The Complainant is Woolworths Limited of Bella Vista, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Save Cash Pty Ltd. of Buderim, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Aust Domains International Pty Ltd dba Aust Domains (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2011. On August 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 10, 2011 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. The Respondent did not submit any formal response compliant with the Rules and Supplemental Rules by the Response due date. Accordingly, the Center notified the Respondent’s default on September 2, 2011. Informal communications were received from the Respondent on September 3, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 21, 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 Complainant, founded in 1924, operates over 800 supermarkets in Australia, serving over 13 million customers each week. The majority of its supermarkets trade under the name “Woolworths” and are colloquially known as “Woollies”. On December 16, 2008, the Complainant registered WOOLLIES as Australian Registered Trade Mark No. 1278159 for a variety of goods and services including online wholesaling and retailing of products.
The Domain Name was registered on March 24, 2011. On July 5, 2011, the Domain Name resolved to a web page containing sponsored advertising links, including links to the Complainant and its competitor, Coles. Following a cease and desist letter from the Complainant, the web page was changed to remove the references to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its WOOLLIES trade mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which has been registered or subsequently used in bad faith.
As to legitimacy, the Complainant says the Respondent is not known by the Domain Name and appears to be involved in a car sales business. The Domain Name is not being used in connection with a bona fide offering of goods or services.
As to bad faith, the Complainant says it is self evident that the Domain Name has been registered and used in bad faith, given the Respondent’s lack of any rights or legitimate interests in the Domain Name and lack of any permission from the Complainant to use the WOOLLIES mark. Given the Complainant’s strong reputation, the Respondent must have been aware of the Complainant and its mark or must have known that the Domain Name would benefit from being typographically close to any entity with any rights or reputation in the phrase “Woollies”. The content of the web site indicates awareness of the Complainant’s business and reputation at the time of registration. B. Respondent
As mentioned, the Respondent did not submit any formal response compliant with the Rules and Supplemental Rules. However, in correspondence with the Complainant and with the Center, it denied the Complainant’s claims and made the following points:
Prior to the cease and desist letter the Domain Name was parked showing certain advertisements outside the Respondent’s control. The Respondent has since changed parking companies.
The Domain Name does not infringe the Complainant’s trade mark as the Respondent does not sell food or anything that may be infringing on the trade mark descriptions.
The Respondent intends to develop the Domain Name to market products and services that are relevant to woollen products and various other lines in various other sectors.
It is lawful to have a trade marked word or phrase within a domain name provided the registrant clearly states, if necessary, that it is not associated with a trade mark holder, or offers a completely different product or service.
If the Respondent wished to sell from this web site canned SPAM purchased from the Complainant, the Respondent would be a reseller. A reseller may use a trademarked term in its advertising and business name as long as it discloses that it is not a licensed affiliate of that trade mark holder. The Respondent has no interest in doing this, however.
The Respondent has products and services yet to be available via the web relating to the Domain Name. Its future business will depend on the Domain Name and will not in any way infringe on any trade mark holder.
The Complainant is trying to reverse domain name hijack the Domain Name for its own benefit.
When the servers can be changed, the Respondent will change them so they will not display any possible relation to the Complainant. 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 this complaint under the Policy, the 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.
Because of the many similarities between the Policy and the Uniform Domain Name Policy (the “UDRP), the Panel will also refer to UDRP precedent in deciding this case. A. Identical or Confusingly Similar
In determining whether a domain name is identical or confusingly similar to a trademark, country code top level domain suffixes may be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The Domain Name comprises the Complainant’s trade mark WOOLLIES, together with the word “online”, which describes one of the services for which that mark is registered and does nothing to detract from the distinctiveness of the Complainant’s well-known WOOLLIES mark. Accordingly, the Panel finds the Domain Name to be confusingly similar to the Complainant’s mark.
The Complainant has established this element of its case. B. Rights or Legitimate Interests
The Complainant’s mark is distinctive. There is nothing before the Panel to indicate that the Respondent, Save Cash Pty Ltd., is commonly known by the Domain Name or by the name Woollies. The Complainant’s assertions suffice to establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden therefore shifts to the Respondent to show, by concrete evidence, that it has such rights or interests: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
The Respondent has failed to submit a formal response and the Panel finds that its informal submissions do not establish that it has rights or legitimate interests in the Domain Name. The Respondent has failed to provide any evidence of its plans to use the Domain Name in any of the ways it claims to have in mind. Even if there were such evidence, the Panel finds that the Complainant’s WOOLLIES mark is so well-known that it is inconceivable that the Domain Name could be used in a way that would not mislead Internet users. As to the sponsored links, as registrant of the Domain Name the Respondent should be in a position to control use of the Domain Name and is therefore responsible for website content placed by others.
The Complainant has established this element of its case. C. Registered or Subsequently Used in Bad Faith
Under the Policy, paragraph 4(b)(iv), the following circumstances shall be evidence of bad faith registration and [sic] use:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website […] by creating a likelihood of confusion with the complainant’s name or mark as to the […] affiliation or endorsement of that website.”
Here, the Domain Name, which comprises the Complainant’s distinctive WOOLLIES trademark with the descriptive term “online” and the “” suffix, conveys to Internet users both that it will lead them to a website at which the Complainant’s products are available for purchase online and that it is the Complainant’s official website. The Domain Name itself thus conveys an affiliation or endorsement of the website to which it resolves. In the hands of the Respondent that representation is false and misleading because the Respondent’s website is not the Complainant’s official website. In the Panel’s view, it would make no difference if the Respondent were a resupplier of goods sourced from the Complainant.
The Panel finds that the Respondent must have been fully aware of this, and that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its “www.woolliesonline.” web site by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of that web site.
The Panel therefore finds that the Domain Name has been used in bad faith.
The Complainant has established this element of its case.
That suffices to dispose of this case. However, the Panel notes that it would not be credible for the Respondent to deny awareness, at the time of registration of the Domain Name, of the Complainant and its well-known WOOLLIES mark. Nor has the Respondent done so. Accordingly the Panel finds that the Domain Name was also registered in bad faith.
Since the Complainant has established all the elements entitling it to relief, no question of Reverse Domain Name Hijacking arises. 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.
Alan Limbury
Sole Panelist
Dated: October 5, 2011
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