The Complainants are GBI Prosperities Pty Ltd. (the “First Complainant”) and Dr Grow It All Sales Pty Ltd. (the “Second Complainant”) of Eumundi, Queensland, Australia, represented by Rouse Lawyers, Australia.
The Respondent is Private Registration of Sydney South, New South Wales, Australia / Dave Lovegrove, Real Estate Educational Programmes of Noosaville, Queensland, Australia, represented by Steven Rinehart, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names and are registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 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. The Center received informal email communications from the Respondent on May 14, 2016, and May 17, 2016.
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 May 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2016. The Response was filed with the Center on June 3, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 9, 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
Both disputed domain names were registered on May 28, 2010. It is not in dispute between the Parties that both disputed domain names were registered by the Second Respondent (hereafter the “Respondent”).1 Also on May 28, 2010, the name “Dr Grow It All” was registered as a business name by the Respondent’s wife.
According to the Complainants, the business name was registered in connection with a plan to commercialise an organic liquid fertiliser product. This business was, or was to be, conducted by a Mr. Hood and the Respondent. (Mr. Hood is now a director of both Complainants). This version of events is disputed by the Respondent, who claims that the Dr Grow It All business was unrelated to his dealings with Mr. Hood and the latter’s associates.
On October 11, 2010, two companies were incorporated. One company was Dadcav Pty Ltd. The second company was the Second Complainant. As noted above, Mr. Hood is now the sole director of the Second Complainant, but the Respondent was formerly a director also. Both Mr. Hood and the Respondent were directors of Dadcav Pty Ltd.
On October 13, 2010, Dadcav Pty Ltd was registered as jointly carrying on the business of Dr Grow It All with the Respondent’s wife. However, on November 23, 2010, the business name was transferred to the Second Complainant so that the Second Complainant apparently became solely carrying on the business.
On December 12, 2011, the First Complainant was incorporated. Mr. Hood and his wife are, and have been, the only directors of the First Complainant. Between them Mr. Hood and his wife own 50,002 shares in the First Complainant. The Respondent and his wife own between them two shares in the First Complainant.
On December 12, 2012, the First Complainant applied to register the trademark DR GROW IT ALL in the United States in respect of fertiliser. This trademark was registered on December 2, 2014.
On December 19, 2012, a further company, Global Boss International Pty Ltd, was incorporated. Mr. Hood and his wife are two of the five directors. The five directors or interests associated with them are the only shareholders in this company. Neither the Respondent nor his wife are directors or shareholders of this company. Also on December 19, 2012, the First Complainant granted Global Boss International the exclusive right throughout the world to carry on business under the name “Dr Grow It All”. Global Boss International then granted the Second Complainant the exclusive right to use the name “Dr Grow It All” throughout Australia.
On June 17, 2014, the Second Complainant applied to register, and has now registered (as of January 14, 2015), the trademark DR GROW IT ALL in Australia in respect of fertiliser products.
According to the Complainants, the trademark DR GROW IT ALL has been continuously in use since its adoption in or about May 2010. The Complainants say that thousands of units of the product have been sold by reference to the trademark since then. The Complaint includes two invoices in support of that claim, both dated in September 2010 and a recent significant sale was an order of 15,000 units supplied to Aldi. The information submitted to the United States Patent and Trademark Office declared that the first use of the trademark occurred in September 13, 2010, and the first use in commerce in the United States occurred on October 1, 2011.
The Respondent was removed from his position as a director of the Second Complainant on July 16, 2012. According to the Complainants, this was because they considered he was not acting in the best interests of the business that he and Mr. Hood had set out to carry on. One aspect of the matters on which they rely to support that claim is the Respondent’s alleged failure to transfer the disputed domain names to the Complainants in accordance with the agreement that the Complainants say had been reached between Mr. Hood and the Respondent when setting up the venture.
Neither disputed domain name has apparently resolved to an active website. However, at least during May 2013, the Respondent was offering the first disputed domain name for sale for a price of “$2 million”.
