The Complainant is Christina Li, owner of Lion King Flooring Pty Ltd of Guildford, Australia, internally represented.
The Respondent is Contact Privacy Inc. Customer 0140780259 of Toronto, Canada / Timothy Murray, of North Sydney, Australia. 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 January 17, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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 January 21, 2019, 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 January 22, 2019.
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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2019.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 12, 2019. 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.
On March 21, 2019, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant: (i) to explain what is the entity named in the Complaint as “Lion King Flooring Pty Ltd” and what is that entity’s relationship to Christina Li and to Greenway Flooring Pty Ltd; (ii) to provide evidence of the Complainant’s use of the asserted unregistered trademark LION KING FLOORING, including in particular the date from which that trademark has been used and the amount of business transacted under that trademark; and (iii) to provide evidence of the Complainant’s communications with the Respondent Timothy Murray about the disputed domain name since 2016. The Respondent was invited to respond to any evidence provided by the Complainant pursuant to Administrative Panel Procedural Order No. 1. The Complainant filed material in response to Administrative Panel Procedural Order No. 1. The Respondent did not provide any response in relation to that material. 4. Factual Background
The Complainant Christina Li, whose Chinese name is Yong Zhao Hu, is the sole director of Greenway Flooring Pty Ltd, an Australian proprietary company, registered with the relevant Australian government authority, the Australian Securities & Investments Commission (“ASIC”), since January 19, 2011. Greenway Flooring Pty Ltd is a flooring products importer and wholesaler/retailer selling direct to the public throughout Australia. During 2018 its revenue was approximately AUD 2 million.
Greenway Flooring Pty Ltd is the holder of the business name “Lion King Flooring”, registered with ASIC since October 1, 2009. It is also the owner of a pending application for registration in Australia of the word trademark LION KING FLOORING. This application was filed with IP Australia on November 27, 2018, and as at the date of the amended Complaint has the status of “Published: Awaiting examination”. An entity titled “Lion King Pty Ltd” is the owner of Australian trademark registration No. 1380255, for an image of a stylized lion head. According to the auDA (the Australian Registry) WhoIs at the date of the amended Complaint, an entity titled “Lion-King Flooring Pty Ltd” is the registrant of, and the Complainant Christine Li is the registrant contact for, the domain name .
The Respondent Timothy Murray was an employee of Greenway Flooring Pty Ltd from July 1, 2013, to January 30, 2015, with responsibility for maintenance of the company’s website. An invoice provided by the Complainant Christina Li shows that she registered the disputed domain name on or about June 11, 2010. Renewal of the registration did not occur when renewal fell due in 2014, at a time when the Respondent Timothy Murray was responsible for such matters. The Complainant asserted that the Respondent Timothy Murray confirmed to the Complainant at some time in 2016 that he had registered the disputed domain name in his own name. The Complainant provided screenshots of the website to which the disputed domain name resolved on November 16, 2018, showing that it was being used to advertise a range of flooring goods and services, offered by companies other than the Complainant’s business. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and confusingly similar to its own registered domain name , its registered business name “Lion King Flooring Pty Ltd”, and its unregistered trademark LION KING FLOORING.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) it is being used to advertise the Complainant’s and other Australian flooring companies’ products and services; (ii) the Respondent, in telephone conversations with the Complainant in 2016 and 2017, offered to sell the disputed domain name to the Complainant for a large sum; (iii) the Complainant had owned the disputed domain name since June 11, 2010, and was not informed of the renewal date in 2014 when the Respondent was an employee of the Complainant’s company Lion King Flooring Pty Ltd and was responsible for its renewal; and (iv) the Respondent has held the disputed domain name since 2016, and has not released ownership back to the Complainant despite numerous requests.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent: (i) is using the Complainant’s company name and unregistered established trademark to disrupt her business Lion King Flooring Pty Ltd by advertising and redirecting its customers to other Australian flooring companies; (ii) used his position as the previous website and online manager of Lion King Flooring Pty Ltd to obtain and purchase the disputed domain name for commercial gain; (iii) has agreed, over the telephone, to sell the disputed domain name for a large sum in 2016 and 2017; (iv) is disrupting the Complainant’s business for commercial gain by misleading potential customers looking for Lion King Flooring Pty Ltd; and (v) has used the disputed domain name to redirect to one of the Complainant’s competitor’s websites, namely . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue: existence of “Lion King Flooring Pty Ltd”
