The Complainants are F.F. Seeley Nominees Pty Ltd and Seeley International Pty Ltd of Lonsdale, Australia, and Convair Cooler Corporation d/b/a Seeley International (Americas) of Phoenix, Arizona, United States of America (the “USA”), represented internally.
The Respondent is Mike Morgan (aka Michael Morgan) of Elmsdale, Nova Scotia, Canada, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2014. On February 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 19, 2014, 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. On March 11, 2014, the Center received an informal communication from the Respondent. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 14, 2014.
The Center verified that the Complaint together with the amended 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 March 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2014. The Center informed the parties on April 9, 2014 about the commencement of the panel appointment process. On April 9, 2014, the Respondent sent an email communication to the Center. On April 16, 2014, the Complainant sent unsolicited supplemental filings to the Center by email. On April 16, 2014 the Respondent also sent a further unsolicited e-mail communication to the Center.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 17, 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 the Rules, paragraph 7. 4. Factual Background
The three Complainants are related entities (the first Complainant, F.F. Seeley Nominees Pty Ltd, is the sole shareholder of the second Complainant, and the third Complainant is a wholly owned subsidiary of the second Complainant) and are part of the same corporate group.
Seeley International Pty Ltd (“Seeley”) is incorporated and has its head office in Australia. Seeley is a manufacturer, wholesaler, distributor, and exporter of climate control solutions and other products. Although Seeley was incorporated as a company in 1992, the business it conducts has been operating for over 40 years. Seeley is Australia’s largest air conditioning manufacturer. It supplies the Australian and global residential, commercial, and industrial air-conditioning and heating markets with various product ranges. It currently exports its products to over 100 countries worldwide.
Seeley is part of a multi-national corporate group (“the Seeley group”). The sole shareholder of Seeley is F.F. Seeley Nominees Pty Ltd (“FFSN”), which is also incorporated and has its head office in Australia. Seeley has wholly owned subsidiaries through which it distributes its products in various countries around the world, including the USA, Spain, France, Italy, and the United Kingdom of Great Britain and Northern Ireland. Its wholly owned subsidiary in the USA is Convair Cooler Corporation doing business as Seeley International (Americas) (“Convair Cooler Corporation”).
There are arrangements within the Seeley group for the operation of the business. Under those arrangements, FFSN owns and authorizes Seeley to use (including to sub-licence) its trademarks.
The Seeley group has marketed a range of evaporative cooling and humidifier products under the “Climate Wizard” name from 2001. The “Climate Wizard” brand was first marketed by the Complainant in the following regions from at least as early as the following dates:
- USA:
September 30, 2001
- Canada:
November 1, 2002
- Australia:
June 16, 2003
- Europe:
December 18, 2003
With effect from 2002 various trademark applications for the words “Climate Wizard” in respect of evaporative coolers and certain other associated products, were applied for by the Complainants and subsequently granted, for example Convair Cooler Corporation lodged an application to register CLIMATE WIZARD as a trademark in the USA on August 29, 2002. The application was granted on April 13, 2004. The trademark (registered number 2832839) was later assigned by Convair Cooler Corporation to FFSN. Other registered trademarks owned by FFSN also exist in at least Canada, Australia, the European Union and South Africa.
The Domain Name was registered on October 10, 2004. It would appear that prior to this date the same domain name had been registered by one of the Complainants, namely Convair Cooler Corporation, but was allowed to lapse. The Complainants say this was a mistake and arose as result of employees leaving. The date when this happened is not known to the Panel.
The Domain Name has been used by the Respondent to resolve to a “pay-per-click” parking page which displays automatically generated links to other web pages which offer products or services provided by third parties. The precise nature of the links which are displayed upon visiting the web page located at the Domain Name depend upon tracking “cookies” derived from the specific browsers being used by visitors to the page. It is not disputed that the Respondent earns revenue as a result of this activity, though no details of the amounts have been provided. There is also a link on the web page to a further web page indicating that the Domain Name may be for sale. 5. Parties’ Contentions A. Complainant
The Complainants set out their case in considerable detail but in summary the principle points it relies upon are as follows:
The Domain Name is identical to a trademark in which they have rights, namely the CLIMATE WIZARD trademark.
