The Complainants are Ella’s Kitchen Group Limited , Ella’s Kitchen (Brands) Limited and Ella’s Kitchen (IP) Limited of London, United Kingdom of Great Britain and Northern Ireland (“U.K.”) represented by Davenport Lyons, U.K. (Collectively, the “Complainants”).
The Respondent is Nourish Foods Pty Limited of Richmond, Australia, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the Domain Name. On November 3, 2011, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Response was filed with the Center on December 2, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on December 7, 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
Ella’s Kitchen (Brands) Limited (“EKB”) was incorporated in the U.K. on July 19, 2004. Ella’s Kitchen (IP) Limited (“EKIP”) was incorporated in the U.K. on July 9, 2007. On July 17, 2007, EKIP became the registered proprietor, by assignment, of U.K. registered trademark ELLA’S KITCHEN, No. 2368808, which had been registered on December 31, 2004. EKIP owns other ELLA’S KITCHEN trademarks in the U.K., Europe and the United States of America (“U.S.A.”). EKB and EKIP are wholly owned by Ella’s Kitchen Group Limited (“EKG”), which was incorporated in the U.K. on January 15, 2009.
The Complainants’ business is the supply of children’s and baby food products. EKB began using the trademark ELLA’S KITCHEN in relation to such products in the U.K. in January 2006.
In or around August 2007, EKB and the Respondent entered into negotiations for the Respondent to distribute EKB’s snacks and baby food products in Australia and New Zealand under an International Sole Distributorship Contract. Although the draft Contract was never signed, the Respondent purchased baby food products from the EKB and distributed them in Australia under the trademark ELLA’S KITCHEN. Whether this began in August 2007 (when EKB first invoiced the Respondent for goods sold) or September 2008 (as asserted by the Respondent) is in contention, but trading between them appears to have ended in about February 2010. Their relationship terminated in July 2010.
The unsigned Contract (in which the Respondent was described as “the Distributor” and EKB was described as “the Supplier”) contemplated the Distributor using the Supplier’s trademarks. Clause 13.6, in the form annexed to the Complaint, read as follows:
“The Distributor may, at its own cost and with the express written permission of the Supplier, purchase, secure and utilize the most appropriate URL for the sole purpose of promoting, marketing and selling the Products in the Territory. Using this URL, the Distributor may operate a local website (“the Website”), in trust for the Supplier, at its own cost. The Supplier will provide such relevant assets as it owns for inclusion in the Website, and the Distributor shall provide locally relevant assets for upload to the Website, subject to written approved [sic] by the Supplier. In the event of a cessation or termination of this agreement, the Distributor shall transfer ownership of the URL to the Supplier and the Supplier shall pay the Distributor the sum the Distributor paid to initially purchase the URL. Any locally relevant assets uploaded to the website shall remain the property of the distributor. If the Supplier wishes to secure ownership of the website, then the Supplier shall pay the Distributor the costs of website design and development.”
The Domain Name was registered by the Respondent on October 9, 2007. The Domain Name presently resolves to a website depicting a cartoon character standing in a spotlight before a theatre curtain, captioned “Hoopla – curtain raising soon”, with an email address and telephone number.
On January 19, 2011, Mr. Meldrum, on behalf of the Respondent, in response to a request from the Complainants for confirmation that the Respondent was “happy to transfer our domain name back”, said in an email to the Complainants:
“Last year, we were approached by someone wishing to use the domain name for their own purpose (a cooking blog, I believe, and non-competing with Ellas Kitchen baby food). If they decide to [sic] not to purchase the domain, we’ll let you know.”
Thereafter on February 21, March 15, March 23, April 7 and May 9, 2011, the Complainants and their solicitors sent formal and informal communications to the Respondent seeking transfer of the Domain Name. The Respondent did not reply until May 23, 2011, when Mr. Meldrum expressed willingness to propose a fair and reasonable fee for the transfer, covering registration/renewal fees and any subsequent hosting charges. On May 27, 2011, Mr. Meldrum indicated that the Respondent would consider a genuine offer “above $400” for the Domain Name. On May 30, 2011, the Complainants offered AUD$400. The offer has not been accepted by the Respondent. 5. Parties’ Contentions A. Complainants
The Complainants claim common law rights in the ELLA’S KITCHEN trademark in Australia.
The Complainants say the Domain Name is identical to the ELLA’S KITCHEN mark, that the Respondent has no rights in or authority to use that mark, and no rights or legitimate interests in the Domain Name, which is being used in bad faith.
As to legitimacy, the Complainants say any rights or legitimate interests the Respondent had in the Domain Name ceased when their trading relationship and the Respondent’s right to use the trademark ended in 2010, since which time there is no evidence that the Respondent, commonly known as “Nourish”, has been using or preparing to use the Domain Name in connection with a bona fide offering of goods or services. Use for a “holding page” does not give rise to rights or legitimate interests in the Domain Name.
