The Complainant is Afterpay Australia Pty Ltd, Australia, represented by Baker & McKenzie, Australia.
The Respondent is Altug Ozturk, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2020, 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 an email communication from an email address associated with the disputed domain name on February 20, 2020. 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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. On March 12, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment. On March 12, 2020, the Center received an email communication from an email address associated with the disputed domain name, requesting an extension to the Response filing period, but without specifying the length of the extension request. On March 12, 2020, pursuant to paragraph 5(e) of the Rules, the Center contacted the Parties in reference to the extension request, asking the Respondent to submit a request for a specified period of time and inviting the Complainant to submit its agreement or objection to the extension request. On March 12, 2020, an email address associated with the disputed domain name contacted the Center, requesting an extension of four days. On March 16, 2020, the Complainant contacted the Center objecting to the extension request. On March 16, 2020, the Center notified the Parties that it would continue with panel appointment. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 19, 2020. 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. After reviewing the file, the Panel on March 20, 2020, granted the Respondent an extension of time of four days in which to file any Response. The Response was received by the Center on March 23, 2020. On March 26, 2020, the Complainant sought permission to make a supplemental filing in reply to the Response. Later that day, the Respondent submitted a short clarification of a matter raised in the Response. 4. Factual Background The Complainant’s business appears to have been started in Australia and New Zealand in 2014, although the timeline included in Annex 6 indicates it does not appear to have begun providing its financial services to the public until 2015. In essence, it provides a financial service whereby participating retailers can offer approved customers an option to acquire the product in question immediately, but pay for it in four instalments after concluding the transaction. The service is, and has been since 2014, carried on under the trademark AFTERPAY and AFTERPAY & device. As at February 2019, some 25,300 merchants were offering the Afterpay service to potential customers and there were approximately 3.5 million active customers. The Afterpay business had generated some AUD 2.3 billion in underlying sales in the six months ending on December 31, 2018. The Afterpay business was “on track” to have one million customers and 2,000 active merchants in 11 months of operation in the United States of America. The Complainant has provided evidence that it owns numerous registered trademarks and pending trademark applications. For present purposes, it is sufficient to note: - Australian Registered Trademark No. 1774834, AFTERPAY, which was registered from June 3, 2016; - International Registration No. 1335106, AFTERPAY, which was registered on December 1, 2016; and, - United States Registered Trademark No. 5,435,378, AFTERPAY, which was registered on April 3, 2018, in respect of a wide range of goods and services in International Classes 9, 36, and 42. The Respondent has been operating a car dealership selling used vehicles on the Gold Coast in Queensland, Australia since 2015. It appears from the Response that the Respondent has been in this line of business since 2003. According to the Response, the Respondent: “has been using the same ‘rent 2 Buy’ process since 2003 under various different business names. The respondent was one of the founding companies in Australia to introduce this concept. The respondent has used the marketing strategies and slogans ‘Buy now, pay after’ , ‘Rent 2 Buy’, ‘Rent to Own’[,] ‘Interest Free’[,] ‘pay after’, [and] ‘after pay’ prior to the complainants trademark registration.” The disputed domain name was registered on February 19, 2019. According to the Response, the Respondent actively used it for the sale of goods and services from February 25, 2019, until August 24, 2019. It is now used only for previous customers and no vehicles are currently being sold. It does appear, however, that the sign “Afterpay Cars” was displayed at the Respondent’s car yard in January 2020. The disputed domain name currently resolves to a website that provides electronic addresses for general inquiries, account inquiries, repair inquiries, feedback and complaints, and a platinum extended warranty. As its name suggests, the platinum extended warranty apparently offers owners of new or used cars the chance to purchase warranty coverage across Australia after the manufacturer’s warranty has expired. 