The Complainant is Rack’ n Stack Warehouse (Admin) Pty Ltd of Bohle, Queensland, Australia, represented by Wynnes Patent and Trademark Attorneys, Australia.
The Respondent is Chris Carrol, The Rack N’ Stack Warehouse SEQLD of Yatala, Queensland, Australia, represented by Fisher Adams Kelly Callinans, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TPP Wholesale Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 4, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was February 24, 2016. The Response was filed with the Center on February 24, 2016.
The Center appointed John Swinson as the sole panelist in this matter on March 2, 2016. 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 is Rack’ n Stack Warehouse (Admin) Pty Ltd. The Complainant provides racking, shelving and other storage solutions to customers in north Queensland and the Northern Territory.
The Complainant owns Australian registered trade mark number 1371118 for THE RACK’NSTACK WAREHOUSE in stylized form:
(the “Trade Mark”). The Trade Mark was registered on July 8, 2010. The Complainant has provided evidence of the registration.
The Complainant operates a website for its business at .
The Respondent is the director of The Rack’nStack Warehouse SEQLD Pty Ltd. The Respondent offers the same goods and services as those of the Complainant, but to customers in south-east Queensland and New South Wales.
The relationship between the Complainant and the Respondent is factually complex. Briefly, it appears that the Complainant and the Respondent each legitimately purchased separate “branches” of the same business from the original owner of the business (the “Original Owner”) at different times. As a result, the Complainant and the Respondent provide the same goods and services using the same branding in separate geographical locations.
The Disputed Domain Name was registered on March 8, 2012. The website at the Disputed Domain Name is the primary website for the Respondent’s business. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant provides details of its successful opposition to a trade mark application that was filed by the Respondent.
Rights or Legitimate Interests
The Complainant made some statements in respect of the first element of the Policy which could possibly be considered as directed at the second element of the Policy. This was confirmed by the Complainant through the Complainant’s submission of the amended Complaint in response to the Center’s deficiency notification.
Registered and Used in Bad Faith
The Disputed Domain Name was registered and used in bad faith for the purpose of attempting to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website.
The Respondent has no proprietary rights to the trade mark on which the Disputed Domain Name is based. The Respondent became aware of this on December 22, 2014 when the Australian Trade Marks Office refused to accept the Respondent’s trade mark application (which was identical to the Trade Mark) following opposition by the Complainant.
The Respondent continues to trade using this trade mark, which leads to confusion in the market.
The Complainant refers to a number of statements in a statutory declaration by the director of the Complainant, which was filed in support of the Complainant’s opposition to the Respondent’s trade mark application, in relation to the Respondent’s trade mark application being made in bad faith. B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is not , and as such is not identical to the Trade Mark. As the Disputed Domain Name does not include the words “the” or “warehouse”, the Disputed Domain Name is not confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent adopted Rack’nStack Warehouse as a trade mark as a result of the purchase of the Rack’nStack business, including goodwill, from the Original Owner.
The Respondent registered the Disputed Domain Name in 2012, and has used the Disputed Domain Name continuously since that time, after its previous domain name was wrongly transferred to the Complainant without the Respondent’s knowledge.
The Respondent has legitimate interests in the Disputed Domain Name, which the Respondent uses in operating its business.
Both parties purchased legitimate businesses from the Original Owner. There is no evidence that the common law trade mark established by the Original Owner was transferred to the Complainant and subsequently licensed back to the Original Owner.
Registered and Used in Bad Faith
The Disputed Domain Name was not registered or acquired for the purpose of selling to the Complainant or a competitor, to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, or to disrupt the Complainant’s business. The parties coexist and operate in their respective jurisdictions.
The Respondent did not register the Disputed Domain Name to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the website. The Respondent registered and continues to use the Disputed Domain Name to operate a legitimate business.
The Complainant is wrongfully attempting to assert control over the Respondent and his business operations. 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 to 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.
The onus of proving these elements is on the Complainant. 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 the Trade Mark.
The Trade Mark is a figurative mark which features stylized text along with some shapes which presumably depict racks or shelving.
Generally, as design elements are not capable of being represented in a domain name, these elements of a trade mark can be ignored for the purpose of assessing identity or confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11). The design elements of the Trade Mark are not so prominent or distinctive so as to consider the Trade Mark to be incapable of distinctiveness without these elements.
The Panel finds that, for the purposes of the Policy, the Disputed Domain Name is confusingly similar to the Trade Mark. The Panel considers that the dominant and distinctive element of the Trade Mark is the term RACK’NSTACK, and the omission of the terms “the” and “warehouse” from the Disputed Domain Name do not sufficiently distinguish the Disputed Domain Name from the Trade Mark.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.
The Complainant has provided submissions which do not clearly relate to the Respondent’s lack of rights or legitimate interests. Presumably, for this element, the Complainant intends to rely on its assertion that the Respondent has no rights to the Trade Mark.
Based on this limited evidence, the Panel finds that the Complainant has failed to make out a prima facie case on this element. That the Complainant was successful in a trade mark opposition proceeding concerning a mark that is different to the Disputed Domain Name does not demonstrate that, for the purposes of the Policy, the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name.