As to bad faith, the Complainants say the email of January 19, 2011, threatened sale to a third party in violation of the Contract and of the Complainants’ trademark rights and the email of May 23, 2011, sought payment in excess of the cost of acquiring the Domain Name. Both emails therefore demonstrate bad faith. The Respondent is retaining the Domain Name primarily for sale to the Complainants or to one of their competitors for valuable consideration in excess the Respondent’s out-of-pocket costs directly related to the Domain Name; threatening future use that would be detrimental to the Complainants’ rights; and preventing the Complainants from reflecting the ELLA’S KITCHEN mark in a corresponding domain name. The Complainants also rely on passive use as constituting bad faith, as was found in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainants seek transfer of the Domain Name to EKB. B. Respondent
The Respondent refers throughout its Response to “the Complainant” in the singular.
The Respondent says that, although no formal agreement was reached, it acted in good faith in purchasing baby food products from the Complainant and distributing them in Australia under the UK-registered trademark ELLA’S KITCHEN between September 2008 and February 2010. At the time of the termination of the relationship in July 2010, there was no legally signed contract or agreement between the Respondent and the Complainant, and no binding obligation on the Respondent in respect to the Domain Name.
Because sales of ELLA’S KITCHEN products were insubstantial in Australia and ceased in or around February 2010, the Complainant has insignificant or non-existent brand goodwill and reputation in Australia. It has no registered trademarks for “Ella’s Kitchen” or similar in Australia.
The Domain Name has never been used by the Respondent in relation the ELLA’S KITCHEN brand and products in Australia and it currently resolves in a way which makes no reference to ELLA’S KITCHEN (UK) or any other trademark of the Complainant.
In 2009, the Respondent was informed that the Complainant did not wish to set up a separately managed Australian website using the Domain Name. Instead, any reference to distribution in Australia would be incorporated into the “” website. The Respondent was under the clear impression that the Complainant did not wish to utilise the Domain Name for the purpose of marketing and promoting the ELLA’S KITCHEN brand in Australia.
Since the Complainant expressed no genuine interest in wishing to use the Domain Name until January 2011, and in the absence of correspondence to the contrary, the Respondent interpreted this behaviour by the Complainant over the six month period beginning in July 2010, as expressing no interest in acquiring the Domain Name. Accordingly, the Respondent considered other options for it, including options for a website delivering information on cooking and recipes, which the Respondent, as registered owner of the Domain Name, considered within its rights to do.
There is no evidence of bad faith on the part of the Respondent in relation to the Domain Name. The Respondent registered the Domain Name in good faith and throughout the duration of the relationship with the Complainant and up to the date of this submission, the Respondent continues to act in good faith with respect to the Domain Name.
With respect to the email correspondence from Mr. Meldrum dated January 19 and May 27, 2011, the Respondent rejects any argument of abusive use or threats in respect to the Domain Name.
In the absence of any signed legal agreement between the Respondent and the Complainant, the Respondent was not obligated or required to take any action with regard to the Domain Name subsequent to the termination of the relationship by the Complainant. The conditions of any draft agreement are not applicable.
On November 12, 2007, the Respondent suggested that Clause 13.6 of the proposed agreement be rewritten so as to fairly and equitably reflect the investment and costs borne by the Respondent in relation to the Domain Name should the Complainant wish to acquire it in the future. The Respondent recommended that costs associated with registration, renewals, hosting, redirections and any web development and design be reimbursed to the Respondent if and when an agreement were reached with the Complainant to acquire the Domain Name.
The Respondent rejects any claim by the Complainant that the offer made in correspondence by Mr. Meldrum to the Complainant is excessive and does not reflect the out-of pocket expenses incurred by the Respondent in relation to the Domain Name since the date of registration. 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, the Complainant must establish that:
(i) the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainants have 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.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), cases decided under the UDRP can be of assistance in applying the Policy.
The entitlement of each of the three Complainants to participate in this proceeding is addressed under the first heading below. A. Identical or Confusingly Similar
This element requires consideration of whether a complainant has rights in a trademark (a question of standing to bring the complaint), and comparison of any such mark with the disputed domain name.
The parties appear to be under the impression that a complainant must show rights in an Australian trademark in order to have standing to bring a Complaint under the Policy. This is not so. As explained in 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin,WIPO Case No. DAU2010-0016:
“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).”
Accordingly, EKIP’s United Kingdom registered trademark ELLA’S KITCHEN provides sufficient standing for it to bring this Complaint. Further, the evidence provided with the Complaint is such as to enable the Panel to conclude that EKB has common law rights in the ELLA’S KITCHEN trademark in the U.K. Hence, it is also entitled to bring this Complaint on those grounds. As the parent company, EKG also has sufficient interest in the ELLA’S KITCHEN marks of its subsidiaries as to entitle it to participate as a Complainant in this proceeding.