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. The Respondent’s request for an extension of time and the supplemental filings As noted above, on March 12, 2020 (the day after the Response was due), the Respondent requested an extension of time of four days in which to submit its response. The Complainant objected, stressing the requirement under paragraph 10 of the Rules for the proceeding to be conducted expeditiously. Paragraph 10 of the Rules does require the Panel to conduct the proceedings with due expedition. Importantly, paragraph 10(b) further stipulates: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” The amount of time which has elapsed, including the time stipulated under the Policy for the filing of the Response and since the Respondent requested an extension, should usually be taken as sufficient time for the Respondent to have been able to present any defence he may wish to advance. It is possible, however, that the Respondent mistook the Complainant’s objection as a denial of the Respondent’s request for an extension of time. The disputed domain name was registered on February 19, 2019. According to the Complaint, the Complainant first notified the Respondent of the Complainant’s objections by email on February 29, 2019. The Complainant followed up those objections on March 13 and 20, 2019. If the Respondent had made his request before the expiry of the time for filing the Response, the Respondent would have been granted an extension of four days, automatically, pursuant to paragraph 5(b) of the Rules. The Complainant plainly suffers some prejudice if the Respondent were granted an extension as, on its case, its valuable trademark rights are being infringed. The Complainant has not pointed, however, to any change in the Respondent’s conduct or other matters that indicate the prejudice the Complainant would suffer from an extension of time of four days is any greater than the prejudice it has been suffering over the course of the past year, since March 2019. Having regard to these matters, including in particular, the length of time the Complainant has known about the disputed domain name and the potential for the Respondent to have been under a misapprehension about the status of its request for an extension, therefore, the Panel granted the Respondent an extension of four days in which to file any Response. The Panel will also exercise its powers under paragraph 10 to admit the Complainant’s supplemental filing and the further reply by the Respondent into the proceeding. The Complainant’s supplemental filing addresses matters in the Response, which arguably could not have been anticipated and, importantly, sought to correct what could have been an ambiguity in the Response. The Respondent’s further reply, however and quite properly, clarified the ambiguity. 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 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 has proven ownership of the registered trademark AFTERPAY. As the Complainant contends, the scale of use of that trademark in Australia and New Zealand at least means it is likely that the Complainant also has rights at common law in passing off and under prohibitions on misleading or deceptive conduct in respect of that trademark. The Respondent contends that the logo he uses is very different to the appearance of the Complainant’s stylised form of the trademark with an arrow device. The question, however, is whether the disputed domain name (not the Respondent’s logo) is identical or confusingly similar to the Complainant’s trademark. The Respondent also contends that the Complainant’s trademark is a descriptive term. Moreover, the Respondent contends he is (or was) using the disputed domain name for different services to those covered by the Complainant’s registration – vehicle sales in International Class 35 and vehicle hire / contract hire services in International Class 39. The Panel notes, however, that the Complainant has a valid and subsisting trademark registration for AFTERPAY. Further, under the Policy, the second stage of the inquiry under the first element simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. 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, e.g., as described in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Disregarding the “.com” generic Top-Level Domain, the disputed domain name simply adds the descriptive term “cars” as a suffix to the term comprising the Complainant’s registered trademark. That does not avoid a finding of confusing similarity. The Complainant’s trademark is clearly recognisable within the disputed domain name. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and 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. It is not in dispute between the parties that the Complainant 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 own name. The Respondent does not hold any registered trademarks for the disputed domain name. The business name “Afterpay Cars” was registered in the State of Victoria on February 18, 2019. It was registered in the name of someone other than the Respondent. The Respondent’s car sales yard is in the State of Queensland, about 1700km or so from Victoria. It seems unlikely that the holder of the Victorian registered business name and the Respondent are engaged in the same business and notably the Respondent does not appear to claim any association with whomever has registered that business name. From at least 2015, it appears that the Respondent was operating his car yard under the name “Rent 2 Buy”. While the Facebook page the Respondent submitted in the Response suggested that his Facebook page was operated under the name “Afterpay Cars” from December 2015, the Complainant’s supplemental filing pointed out that, when a Facebook user changes the name of their account, the page “updates” so that all posts on the page display