The Complainants are 1SaleADay L.L.C. and Benyamin Federman of New York, United States of America, represented by Lewis & Hand, LLP, United States of America.
The Respondents are LivinWireless, Simon Mochkin and Eli Feiglin of Victoria, Australia, represented by Guy & Hinton Lawyers, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with TPP Domains Pty Ltd. dba TPP Internet. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. On July 26, 2010, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the disputed domain name. On July 28, and August 10, 2010, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification responses confirming that the first 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 Respondents of the Complaint, and the proceedings commenced on August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010.
On August 25, 2010, the Center received an email communication from the Respondents’ authorized Representative requesting for an extension of time to file a Response. In accordance with paragraph 5(d) of the Rules, the Center extended the due date for Response to September 4, 2010. The Response was filed with the Center on September 4, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 13, 2010. 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.
On September 13, 2010, the Complainants submitted by email to the Center a Further Statement and supporting annexes for the Panel’s consideration. 4. Factual Background
The second Complainant, Benyamin Federman, is the CEO of the first Complainant, 1SaleADay L.L.C. The first Complainant is an online retail business founded in October 2006. It began actively conducting its business at the domain name in May 2007, and has generated more than US$ 25 million in gross sales and is currently in the top 1,100 most trafficked websites in the United States of America.
The second Complainant obtained United States of America trademark registration number 3390334 for 1SALEADAY on February 26, 2008, and licenses all rights in and to the 1SALEADAY mark in the United States of America to the first Complainant. On August 26, 2009, the second Complainant applied to register the 1SALEADAY trademark with the Australian Trade Marks Office. The application is in the second Complainant’s name but with the Respondents’ business address as the address for service in Australia.
The second and third Respondents, Simon Mochkin (whose legal name is Peretz Shlomo Mochkin) and Eli Feiglin (whose legal name is Yisroel Eliyahu Feiglin), are Directors of Firefly Australia Pty Ltd trading as Livinwireless. They are also both the sole shareholders of Firefly Australia Pty Ltd and One Sale A Day Australia Pty Ltd. On December 31, 2009, the ownership of the business name Livinwireless was transferred from the second and third Respondents to Firefly Australia Pty Ltd.
The first disputed domain name was registered by the first Respondent on May 20, 2008, and the second disputed domain name was registered by the first Respondent on May 20, 2008. On June 30, 2008 the second and third Respondents incorporated a company under the name One Sale A Day Pty Ltd. In October 2008, the second and third Respondents contacted the second Complainant to enquire about the possibility of establishing a “1SaleADay” website in Australia. A verbal agreement was reached between the second Complainant and second and third Respondents for the Respondents to begin a “1SaleADay” business in Australia. There is dispute between the Complainants and the Respondents as to the exact terms of this verbal agreement. During 2009 and 2010 there were disagreements between the Complainants and the Respondents about the use of the 1SALEADAY trademark in relation to the offering for sale of certain goods and services, and about the non-payment by the second and third Respondents’ company 1 Sale A Day Pty Ltd of invoices for the supply of goods by the first Complainant. On May 12, 2010, the Complainants sent a cease and desist letter requesting that the Respondents no longer use the 1SALEADAY trademark in association with the marketing, sale, distribution or identification of its products or services. The Respondents did not respond to this letter and continued to operate the website to which the disputed domain names resolve. There is evidence that the Respondents offered to transfer the disputed domain names and/or sell the Australian 1SaleADay business to the Complainants or the Complainant’s competitors for $50,000, but there is dispute as to the interpretation of the nature of this offer of sale. 5. Parties’ Contentions A. Complainants
The Complainants contend that the disputed domain name is identical or confusingly similar to the 1SALEADAY trademark in which the Complainants have rights because the only difference is the “.com” second level domain and the “.au” country code top level domain. The disputed domain name is also identical or confusingly similar to the 1SALEADAY trade mark because the only difference is that the numeral “1” is written out as “one”.
