The Complainant is Brunswick Corporation, United States of America (“United States”) and Marine Power Pty Limited, Australia, represented by Kucala Law LLC, United States.
The Respondent is Michael Sorkin, Mercury Outboard Marine Pty., 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 May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 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 May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on June 25, 2021. 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 operates a multi-national marine business under the name “Mercury Marine” founded in the United States in the 1940’s. The Complainant manufactures marine engines, propellers, parts, gauges, and inflatable boats and sells these products internationally, including in Australia since the mid 1970’s. Its worldwide “Mercury Marine” business generated revenue exceeding USD 1.6 billion in 2020. It owns numerous trade mark registrations including Australian trade mark registration 181156 registered on June 24, 1963 for its MERCURY mark and Australian trade mark registration 255914 for MERCURY MARINE, registered on February 15, 1972. It owns various domain names incorporating these marks including in particular The disputed domain name was registered on October 11, 2020 by the Respondent based in Queensland, Australia and it used to resolve to a website that offers for sale MERCURY outboard motors and represents itself on the website as the “authorized Australian dealer/distributor for everything we sell”. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights as noted above and that the disputed domain name wholly incorporates its MERCURY MARINE and MERCURY trade marks and is therefore confusingly similar to its registered trade marks. It says that the addition of the generic Top-Level Domain (“gTLD”) “.melbourne” which is a geographically descriptive name, does nothing to prevent this confusing similarity. The Complainant says that it has neither authorised nor licensed the Respondent to use its marks and the Respondent is not an authorised distributor of MERCURY products and has no connection with the Complainant. It says further that there is no evidence that Respondent has been commonly known by the disputed domain name, or that it has any rights which might predate those of the Complainant. The Complainant says that the website at the disputed domain name claims to be an ecommerce site that advertises and offers more than 100 MERCURY marine engines on its website and the website is targeted towards the Complainant’s customers. It maintains that this website prominently displays the MERCURY MARINE name and has copied elements of the MERCURY logo and has copied and reproduced the Complainant’s copyright protected materials including dozens of photographs of MERCURY engines without permission. It notes that the “About Us” section of the website says that: “Since our start in 2001, Mercury Marine Melbourne has worked hard to build an excellent reputation as a marine retailer and earn the trust and loyalty of boaters” and “Mercury Marine Melbourne is an authorized Australian dealer/distributor for everything we sell.” The Complainant confirms that the Respondent is not an authorised Australian dealer/distributor of its MERCURY engines and alleges that the website at the disputed domain name is a fraudulent site. It says that it has received multiple complaints and enquiries from customers who have attempted to purchase MERCURY engines from the website at the disputed domain name but who have never received products after submitting payment and this is confirmed by the statutory declaration of the marketing manager for Mercury Marine ANZP submitted by the Complainant by way of evidence. In addition, says the Complainant, attempts to contact the Respondent have gone unanswered and it has failed to respond to a cease and desist letter sent by the Complainant’s counsel on April 13, 2021. None of this, says the Complainant is consistent with the Respondent making a bona fide offering of goods or services or of having rights or legitimate interests in the disputed domain name. As far as bad faith is concerned, the Complainant says that the Respondent knew of or should have known of the Complainant’s rights in the MERCURY trade mark prior to registration of the disputed domain name. This, says the Complainant, is so in circumstances that the MERCURY mark is very well-known and that the Respondent at least had constructive notice of the Complainant’s trade mark registrations. Secondly, the Complainant submits that the disputed domain name has been registered and intentionally used in connection with a fraudulent scheme which is strong evidence of bad faith. The Complainant notes that its investigation identified evidence of malicious activity associated with the disputed domain name, namely, that the Complainant has received multiple inquiries and complaints from individuals who attempted to purchase MERCURY engines through the website at the disputed domain name and after making payment never received any product. This, alleges the Complainant, amounts to using the disputed domain name in relation to a fraudulent scheme for commercial gain by intentionally creating a likelihood of confusion and for the purpose of disrupting the Complainant’s business which is evidence of bad faith. Thirdly, says the Complainant, under paragraph 4(b)(iv) of the Policy, bad faith may also be found if the circumstances indicate that by using the disputed domain name the Respondent intentionally attempted to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, or by location of a 19 product or services on Respondent’s website. The Complainant says that the facts of the present situation clearly satisfy this