The Complaint contains numerous assertions about an entity titled “Lion King Flooring Pty Ltd”. A search undertaken by the Panel, in accordance with paragraph 10 of the Rules, discloses that no such company is registered with ASIC. A company called “Lion-King Flooring Pty Ltd”, which subsequently changed its name to “Lion King Pty Ltd”, was once registered with ASIC, but was deregistered on August 28, 2013. The name “Lion King Flooring” is a business name registered with ASIC, the holder of which is Greenway Flooring Pty Ltd. The Panel has decided to treat all references in the Complaint to “Lion King Flooring Pty Ltd” as though they are references to the Greenway Flooring Pty Ltd. B. Identical or Confusingly Similar
The Complainant Christina Li does not own a registration for a trademark that consists of, or includes, the words LION KING FLOORING. Greenway Flooring Pty Ltd, of which the Complainant Christina Li is the sole director, is the holder of a business name registration for “Lion King Flooring” and the owner of a pending application for registration in Australia of the word trademark LION KING FLOORING. However, neither a business name registration nor a pending trademark application, by itself, constitutes a trademark or service mark for the purpose of the Policy. Thus, for the Complainant to satisfy the first requirement of the Policy – having rights in a trademark or service mark to which the disputed domain name is identical or confusingly similar – she must show that LION KING FLOORING constitutes an unregistered or common law trademark.
As is explained in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered or common law trademark rights, 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.
The Complainant Christina Li asserted that she had used LION KING FLOORING as an unregistered trademark since October 2009. In response to the Panel’s Procedural Order No. 1, the Complainant provided a photograph showing use of the words “Lion-King Flooring” on flooring products that her company stocks, provided screenshots of an eBay store that her company operates under the name “lionkingflooring” and which uses a composite image and word logo that includes the words LION KING FLOORING, and provided a copy of an Australian income tax return for Greenway Flooring Pty Ltd showing that it declared gross revenue in excess of AUD 2 million for the tax year ending 2018.
The Panel considers that the following facts support the Complainant’s assertion that LION KING FLOORING is an unregistered trademark for purposes of the first element of the Policy in which it has rights: (i) “Lion King” is not descriptive of, or even allusive to, flooring products; (ii) the name “Lion King Flooring” has been used in a trademark-like manner in relation to products sold by the company of which the Complainant Christina Li is sole director; and (iii) “Lion King Flooring” has been a registered business name of the company of which the Complainant Christina Li is sole director since October 1, 2009 – which gives rise to the presumption that the name has been used by that company since that time. It is also significant that the Respondent did not challenge the Complainant’s assertion. While the matter is not clear-cut, on the balance of probabilities the Panel finds that the Complainant has met its burden of showing unregistered trademark rights in LION KING FLOORING for purposes of the first element of the Policy.
When the Top-Level Domain identifier “.com” is ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s unregistered trademark. Accordingly, the Panel finds that the disputed domain name is identical to an unregistered trademark in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its unregistered trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which various flooring goods and services, offered by companies other than the Complainant’s business, were being advertised. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first used its unregistered trademark. As a former employee of the Complainant, the Respondent Timothy Murray, at the time he registered the disputed domain name: (i) knew of the Complainant’s unregistered trademark; (ii) knew that the Complainant had previously been the registrant of the disputed domain name; and (iii) knew that he had no rights or legitimate interests in the disputed domain name.
Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of 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.
Andrew F. Christie
Sole Panelist
Date: April 3, 2019
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