The Complainant is WesTrac Pty Ltd of South Guildford, Western Australia, Australia, represented by Clayton Utz Solicitors, Australia.
The Respondent is Domain Asset Holdings, LLC of Orem, Utah, United States of America (“USA”), represented by Erika L. Sullivan, USA. 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 November 19, 2014. On November 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 20, 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.
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 December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Response was filed with the Center December 15, 2014.
The Center appointed Tony Willoughby, David Stone and Michael J. Spence as panelists in this matter on January 19, 2015. The Panel finds that it was properly constituted. Each member of 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.
On January 19, 2015 the Complainant requested the opportunity to file a further submission in response to the Response. The Panel has been given no reason why it should exceptionally allow a further submission from the Complainant and denies the request. 4. Factual Background
The Complainant has been engaged in the supply of a wide range of machinery and construction equipment and ancillary services for over twenty years. It has traded under its present name, WesTrac Pty Ltd, since 1998. Its principal areas of operation are Australia and north east China.
The Complainant is the registered proprietor of a number of Australian and United States trade mark registrations comprising or including the WESTRAC name. For present purposes it is only necessary to mention two of those registrations, namely Australian Registration No. 1172596 dated January 11, 2008 WESTRAC (word) for a variety of services relevant to its business in classes 35, 37, 39 and 41 and United States Service Mark Registration No. 4352606, registered on June 18, 2013 WESTPAC (word) for a similar set of services in classes 35, 37, 39 and 41.
The Domain Name was first registered in the name of what appears to be an associated company of the Complainant, WesTrac Equipment Pty. Ltd., on February 22, 2000. From then until February 2012 the Administrative Contact for the Domain Name was an employee, Mark Curtis.
Following Mark Curtis’s departure from the company the Domain Name registration was allowed to lapse on February 22, 2012. It was acquired by Domain Registrar of West Jacksonville Florida, USA on February 24, 2012 and was acquired by the Respondent on a date prior to April 8, 20121 . The Domain Name is connected to a website promoting the sale of domain names and offering the Domain Name for sale for USD 50,000.
The Respondent is a company based in Utah, USA. It is engaged in the business of acquiring and selling domain names. It uses the services of its sister company, D to manage the domain names it owns.
The Respondent has been involved as a respondent in six previous cases under the Policy and in each of those cases transfer of the domain names in question was ordered. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its WESTRAC registered trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Complainant having granted no permission to the Respondent to use its registered mark and none of the examples set out in paragraph 4(c) of the Policy being applicable.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(i) of the Policy. The Complainant contends that the Respondent’s purpose in acquiring the Domain Name was to sell it at a profit and that the price of USD 50,000 is “absurd”. The Complainant also contends that the Respondent has made a habit of registering other companies’ well-known names as or as part of domain names and points to six previous cases under the Policy in which the Respondent has featured as a losing respondent. B. Respondent
The Respondent denies that the Domain Name is identical or confusingly similar to any relevant trade mark of the Complainant. It contends that the Complainant’s application for a trade mark registration in the USA was a bad faith application filed on April 19, 2012 only a few days after the Respondent acquired the Domain Name and merely designed to give the Complainant a basis for complaint against the Respondent which is resident in the USA. It contends that the Australian registrations of the Complainant are of no relevance in this dispute as the Respondent is resident in the USA.
The Respondent contends that it has rights and a legitimate interest in respect of the Domain Name. It cites various previous decisions under the Policy which it contends support the proposition that its service offering at the website connected to the Domain Name constitutes a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent denies that the Domain Name was registered and is being used in bad faith. It states that it had never heard of the Complainant when it acquired the Domain Name and had no reason to have done so given that the Complainant’s areas of activity are in Australia and north east China and any trade mark rights acquired by the Complainant in the USA were acquired after the Respondent acquired the Domain Name and on an intent to use basis. In other words, the Complainant had no pre-existing business in the USA of which the Respondent should have been aware.
The Respondent criticizes the Complainant for not having contacted the Respondent when it learned that the Domain Name had been allowed to lapse. Instead, the Complainant filed a United States trade mark application and launched this administrative proceeding without any warning letter.
The Respondent asserts that trading in domain names is a legitimate commercial activity and observes that the Complainant has produced no evidence of any kind to suggest that the Respondent had the Complainant in mind when acquiring the Domain Name. 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
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s WESTRAC trade mark. The Complainant has not annexed to the Complaint any extract from the Australian or United States registry databases to verify its trade mark rights as set out in the Complaint, however it provided the registration numbers for these which the Panel was able to verify.