The Respondent has no rights or legitimate interests in the name “Climate Wizard” and has not been authorized by the Complainants to use that name, it is not known under that name and it has not conducted any business of its own under that name.
The registration and use of the Domain Name is abusive in that it is utilizing the name and reputation of the Complainants to generate pay-per-click revenue. In this context the Complainants allege that the Respondent has registered thousands of domain names which are used in this way. They also allege that the Respondent is a “serial offender” and cite some 32 UDRP cases (filed with WIPO or otherwise) in which the Respondent has been found to have registered and used other domain names in bad faith. The Complainants allege that the Respondent either knew or ought to have known of their CLIMATE WIZARD trade mark when registering the Domain Name and that if he did not in fact know, that was a case of “willful blindness” and that in any event he is fixed with constructive notice of the trademark.
The Complainants also allege that the Respondent offering the Domain Name for sale, at what they infer will be an inflated price, is further evidence of bad faith.
The Complainants also rely on the previous UDRP cases against the Respondent as establishing a pattern of bad faith registration and use, such that the same is to be inferred in this case. They also note that some of these cases were prior to him registering the Domain Name in this case and infer he will have been well aware of the likelihood the Domain Name registration by him was abusive when he effected it.
The Complainants address in some detail the issue of delay in bringing the Complaint. They do not explain why this delay occurred but say it has not prejudiced the Respondent and is not a bar to the Complaint succeeding. They cite a number of previous UDRP cases in support of this argument. The Panel considers this issue further below. B. Respondent
The Respondent did not file a formal Response.
On March 11, 2014, the Respondent sent an email communication to the Center, stating the following out verbatim: “This is the first I have heard of any dispute. Could I get a copy of the complaint please.”
On April 9, 2014, following notification by the Center of failure to file a Response, the Respondent sent an e-mail to the Center. As it is very short it is convenient to set out verbatim its contents, as follows:
“[…]
1: I have never heard of the complainant.
2: I have owned this domain for 10 years.
3: Parking is a legitimate use of a domain: Eram, SA v's Vertical Axis Inc
4: No evidence that shows confusion. At least 2 other websites using the same name...
5: Links on shows climate data type subjects. No reference to air
condition units or the like.
6: I HAVE NEVER HEARD OF SEELEY INTERNATIONAL.”
On April 16, 2014, the Respondent sent a further e-mail to the Center. Again as it is short it is convenient to set its contents out verbatim, as follows:
“I have had this name for 10 years with no knowledge of the complainant. Why has it taken the complainant this long to come forward? Parking is a bona fide use of the name. How would the name be confusing to someone? Climate Wizard is not conducive to the complainant’s product as Apple is not to Washington Apples. If so, they would be going after the .org. but are not interested because it is a .org. Yes the name has a searchbox, I cannot control what a user types in but of course I expect relevant information to show up based on the search. Highly unlikely and cannot be proven that the one or two users per day are typing in air conditioning. Of course the lawyer for the complainant is, therefore manipulating the page and taking screenshots of the results.”
In circumstances where the Respondent has been in possession of the Domain Name for some years, and is unrepresented, the Panel proposes to exercise its discretion and admit these communications and treat them as being the Respondent’s Response. In view of the exercise of this discretion, the Panel also exercises its discretion and admits in evidence the Supplemental Filing the Complainants lodged on April 16, 2014, although nothing turns on the contents of this further document. 6. Discussion and Findings Preliminary Issues
Two preliminary points need to be addressed:
First the multiplicity of Complainants. Related companies in a group, as in the present case, may bring a joint complaint against a respondent so there is no objection to there being three Complainants in this case (see Grupo Televisa, S.A., Televisa, S.A. de C.V., Comercio Más, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. LaPorte Holdings,WIPO Case No. D2005-0590).
