The Complainant is Central Coast Locksmiths Pty Limited of Erina, New South Wales, Australia, represented by AJ Park IP Pty Ltd, Australia.
The Respondent is Adam Svetey of Toowoon Bay, New South Wales, Australia, represented by Hazan Hollander. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NetRegistryPty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 28, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 17, 2014. The Response was filed with the Center February 17, 2014.
The Center appointed John Swinson as the sole panelist in this matter on March 6, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is Central Coast Locksmiths Pty Limited, an Australian company that provides locksmith services in the “Central Coast” region of New South Wales. The Complainant submits that it owns the common law trademark “Central Coast Locksmiths”.
The Respondent is the individual Adam Svetey of Australia. The Respondent owns and operates Blue Coast Locksmiths, a business that provides locksmith services in the “Central Coast” region of New South Wales.
The Respondent registered the Disputed Domain Name on July 12, 2012. The Disputed Domain Name is currently inactive. In the past, it has resolved to a website for the Respondent’s business. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant submits that owing to its longstanding use of the name “Central Coast Locksmiths” it owns the common law trademark rights in that name. The Complainant submits that the following evidence this use:
- It has traded under this name since 1985.
- The Complainant’s predecessors in title used the name in conjunction with locksmith services from 1972 to 1985.
- The Complainant has registered the domain names and .
- The Complainant has applied to register “Central Coast Locksmiths” as a trademark (Australian Trade Mark Application No. 1508928).
- The Complainant has been a member of the Master Locksmiths Association of Australia under the name “Central Coast Locksmiths” continuously since September 1982.
- The Complainant and its predecessors in title have advertised in the Yellow Pages as “Central Coast Locksmiths” since January 1, 1980.
- The Complainant has used “Central Coast Locksmiths” on stationary items, signage and at the 2012 Central Coast Home Expo.
The Complainant submits that the Disputed Domain Name is identical to its common law trademark “Central Coast Locksmiths”.
Rights or Legitimate Interests
The Respondent was employed by the Complainant from November 12, 2007 to March 9, 2012. During this time, the Respondent registered the business name “Blue Coast Locksmiths”. To the best of the Complainant’s knowledge, the Respondent continues to operate this business, thus providing the same services as the Complainant in the same geographic area (the Central Coast region of New South Wales, Australia).
In addition to the Disputed Domain Name, the Respondent has also registered the domain names ˂> and ˂.au>, both of which redirect to the website at the Disputed Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as the Respondent does not make any bona fide offering of goods and services under the trade mark, operate a business under the name "Central Coast Locksmiths", or own a registered trade mark for “Central Coast Locksmiths”. Further, the Complainant has not licensed or authorised the use of "Central Coast Locksmiths" by the Respondent.
Additionally, the Complainant submits that the fact that the Respondent operates a business in the geographic region known as the Central Coast is not sufficient to give him rights to, or a legitimate interest in, the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant submits that the Respondent registered and used the Disputed Domain Name in bad faith for the following reasons:
- As a former employee, the Respondent was aware of the Complainant’s rights in “Central Coast Locksmiths”.
- The Respondent no longer has any connection or affiliation with the Complainant.
- The Respondent’s prime purpose in registering the Disputed Domain Name was to trade off the Complainant’s reputation and goodwill in its common law trademark and to misleadingly attract and divert Internet users to its website and to its business for commercial gain. The Complainant submitted that several customers had in fact been confused (the Complainant annexed an example email).
- When the Respondent applied to register the Disputed Domain Name, he was required under the Registration Agreement to represent and warrant that registering that name would not infringe the rights of any third party. The Respondent has breached that representation and warranty. B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Respondent accepts that the Disputed Domain Name is identical to “Central Coast Locksmiths”. However, it submits that the Complainant has no common law trademark rights in “Central Coast Locksmiths”, as the name has not acquired a secondary meaning such that it has become distinctive of the Complainant.
The Disputed Domain Name is a combination of the name of a geographic region in which the Respondent provides its services (i.e. “Central Coast”) and a descriptor of those services (i.e. “Locksmiths”).
The Complainant has not presented compelling evidence of secondary meaning. In relation to this point, the Respondent submits that the evidence must pre-date the registration date of the Disputed Domain Name (i.e. July 12, 2012). Therefore, evidence after this date and evidence that does not identify a date should not be taken into account. In its Response, the Respondent provides a comprehensive overview of alleged deficiencies in the Complainant’s evidence.
The Respondent submits that other businesses in the region use names or marks similar to “Central Coast Locksmiths”. It submits that any confusion arising in relation to the Disputed Domain Name is as a result of the Complainant’s decision to conduct its business under a name comprised of descriptive words.
Rights or Legitimate Interests
The Respondent has rights and legitimate interests in respect of the Disputed Domain Name. He is a qualified locksmith that provides locksmith services in the “Central Coast” region of New South Wales. The Respondent used the Disputed Domain Name in connection with a bona fide offering of his services before receiving notice of this dispute.
Registered and Used in Bad Faith
The Disputed Domain Name was not registered, and has not been used, in bad faith. It is a valuable generic domain name used by the Respondent in conducting his business. It was chosen by the Respondent to improve the ranking of his website in organic search results. The Respondent does not associate himself with the Complainant, and offered to include a disclaimer on the website at the Disputed Domain Name to make this clear.
