings with the Complainant, indeed after the filling of the Complaint. The Complainant contends that a parallel might be found in the decision Telstra Corporation Limited v. Heaydon Enterprises WIPO Case No. D2000-1672, in which the Panelist found that the Respondent’s arguments bore “the hallmarks of the abusive registrant seeking to find some – or any – excuse for its registration”, and that acceptance of those arguments required a “sheer leap of faith”. In the Telstra case, however, the relevant trade mark was invented, or at least significantly less descriptive than the CAPRICORN mark, and the ‘leap of faith’ required to believe that the relevant domain name was intended to refer to ‘Thetel’s Trash Op’ was considerably greater than a willingness to believe that the Respondent might have been preparing to host a suite of websites under domain names created to reflect the signs of the zodiac. On balance, the Panel does not believe that the Complainant has discharged its burden of proof under the second element of paragraph 4(a) of the Policy.
The Panel therefore doubts that the Complainant has established the second element of paragraph 4(a) of the Policy. However, given its finding in relation to the third element of paragraph 4(a), it is not necessary to reach a final decision on the second element. C. Registered and Used in Bad Faith
The Complainant’s contention is relation to the third element of paragraph 4(a) of the Policy rests heavily on the use on the so-called ‘test pages’ of distinctive device marks belonging to the Complainant. The Respondent contends that these pages were never intended to be available to the public and has provided evidence of a password page behind which demonstrations of its platforms to potential partners are usually hidden. The Respondent admits (Annexure 8 to the Response “Declaration of Frank Flammea”) that the notion of using zodiac signs for its online platforms was suggested by its dealings with the Complainant, but denies that it registered or is using the disputed domain name in bad faith, emphasizing that the website operated at the disputed domain name is presented very differently to anything that might be associated with the Complainant’s business and that it is directed at a different target audience.
It is important that wherever a Panel infers a bad faith intention to divert custom from the mere fact of likely confusion that it does so with considerable attention to the facts at hand. A finding of bad faith is one that ought to be made on the basis of a balance of probabilities assessment of the evidence and circumstance. In this case, the relevant trade mark is a common word of extremely broad application. It seems to this Panel, therefore, that Internet users are likely to be more wary of the potential for confusion than they would be, for example, in the context of a domain name that was identical to an invented trade mark. However this may be, on this case, the difference between the target audience of the website at the disputed domain name, and the absence on the domain name of anything linking the Respondent to the Complainant, suggests that an intention to profit from consumer confusion, and therefore bad faith, is unlikely. In this Panel’s assessment, the only possible evidence of bad faith, the fact that the Complainant’s device marks had earlier formed a part of the page, has reasonably been explained by the Respondent as a part of its intended proposal to the Complainant. Moreover, those devices were removed before the ‘Zodiac Websites’ were launched.
In all of the circumstances, this Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Michael J. Spence
Sole Panelist
Date: June 10, 2013
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