The Complainants contend that the Respondents have no rights or legitimate interests in the disputed domain names because: (i) the Respondents are not known by the disputed domain names; (ii) the Respondents formed a company using the Complainants’ trademark and trade name without the Complainants’ knowledge or consent, prior to contacting the Complainants to discuss establishing a “1SaleADay” website in Australia; (iii) the Complainants informed the Respondents that all rights in the 1SALEADAY mark and other intellectual property would remain vested in the Complainants; (iv) the Respondents were permitted to use the 1SALEADAY mark and logos only on condition that they were serving as operators of the Complainants’ website in Australia, and that as licensees, the Respondents could not acquire trademark rights or goodwill in the 1SALEADAY marks; (v) the Respondents have failed to use the disputed domain names in connection with a bona fide offering of goods and services but, rather, have tried to profit off the Complainants’ intellectual property and goodwill and to get access to the Complainants’ business methods and contacts; and (vi) the Respondents have failed to pay the Complainants’ invoices and have made fraudulent offers to the general public via the website to which the disputed domain names resolve.
The Complainants contend that the disputed domain names were registered and are being used in bad faith because the Respondents formed the company One Sale A Day Australia Pty Ltd and registered the disputed domain names before approaching the Complainants. The Respondents were aware of the Complainants’ 1SALEADAY mark based on its targeted contacts with the Complainants, and its intent from the beginning was to gain access to the Complainants’ intellectual property and business methods to later compete with the Complainants or, as the Respondents are doing now, to offer to sell the disputed domain names to the Complainants or their competitors for $50,000. The Respondents are intentionally attempting to confuse Internet users into believing the website to which the disputed domain names resolve is sponsored by, affiliated with and endorsed by the Complainants, and is continuing to use the Complainants’ intellectual property after receiving a “cease and desist” letter from the Complainants. B. Respondents
The Respondents concede that the Complainants have a registered trademark in the United States of America to which the disputed domain names are identical. However, the Respondents contend that the Complainants have not established any trademark rights in Australia prior to the registration of the disputed domain names by the Respondents, and have not demonstrated a reputation in the relevant indicia in Australia.
The Respondents contend that the business agreement between the Respondents and the Complainants provides the Respondents with legitimate rights in the disputed domain names. Further, the disputed domain names were registered for a legitimate business purpose and for the benefit of a company to be incorporated under the name of One Sale A Day Australia Pty Ltd which is similar to the disputed domain names. The Complainants have not supplied evidence to support their claim that the Respondents sought to trade on the Complainants’ reputation; in fact, the Complainants have encouraged and abetted the Respondents and their associated company One Sale A Day Pty Ltd for profit.
The Respondents contend that before they received any notice of this dispute they used the disputed domain names in connection with a bona fide offering of goods or services. The Australian market was a legitimate business opportunity for them to pursue because the Complainants did not trade or operate in Australia or hold any trademark in that country. The second Complainant has acted in bad faith by resiling from his earlier commitment to the business relationship between the Complainants and the Respondents. It was clearly accepted that One Sale A Day Australia Pty Ltd would retain registration of the disputed domain names by private treaty. 6. Discussion and Findings A. Identical or Confusingly Similar
The first Complainant (as a licensee) and the second Complainant (as an owner) have rights in a trademark to which the Policy applies, by virtue of the United States of America trademark registration number 3390334 for 1SALEADAY. The requirement of paragraph 4(a)(i) of the Policy is not limited to trademarks that are registered in Australia (as, indeed, it is not limited to trademarks that are registered). This Panel accepts the view expressed in Mass Nutrition, Inc. and Todd Rosenfeld v. Mass Nutrition Pty. Ltd. now known as Tweed Holdings, Luke McNally,WIPO Case No. DAU2010-0002, to the effect that a right to a trademark registered outside Australia (in that case, in the United States of America) is sufficient for the purposes of the Policy. As the panelist in that case explained, the inquiry required by paragraph 4(a)(i) of the Policy for the purpose of establishing application of the Policy is different from the inquiry required by Australian trademark law for the purpose of establishing trademark infringement. The Policy requires only a comparison of the disputed domain name with any relevant rights proved by the complainant. Considerations such as the priorities in time of competing claims to a trademark or the ‘location’ of the goodwill attaching to a trademark do not fall for consideration under paragraph 4(a)(i) of the Policy, although they may arise for consideration under other paragraphs of the Policy such as paragraphs 4(a)(ii) or 4(a)(iii).