Second - is the admitted delay in bringing this Complaint a bar to the Complaint succeeding? The reasons for the delay have not been explained. The Panel has no doubt the Complainants must have been aware of the Domain Name and the Respondent’s ownership of it, since sometime before the filing of this proceeding, they have not sought to dispute this ownership for as many as ten years.
In this respect the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides as follows:
“Does delay in bringing a complaint prevent a complainant from filing under the UDRP?
Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant”.
The Panel adopts the approach that the doctrine of laches does not apply in the present circumstances. This approach has been adopted in previous panel decisions with similar delays – see for example Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560; The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 and The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. The Panel adopts the reasoning of the panels in those cases as being applicable to the present case.
The Panel reaches this conclusion in the present case given that there is no evidence, and the Respondent does not suggest that he is doing anything different with the Domain Name now than when he first registered it some years ago. Importantly, there is no evidence that the Respondent would have been harmed by any such delay. Nor is there any evidence that the Complainants have consented, either expressly or impliedly, to the Respondent’s use of the Domain Name. The position might be different in other circumstances, for example where a respondent successfully develops a business using a disputed domain name whilst the complainant takes some affirmative steps which indicate it does not object to the use in question. That is not the case here. All the Respondent has done is to leave the Domain Name being used in connection with an automatically created parking page, and generated pay-per-click revenue from it. The Complainants have not taken any action at all that might be said to be a consent to this activity. Accordingly, the Panel concludes that delay is not a relevant factor that bars this Complaint. Applicable Criteria
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The Panel finds that the Domain Name is identical or confusingly similar to the trademark CLIMATE WIZARD in respect of which the Complainants have rights. That is clearly the case and is not disputed by the Respondent.
Accordingly, the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
CLIMATE WIZARD is a brand that the Complainants sell their products under. It is a term which comprises the combining of two ordinary English words. The combination is, to the Panel’s mind, not a particularly obvious one, but equally not one that is so unusual it can only conceivably refer to the Complainants or their products. Whether others may also come up with the same combination of words and hence potentially be able to show their own rights and legitimate interest is a question of fact and degree. In the present case, there is no evidence that the Respondent has any independent rights in these words. He does, however, suggest that using these words for a parking page is itself a legitimate activity.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, its 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present case. The use of the Domain Name in respect of a parking page generating pay-per-click revenue, when that parking page is only created after the date that the Complainants’ rights has been established is not itself sufficient to generate an independent right or interest to the Respondent.
In this respect the Panel agrees with the consensus view as expressed in the WIPO Overview 2.0., as follows:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion”.
Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
It follows that the Complainants’ case turns on whether or not the Respondent has registered and used the Domain Name in bad faith. In this regard the Panel takes the view that there is nothing objectionable per se in a domain name being used for a parking page which generates “pay-per-click revenue”. This is subject to the view quoted above in the WIPO Overview 2.0., namely that this is provided there is “no capitalization on trademark value”. Further, there is nothing objectionable per se in a domain name being registered with a view to it being resold at a profit. Both of these are legitimate activities where a domain name is arrived at independently and without knowledge of another party having prior rights in a trade mark the same as or similar to the domain name in question. If however a domain name is registered with such knowledge then it is much more likely that the registration will be in bad faith, although each case will depend upon its facts.
In some cases where the relevant rights a complainant relies on are particularly well known, or particularly unusual, it is easy to infer that a registrant must have been aware of those rights when effecting the registration. Conversely, if the rights a complainant relies on are not well known, or are in a term which is not particularly unusual, then it may be much more difficult to infer that the registrant was aware of those rights. Each case depends upon its facts and it is necessary to consider the evidence in each case.
