The Complainant is Privity Pty. Ltd., Australia, represented by HWL Ebsworth Lawyers, Australia.
The Respondent is Whois Agent, Domain Protection Services, Inc. United States of America (“United States”) / Rightside Group, Ltd., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2020, 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 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On November 4, 2020 the Complainant confirmed that it did not wish to amend the Complaint. 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 November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020. The Center appointed Nick J. Gardner as the sole panelist in this matter on December 4, 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. 4. Factual Background The Complainant is incorporated under the laws of Australia. It carries on business in Australia and (via an associated company) in New Zealand as a supplier of hair care products. It owns the following registered Australian trademarks: - Australian Trademark 986240 “HAIRCARE AUSTRALIA” logo, registered in Class 35 since January 28, 2004; and Its associated company registered the following New Zealand trademarks: - New Zealand Trademark 1016488 “HAIRCARE NEW ZEALAND” logo, registered in Class 35 since September 29, 2015; and The Complainant is the registrant of various domain names containing the words “HAIRCARE” including for example: - The abovementioned link to websites promoting the Complainant’s business. The Complainant also has an active presence on social media. The Disputed Domain Name was first registered on July 26, 2010. Evidence filed by the Complainant shows that an active website was linked to the Disputed Domain Name with effect from around February 2011 (the “Respondent’s Website”), which contained a number of generic hair-related articles. These were articles of a general nature about hair care (for example an article entitled “Causes of Facial Hair Loss in Men”). However, beyond what were clearly some automatically generated click through advertising links there was no indication of any business activity at the Respondent’s Website, nor any indication of who was responsible for its content. Since at least 2013, there has been no active website linked to the Disputed Domain Name. At the time of this decision it does not resolve to any type of webpage 5. Parties’ Contentions A. Complainant The Complainant submits that the Disputed Domain Name is confusingly similar to its registered trademarks (see above) and identical to its unregistered trademark “Haircare Group” in which it claims common law trademark rights. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It says there is no evidence that the Respondent has used, or made any demonstrable preparations to again 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; nor has it been commonly known by the Disputed Domain Name; nor is it making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Complainant submits that the Disputed Domain Name was registered and has been used in bad faith. It says as follows: “In the absence of any knowledge or evidence that Respondent may hold any rights or legitimate interests in respect of the disputed domain name, the Complainant submits the only plausible inference that can be drawn from the Respondent’s registration of the domain name is that the Respondent registered the domain name primarily for the purposes of disrupting the business of the Complainant and/or the [Complainant’s New Zealand affiliate]” 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). Substantive Matters In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it is the owner of trademark registrations for the words “Haircare Australia” (and via an affiliate) “Haircare New Zealand”. The difficulty the Complainant faces, is that the words “hair” and “care” are ordinary English words and in combination are manifestly descriptive of a business supplying hair care products. If the Disputed Domain Name were limited to those terms, the Panel in those circumstances would be far from certain that it is correct to say that the Disputed Domain Name is confusingly similar to these trademarks. The Panel notes that the Disputed Domain Name comprises the additional term “group” but that is itself a generic term in relation to a group of companies – however in any event it does not in the Panel’s opinion advance the argument in relation to the Complainant’s registered trademarks, none of which contain the word “group”. However given the Panel’s finding in relation to bad faith (below) the Panel does not need to resolve this issue. The Panel would accept that the Disputed Domain Name is identical to the term “Haircare Group” but is far from certain that the latter term is one in which the Complainant has shown sufficient evidence that it has unregistered trademark (see WIPO Overview 3.0 at paragraph 1.3 as to the evidence needed in relation to this issue). However again given the Panel’s finding in relation to bad faith (below) the Panel does not need to resolve this issue. B. Rights or Legitimate Interests In the light of the Panel’s findings in respect of bad faith, below, it is unnecessary for the Panel to express a conclusion on the question of the Respondent’s rights or legitimate interests. C. Registered and Used in Bad Faith The difficulty the Complainant faces is that the Disputed Domain Name combines the descriptive term “Haircare” with the ordinary non-distinctive dictionary word “group”. At the time the Disputed Domain Name was registered in 2010 the Complainant only traded as “Haircare Australia”. It did not adopt the name “Haircare Group” until 2017. The Complaint expressly states “The Complainant was incorporated on 5 February, 1979 and trades under the names “HAIRCARE AUSTRALIA” and “HAIRCARE GROUP” in the marketplace in Australia and internationally. The Complainant has used the aforementioned trading names since at least 1990 and 2017 respectively.” As a general rule, a finding of bad faith registration requires the Complainant to show that the Respondent was in some way targeting the Complainant. The Panel does not see how that can be the case when in 2010 the Complainant was not even called the “Haircare Group”. Furthermore, the Respondent’s Website does not provide any evidence of targeting. It seems to be some form of rudimentary generic site dedicated to haircare related articles and contains nothing (beyond use of the term “haircare group”) of any relevance to the Complainant. Moreover, the Complainant and its business is clearly primarily related to Australia and New Zealand and there is no evidence of it having any significant reputation outside these countries.1 And by all appearances the Respondent appears to reside in the United States - the Complainant chose not to amend the Complaint in the light of disclosure provided by the Registrar but that disclosure indicated the underlying registrant of the Disputed Domain Name was based in the United States. In short it seems to the Panel that the Disputed Domain Name was registered by someone who for whatever reason thought the name “haircare group” was worth registering without any knowledge of, or reference to the Complainant. In the circumstances, there is no evidence in the case file to suggest the Respondent registered the Disputed Domain Name in the knowledge of the Complainant’s trademark and therefore with the intention of taking unfair advantage of that trademark, and cannot therefore have registered it in bad faith for the purposes of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third, section 3.8). Since the requirement under paragraph 4(a)(iii) is conjunctive, i.e., the Disputed Domain Name must have been both registered and used in bad faith, the Complaint must therefore fail. The fact that the Respondent has not since 2013 used the Disputed Domain Name is irrelevant here. In any event a domain name registrant who has legitimately registered a domain name is as a general rule not obligated to use it in any particular manner – subject of course to any applicable legal rights of third parties apart from the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Nick J. Gardner 1 The Complainant chose not to amend the Complaint in the light of disclosure provided by the Registrar but that disclosure indicated the underlying registrant of the Disputed Domain Name was based in the United States.
- Australian Trademark 1766264 “HAIRCARE AUSTRALIA” word mark, registered in Class 35 since April 21, 2016.
- New Zealand Trademark 1766264 “HAIRCARE NEW ZEALAND” word mark, registered in Class 35 since December 3, 2019.
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Sole Panelist
Date: December 23, 2020
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