The Panel also notes that Mr. Hood has previously brought a complaint under the Policy against the Respondent in respect of the first disputed domain name: Danny Hood v. Private Registration/ Real Estate Educational Programmes / Dave Lovegrove,WIPO Case No. D2013-0723. That complaint was unsuccessful. 5. Discussion and Findings A. A refiled complaint?
The first question is whether the Complaint should be treated as a refiled Complaint and, if so, allowed to go forward.
There is no provision in the Policy dealing expressly with this issue. Conscious of the potential for well-resourced complainants to harass potential respondents by repeated filings following an unsuccessful complaint, UDRP panels have exercised their powers under the Policy to reject further complaints over the same domain name against the same respondent in the interests of finality and certainty, bearing in mind that no decision under the Policy precludes a party from pursuing its grievance in an appropriate court. The basic position is fairly summarized in paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.”
Essentially, this requires a complainant which refiles a complaint to show some sufficient reason why it should be allowed to go forward.
In the present case, the Complainants rely on the fact that they are different legal entities to the individual, Mr. Hood, who brought the earlier complaint. They also rely on the fact that Mr. Hood was self-represented and so, they say, did not adequately present his case. In fact, the Complainants go so far as to say his case was so badly presented that it should have been rejected in the first place as even constituting a valid complaint under the Policy without adjudication on the merits. The learned panelist who dismissed the earlier complaint noted that it met the requirements of paragraph 3(b)(ix) of the Rules “even if barely”. The Complainants also point out that the earlier complaint did not involve the disputed domain name .
As noted above, Mr. Hood is a director of both Complainants; the sole director of the Second Complainant and, with his wife, one of the two directors of the First Complainant. He is also a very substantial shareholder in both. This was also the case when the earlier complaint was filed. As is clear from the decision on the earlier complaint, the interest which Mr. Hood was seeking to protect is the interest the Complainants now invoke in the trademark DR GROW IT ALL (at that time unregistered). The earlier complaint was not rejected, however, because Mr. Hood lacked standing. Rather, it was rejected because the earlier complaint failed to provide evidence of trademark rights subsisting before the disputed domain name was registered.
In these circumstances, the Panel would not be willing to allow the fact that Mr. Hood was the complainant, rather than the companies of which he was, and still is, the principal director and a major shareholder, to provide sufficient basis for what is in effect a refiling.
Nor would the Panel accept the fact that Mr. Hood chose to represent himself (and his companies) rather than seeking professional advice as a sufficient reason to allow a refiling. Such a device would be too readily open to abuse and in any event still exposes the respondent to double harassment.
At the time of the earlier complaint, neither of the trademark registrations owned by the Complainants were registered. However, neither of them confers rights on the basis of registration before the disputed domain names were registered as they were registered several years later. While that is not a bar to the Complainants establishing the first requirement under the Policy, it does not assist them in overcoming the grounds on which the earlier complaint was rejected.
The Complaint also includes two invoices to support the claim to common law trademark rights arising from May 2010. The two invoices, however, date from September 2010; four months after the disputed domain names were registered. The invoices also direct that payments be made to the Second Complainant although it was not incorporated (i.e., brought into existence) until about a month later. How the Second Complainant came to be issuing invoices and directing payment into its bank account before it had even been incorporated is not explained.
It might be possible for the problem of priority to be met by showing that the trademark was decided upon and used earlier. Indeed, the Complaint does now allege that Mr. Hood and the Respondent were acting together in a project to start up a business under the name “Dr Grow It All” in May 2010. The Complaint alleges that the Respondent registered the disputed domain name in breach of that arrangement. That of course was information that could and should have been brought forward at the time of the earlier complaint. The Panel would not be willing to allow a refiling of a complaint on this basis. Also, as noted above, the Respondent disputes this claim. He claims that his plans for the Dr Grow It All business were independent of his dealings with Mr. Hood. How the Respondent and his wife came to participate in companies with the Hoods prosecuting the Dr Grow It All business is not at all clear from the Response.