the new name. In his clarification in response to the Complainant’s supplemental filing on this point, the Respondent confirmed that he adopted the name “Afterpay Cars” as the name of his business only in February 2019 when he registered the disputed domain name and changed the name of his Facebook account then. According to the Respondent, he adopted the disputed domain name without any knowledge of the Complainant or its trademark. He has submitted evidence demonstrating that he has spent in the order of USD 30,000 between February 19, 2019, and February 2020 in developing the website related to the disputed domain name, on various shopfittings, and on marketing and promotion featuring the disputed domain name or “Afterpay Cars”. The amount actually paid for the disputed domain name itself was the standard fee one would incur for registering a domain name in the “.com” domain space. As noted above, the Respondent contends it is a descriptive term describing a sales method whereby the purchaser “buys now and pays later”. The Respondent also contends that his business and services are outside the scope of the Complainant’s registered trademarks: vehicle sales and hire, not financing. The Panel accepts that vehicle sales are in a different International Class and field of activity to the financial services provided by the Complainant. Very often, however, car purchases are made with finance often arranged or provided through the vendor. So, the services are closely associated. Moreover, the Panel considers it reasonable to characterise the “buy now, pay later” service offered by the Respondent as falling within the scope of the services covered by the Complainant’s registered trademark. For example, the Respondent has advertised his service as interest free finance. The Panel is not personally familiar with use of the expression “after pay” (except as the Complainant’s trademark). The Respondent has submitted a number of examples of competing services to those offered by the Complainant. They include: - Openpay, (Pay smarter, not just later – which was founded in 2019 and describes its service as enabling merchants to provide buy now pay later (BNPL) repayment plans); - Humm (e.g.,Travel now, Pay laaaater); - Tamebay (Buy now, pay after delivery with Paypal); -Zip (Shop today. interest free and pay later with Zip); -Buy Now Pay After; -Splitit (Buy Now, Pay Later); and, -Payright (Turn one big payment into easy bite-size instalments). These materials do demonstrate use of “buy now, pay later” systems similar to that of the Complainant. They appear to use the phrase “buy now, pay later” as the generic descriptor of their services. At least in the materials submitted in this proceeding, they do not use the expression “after pay”. The Respondent has also submitted a number of electronic communications on his Facebook page and in his Gmail account illustrating his use of terms like “rent2buy”, “buy now pay after”, “rent it, like it, $1 buy it”, and “buy now pay later” from 2015 onwards. There are four instances of use of “After Pay” or “After Pay Cars” – one each in March and April 2015 and one each on March 25 and April 26, 2016. There are four examples of “buy now, pay after” and two examples of “buy now, pay later”. The examples of use of “After Pay Cars” in relation to the Respondent’s business pre-date the Complainant’s trademark registration. They are difficult to reconcile with the Respondent’s evidence that he did not adopt the name “After Pay Cars” until February 2019. Most pertinently to this proceeding, they do not demonstrate a continuous pattern of use by the Respondent up to the registration of the disputed domain name which: (i) would support a conclusion that the Respondent was commonly known as “After Pay Cars” before he registered the disputed domain name; or (ii) would provide a defence to an action for trademark infringement under section 124 of the Trade Marks Act 1995 on the basis of continuous use. In these circumstances, the Panel concludes the Respondent has not rebutted the Complainant’s prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. 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. The Respondent does state that he was not aware of the Complainant’s trademark when he registered the disputed domain name. Against that must be set, first, his claim – which is not borne out in the Panel’s experience or the evidence the Respondent has provided (which includes the third party uses of a range of terms put forward by the Respondent) – that the term “after pay” is a common or descriptive term for “buy now pay later” services. Also, secondly, is the scale and extent of the Complainant’s use of the trademark in Australia by February 2019 when the Respondent registered the disputed domain name. It appears, therefore, that the Respondent has registered the disputed domain name to offer the same, or closely associated, services in the face of the Complainant’s trademark and has been using the disputed domain name in competition with the Complainant or piggybacking on the Complainant’s reputation. In these circumstances, therefore, the Panel finds the Respondent has registered and used it in bad faith. Accordingly, the Complainants have established all three requirements 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 Warwick A. Rothnie
Sole Panelist
Date: April 6, 2020
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