The Complainant is Richard Jelacic of Kings Park, Australia, represented by Legend Legal Group, Australia.
The Respondent is DomainsByProxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / William Brown, Aussie Shield of Toogoolawah, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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 November 22, 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 November 23, 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 November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. On November 27, 2018, and December 5, 2018, the Center received email communications from the Respondent. On December 17, 2018, the Center informed the Parties that it would commence the panel appointment process.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 26, 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 Complainant, through his company Top Idea Pty Ltd, produces and supplies a gutter guard product which prevents leaves and other debris entering roofing gutters. In 1991, the product won a design award. It appears that the Complainant has been using the term “LEAF STOPPER” as the trademark for the product since at least 2005.
The Complainant has registered the term “LEAF STOPPER” as a trademark in Australia:
- From August 10, 2004, with a device of a leaf on a square, Trademark No. 1015245, for relevant products in International Class 19;
- From May 4, 2005, for the term LEAF STOPPER alone, Trademark No. 1053669, for relevant goods in International Classes 6 and 19;
- From 31 January 2006, for the term LEAF STOPPER alone, Trademark No. 1096378, for wholesale and retail of gutter protection systems in International Class 37 and construction, installation, repair and maintenance services in International Class 37.
The Complainant states that he licenses these trademarks to his company, Top Idea. The Complainant’s company has advertised and promoted the trademark throughout Australia on radio, television, in brochures and from the Complainant’s website at “www..au”.
Trademark No. 1015245 bears a notation that it was registered under the provisions of (then) s 41(5) of the Trade Marks Act 1995. This typically indicates that the trademark has been used sufficiently extensively to have developed a reputation and become distinctive of the applicant.
Until early 2009, the Complainant was the holder of the disputed domain name. Although the Complainant paid the registration renewal fees for the disputed domain name in timely fashion, through some means which are not clear the Registrar failed to renew the registration and on April 17, 2009 the disputed domain name became registered in the name of “William Brown, Aussie Shield”.
The Complaint includes evidence that the registrar through which the Complainant had registered the disputed domain name sought to recover the registration once the error had been identified. The registrar apparently offered the second named Respondent $600 in compensation, but this was refused.
For many years since before 2009, the second named Respondent, William Brown through “Aussie Shield”, has operated a business supplying and installing gutter protection systems such as those made by the Complainant’s company.
On June 3, 2012, the second named Respondent emailed the Complainant offering to sell him the disputed domain name and the domain name . When the Complainant replied seeking more information, the second named Respondent responded that he had changed his mind and intended to keep the domain names.
On July 15, 2013, the second named Respondent emailed the Complainant stating that he was now proposing to set up a website using the disputed domain name to sell gutter guards and inquiring if the Complainant had any issues. The Complainant replied, pointing out that if the second named Respondent used the disputed domain name in the way foreshadowed, he would infringe the Complainant’s rights unless a suitable licensing arrangement were put in place. No agreements resulted from this correspondence.
By October 2013, it appears the disputed domain name redirected to second named Respondent’s “Aussie Shield” business website. This provoked the Complainant’s lawyers to send a cease and desist letter to the second named Respondent on the basis of the Complainant’s registered trademarks.
On November 8, 2013, the second named Respondent emailed the Complainant directly offering to transfer the disputed domain name to him directly once the Complainant set up a GoDaddy account as “I do not need the domain so I am happy for you to have it.” The Complainant replied less than two hours later, providing details of his GoDaddy account. The second named Respondent, however, did not transfer the disputed domain name to the Complainant as promised.
At some point after the cease and desist letter, the disputed domain name began redirecting to the Complainant’s business website.
The second named Respondent is also the registrant of the domain names and . (According to the Complainant, the second named Respondent recently sold his Aussie Shield business.) In addition, the second named Respondent is the contact for ; the registrant apparently being the second named Respondent’s family trust company. The domain name has in the past resolved to a website promoting the Aussie Shield business which offered for sale various brands of gutter guard mesh including (but not limited to) the Complainant’s products.
The second named Respondent appears to be continuing to carry on business supplying, installing and servicing gutter guards as the “Roof Knight” and “The Gutter Guard Guys”, the mobile telephone number of which is the same as the contact number for the registrant of the disputed domain name. 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 the 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. Who is the Respondent
The first named Respondent is the Registrar’s privacy protection service. For the purposes of this administrative proceeding, its role can be disregarded.
The third named Respondent, Aussie Shield, (if a separate legal person to the second named Respondent) has been the business or company through which the second named Respondent has carried on a business of supplying and installing gutter guards. As noted above, it appears that the second named Respondent may have recently sold this business or company.
The Center has sent notice of the Complaint and Amended Complaint to the physical and electronic co‑ordinates confirmed by the Registrar as the correct details for the registrant of the disputed domain name. Those details are in effect the physical and electronic co-ordinates of the second named Respondent. The Center also copied the electronic communication of the Complaint and Amended Complaint to email addresses associated in its promotional materials with the domain name . The second named Respondent has responded to delivery of the Complaint and Amended Complaint in two emails.
