The Complainant is Reckon Limited of North Sydney, New South Wales, Australia, represented by Banki Haddock Fiora, Australia.
The Respondent is Multitech s.r.l. of Rome, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with T (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 7 and 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 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 June 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on July 10, 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.
From the case file it appears that while a set of the case papers was satisfactorily delivered to the Registrar on June 14, 2013, all attempts to deliver the papers to the Respondent (whether electronically or by courier) failed. On June 17, 2013 the Center’s courier emailed the Center informing the Center “The consignee has moved and the provided phone number is wrong”.
The Panel is satisfied that the Center made every reasonable attempt to deliver the papers to the Respondent and has complied with its obligations in this regard in accordance with paragraph 2 of the Rules. 4. Factual Background
The Complainant is an Australian publicly listed company, founded in 1987, specializing in accounting and bookkeeping software for individuals, professionals and small to medium sized businesses in Australia and New Zealand.
In its first year of trading (1987) the Complainant turned over AUD 197,000. In its tenth year (1997) it turned over approximately AUD 10,000,000. Over the last 7 years the Complainant’s annual operating revenue has risen from approximately AUD 45,000,000 in 2006 to in excess of AUD 95,000,000 in 2012.
The Complainant is the registered proprietor of several Australian and New Zealand trade mark registrations comprising or including the word “Reckon”, the earliest of which is Australian registration number 1211282 dated November 21, 2007.
The Complainant also holds a number of domain names featuring the word, “reckon”, including the domain name, .
On March 28, 2013 the Complainant’s representative sent an email to the administration contact for the Domain Name in the following terms:
“Our client, who at this stage chooses to keep their identity confidential, has become aware that you are the administration contact for the domain name . This domain name is registered to Multitech s.r.l.. We note that there is currently no active site associated with this domain and, according to information available on , this has been the case for quite some time. It therefore seems the registrant may have lost active interest in the domain.
Our client is interested in acquiring the domain name for use with its business in Australia. It is willing to pay a reasonable sum for transfer of the domain.”
The Respondent did not reply.
The Domain Name was first registered on October 7, 1996. It was transferred into the keeping of the Registrar on October 12, 2005. The Registrar has confirmed that since at least October 12, 2005 the Domain Name has been registered to the Respondent.
The Complainant has annexed to the Complaint a number of web pages from the Internet Archive WayBackMachine showing that, although the Domain Name is currently connected to an error page, for several years it was connected to an active website of an Italian company, e-group Italia S.p.A. The first of those pages dated December 22, 1996 promotes a brand of computer named “Reckon”, which is said to be synonymous with high quality and affordability. A page dated March 30, 2001 indicates that “Reckon” is still one of the brands with which the company was associated and another page dated August 5, 2003 features text stating (in Italian) that “Reckon” is a registered trade mark of e-group Italia. Pages dated May 27, 2006 and December 9, 2007 feature, on the left-hand side of the page, a drop-down menu entitled “brand”. The Panel visited the Internet Archive WayBackMachine and clicked on the “brand” drop down menu. A number of brands are listed and one of them is “Reckon”.
The Complainant has made strenuous efforts to track down the Respondent without success. The address appearing on the Registrar’s WhoIs database is a residential address at which the Respondent is unknown.1 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its RECKON trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
In support of its bad faith contention the Complainant cites authority for the following propositions, which it contends are applicable in this case, the Domain Name not having been connected to an active website since early 2008:
1. “passive holding of a domain name in which a Respondent has no rights or legitimate interests may amount to bad faith use” and “passive holding interspersed with sporadic or intermittent use can also ground a claim of bad faith use.”
2. “the providing of false contact details or the failure to update contact details can be determinative of bad faith use and registration in cases of ‘passive holding’.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
As can be seen from section 4 above, the Complainant is the registered proprietor of a number of Australian and New Zealand trade mark registrations of marks comprising or including the word “Reckon”.
The Domain Name comprises the dictionary word “reckon” and the generic “.com” top level domain identifier.
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has registered trade mark rights.
While all those registrations post-date registration of the Domain Name by several years, the date of the coming into existence of the Complainant’s trade mark rights is irrelevant for the purposes of this element of the Policy, provided that those rights existed at the date of filing of the Complaint. Nonetheless, the date can be of significance when it comes to assessing the second and third elements of the Policy. It is convenient to mention here, therefore, that the Complainant has done enough to satisfy the Panel for this purpose, on the balance of probabilities, that by 1996 when the Domain Name was registered the Complainant had unregistered trade mark rights in the word “Reckon” in Australia. C. Rights or Legitimate Interests
In light of the Panel’s finding under D below, it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
This section of the Complaint commences: “When considering all the circumstances surrounding the registration and use of the Disputed Domain Name it is clear that the Respondent registered, and is using, the Disputed Domain Name in bad faith”.