It is accepted that, as a general rule, the second level and top level domain signifiers (in this case, the “.com” and the “.au”) may be ignored for the purpose of determining whether the disputed domain name is identical or confusingly similar to the complainant’s trademark. Applying that approach in this case, this Panel finds that the second disputed domain name, , is identical to the Complainants’ 1SALEADAY trademark. This Panel also finds that the first disputed domain name, , is confusingly similar to the Complainants’ 1SALEADAY trademark because it differs only by spelling out the numeral “1” – a difference that does not lessen the inevitable confusion of the domain name with the Complainants’ trademark. Accordingly, this Panel finds that the disputed domain names are either identical or confusingly similar to a trademark in which the Complainants have rights. B. Rights or Legitimate Interests
The Respondents assert that they have a right or a legitimate interest in the disputed domain names by virtue of the business agreement they had with the Complainants to operate a “1SaleADay” website in Australia and the company incorporated by the second and third Respondents under the name One Sale A Day Australia Pty Ltd. The precise terms of the business agreement between the parties are in dispute. The administrative procedure provided by the Policy does not lend itself to resolving the difficult questions of fact as to what, exactly, are the true terms of this verbal agreement. Nevertheless, the uncontested facts disclosed in the Complaint and the Response are sufficient to enable this Panel to resolve the issue of whether the Complainants have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
The Respondents have admitted in the Response that they were aware of the Complainants’ 1SaleADay website and business prior to registration of the disputed domain names in May 2008, and prior to incorporation of the company One Sale A Day Pty Ltd in June 2008. The registration of the disputed domain names, and the incorporation of the company, both occurred prior to the Respondents approaching the Complainants proposing to establish a 1SaleADay website in Australia – and, thus, prior to receiving any consent from the Complainants to use the 1SALEADAY trademark. The conclusion that the Panel draws inevitably from these facts is that the Respondents registered the disputed domain names so as to benefit from the reputation and goodwill of the Complainants’ business conducted under the 1SALEADAY trademark without first obtaining the consent of the Complainants to do so. The drawing of this conclusion is inevitable because the disputed domain names are either identical or confusingly similar to the Complainants’ trademark and no other reason for registering the disputed domain names (and the company name) has been proffered by the Respondents. Indeed, it is very difficult (if not impossible) to conceive of a reason for registering the disputed domain names other than to benefit, without first obtaining consent, from the reputation and goodwill of the Complainants’ trademark and business. It is not as if the phrases “1 sale a day” and “one sale a day” are the only ways to allude to a retail service of providing daily sales.
In this Panel’s opinion, it is clear that the Respondents registered the disputed domain names because they were aware of the Complainants’ business under the 1SALEADAY trademark and wished to benefit from the goodwill and reputation of that business and trademark without first obtaining the consent of the Complainants to do so. It follows that the Respondents’ provision of goods or services under the disputed domain names before notice of this disputed was not a bona fide use of the disputed domain names of the type envisaged by paragraph 4(c)(i) of the Policy. The Complainants have made out a prima facie case of the Respondents having no right or legitimate interest in the disputed domain names, and the Respondents have not rebutted this prima facie case. Accordingly, this Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered or Subsequently Used in Bad Faith
As explained in the discussion of rights or legitimate interests, above, this Panel finds that the Respondents registered the disputed domain names so as to benefit, without first obtaining consent, from the goodwill and reputation of the Complainants’ trademark – which, in this Panel’s opinion, constitutes registration of the disputed domain names in bad faith. In addition, the intention and effect of the registration of the disputed domain names was to prevent the second Complainant, as owner of the trademark 1SALEADAY, from reflecting that mark in a corresponding domain name – which, according to paragraph 4(b)(ii) of the Policy, is evidence of registration and use in bad faith of the disputed domain names. For all of the above reasons, this Panel finds that the disputed domain names were registered or subsequently used in bad faith by the Respondents. D. Complainants’ Eligibility
The second Complainant, Benyamin Federman, is the applicant for an Australian trademark registration of 1SALEADAY. The second Complainant thereby appears to satisfy the eligibility requirements for registration of the disputed domain names. 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 names and be transferred to the second Complainant, Benyamin Federman.
Andrew F. Christie
Sole Panelist
Dated: September 27, 2010
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