In the present case it seems to the Panel the rights in question, namely the trade mark CLIMATE WIZARD fall somewhere in the middle of the spectrum – they are not so unusual or, on the evidence, so extremely well known, as to allow an inference to be drawn that the Respondent must have been aware of them when he registered the Domain Name. Conversely, they are not in respect of a term which is so commonplace, or so obscure, as to allow an inference to be drawn that the Respondent cannot have been aware of them. Accordingly the question of the Respondent’s knowledge, if any, of the Complainants’ rights as at the date when he registered the Domain Name, which is the critical issue, turns on his evidence as to how and why he registered the Domain Name.
In this case, the Panel notes that the Respondent is unrepresented. However, the Panel also notes that the Respondent does not dispute he is the registrant of thousands of domain names and that he carries this out as his business i. e, he is a professional domainer. He also does not dispute that there have been at least 32 previous UDRP cases in which he has found to have effected “abusive registrations”, with some of these predating the date of registration of the Domain Name. The Panel infers that the Respondent has an extremely good awareness of the issues that arise when assessing whether or not a registration is abusive, and is well placed to put forward clearly whatever case he wishes to make. In this regard, the case made by the Respondent as to his lack of knowledge at the relevant date is a set out in his communications referred to above, namely “I have never heard of the complainant[.]” and “I HAVE NEVER HEARD OF SEELEY INTERNATIONAL” and “I have had this name for 10 years with no knowledge of the complainant”. Subjecting such informal communication to a detailed forensic examination is something to be approached with care, but it does seem to the Panel that in all the circumstances this is a surprisingly narrow expression of a case of independent derivation of the Domain Name, if that is indeed the Respondent’s case. It focuses entirely on the identity of the Complainants and the Respondent’s lack of awareness of their corporate name, without any mention of the trade mark in which they claim rights, CLIMATE WIZARD. The Respondent provides no explanation of how or why he chose that combination of words, or whether he had or had not been aware of products marketed under that trade mark, or of how he came to register the Domain Name after the Complainants inadvertently allowed it to lapse, or of whether he carried out any searches seeking to identify whether others had any rights in the term, or whether he was aware of any other web sites operated by the Complainants which included the words “Climate Wizard” as part of the domain name.
If this were the only case in which the Respondent had been involved, the Panel would have been less willing to infer these omissions are significant. However, given the Respondent’s “track record”, it seems to the Panel that the Respondent has had ample experience so as to be able to frame his case with care and provide a much fuller explanation. The Panel concludes that his failure to do so is significant, and again notes for example that while he claims not to know the Complainant, he does not say that he had never heard of their mark; this in the Panel’s view carries some weight against what may otherwise be a legitimate choice of name.
Taking this omission into account, on balance the Panel concludes the sophisticated Respondent should have or likely did have in mind the Complainants’ CLIMATE WIZARD trade mark when he registered the Doman Name and that he concluded that the association of a pay-per-click (“PPC”) web site with a domain name which was identical or similar to that trade mark would be of economic benefit to him. That is a registration and use which is in bad faith. In this regard the Panel agrees with the reasoning of the Panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc. WIPO Case No. D2007-1141, where it stated:
“[…] In this context, registrants that run PPC landing page businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up PPC advertising related to those trademark rights. As the [p]anel noted in the related context of automatic registration of domain names for resale:
‘respondents cannot . . . shield their conduct by closing their eyes to whether domain names they are registering are identical or confusingly similar to trademarks. . . . Where . . . a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.’
Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304.
Applying these principles to the facts of this case, the [p]anel concludes that it is reasonable to infer, based upon the circumstantial evidence available, that [r]espondent, a sophisticated party in the PPC landing page business, must have been aware of the relevant trademark. Accordingly, the [p]anel finds that [r]espondent registered and used the Disputed Domain Names in bad faith.”
The Panel considers that analysis is equally applicable to the present facts. Accordingly, the Panel finds that given the facts above including the Respondent’s brief reply, on balance the Respondent registered and used the Domain Name in bad faith. In view of this finding it is not necessary to consider further the other arguments advanced by the Complainants in this case. 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 First Complainant.
Nick J. Gardner
Sole Panelist
Date: May 5, 2014
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