The Complainant is Tunbridges Window Furnishings Pty Ltd of Wendouree, Victoria, Australia, represented by Cooper Mills Lawyers, Australia.
The Respondent is Roma Consulting Pty Ltd of Ballarat, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2015. That day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015. The Respondent did not submit a timely response. Accordingly, the Center notified the Respondent’s default on October 26, 2015.
The Center received an email communication sent on behalf of the Respondent on October 26, 2015, stating “To be clear - we have not renewed the domain and no longer want the domain. We consider the matter closed.” On October 27, 2015, the Center acknowledged receipt of the email and invited the parties to find a possible settlement. The Respondent submitted further emails on October 28 and 29, 2015. At the request of the Complainant the Center commenced the Panel appointment process on October 30, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 4, 2015. 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 Complainant and its predecessors in business have been selling window furnishings from premises in Ballarat in Australia since approximately 1904 and using the name “Tunbridges” since 1924, for which it claims common law trademark rights. The Complainant acquired the business in 2002, registered the Domain Name on February 26, 2009 and used it to trade via the website “www.”.
The Complainant is the proprietor of Australian registered trademark TUNBRIDGES, No. 1647348, registered on August 3, 2015, with a priority date of September 17, 2014.
The Complainant having failed to renew the Domain Name registration, the Respondent registered the Domain Name on or about April 15, 2014. The Domain Name redirected visitors to a website advertising goods competing with the Complainant.
Since about October 2014, the Domain Name has resolved to a landing page at “www.”, offering fabrics and window furnishings. 5. Parties’ Contentions A. Complainant
The Domain Name is identical to the Complainant’s TUNBRIDGES trademark, in which the Complainant claims both registered and common law rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name because there is no evidence that, prior to being put on notice by the Complainant of the dispute on or about May 5, 2014, the Respondent had used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; has ever been known by the Domain Name; and has made noncommercial or fair use of the Domain Name.
The directors of the Respondent are also directors of Taylor & Stirling Pty Ltd (“T&S”).
The Domain Name was registered and is being used in bad faith to promote T&S and its window furnishings to consumers searching for the Complainant.
As to registration, the directors of the Respondent, who operate T&S (established in 1946) in competition with the Complainant (established in 1924), registered the Domain Name in bad faith with knowledge of the Complainant and its reputation. They attempted to conceal their association with T&S by registering the Domain Name in the name of Roma Consulting Pty Ltd, a provider of “IT services”.
The term Tunbridges is distinctive and is not in common use. It is inconceivable that the Respondent and its directors could have honestly selected the Domain Name and used it in connection with the same goods offered by a competing business in the same locality.
As to use, the Respondent initially used the Domain Name to redirect consumers searching for the Complainant to “”, the website of a competing window furnishing seller in Ballarat, T&S, located 2.1 kilometers from the Complainant’s premises. After being put on notice, the Respondent registered the business name “Tunbridges Holdings”. This appears to be a device to purport to establish rights in the Domain Name in order to thwart the Policy.
After being put on notice for a second time, the Respondent made the Domain Name resolve to the “www.” landing page which contains the bold text phrase “Looking for Blinds and Curtains Ballarat”. The phrase is actually a hyperlink which resolves to the T&S website. The “www.” landing page also includes an email address for “further information” which is controlled by the Respondent, being “[ ]@”. This appears to be an attempt to elicit email leads from consumers seeking the goods of the Complainant.
In an attempt to show that the Domain Name is not a reference to the Complainant, the Respondent has titled the landing page “Tunbridges Holdings”, which features an image of a bridge, presumably to suggest that the Domain Name is a descriptive reference to bridges.
The Respondent has also hijacked the “Google Place” profile of the Complainant and linked the Domain Name to the profile. As stated, the landing page contains a hyperlink to the T&S website and contains an email address controlled by the Respondent, which may be used to divert consumers intended for the Complainant to the Respondent or T&S. Consumers searching for the Complainant using Google may visit the landing page linked to its Google Place profile assuming it is the official website of the Complainant and may be discouraged from purchasing goods from the Complainant. B. Respondent
The Respondent did not reply formally or within time to the Complainant’s contentions. Its informal submissions do not explicitly address the three elements set out in the next paragraph but emphasize that the Complainant allowed the Domain Name registration to expire and that the Respondent subsequently acquired it at auction.
Moreover, the Respondent stated that T&S “has no legal ownership of this domain and that “the entity that owns the domain is Roma Consulting Pty Ltd for the Roma Family Trust”. 6. Discussion and Findings
In accordance with paragraph 4(a) the Policy, a complainant requesting the transfer of a domain name must prove the following three elements: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. A. Identical or Confusingly Similar
Shortly before the Complaint was filed, the Complainant became the registered proprietor in Australia of the trademark TUNBRIDGES in connection with window furnishings. This satisfies the low threshold “standing” requirement of the Policy, paragraph 4(a)(i).
The Complainant asserts common law rights in that mark and has provided evidence of advertising under the “Tunbridges” name dated 1924 and 2009 proving that, prior to the filing of the Complaint, it and its predecessors in business have provided window furnishings under the unregistered TUNBRIDGES mark and thereby acquired a reputation such that members of the public in the area of Ballarat would associate those goods with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant has proved to the satisfaction of the Panel that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a UDRP proceeding against the Respondent.
It is well established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; and that generally the specific Top-Level of the domain name, in this case “.com”, does not affect the Domain Name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
Accordingly, the Panel finds the Domain Name to be identical to the TUNBRIDGES mark, in which the Complainant has both registered and common law rights. B. Rights or Legitimate Interests
The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in the Domain Name: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753.
The fact that the Respondent acquired the Domain Name at auction following the Complainant’s failure to renew its registration does not demonstrate to the Panel that the Respondent has any rights or legitimate interests in the Domain Name.
The further fact that the website at the Domain Name currently resolves to a landing page apparently offering goods and services competitive with those of the Complainant does not confer rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Those circumstances include:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
There is no dispute that the directors of the Respondent are also directors of T&S, which for many years has operated a competing window furnishings business in Ballarat (only 2.1 kilometres from the Complainant’s window furnishings business). The Panel finds that the Respondent, through its directors, was well aware of the Complainant and its TUNBRIDGES trademark when registering the Domain Name and that, by redirecting visitors to the T&S website, currently via the hyperlink at “www.”, it has used the Domain Name intentionally in the manner described in the Policy, paragraph 4(b)(iv).
Accordingly, the Panel finds the Respondent registered and is using the Domain Name in bad faith. 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.
Alan L. Limbury
Sole Panelist
Date: November 13, 2015
Full & Egal Universal Law Academy