The Domain Name comprises the Complainant’s WESTRAC trade mark and the generic Top-Level Domain “.com”. In assessing identity and confusing similarity for this purpose it is permissible for the Panel to ignore the top level identifier.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Given the Respondent’s contentions in this regard as set out in paragraph 5B above, the Panel points out that in proceedings under the Policy it is sufficient for the purposes of this the first element of the Policy that the Complainant merely establishes the existence of a trade mark right. The fact that the right in question does not extend to the Respondent’s home jurisdiction or post dates the acquisition of the Domain Name by the Respondent is generally irrelevant under this element of the Policy. It may, however, be of relevance to the second and/or third elements of the Policy. C. Rights or Legitimate Interests
While it is incumbent upon the Complainant to prove all three elements of the Policy, it is now well-established that for proof of this the second element, which involves proving a negative, it is sufficient in the first instance for the Complainant to make out a prima facie case calling for an answer from the Respondent. It is then for the Panel to assess the sufficiency of the Response.
The Complainant contends that its trade mark WESTRAC is distinctive and well-known such that a search engine search for the term will identify the Complainant’s business. The Complainant contends that the Respondent acquired the Domain Name for the purpose of selling it to the Complainant and draws attention to the Respondent’s track record in cases under the Policy. The Complainant also points to the price at which the Respondent is offering the Domain Name for sale, namely USD 50,000, which it contends can only be a price reflecting the trade mark value of the Domain Name.
The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy.
The Respondent’s answer is that it is a dealer in domain names, but that buying domain names for the purpose of selling them is a perfectly legitimate commercial activity. The Respondent denies that it intentionally acquired the Domain Name for the purpose of selling it to the Complainant. It observes that at the date of acquisition of the Domain Name the Complainant had no trade mark rights in the USA and had no presence in the USA, thus there was no reason for the Respondent to have heard of the Complainant. The Respondent denies that it was aware of the Respondent at that time. It states that this is part of a group of 4,500 “geographic (specifically directional) related domain names that contain the terms ‘North’, ‘South’, East’ and ‘West’” in its portfolio of domain names and cites as other examples, , , , , and .
The Panel accepts that it is possible for a domain name dealer to acquire rights and legitimate interests in respect of its domain names on the basis of a bona fide business offering, but intentionally to price those domain names on the basis of their trade mark value goes beyond the bounds of a bona fide offering of goods or services for the purposes of paragraphs 4(a)(ii) and 4(c)(i) of the Policy.
In the view of the Panel the name “Westrac” does not readily fall into the directional geographic category cited by the Respondent. Unlike the examples cited by the Respondent the Domain Name is meaningless. The Respondent does not give a meaning for “rac”. It merely states that “the letters ‘RAC’ could be the abbreviation for a number of organizations and entities”.
The Panel finds on the balance of probabilities that the Respondent knew that WESTRAC was a trade mark and priced the Domain Name accordingly. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent acquired the Domain Name primarily with a view to selling it to the Complainant or a competitor at a profit.
The Respondent admits that it acquired the Domain Name primarily with a view to selling it to a purchaser at a profit, but denies that it had the Complainant in mind, because it was unaware of the Complainant at that time.
If the Complainant is to succeed under this head, the Panel either has to disbelieve the Respondent or take the view that in the circumstances of this case while the Respondent may not have been expressly aware of the Complainant, it is to be taken to have exercised a form of willful blindness and therefore to be deemed to have known that if it had conducted a simple search it would have identified the Complainant as the owner of the WESTRAC trade mark.
The Panel takes the view, on the balance of probabilities, that the Respondent had actual knowledge of the Complainant’s trade mark. The Panel dismisses the Respondent’s point about the geographical presence of the Complainant. The online world crosses geographical boundaries. Moreover the Panel is also unimpressed at the Respondent’s attempt to squeeze the Domain Name into its geographic portfolio, a portfolio into which it does not readily fit for the reason given above. It was obviously a trade mark. Finally, a reading of the previous cases in which the Respondent has been involved shows a track record of registering the names and trade marks of others and then pricing them at a level commensurate with their trade mark value to those complainants.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(i) 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Presiding Panelist
David Stone
Panelist
Michael J. Spence
Panelist
Date: January 23, 2015
1 These details were extracted from DomainTools search results annexed to the Complaint.
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