WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perpetual Limited v. Perpetual Home Loans Pty Ltd (ACN 120010657) Case No. DAU2009-0009 1. The Parties
The Complainant is Perpetual Limited of Sydney, Australia, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Perpetual Home Loans Pty Ltd (ACN 120010657) of Kellyville, Australia and Baulkham Hills, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2009. On September 18, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On September 21, 2009, Melbourne IT Ltd 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name 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 September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on October 19, 2009. 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 an Australian financial services company. The Complainant was one of Australia's first financial institutions and is a member of a group of related entities in the “Perpetual Group”.
The Complainant is the owner of various trademarks registered in Australia which comprise or contain the mark PERPETUAL. Those include a word mark registered on March 25, 1997, in classes 16 and 36, and a device mark registered in the same classes on January 18, 1999. The Complaint otherwise set out detailed background information about its substantial business and the use, marketing and brand-awareness of its PERPETUAL mark.
The Respondent is a company registered in Australia since 1996. It has a business and company name registered in Australia for “Perpetual Home Loans”. In the absence of a Response, there are otherwise few details about the Respondent's operations other than those evident from its website, company and business name registrations. The Complaint attached evidence of the Respondent's website as it was on September 10, 2009. On that date, the website contained a logo with the words “Perpetual Home Loans” and the Respondent's contact details. It also contained the following (redacted) statements:
“Welcome to the temporary construction webpage, our full page including online services, will return soon.”
“Perpetual Home Loans are here to provide the right home loan for you!”
“At Perpetual Home Loans we have developed a comprehensive range of loan products and services to suit your individual needs.”
The Complainant has previously been a successful complainant under the Policy in relation to the domain name (auDRP11/08 LEADR), and against the then respondent Perpetual Financial Solutions Pty Limited. Among other things, the panel in that case accepted the widespread use and recognition of the name “Perpetual” in the hands of the Complainant, in the Australian mortgage lending industry. The Complainant has established a website at the domain name which was the subject of that dispute. 5. Parties' Contentions A. Complainant
The following is a summary of the Complaint.
The Complainant claims that the disputed domain name is confusingly similar to its PERPETUAL mark. This is said to be so because the term “perpetual” is the “essential element” of the disputed domain name. The term “homeloans” is generic and, as such, its incorporation in the disputed domain name does not distinguish the mark. The Complainant is well-known by the public and financial services industry by reference to its PERPETUAL mark.
The Complainant also claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent's website does not clarify that there is no relationship between the Respondent and the Complainant, and the graphic on the Respondent's website resembles the Complainant's “Mobius device”, which is the subject of one of its trademark registrations. By reference to MapQ, Inc. v. William Scully Power and MapQuest Australia,WIPO Case No. DAU2006-0016, the Complainant notes that the registration of an Australian business name does not, per se, create a legitimate interest. The Complainant says that there is no other basis on which the Respondent could claim a legitimate interest, including by reference to the illustrative examples of rights or legitimate interests set out in paragraph 4(c) of the Policy.
In early 2007, an agent contact on behalf of the Complainant contacted the Respondent to ascertain the nature of its business. From those inquiries, the Complainant notes that the Respondent offers financial services, such as mortgage brokerage and various loan products and services, particularly for home buyers and property investors. The Respondent however has no association with the Complainant or permission to use its marks, in a domain name or otherwise. The Complainant claims that its mark is so well-known that it is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Respondent's registration of the disputed domain name is an attempt to trade off the reputation of the Complainant's marks, by deceiving members of the trade and public.
Finally, the Complainant claims that the Respondent has registered or used the disputed domain name in bad faith, as it is inconceivable that the Respondent was unaware of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions, nor make any other communication in connection with this case. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered or was subsequently used in bad faith.
These elements are discussed in turn below.
The Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. A. Identical or Confusingly Similar
The disputed domain name comprises the Complainant's registered mark together with the term “home loans”. For the purpose of the Policy, it is well-established that the gTLD extension is not relevant when considering the question of confusing similarity.
The Complainant clearly has rights in its PERPETUAL mark for the purpose of establishing its case under paragraph 4(a)(i) of the Policy. Being a registered mark, it is entitled to a presumption of distinctiveness. (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone,WIPO Case No. D2003-0903.) The Complainant also points to the extensive reputation of its mark in Australia, by reference to e.g. marketing materials and brand surveys.
The generic term “home loans” is obviously associated with the Complainant's business. For that reason, the Panel considers that it does not distinguish the Complainant's mark as incorporated in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered PERPETUAL mark. B. Rights or Legitimate Interests
Establishing this element of the Policy is the Complainant's main hurdle. To prevail under paragraph 4(a)(ii) of the Policy, it must be established that the Respondent has no rights or legitimate interests at all.
The disputed domain name relevantly corresponds with the registered name of the Respondent's business. As such, on the face of it, the Respondent registered the disputed domain name for that reason. In that respect, this case differs from the dispute under the Policy (referred to above) in which the Complainant previously prevailed. In that dispute, the domain name in question did not completely correspond to the name of the Respondent. The question, then, is whether the correspondence of the disputed domain name with the Respondent's business name gives the Respondent a right or legitimate interest in it.