Reverse Domain Name Hijacking
The Respondent submits that prior to this dispute it had informed the Complainant of the following:
- the nature of the Respondent’s business;
- the difficulties of establishing secondary meaning in a geographic name;
- the difficulties associated with holding a descriptive domain name (including the confusion that may arise);
- the legitimate rights and interests that the Respondent has in the Disputed Domain Name; and
- the willingness of the Respondent to add a suitable disclaimer to the website at the Disputed Domain Name.
Additionally, the Australian Trade Marks Office informed the Complainant that “Central Coast Locksmiths” was descriptive, and the other traders should be able to use “Central Coast Locksmiths”. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
On its own admission, the Complainant does not own any registered trademarks for “Central Coast Locksmiths”. The Complainant alleges that it has common law trademark rights in “Central Coast Locksmiths”. In order to successfully assert common law or unregistered trademark rights the Complainant must show that the “Central Coast Locksmiths” has become a distinctive identifier associated with the Complainant or its goods or services (i.e. that “Central Coast Locksmiths”has acquired a secondary meaning) (see e.g. Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean,WIPO Case No. D2013-1883).
It does not appear to be in doubt between the parties to this dispute that “Central Coast” is a geographical location in New South Wales For example, the Complainant states in the Complaint:
“The Complainant's services are provided throughout the geographic area known as
the Central Coast of New South Wales. The Complainant’s main customer base is
centered in and around the town of Gosford, New South Wales, although the Complainant also provides services to customers throughout the Central Coast region
and as far away as Sydney to the south and Newcastle to the north.”
The geographic name “Central Coast” cannot function as a trade mark “unless its geographical significance is shown to have been displaced by long and extensive use as a brand by a single trader in such a manner as to distinguish that trader’s goods and services from those of competitors” (see e.g. The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven,WIPO Case No. DAU2003-0001 and HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc.,WIPO Case No. D2002-0754).
The descriptive term “Locksmiths” cannot add distinctiveness to the geographical indicator “Central Coast”. The Panel accepts the Respondent’s submission that the following passage from the judgment of Kitto J of the High Court of Australia in Clark Equipment Company v. Registrar of Trade Marks (1964) 111 CLR 511 is apposite:
“The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if the goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there.”
Additionally, paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, WIPO Overview 2.0 states (“WIPO Overview 2.0”):
The report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms under the UDRP. Some geographical terms, however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning).
In order to establish secondary meaning, the Complainant has provided limited evidence of advertising: two recent Yellow Pages advertisements, a letter from Sensis stating that ads had been placed in the Yellow Pages since 1980 and photographs of signage and branding on vehicles and at a trade exhibition. It also annexed undated stationary featuring the name “Central Coast Locksmiths”. As noted by the Respondent, some of this evidence postdates the registration of the Disputed Domain Name, or is undated. However, this does not prevent a finding of trademark rights for the first element of the Policy (see WIPO Overview 2.0, paragraph 1.4), but the date that any reputation was established may be relevant in respect of the third element of the Policy.
The Panel has reviewed the evidence presented by the Complainant and considers it to be insufficient to establish secondary meaning. Evidence of the length and amount of sales under the alleged trademark, extensive advertising, consumer surveys and media recognition would have been more compelling (see WIPO Overview 2.0, paragraph 1.5).
In short, in relation to this Complaint, the evidence on the record is not sufficient to persuade this Panelist that the unregistered mark “Central Coast Locksmiths” suffices as a trademark for the purposes of the Policy. The evidence does not show that the mark distinguishes the goods or services of the Complainant in trade from the goods or services of any other person in trade. Rather, this Panel finds that the mark is descriptive of a geographical location, in this case the central coast region of New South Wales. Thus, there are likely to be many traders providing goods or services in or relating to the central coast region who would have a bona fide interest in using the unregistered mark “Central Coast” in relation to those goods or services. In these circumstances, based on the evidence before the Panel, the unregistered mark “Central Coast Locksmiths” is not considered as a trademark for the purposes of the Policy.
See also Brisbane City Council v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2001-0047.
This finding reflects the difficulties associated with holding a descriptive domain name, including the confusion that may arise. These difficulties were eloquently encapsulated by Stephen J of the High Court of Australia in Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.
As the Complainant has failed to establish the first element of the Policy, the Complaint must fail. The Panel does not need to address the remaining elements of the Policy.
The Panel notes that the Complainant has a pending trademark application, Australian Application No. 1508928, for “Central Coast Locksmiths”. This application has been accepted by the Australian Trade Marks Office on the basis of section 41(6) of the Trade Marks Act. The Respondent states that he will oppose registration of this mark by the Complainant. The Panel also notes that there are over 30 Australian trademark registrations that include “Central Coast” as part of the mark.
If the Complainant’s Australian trademark application becomes a registration, then it will be open for the Complainant to file a new UDRP complainant, and the panel considering that new complainant may decide to take the new trademark registration into account. See Alpine Entertainment Group, Inc. v. Walter Alvarez,WIPO Case No. D2007-1082. B. Reverse Domain Name Hijacking
The Panel makes no finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith” against a respondent. The Complainant does not appear to have acted in bad faith. The issues raised in this dispute were complex and not straightforward. The Complainant has made out a very arguable case, and the facts do not support a finding that the Complainant brought the case knowing that all of the elements would not be satisfied. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: March 17, 2014
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