The Complainant is D&D Group Pty Ltd of Frenchs Forest, Australia, represented by Bird & Bird LLP, Australia.
The Respondent is Carlos Paredes of Amadora, Portugal. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with LCN.COM Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 17, 2018.
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 October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 13, 2018. 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 relevant facts are derived from the Complaint and the evidence filed with it. As the Respondent has not disputed them the Panel accepts them. They can be summarized as follows.
The Complainant is incorporated in Australia. Its predecessor commenced operations in 1986 as “D&D Aluminum Balustrading Pty Ltd”. Since its incorporation, the Complainant or its predecessor have manufactured gate and fencing hardware (including latches, hinges, locking devices and gate accessories) and supplied distributors and the gate and fencing industry on a worldwide basis with these products. In 1991 the Complainant adopted the business name “D&D Technologies”. In 1992, the Complainant changed its name to “D&D Group Pty Ltd.” On March 26, 1993 the business name “D&D Technologies” was deregistered and “D&D Technologies Pty Ltd” was registered on the same day. The Complainant also wholly owns D&D Technologies Pty Ltd and D&D Technologies (USA) Inc. (which was incorporated in 1995). D&D Technologies Pty Ltd manufactures and distributes gate and fencing hardware in the Europe and the Asia Pacific regions. D&D Technologies (USA) Inc. distributes gate and fencing hardware manufactured by D&D Technologies Pty Ltd in the North and South America regions.
Since it commenced operations, the Complainant has advertised its goods and services through presentations and brochures. These have been disseminated to existing and prospective clients. A sample of these brochures has been provided in evidence.
The Complainant has over 600 accounts collectively with customers in the United States of America (“USA”), Canada, and Mexico, and over 600 accounts collectively with customers in Australia and New Zealand. The Complainant also trades in Europe via a third party distribution centre in the Netherlands.
The Complainant’s products are sold globally via various trading channels, including the following:
- Bunnings, which has 359 stores that operate nationally throughout Australia and New Zealand and also trades online;
- Home Timber & Hardware, which operates through various stores and also trades online throughout Australia;
- Stratco, which has 50 stores that operate nationally throughout Australia and New Zealand;
- Mitre 10, which has an independent and local retail network of over 300 Mitre 10 and True Value Hardware stores in Australia;
- The Home Depot, which has more 2,200 stores operating in the USA, Canada, and Mexico, and also trades online;
- Lowe’s, which has more 2,370 stores operating in USA, Canada, and Mexico, and also trades online.
Since 2004 the Complainant has continuously used the domain name for the website through which it promotes and offers goods and services relating to gates and fencing products across the world.
The Complainant’s best-selling products globally are its “Magna Latch” range. The Complainant has been awarded various awards for is products, including:
- On July 24, 1991, the Complainant was awarded the Australian Design Award 1991 for the Magna Latch range.
- On June 12, 1992, the Complainant was awarded the Australian Design Award 1992 for its TruClose hinges.
- On November 20, 2000, the Complainant was awarded the Child Accident Prevention Foundation of Australia “2000 KIDSAFE AWARD” for its swimming pool safety gate products, including the range of Magna Latch products.
- In May 2004, the Complainant was awarded the Australian Design Mark for Good Design for the LockLatch Pro gate latch.
- In May 2015, the Complainant was awarded the Australian Design Award 1991 for the Magna Latch.
The Respondent registered the Disputed Domain Name on March 10, 1998. It resolves to a parking page which contains pay-per-click (“PPC”) links. These include links to third party suppliers of similar products to those made by the Complainant.
Two cease and desist emails were sent by the Complainant to the Respondent together with a request for transfer of the disputed domain (on February 16, 2018 and March 8, 2018). However, the Complainant received no response from the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Name is confusingly similar to its “D&D Technologies” trademark as “tech” is an abbreviation of “technologies”. It also says it is confusingly similar to its website URL, which is “www.”, and it also relies upon unregistered trademark rights in the terms “DD tech” and “D&D”.
