WIPO Domain Name Decision DAU2006-0016 for mapquest.com.au

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MapQ, Inc. v. William Scully Power and MapQuest Australia

Case No. DAU2006-0016

1. The Parties

The Complainant is MapQ, Inc. of Dulles, Virginia, United States of America, represented by Spruson & Ferguson Lawyers, Australia.

The Respondents are William Scully Power and MapQuest Australia of Sydney, Australia.

2. The Domain Name and Registrar

The disputed domain name is registered with NetRegistry Pty Ltd..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2006. On December 21, 2006, and subsequently by way of reminder, the Center transmitted by email to NetRegistry Pty Ltd. a request for registrar verification in connection with the domain name at issue. On January 15, 2007, NetRegistry Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�5,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2007.

The Center appointed Desmond J. Ryan, Warwick A. Rothnie and Ross Wilson as panelists in this matter on March 6, 2007. The Panel finds that it was properly constituted. Each member of 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 disputed domain name was first registered on September 3, 2001. The registration was renewed on September 4, 2005. The disputed domain name does not resolve to a website.

Since February 1996 Complainant has provided an on-line map and directional service at its website “www.mapq”. The service consists of providing, inter alia, point to point maps and directions giving street level details and driving directions for a number of countries in North America and Europe and elsewhere, but not in Australia. Complainant asserts that currently its site attracts approximately 58 million unique visits per month of which about 65,000 are from Australia.

Complainant is the registered proprietor in several countries of a number of trade marks comprising the word “mapquest” and “mapq”. These include Australian trade mark registrations 793155 and 793156, each registered from May�5,�1999 in respect of a range of goods and services including software for trip planning and customized mapping, maps and city guides, sale of maps, provision of travel information and the design and printing of maps as well as a number of other goods and service.

On September 6, 2001, and again on September 24, 2001, Respondent wrote to Complainant stating that it had been studying the company and its developments over several months and that it would be interested in working with Complainant in deploying its technologies for the benefit of the people of Australia and the Asia-Pacific. It stated that it had registered on Complainant’s behalf three Australian companies with names which include the word “mapquest” and had registered the disputed domain name also on Complainant’s behalf. Complainant’s attorneys searches of Australian corporate records revealed no such companies, however, on November�8,�2001, Respondent registered, in New South Wales, the business name “MapQuest Australia”.

On November 12, 2001, and December 3, 2001, Complainant’s attorneys sent letters of demand to Respondent demanding undertakings from Respondent to refrain from using the words “mapquest” or “mapquest Australia” as a trade mark or as part of a company or business name, cancellation of the disputed domain name and cancellation of the business name registration. Complainant asserts that it has received no response to either of these letters.

Complainant further asserts that its enquiries show no business being conducted under the business name “MapQuest Australia”, that there is no listing of that business name in Australian telephone directories and no trade mark applications by Respondent for registration of “MapQuest” or “MapQuest Australia”.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the disputed domain name is identical with Complainant’s MAPQUEST trade mark. Complainant cites, inter alia, Overture Services, Inc v. Overture Search, WIPO Case No. DAU2004-0002 to support its contention that the gTLD and ccTLD elements of a domain name have no distinguishing capacity when the balance of the domain name is identical to a trade mark;

- Respondent has no rights or legitimate interests in the disputed domain name and has had notice of the subject matter of the dispute since at least the date of the first letter of demand and Complainant’s enquiries fail to show any use or preparation to use the domain name in connection with the bona fide offering of goods or services;

- registration of the business name “MapQuest Australia” unequivocally demonstrates bad faith;.

- use or threatened use of the domain name in respect of on-line direction software services would constitute an infringing use of Complainant’s trade mark; - the registration of the domain name was done in clear and full knowledge of Complainant’s rights in the MAPQUEST trade mark and with a view to deriving benefit by obstructing Complainant from registering the domain name;

- the registration of the domain name was intended for the purpose of disrupting the business activities of Complainant and to prevent Complainant from reflecting its name and trade mark in a corresponding domain name in Australia;

- the passive holding of the domain name over a considerable period of time without any reasonable cause permits the inference of registration and/or use of the domain name in bad faith. Complainant cites Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Jurisdiction

This is a case in which the domain name was initially registered prior to the adoption of the .au Domain Name Resolution Policy. Accordingly, the Policy does not apply to the initial registration of the domain name. However, paragraph 2.1(a) of the Policy has the effect that the Policy applies once the domain name licence is renewed. The domain name registration was renewed on September 4, 2005, and the domain name is therefore subject to the Policy. It was not until after that date that Complainant was entitled to bring a complaint under the Policy.