For it to be “clear” that a respondent registered and is using a domain name in bad faith, one would expect to find some evidence indicating (whether directly or indirectly) that the respondent in question was targeting the complainant at date of registration of the domain name. If the brand in question is a dictionary word and the evidence in support of the bad faith contention is wholly circumstantial, the burden on the complainant is likely to be greater than if the brand in question is a made-up distinctive name.
In this case, as can be seen from the factual background in section 4 above, the Complainant’s evidence from the Internet Archive WaybackMachine all points the other way. It appears from that evidence that “Reckon” is (or was) a computer brand of e-group Italia S.p.A. and that the website to which the Domain Name was connected from 1996 to 2007/2008 was a website of e-group Italia S.p.A., promoting that brand.
The Panel finds that the probability is that the Respondent registered the Domain Name for the benefit and with the approval of the Italian company, e-group Italia S.p.A., the proprietor of the “Reckon” brand of computers, and that the Domain Name was used for the benefit of e-group Italia S.p.A. until about 2007/2008. Since then, the Domain Name has not been used, the Registrar’s WhoIs contact details have not been kept up-to-date and the Respondent has moved on.
Striking by their absence are (i) any Italian company registry check on e-group Italia S.p.A. (ii) any Italian trade mark search for “Reckon” (iii) any search for “Reckon” as a computer brand. If evidence from these sources had been presented and had demonstrated that e-group Italia S.p.A. and its computer brand never existed, then it would have been easier for the Panel to infer bad faith registration and use, but there is nothing in the Complaint to suggest that the Complainant believes the web pages exhibited to the Complaint to be anything other than what they purport to be.
The Complainant’s bad faith contention is based entirely on the fact that since 2008 the Domain Name has not been connected to an active website and relies solely upon two propositions, which it claims to be applicable to this case, namely:
1. “passive holding of a domain name in which a Respondent has no rights or legitimate interests may amount to bad faith use” and “passive holding interspersed with sporadic or intermittent use can also ground a claim of bad faith use.”
2. “the providing of false contact details or the failure to update contact details can be determinative of bad faith use and registration in cases of ‘passive holding’.”
The first point to note is that in so contending the Complainant ignores its own evidence as to the use that was made of the Domain Name from 1996 to 2007/2008, which strongly suggests to the Panel that the Domain Name was registered in good faith.
Secondly, the cases which the Complainant cites in support of those propositions are all very different from the facts of the present case.
In support of the first proposition the Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”), Ferrari S.p.A. v. American Entertainment Group, Inc., WIPO Case No. D2004-0673 (“Ferrari”) and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 et al. (“Ladbroke”). In Telstra the complainant’s trade mark was not only very well-known, but it was a made-up word and there was no obvious justifiable reason for the respondent to have registered it. In Ferrari there was evidence to suggest that the respondent had in the past been using the domain name to exploit the fame and goodwill of the complainant’s trade mark for commercial gain. In Ladbroke the domain names in issue made it clear that the respondent was targeting the well-known gaming services company. Thus, in all three of those cases there were factors, not present in the present case, which enabled the panel in each case to infer bad faith from the passive use. Moreover, in this case, when the Complainant’s representative wrote to the Respondent on March 28, 2013 in the terms set out in section 4 above, there is no suggestion in that email that the Respondent is acting in bad faith. The Complainant’s representative seems to have accepted that the Respondent may simply have lost interest in the Domain Name.
In support of the second proposition the Complainant cites both Telstra and Ladbroke, which the Panel regards as being very different cases for the reasons set out above. In the view of the Panel the surrounding circumstances of this case more readily support the idea that in 2007/2008 e-group Italia S.p.A. ceased trading or at any rate ceased to have any continuing interest in respect of the Domain Name, with the result that use of the Domain Name ceased and updating of the WhoIs contact details was overlooked. The Panel is unable to infer bad faith from the mere fact that the WhoIs details are inaccurate. The Complainant also cites Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 , a case in which the panel accepted the complainant’s contention that the respondent intentionally filed false contact information in order to evade service. However, that case too was very different from the present case. The complainant’s trade mark was a made-up word and was well-known in South East Asia as the name of the leading Malaysian banking group. The respondent had featured links on its website to “Malaysian Credit Cards” and “Open Savings Account”. There was little doubt that the respondent was targeting the complainant’s brand.
The Complainant has failed to satisfy the Panel that the Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: July 15, 2013
1 The Center’s courier on visiting the address was told that the Respondent had moved. The courier reported to the Center that the telephone number was “wrong”.
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