standard, because the Respondent has used the website at the disputed domain name to promote the sale of MERCURY engines in association with Complainant’s MERCURY trade mark even though the Respondent has no intent to make any such sales. Fourthly, the Respondent’s failure to respond to a cease and desist letter is further evidence of bad faith. according to the Complainant. Fifthly, the Complainant says that the Respondent has very likely violated the rules associated with registration of “.melbourne” gTLDs because the physical address identified on the website for the disputed domain name is “Coomera, Queensland, Australia”. Similarly, the address associated with the Respondent is in Queensland, Australia. However, Melbourne is located in New South Wales and is located more than 1700 kilometers away from Coomera. There is no apparent connection between Respondent and Melbourne and no information supporting how the Respondent can satisfy the eligibility requirements for owning the gTLD “.melbourne”. This is further evidence, says the Complainant, of the Respondent’s bad faith in registering and using the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns Australian trade mark registration 181156 registered on June 24, 1963 for the MERCURY mark and Australian trade mark registration 255914 for the MERCURY MARINE mark registered on February 15, 1972. The disputed domain name wholly incorporates its MERCURY MARINE and MERCURY trade marks and is therefore confusingly similar to each of these registered trade marks. The addition of the gTLD “.melbourne” which is a geographically descriptive name, does not detract from the Panel’s finding of confusing similarity. As a result, the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it is not authorised or licensed by the Respondent to use its marks and that the Respondent is not an authorised distributor of MERCURY products and has no connection with the Complainant. The Complainant has also asserted that there is no evidence that the Respondent has been commonly known by the disputed domain name, nor that it has any rights which might predate those of the Complainant. The Complainant confirms that the Respondent is not an authorised Australian dealer/distributor of its MERCURY engines and alleges that the website at the disputed domain name is a fraudulent site. According to the Complainant, the website at the disputed domain name advertises and offers more than 100 MERCURY marine engines on its website and the Complainant says that the website is targeted towards its customers. It appears to the Panel, as submitted by the Complainant, that the website prominently displays the MERCURY MARINE name and has copied elements of the MERCURY logo. The Complainant also asserts that the website at the disputed domain name, features unauthorised reproductions of the Complainant’s copyright protected materials, including dozens of photographs of MERCURY engines. The Complainant says that it has received multiple complaints and enquiries from customers who have attempted to purchase MERCURY engines from the website at the disputed domain name but who have never received products after submitting payment. The Complainant has provided evidence in this regard by way of statutory declaration of the marketing manager for Mercury Marine ANZP. In addition, the Complainant has submitted that attempts to contact the Respondent have gone unanswered and that the Respondent failed to respond to a cease and desist letter sent by the Complainant’s counsel on April 13, 2021. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. Accordingly, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on October 10, 2020, many decades after the registration date of either of the Complainant’s Australian trade marks. In circumstances that the website to which the disputed domain name resolves feature numerous photographs of the Complainant’s MERCURY outboard motors and displays the MERCURY MARINE name and has copied elements of the MERCURY logo and presents itself on the website as an authorised Australian dealer of the Complainant’s products, the Panel finds it more than likely that the Respondent was well aware of the Complainant’s business and MERCURY and MERCURY MARINE marks when it registered the disputed domain name. Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a web site or location or of a product or service on the web site amounts to evidence of registration and use in bad faith. In this case it appears to the Panel that the Respondent has used the disputed domain name to resolve to a website at which it is masquerading as an authorised distributor of the Complainant and is using copied elements of the Complainant’s MERCURY logo and get-up to confuse people into thinking that they are dealing with an authorised distributor of the Complainant’s products when this is not the case and to order discount priced products accordingly for the Respondent’s commercial gain. This is clearly conduct that falls within paragraph 4(b)(iv) of the Policy and is evidence of registration and use in bad faith. In addition, there is evidence that the Respondent is operating fraudulently by taking orders and payment but never actually delivering products to customers. The Respondent’s failure to respond to the Complainant’s cease and desist letter and failure and to respond to the Complainant’s calls, or to otherwise to engage, further reinforces an inference of bad faith. Accordingly, the Panel finds that the Respondent both registered and has used the disputed domain name in bad faith and the Complaint also succeeds under this element 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 Alistair Payne
Sole Panelist
Date: July 9, 2021
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