The Complainants are Cambridge Nutritional Foods Limited (the “First Complainant”) and Cambridge Manufacturing Company Limited (the “Second Complainant”) of Northamptonshire, United Kingdom of Great Britain and Northern Ireland, represented by Shakespeare Putsman LLP, United Kingdom.
The Respondent is Cambridge Diet Pty Ltd of Bondi Junction, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with PlanetDomain Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to PlanetDomain Pty Ltd. a request for registrar verification in connection with the Domain Name, which was due to expire on January 11, 2011. On January 7, 2011, PlanetDomain Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details and stating that it had requested that the Domain Name (which was shortly due to expire) be placed under Registrar Lock pending the outcome of this Administrative Proceeding. 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 January 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2011. On January 27, 2011 the Center received an informal email communication from the Respondent. However, no formal Response was filed. On February 15, 2011, the Center received a further informal submission from the Respondent. On February 16, 2011, the Complainant’s objected to the reception of that submission and, alternatively, sought an opportunity to respond to it.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 2, 2011. 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 Second Complainant was incorporated in the United Kingdom on October 25, 1982. It is engaged in the production, distribution and sale, in the United Kingdom and other countries, of weight management products, including the “Cambridge Diet”, first launched in 1984 by its former owner, The Howard Foundation. In September, 2005 the First Complainant, which was incorporated in the United Kingdom on August 8, 2005, acquired all the issued shares in the Second Complainant and all intellectual property rights in the “Cambridge Diet” brand.
The First Complainant thus became the registered proprietor of numerous trademarks, including International registration 732042A (“CAMBRIDGE DIET and mortar board device”), registered on April 17, 2000 and Australian registered trademarks (“CAMBRIDGE with mortar board device”, with disclaimer as to the word Cambridge), Nos. 541200, registered on May 18, 1992 in Class 5 and 541201, registered on July 14, 1992 in Class 42 (“The Trademarks”).
Since its acquisition of the Second Complainant, the First Complainant has licensed use of its trademarks to the Second Complainant, with the right to grant sub-licences.
A letter of intent dated October 5, 2004 was signed on behalf of the Second Complainant and Mrs. A. Czarnecka. This foreshadowed a possible agreement under which an Australian company of good standing under Mrs. Czarnecka’s direction would become a distributor of the Second Complainant’s products, and would be licensed to use “the Cambridge Diet trademark”. Meantime the parties would deal with each other on certain terms.
The Respondent was incorporated in Australia on December 14, 2004. It registered the Domain Name on January 12, 2005.
By letter dated July 5, 2005, the previous arrangement was extended on the basis that all trading would take place between the Second Complainant and the Respondent.
On June 1, 2007, the Second Complainant and the Respondent entered into a formal Exclusive Distribution Agreement for the promotion and sale of the Second Complainant’s products in Australia, under which the Respondent was licensed to use The Trademarks for the duration of the agreement and was not permitted to use The Trademarks in any domain name without the Second Complainant’s consent. That agreement was formally terminated by the Second Complainant, with immediate effect, by letter dated June 17, 2010. No response appears to have been received from the Respondent to a letter dated July 19, 2010 seeking the cessation of all use of the Domain Name.
The Domain Name resolves to a holding page which states: “The Australian Cambridge Diet website is currently unavailable” and provides contact details whereby existing customers may re-order and new orders may be placed. 5. Parties’ Contentions A. Complainants
As owner and licensee, the Complainants say they both have rights in The Trademarks and are both entitled to bring this Administrative Proceeding. They say the Domain Name is identical to the International trademark and confusingly similar to the Australian trademarks; that the Respondent ceased to have any rights or legitimate interests in the Domain Name when the Distributorship agreement was terminated, and that the Domain Name is being used in bad faith.
The Complainants seek transfer of the Domain Name to the Second Complainant. B. Respondent
In an informal communication on January 27, 2010, Mrs. Czarnecka, on behalf of the Respondent, indicated that she has been travelling since June 2010 and would be happy to cancel or transfer the Domain Name on her return to Australia in May, 2011. On February 15, 2011, the Center received a further informal submission from the Respondent.
Paragraph 12 of the Rules provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence. The Panel has read the Respondent’s additional submission to ascertain whether it contains any material of such relevance and weight as to justify its consideration and has concluded that it does not. Even if the material were admitted, the result would be the same. Accordingly, the Panel declines to admit the Respondent’s additional submission. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
To succeed in a complaint under the Policy, a complainant must establish that:
(i) the 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 domain name; and
(iii) the domain name has been registered or subsequently used in bad faith. A. Identical or Confusingly Similar
As registrant and licensee of trademark rights, both Complainants have standing to bring this Administrative Proceeding.