The Complainant does not dispute that the Respondent conducts business under the name of “Perpetual Home Loans”. What the Complainant says is that the Respondent's conduct of its business under that name infringes its rights, and gives rise to potential civil actions for passing off, trademark infringement and misleading and deceptive conduct. However, it is not within the scope of the Policy to determine whether any such action might succeed.
Paragraph 4(c) of the Policy illustratively sets out a three circumstances any one of which, if established, may demonstrate a respondent's rights or legitimate interests. One circumstance is where the Respondent is making a legitimate non-commercial or fair use of a disputed domain name (paragraph 4(c)(iii)). There is no such evidence in this case. The Respondent's website makes a commercial offering of services.
Another circumstance is where the Respondent is commonly known by the disputed domain name. Here, the Respondent's business name may suggest that the Respondent is at least known by the disputed domain name. But there is little concrete evidence that it has been “commonly known” by it.
Thirdly, there is the circumstance where the Respondent may be making a bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of services. In this case the Respondent offers financial services. Has the Respondent made a bona fide use of the disputed domain name, in connection with that offering, for the purpose of paragraph 4(c)(i) of the Policy?
On balance, the Panel finds that the Respondent's use is not relevantly bona fide, for the following reasons.
Firstly, the Complainant and its mark are well-known in the financial services field. Its mark is arbitrary in connection with financial services. It is, as such, hard to avoid the impression that the Respondent has used the term “perpetual” to suggest some association with the Complainant, or to seek unfair leverage from the substantial reputation of the Complainant's mark. As noted in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M", WIPO Case No. D2000-0847, a “use which intentionally trades on the fame of another cannot constitute a ‘bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Such a finding does not mean that the Panel reaches any conclusion about whether the Complainant would succeed in a civil action for trademark infringement or passing off. Rather, such a finding only goes to the likely motivation of the Respondent, having regard to the evidence before the Panel.
Secondly, having regard to the reputation of the Complainant's mark, and the operation of the Respondent in the same field of business, it is notable there is no disclaimer or other statement on the Respondent's website which avoids or reduces the potential for confusion with the Complainant. The lack of such a disclaimer reinforces the impression that the Respondent's use of “perpetual” is deliberately misleading.
Thirdly, given the Complainant's reputation and the Respondent's operations in the same field of business, the Respondent would have been aware of the potential for confusion when it registered the disputed domain name. There is no evidence in this case as to precisely when the registration of the disputed domain name occurred, despite the availability of a request to auDA under paragraph 4.1(a) of the main body of the Policy. However, having regard to the Respondent's first registration of its business name in 2006, the Panel infers that the earliest date of registration would have been sometime in 2006. As such, it would substantially postdate the registration of the marks on which the Complainant relies, which were registered in 1997 and 1999.
The Panel considers that the circumstances of this case are relevantly similar to that in Telstra Corporation Limited v. India Yellow Pages, WIPO Case No. D2002-0651 in which the then panel concluded that “registering a domain name in such circumstances, knowing of the potential for confusion, cannot give rise to a right or legitimate interest in respect of the domain name in question.” (In a somewhat similar vein, see e.g. FDNY Fire Safety Education Fund, Inc. and New York City Police Foundation, Inc. v. Great Lakes Coins %27 Collectibles,WIPO Case No. D2001-1445; CELLEX-C International Inc. v. Jaye Pharmacy and Absolute Cellex C,WIPO Case No. D2003-0423.)
Fourthly, it is important to note that paragraph 4(c)(i) of the Policy relates to the bona fide use of, or demonstrable preparations to use, the disputed domain name. However else the Respondent might have employed the term “perpetual” in connection with its business, the Respondent has provided no evidence of its demonstrable preparations to use the disputed domain name. The only evidence of the active use of the disputed domain name is of the webpage to which it reverts. While that page contains some brief statements and contact details for the Respondent, it is a page that is self-described as a “temporary construction webpage”. As such, there is no evidence that the Respondent has actively used the disputed domain name, beyond the establishment of its construction page.
Finally, the Complainant has made a strong case against the Respondent, which the Respondent has chosen not to answer. While the ultimate burden of proof remains with the Complainant, the Respondent's failure to respond formally, or communicate at all in connection with this case, allows an adverse inference to be drawn against it.
The three circumstances set out in paragraph 4(c)(i)-(iii) of the Policy are not a complete statement of the circumstances in which a right or legitimate interest might be established. However, where the Respondent has made a commercial offering of services and the Panel has found that that the use of the disputed domain name in that connection is not bona fide, it is difficult to conceive of how any other right or legitimate interest might arise in the circumstances of this case.
For all these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
As set out in paragraph 4(b)(iv) of the Policy, bad faith may be found, for the purpose of paragraph 4(a)(iii) of the Policy, where the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
For similar reasons to those set out above (as to whether the Respondent has any rights or legitimate interests) the evidence in this case indicates that the Respondent was aware of the Complainant when it registered and then used the disputed domain name. This indicates that the Respondent intentionally used the disputed domain name in a manner contemplated by paragraph 4(b)(iv) of the Policy.
As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 7. 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.
James A. Barker
Sole Panelist
Dated: November 2, 2009
Full & Egal Universal Law Academy