The Complainant says that the Respondent has no rights or legitimate interests in the term “ddtech”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it is being used to link to a website which contains PPC links, including links to third party competitors of the Complainant. B. Respondent
No Response has been filed. 6. Discussion and Findings Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes that the Disputed Domain Name was registered over 20 years ago. The Complainant has not explained when it first became aware of the Disputed Domain Name but the Panel infers it could have been years ago. No explanation has been provided by the Complainant of the circumstances surrounding its bringing this Complaint. The Panel does not however consider that matters in the circumstances of this case. In this regard the Panel agrees with the generally accepted approach of panels as set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.17 as follows:
“Does ‘delay’ in bringing a complaint bar a complainant from filing a case under the UDRP?
Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.
Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations.
Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.
Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay.”
There is no evidence of the Respondent carrying out any business activity under the Disputed Domain Name other than its linking to a PPC webpage. Specifically, there is no evidence of the Respondent having acted in any way as a result of the Complainant’s inaction. Although a significant period has elapsed in the present case since the Disputed Domain Name was registered, there is therefore no evidence at all before the Panel of any sort of detriment to the Respondent still less any evidence of detrimental reliance. The Panel therefore declines to find that laches is applicable. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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 respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has not relied upon any registered trademarks. The Panel however finds that the Complainant has rights in the unregistered trademark “DD Technologies” for the purpose of this proceeding. It is clear that “D&D Technologies” was adopted as the substantive part of the Complainant’s name with effect from 1991 (see above) and has been used on that basis ever since by the Complainant and other companies within the Complainant’ s group. The evidence also establishes the Complainant trades under that name on a worldwide basis and has developed a substantial reputation for its products (see above).
The Panel agrees with the approach in WIPO Overview 3.0 concerning this issue at section 1.3:
“What does a complainant need to show to successfully assert unregistered or common law trademark rights?
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.”
The Panel does not consider the term “D&D Technologies” to be descriptive and is satisfied on the evidence as filed that the Complainant has shown it has unregistered trademark rights in that term. It is referred to below as the “D&D Technologies trademark”. Accordingly, the Panel is satisfied that the Complainant’s use (see above) is sufficient to have established unregistered trademark rights in the term “D&D Technologies” and for example in Commonwealth territories, this would be sufficient to establish an action for the tort of passing off.
In view of the Panel’s finding on similarity (below) the Panel does not need to consider the Complainant’s alternative case that it also has rights in the terms “d&dtech” or “ddtech” as a trademark.
The Panel finds Disputed Domain Name is confusingly similar to the D&D TECHNOLOGIES trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). In the present case the Panel agrees with the Complainant that “tech” is an obvious abbreviation of the word “technologies”. The omission of the “&” ampersand is a minor difference, and in any event that character cannot generally be present in a domain name for technical reasons.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the D&D Technologies trademark or the term “ddtech”. The Complainant has prior rights in the D&D Technologies trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s mark, and the Respondent derives commercial gain as a result. The website linked to the Disputed Domain Name comprises a series of pay-per-click (“PPC”) links to other third‑party websites. The Panel infers that some consumers, once at this website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006‑1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
See also WIPO Overview 3.0, section 3.5: “Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”
In reaching this conclusion the Panel has considered the possibility that the Respondent had independently decided to register the Disputed Domain Name without knowledge of the Complainant. The Disputed Domain Name is a relatively short string of six letters (ignoring the “.com” suffix) and it is common practice for short strings to be registered simply because they may have intrinsic value. Whether that is what happened in any given case is a matter of evidence. In the present case the Panel notes the Complainant’s adoption of the term “D&D Technologies” as the substantive part of its name predated the registration of the Disputed Domain Name by some seven years, and the evidence establishes it had achieved a substantial worldwide reputation by the date the Disputed Domain Name was registered. Given that the Disputed Domain Name does not correspond to any dictionary word, and does not form an obviously meaningful coined term, the Panel considers the Complainant has raised an inference that the Respondent’s registration was not independently derived but was effected by the Respondent with knowledge of the Complainant and its name, and with the intention of using the Complainant’s reputation to attract traffic to a linked webpage. As no Response has been filed, that inference has not been rebutted.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled 7. Decision
For all 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.
Nick J. Gardner
Sole Panelist
Date: November 27, 2018
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