The Complainant is Regethermic of Crows Nest, New South Wales, Australia, internally represented.
The Respondent is Sean Coffey, Commercial Catering Services of Annandale, New South Wales, Australia, self‑represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 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 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Response was filed with the Center on June 1, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 13, 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 incorporated under the name Brybra Pty Ltd and owns the registered business name "Regethermic Australia". It manufactures, imports and sells commercial catering equipment. The business was founded in 1972. It came under its current ownership in 1980. According to the Complaint, the business name "Regethermic Australia" was first registered in 1972. The printout from the business names register, however, inexplicably states the business commenced in 1753 some 35 years before British settlement of Australia. The Complaint does include evidence of advertisements published in the early 1990s and, in one case, 2002 as well as extracts from the Complainant's website and links to its advertising presences on Twitter, Facebook, Google+, YouTube and LinkedIn. According to the Complaint, the Complainant has annual sales of AUD 5 million. It sells its products throughout Australia and exports to the Russian Federation, Dubai, the Philippines, Qatar, Israel and Hong Kong, China.
The disputed domain name was registered on April 19, 2010.
It resolves to a website which advertises for sale a range of commercial catering equipment. A notice on the website directs email inquiries to an email address where the addressee's name is the same as the Respondent's first name. The postal address and cell phone number given in the "Contact Us" details are the same as the contact details for the Respondent, which the Registrar has confirmed as correct. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights 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.
Paragraph 15(a) of the Rules directs the Panel to 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. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant claims ownership of "Regethermic" as an unregistered trademark. The Response disputes this and, in any event, says the Complainant's rights do not extend to the United States of America ("United States").
As noted above, the Complainant claims it (or its predecessor) has been carrying on business under the name "Regethermic Australia" since 1972. The business name extract confirms the registration, but not the date of commencement. It does state, however, that the business has been at its current address since January 2000. Also, as noted above, the Complaint includes a number of examples of advertisements from the early – mid 1990s and one instance from 2002 as well as extracts from the Complainant's current website and links to its social media presences. The name "Regethermic" alone is clearly and prominently used in these advertisements and the various online platforms as a trademark. The Complaint also claims annual sales of AUD 5 million. In these circumstances, the Panel considers that the Complainant has made a sufficient showing under the Policy to establish it has rights at common law in the name "Regethermic". The Complainant would also have corresponding rights under Australia's trade practices laws against misleading or deceptive conduct. Such rights qualify as trademark rights under the Policy.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. Thus, the Respondent's submissions about the Complainant's lack of a presence in the United States are not relevant at this stage. In addition, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.
Disregarding the ".com" gTLD, the disputed domain name is identical to the Complainant's unregistered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's unregistered trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and a burden of production will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. It also resolves to what is plainly a commercial website promoting the sale of products competitive with those of the Complainant. These matters are sufficient to establish a prima face case under the Policy.
The Response has been submitted on behalf of the Respondent by a Mr Conor Coffey. Mr Coffey states he is the Respondent's brother. Mr Coffey also states that he is a United States citizen and resident of southern California. He says he is an entrepreneur working with companies from startup "to a saleable size."
According to Mr Coffey, the disputed domain name is the property of both himself and his brother, the Respondent, registered for the purposes of carrying on a business in the United States where the Complainant does not have any trademark rights. According to the Response, the Coffey brothers and a "Solar Power guru" have been developing a new solar power technology over the last five years. The disputed domain name was registered in connection with the planned business for this new solar power technology. The technology is not yet ready for launch, but is expected to be ready in the next year. The Response also includes the results of a trademark search showing that the Complainant does not have a registered trademark. Having regard to these matters, it is contended that the registration of the disputed domain name is legitimate.
The first point is that the disputed domain name is registered in the name of Mr Sean Coffey of Commercial Catering Services, with an address in New South Wales, Australia. The Panel does note, however, that the disputed domain name was registered in the name of Mr Conor Coffey for at least a short period in 2015. It was registered initially by the Respondent and for most of the period in which it has been registered was registered in either the Respondent's name or the name of one or other Privacy Service. Accepting for present purposes that an individual may register a domain name in his own name on behalf of himself and some others proposing to engage in some joint activity, there are other issues.
The Response does not include any supporting material providing some objective evidence to support the project to develop some new solar technology. For example, there are no business plans, reports or communications with third parties such as purchases of equipment or drawings or photographs of prototypes.
On the other hand, the disputed domain name resolves to a website which promotes the sale of commercial catering equipment by a business in New South Wales, Australia that appears to be operated by the Respondent himself. It has nothing to do with solar power technology. Nor does it have any suggestion of a connection with California in the United States.
Further, according to the Complainant, the Respondent was formerly working as a sub-contractor in the repair of commercial catering equipment. At some point, it is said, the Respondent entered the Complainant's premises and announced that he had registered a Twitter name "[…]@regethermic". The Complainant says it successfully challenged this Twitter handle through Twitter's dispute resolution process. Following this, the Complainant discovered the registration of the disputed domain name. It says it contacted the Respondent who asked if the Complainant was willing to pay for it.
The Response does not dispute any of these facts, nor does it seek to explain them.
Having regard to these matters, the Panel is unable to accept the Respondent's purported justification. The disputed domain name is identical to the Complainant's trademark. The Respondent is using the disputed domain name to promote the sale of products competitive with those of the Complainant in the very place where the Complainant is located and operates. The disputed domain name is not descriptive of those products. It has significance in relation to those products only through its role as the Complainant's unregistered trademark. Use of another's trademark in a domain name to promote the sale of products competitive with the trademarked products is not a good faith use under the Policy. It is the opposite of the type of legitimate non-commercial or fair use contemplated by paragraph 4(c)(iii).
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: See e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Paragraph 4(b) identifies situations which may demonstrate that registration and use of a disputed domain name was in bad faith under the Policy:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:
(i) circumstances indicating that [the respondent] has registered or [the respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the [disputed] domain name; or
(ii) [the respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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] web site or location or of a product or service on [the respondent's] web site or location."
The circumstances on which the Complainant relies have been outlined above. In summary, the Respondent was a sub-contractor engaged in the repair of commercial catering equipment and well aware of the Complainant's trademark when he registered the disputed domain name. The record in this proceeding leads to the strong inference that he registered the disputed domain name to take advantage of its significance as the Complainant's trademark. And in fact he has been doing so by using it to direct people to a website which promotes the sale of commercial catering equipment competitive with the Complainant's products. That conduct falls squarely within the conduct proscribed by paragraph 4(b)(iv) of the Policy.
This conduct constitutes both registration and use of the disputed domain name under the Policy. Accordingly, the Complainant has established the third requirement under 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 disputed domain name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: June 27, 2016
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