The requirement of paragraph 4(a)(i) of the Policy is not limited to trademarks that are registered in Australia nor to registered trademarks: 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin,WIPO Case No. DAU2010-0016, citing Mass Nutrition, Inc. and Todd Rosenfeld v. Mass Nutrition Pty. Ltd. now known as Tweed Holdings, Luke McNally,WIPO Case No. DAU2010-0002.
The marks on which the Complainants rely are figurative marks. The question whether a domain name is confusingly similar or identical to a figurative mark is judged objectively against the dominant textual elements of the mark, rather than graphic or stylized elements: See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031. However this is so only where the dominant textual elements are sufficiently distinctive: International Driver Training, Inc. v. Web Integrations, LLC And Comedy Driving Inc., WIPO Case No. D2009-0129, citing Borges, S.A., Tanio, S.A.U. v. James English,WIPO Case No. D2007-0477.
Here the dominant and only textual element in the Complainants’ registered Australian “CAMBRIDGE with mortar board device” marks is CAMBRIDGE. However, exclusivity in that word is expressly disclaimed and the Complainants have placed no evidence before the Panel that, through use, that word has become distinctive of their products. Where the entire textual element of a figurative mark is disclaimed, a panel may find that the complainant has no trademark rights in that element by virtue of its registration: Ideation Unlimited, Inc. v. Dan Myers,WIPO Case No. D2008-1441, citing J2 Global Communications, Inc. v. Ideas Plus, Inc.,WIPO Case No. D2005-0792. This Panel finds both that the Complainants have not established any rights in the word Cambridge and that the Domain Name, which contains both the word “Cambridge” and the additional word “Diet”, is neither identical nor confusingly similar to the textual element of the Complainants’ Australian marks.
The Complainants’ International trademark comprises a graphic representation of the CAMBRIDGE DIET with a mortar board depicted over the first syllable of CAMBRIDGE. The dominant part of the mark is the combination of the words. There is no disclaimer. The Domain Name does not contain the word “the” and contains a hyphen between “Cambridge” and “Diet”. In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes can be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The Panel finds the Domain Name to be confusingly similar to the Complainants’ International trademark.
The Complainants have established this element of their case. B. Rights or Legitimate Interests
It is not clear on the material before the Panel whether the Second Complainant ever consented to the Respondent’s registration or use of the Domain Name. What is clear is that the Respondent registered the Domain Name for the purpose of facilitating sales of the Second Complainant’s products in Australia and that whatever rights or legitimate interests the Respondent thereby or thereafter might have acquired in the Domain Name were lost when the Exclusive Distributorship Agreement was terminated: Navico Australia Pty Ltd v. Quin Marine Pty Ltd,WIPO Case No. DAU2009-0004.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants have established this element of their case. C. Registered or Subsequently Used in Bad Faith
Although paragraph 4(a)(iii) of the Policy differs from the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) in requiring proof of bad faith registration or subsequent bad faith use (emphasis added), paragraph 4(b) of the Policy, sets out, without limitation, circumstances which shall be evidence of bad faith registration and use (emphasis added), namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to another person, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to a website 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 that website or location or of a product or service on that website or location.
The Panel here makes no inference of bad faith registration based on the Respondent’s choice to register specifically a “.au” domain name ostensibly to target an Australian online audience, as the Complainants have not sufficiently demonstrated that an Australian Internet user would be particularly familiar with the Complainants’ International trademark, nor any use of that mark in Australia. Moreover, given the disclaimer of the word “Cambridge” in the Complainants’ Australian registrations and the absence of evidence of acquired distinctiveness in that word, there is no basis for a finding that in registering the Domain Name, the Respondent was intending to deceive Australian or other Internet users while taking advantage of the goodwill in the Complainants’ mark.
Although the Panel makes no finding of bad faith registration, the Panel infers from the Respondent’s failure to comply with the termination provisions of the Distribution agreement regarding cessation of the use of domain names incorporating the Complainants’ trademarks, and the casual attitude of its principal, Mrs. Czarnecka, towards the fulfillment of the Respondent’s obligations after her eventual return to Australia, that the Respondent is using the Domain Name in order to prevent the Complainants from reflecting their International mark in a corresponding “.au” domain name and for the purpose of disrupting their business.
Accordingly the Panel finds that the Domain Name is being used in bad faith.
The Complainants have established this element of their case. 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 Second Complainant upon the Registrar being satisfied of the Second Complainant’s eligibility. Alternatively, the Panel orders that the domain name be cancelled.
Alan L. Limbury
Sole Panelist
Dated: February 16, 2011
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