7. Discussion and Findings

In order to succeed Complainant must establish

(i) that the domain name is identical or confusingly similar to a name, trade mark or service mark in which it has rights;

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or has subsequently been used in bad faith.

The onus is on Complainant to establish each of the above circumstances. It is to be observed that the auDRP provisions differ from the corresponding provisions of the UDRP in a number of respects relevant to this case. Namely, Complainant’s rights may be based on its name as well as its trade marks and service marks, it can rely on either bad faith registration or subsequent use in bad faith to satisfy paragraph 4(a)(iii) of the Policy and paragraph 4(b)(ii) does not require the showing of a pattern of conduct.

A. Identical or Confusingly Similar Mark

The Panel accepts Complainant’s contention that the addition of the ccTLD domain indicator does not affect the identity of the trade mark reflected in the domain name.

The Panel therefore finds that the domain name is identical to the MAPQUEST.COM name and trade marks MAPQUEST and MAPQUEST.COM in which Complainant has rights.

B. Rights or Legitimate Interests

Whilst in these proceedings the onus is on Complainant to establish each of the circumstances required by the Policy, once the Complainant has adduced evidence and argument that Respondent has no rights or legitimate interests, the onus reverts to Respondent to rebut. The Respondent’s failure to file a response entitled the Panel to act on a presumption that Respondent is unable to rebut Complainant’s contentions (see Jones v. Dunkel 101 CLR 298, High Court of Australia).

The evidence adduced by Complainant indicates that apart from the registration of a business name and of the disputed domain name, Respondent took no steps which could be regarded as a bona fide use or preparation to use the name in respect of goods or services. Further, there is no evidence that Respondent has been commonly known by the domain name, or that it is making any legitimate non-commercial or fair use of the domain name. There is no indication of any other basis upon which Respondent could claim a legitimate proprietary interest. Indeed, Respondent’s own letter to Complainant referred to in paragraph 4 above, in which he says he registered the domain name on behalf of Complainant, clearly indicates the contrary in the absence of any authority given by Complainant to Respondent to take such action. Respondent’s inference that his motive for registration of the domain name was for the benefit of Complainant is not unlike the claim of the respondent in the Federal Court of Australia in CSR Ltd v. Resource Capital Australia Pty Ltd, 128 FCR 408, that its registration of the domain name was done for the purpose of protection of the interest of the CSR shareholders. A suggestion which the court found could “only be said to be bizarre” – per Hill J at p. 411. See also Southcorp Wines Pty Ltd and JY Tulloch & Sons Pty Ltd v. Resource Capital Australia Pty Ltd, WIPO Case No. D2001-1393.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered or Used in Bad Faith

The letters of Respondent to Complainant in September 2001, make it clear that at the time of the registration of the domain name Respondent was fully aware of Complainant’s reputation and interest. The clear implication of those letters is that the registration was made as a bargaining chip to induce Complainant to deal with Respondent in relation to the launch of its MAPQUEST service in the Australian area. Respondent’s conduct has the effect of preventing Complainant from reflecting its name and trade mark in a domain name in the .au domain and correspondingly inhibited Complainant in the conduct of its business in Australia. Such conduct clearly falls within paragraphs 4(b)(ii) and 4(b)(iii) of the Policy. Respondent’s false claims to have incorporated companies under names including MAPQUEST, his failure to respond to Complainant’s attorney’s letter of demand and his renewal of the domain name registration in the face of Complainant’s objections further indicate bad faith registration and ongoing passive bad faith use, see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel therefore finds that the disputed domain name was registered in bad faith and also that it has subsequently been used in bad faith.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

Desmond J. Ryan
Presiding Panelist

Warwick A. Rothnie
Panelist

Ross Wilson
Panelist

Dated: March 19, 2007

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