The Domain Name comprises the whole of the Complainants’ trademark save for the apostrophe, the absence of which is inconsequential, and the “” suffix, which is to be disregarded: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001. The Panel therefore finds the Domain Name to be identical or confusingly similar to the Complainants’ ELLA’S KITCHEN mark.
The Complainants have established this element of their case. B. Rights or Legitimate Interests
The Complainant’s mark is distinctive. There is nothing before the Panel to indicate that the Respondent, Nourish Foods Pty Limited, is commonly known by the Domain Name or by the name “Ella’s Kitchen”. 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.
Although no agreement was ever signed, it is clear that for more than a year EKB sold goods under the ELLA’S KITCHEN mark to the Respondent and the Respondent resold them under that mark in Australia. The Domain Name was registered with the approval of the Complainant and for the mutual purpose of furthering the bona fide distribution of the Complainant’s goods in Australia. Accordingly, at the time of registration and while the trading relationship between the parties lasted (despite the fact, as asserted by the Respondent, that the Domain Name was never used in any way to promote the Complainants’ goods) the Respondent may very well have had a legitimate interest in the Domain Name. Upon the termination of that relationship, however, the Respondent’s legitimate interest and any rights it might have had in the Domain Name ceased. The “holding page” to which the Domain Name resolves does not give rise to rights or legitimate interests on the part of the Respondent, which is not known by the Domain Name but as Nourish Foods Pty Limited.
Under these circumstances 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
It follows from the above that the Domain Name may very well have been originally registered in good faith. The critical question to be determined in this case is whether it has subsequently been used in bad faith.
It appears that, apart from resolving to a holding page, the Domain Name has not been actively used. However, as under the Uniform Domain Name Policy (which differs from the Policy in requiring proof of both bad faith registration and bad faith use), passive use can nevertheless give rise to a finding of bad faith use in some circumstances. As the learned panelist said in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003:
“7.11 ...what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
None of the circumstances set out in the Policy, paragraph 4(b) as constituting evidence of “registration and [sic] use” of a domain name in bad faith for the purposes of paragraph 4(a)(iii) is present here. However, those circumstances are stated to be without limitation and it is open to the Panel to find bad faith registration or use in other circumstances. Two of the subparagraphs of paragraph 4(b) are nevertheless helpful in this case, since they indicate purposes regarded as connoting bad faith:
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person.
Although the draft Contact was never signed, the Panel finds that it must have been apparent to the Respondent from all of the circumstances that EKB was trading with the Respondent on the basis that the Respondent was authorized to register a domain name suitable for the promotion under the ELLA’S KITCHEN mark of EKB’s products in Australia and that, upon termination of their trading relationship, the Respondent would transfer that domain name to EKB. Thus, the Respondent must have known that, following termination of that trading relationship in 2010, it was not free to sell the Domain Name to anyone else nor to use it for any other purpose.
Had the Respondent genuinely wondered whether the Complainants were no longer interested in the Domain Name, a simple enquiry by the Respondent would have clarified the position. Likewise, if the Respondent did indeed receive an enquiry in 2010 from someone interested in acquiring the Domain Name for use in relation to cooking, the circumstances under which the Domain Name was registered required the Respondent to enquire of the Complainants as to whether they would countenance transfer to a third party. The Panel finds that once the Complainants’ did request transfer of the Domain Name to them in January 2011, to say in response: “If they decide to not to purchase the domain, we’ll let you know” amounted to a threat to transfer the Domain Name to a third party, contrary to the basis upon which the Respondent knew the Domain Name had been registered.
Further, the Respondent’s failure, over a period of months, to respond to numerous formal and informal requests from the Complainants and their solicitors appears to have been intended to take advantage of the fact that the Respondent was the registrant, to the disadvantage and discomfort of the Complainants.
The Panel therefore concludes that the Respondent’s retention of the Domain Name following termination of the trading relationship, contrary to the basis on which the Domain Name was registered, was designed to prevent the Complainant from using it in Australia and to disrupt the Complainants’ business activities and amounted to use of the Domain Name in bad faith. Such finding is, in the circumstances, further supported by the Respondent’s above-described failure over many months to respond to the numerous requests from Complainant.
It is unnecessary to determine whether the sum of AUD$400 exceeded the Respondent’s out-of-pocket costs in relation to the Domain Name.
The Panel finds 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 Complainant Ella’s Kitchen (Brands) Limited upon the Registrar being satisfied of its eligibility. Alternatively, that the Domain Name be transferred to the Complainant Ella’s Kitchen (IP) Limited upon the Registrar being satisfied of its eligibility. Alternatively, that the Domain Name be transferred to the Complainant Ella’s Kitchen Group Limited upon the Registrar being satisfied of its eligibility. Failing all of the forgoing, the Panel orders that the Domain Name be cancelled.
Alan L. Limbury
Sole Panelist
Dated: December 21, 2011
Full & Egal Universal Law Academy