Further, the Panel considers that the submissions provided by the Respondent in relation to his rights to or legitimate interests in the Disputed Domain Name do demonstrate that the Respondent has rights to or legitimate interests in respect of the Disputed Domain Name.
Rights or legitimate interests can be demonstrated in a number of ways, including by the Respondent having been commonly known by the Disputed Domain Name (paragraph 4(c)(ii) of the Policy). The Respondent demonstrated to the satisfaction of the Panel that the Respondent is the director of The Rack’nStack Warehouse SEQLD Pty Ltd. He has been operating a genuine business under this company name since June 10, 2009, when he purchased the Original Owner’s south-east Queensland business. From May 22, 2008, he was operating a business under a similar name (which incorporated the term “Rack’nStack”), with permission from the Original Owner, in northern New South Wales.
The Panel finds that the Respondent has been commonly known by the Disputed Domain Name for purposes of the Policy. The Respondent has demonstrated his rights to or legitimate interest in the Disputed Domain Name.
The Complainant does not succeed in establishing the second element of the Policy. C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element. However, the Panel will do so briefly for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent both registered and subsequently used the Disputed Domain Name in bad faith.
The Panel considers that the Respondent registered the Disputed Domain Name for the purpose of operating a legitimate business, which he legitimately purchased from the Original Owner. The Respondent did not register the Disputed Domain Name for the purpose of attracting the Complainant’s customers, or to cause customer confusion, but to attract his own customers and to reflect his company name. Any evidence of actual customer confusion because the Complainant and the Respondent are trading under similar names is not of itself determinative of bad faith registration or bad faith use of the Disputed Domain Name.
The entire Complaint appears to be based on the premise that the Complainant should succeed under the Policy because the Complainant successfully opposed a trade mark application filed by the Respondent. However, this opposition has no bearing on whether or not the Respondent has the right to register and use the Disputed Domain Name.
The Respondent provided good evidence to demonstrate that the Disputed Domain Name was not registered in bad faith or used in bad faith.
The Panel also notes that the materials provided to the Panel in these proceedings, including correspondence between lawyers, shows that there is a long running trade mark dispute between the parties. Part of this dispute arises from an agreement in 2008, in which the Complainant appears to agree to transfer the Australian registered business name “The Rack N Stack Warehouse” to the Original Owner, even though the Complainant is not party to the agreement.
It is well established that the Policy is not designed to address complex business disputes (see, e.g., Ruff Roofers, Inc., Ruff Roofing, Inc. and Roofing by Ruff, Inc. v. Jean Ruff,WIPO Case No. D2014-1755 and UTVG Europe Holding B.V. v. Vitali S,WIPO Case No. D2014-1345). Both parties have purchased legitimate, ongoing businesses from the same Original Owner, and both parties have continued to trade under the same trade mark for a number of years. It seems that the parties did so amicably for some time, but at some point the Complainant began attempting to assert that it had exclusive rights to the Trade Mark. This may or may not be the case.
As the panel in The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 stated, “[t]his Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”.
The Panel considers that the dispute raised in these proceedings forms part of a broader trade mark and business dispute which is not suitable for resolution under the Policy. D. Reverse Domain Name Hijacking
In coming to a decision, the Panel must have regard to paragraph 15(e) of the Rules, and the following passage in particular:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes and abuse of the administrative proceeding.”
Reverse Domain Name Hijacking (“RDNH”) is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent has not sought a finding of RDNH in this case. However, it is open to the Panel to make such a finding without a request from the Respondent. In fact, the Panel in Dumankaya Yapi Malzemeleri SAN. VE TIC. A.S v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2015-1757 stated that “[i]f abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it”.
The Complainant submitted a Complaint which was incomplete; it did not directly address the second element of the Policy, and told a selective story in relation to the background to the dispute. The factual background and relationship between the parties was described only in an annex to the Complaint and was not otherwise referenced by the Complainant. These facts are of central relevance to the questions of whether the Respondent has rights or legitimate interests and whether the Respondent registered and used the Disputed Domain Name in bad faith.
As stated by the Panel in Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc.,WIPO Case No. D2014-0557:
“When the Complainant filed the Complaint, the Complainant knew that there was no proper basis for the Complaint yet it went ahead and filed the Complaint. This alone merits a finding of RDNH. See Dextra Asia Co., Ltd. v. Lakeside Enterprises Limited,WIPO Case No. D2012-0403. In so doing the Complainant knew that it was accusing an innocent registrant of dishonesty (bad faith) in the hope that it could deprive the Respondent of the Disputed Domain Name. Moreover, the Complainant knew that if the Respondent were to retain the Disputed Domain Name, the Respondent would have to spend time and money and in all likelihood employ representation to defend itself. The Complainant also knew that even if it lost the case, it would not be called upon to compensate the Respondent”.
The Panel considers the Complainant launched the proceedings primarily to harass the Respondent and was also as an attempt at RDNH.
The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: March 16, 2016
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