In the first of those emails dated November 27, 2018, the second named Respondent stated that he had no objection to transfer of the disputed domain name to the Complainant. In the second email dated December 5, 2018, the second named Respondent stated again that he had no objection to transferring the disputed domain name to the Complainant, but required “compensation” for the transfer.
In these circumstances and bearing in mind the obligation on registrants of domain names to keep accurate and up to date WhoIs records, the Panel considers that the dispute has been properly notified to the registrant of the disputed domain name. It is appropriate to proceed on the basis that the second named Respondent is the registrant of the disputed domain name or acting with the authority of the registrant. For ease of reference, therefore, the Panel intends to refer to the Respondents as “the Respondent” unless it becomes necessary to distinguish more precisely between the individually named Respondents. B. 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 trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
It is sufficient to note that the Complainant has proven that he owns the registered trademarks for LEAF STOPPER referred to in section 4 above.
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, 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, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. 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.
The disputed domain name differs from the Complainant’s trademark by the omission of the “space” between the verbal elements “leaf” and “stopper” and the addition of the gTLD, “.com”.
Disregarding the “.com” gTLD, the Complainant’s registered trademark is plainly and clearly discernible with the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is virtually identical to the Complainant’s registered trademarks and so at least confusingly similar to the Complainant’s trademarks. The requirement under the first limb of the Policy is satisfied. C. 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. 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 an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
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. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Respondent does not dispute any of these matters.
These matters are typically sufficient to establish a prima facie case that the Respondent does not have rights or a legitimate interest in the disputed domain name. The disputed domain name does, however, redirect now to the Complainant’s website.
As the Complainant points out, however, there are no guarantees that will always be the case, or even into the near future. The Complainant has no control over the Respondent or how the Respondent continues to use the disputed domain name. That is potentially very significant given the history of the disputed domain name outlined above and the Respondent’s continued business activities in supplying and installing gutter guard products. In these circumstances, it is not straightforward to apply the standard “Oki Data test” factors. See WIPO Overview 3.0, section 2.8.
Having regard to these matters, the Panel considers that it is appropriate to consider the good faith of the Respondent’s conduct, and so whether the use being made of the disputed domain name can be considered a bona fide offering of goods or services, under the framework provided by the third factor. D. 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. These are conjunctive requirements; both must be satisfied for a successful complaint: 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.
In the present case, the Complainant had registered its trademarks several years before the Respondent registered the disputed domain name. The Respondent has been active in the industry as a supplier and installer of gutter guard products for many years – including many years before the Respondent registered the disputed domain name.
Given that history of involvement in the industry and the scale of the Complainant’s operations across Australia, it appears very likely that the Respondent was very well aware of the Complainant’s trademark when the Respondent registered the disputed domain name. The Respondent certainly does not deny such knowledge.
Instead, shortly after the Respondent registered the disputed domain name, the Respondent emailed the Complainant in August 2012 to state:
“I have a couple of domains you might be interested in > and . Buying domains related to gutter guard and setting up websites is something I have been doing for awhile. But these are in excess to my needs so I thought I would offer them to you first before I sent them to be sold else where.”
As the Complainant had registered trademarks which are essentially identical to the disputed domain name, the Respondent could not use the disputed domain name for the foreshadowed activities consistently with the Complainant’s rights unless the Respondent had permission from the Complainant. The Respondent did not have that permission. Instead, the Respondent registered the disputed domain name unilaterally.
Further, the communication quoted above includes a not very subtle threat to sell the disputed domain name to some third party if the offer was not taken up by the Complainant. Moreover, when the Complainant did seek to take up the Respondent’s offer, the Respondent reneged.
This conduct, it should be recalled, occurred in a context where the Respondent rejected the former registrar’s offer of $600 compensation for the retransfer of the disputed domain name, an amount well in excess of the registration costs. At the least, this indicates that the Respondent was well aware of the potential value of the disputed domain name due to its trademark significance.
The Respondent subsequently used the disputed domain name to promote the Respondent’s own products and services. As noted above, the gutter guard products offered by the Respondent were not exclusively the Complainant’s licensed products, but also included competing products. The services offered by the Respondent were also not licensed by or associated with the Complainant in any way.
When the Complainant’s lawyers sent a cease and desist letter to the Respondent, the Respondent offered to transfer the disputed domain name to the Complainant immediately. When the Complainant accepted that offer, however, the Respondent reneged once again with no explanation.
None of this conduct can be considered to be good faith conduct under the Policy. It involves what on its face appears to have been a clear targeting of the Complainant’s trademark. The conduct viewed as a whole, smacks of an intention to extract value from the disputed domain name as the trademark of the Complainant without permission. Indeed, the Respondent withdrew yet again from the Respondent’s offer to surrender the disputed domain name after the proceeding commenced, seeking to hold out for “compensation”.
Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith. Correspondingly, the Panel considers that the current use of the disputed domain name to redirect to the Complainant’s website, when that redirection can be removed at any time, is not a bona fide offering of goods or services under the Policy. 6. 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: January 7, 2019
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