Although it was not the subject of the earlier complaint, the disputed domain name was in fact registered at the same time as the disputed domain name and in existence when the earlier complaint was filed. As noted above, the Complainants contend in the Complaint that the Respondent’s failure to transfer the disputed domain names (emphasis supplied) to them was part of the reason why he was removed as a director from the Second Complainant. As the Respondent was removed as a director in July 2012, it would appear that the disputed domain name was known to the Complainants (and their director, Mr. Hood) when the earlier complaint was filed in 2013. Why that disputed domain name was not included in the earlier complaint is not explained.
Further, the Panel notes that, if the Complaint were allowed to proceed, the offering of the disputed domain name for sale for “$2 million” could well constitute use in bad faith (if the Respondent did not have rights or a legitimate interest in the disputed domain name). However, the Complainants must also show that the disputed domain names were registered in bad faith as a separate and distinct requirement. Use in bad faith after registration pursuant to some right or legitimate interest is not sufficient under the Policy: see, e.g., The Proprietors of Strata Plan No. 36, A Turks and Caicos Corporation v. Gift2Gift Corp.,WIPO Case No. D2010-2180.
The Panel considers that the record in this proceeding would not be sufficient to allow a finding in the Complainants’ favour on this point. The Complainants do appear to contend that the Respondent registered the disputed domain names without authority. However, they also contend that his failure to transfer the disputed domain names to them was in breach of the agreements between them. The latter situation would not be sufficient to prove registration in bad faith. Further, as already mentioned, the Respondent disputes that the plans for the Dr Grow It All business, at least initially, involved Mr. Hood and the interests associated with him. The Respondent does not explain how his, and his wife’s, involvement with Mr. Hood and the latter’s associated interests came about. In these circumstances, the Panel considers that there is insufficient material in the record to find in favour of one Party or the other and so, the Complainants having the onus appear to be unable to establish this requirement under the Policy.
For these reasons, the Panel will not exercise the discretion to allow what is in effect a refiling of the earlier complaint regarding the disputed domain name . Regarding the disputed domain name , the Panel finds, based on the above discussed grounds, that the Complainants have not established the three elements of the UDRP. B. Reverse domain name hijacking
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainants should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“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 an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Respondent argues that bad faith in the required sense should be inferred because (according to the Respondent) the Complainants should have known there was no plausible basis for the Complaint to succeed.
The Panel notes that the present Complaint is somewhat different to the typical situations where a finding of reverse domain name hijacking is made. These are typically cases where, for example, there is an attempt to seek transfer of a generic term from someone using it for its generic significance or where a respondent plainly has prior rights to the domain name in dispute.
In the present case, it may well be that there is a genuine dispute between the Parties over the rights to the disputed domain names. On the record in this case, however, the nature of that dispute does not appear to be amenable to resolution by the procedures available under the Policy. Importantly, the Complainants plainly appreciated the difficulty for their case posed by the earlier complaint. They really should have appreciated that the suggested distinction between Mr. Hood, the director and a shareholder of both Complainants, and his companies was too flimsy to warrant the attempted refiling. To the extent that the first disputed domain name was not involved in the earlier complaint, no different issues were raised than those raised in the earlier complaint against the second disputed domain name. The Complainants were fully on notice of the difficulties their claim in that respect faced. As a result the Respondent has been put to the trouble and expense of defending a second complaint over essentially the same allegations.
In these circumstances, the Panel considers it appropriate to accede to the Respondent’s claim for a finding that the Complainants have engaged in reverse domain name hijacking. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: June 23, 2016
1 As the Complainants contend, the disputed domain name is registered to “Dave Lovegrove Real Estate Educational Programmes”. The Complainants make a persuasive case that “Real Estate Educational Programmes” is (or rather was) really Real Estate Educational Programmes Pty Ltd, a company which has been de-registered by the companies’ regulator and so therefore no longer exists. The Complainants rely on that deregistration as a basis for contending that it can have no rights or legitimate interests in that disputed domain name. Before the Panel could act on that contention, however, it would be necessary to ascertain what happened to the assets of the company on its dissolution including, if not otherwise distributed, passing to the companies’ regulator in accordance with the doctrine of bona vacantia. In the event, it has not been necessary to resolve this issue for the reasons discussed in section 5 of this decision.
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