The Complainant is Pickles Auctions Pty Ltd of New South Wales, Australia, represented by Hall & Wilcox, Australia.
The Respondent is Complete Hire Pty Ltd of New South Wales, Australia. 2. The Domain Name(s) and Registrar(s)
The disputed domain name (the “Domain Name”) is registered with NameScout Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2012. On February 20, 2012, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the Domain Name. On February 22, 2012, NameScout Corp. 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. On March 13, 2012, the Respondent sought an extension of time of two weeks, without explanation. On March 14, 2012, the Complainant having declined to consent and there being no exceptional circumstances as required by the Rules, paragraph 5(d), the Center declined to extend the period for Response.
A Response was filed with the Center on March 15, 2012. Next day, Mr. Murray Dummer, on behalf of the Respondent, said the Response had been prepared by his secretary for him to finalise but that he had not had time to do so as his request for an extension of time had been declined. On March 19, 2012 Mr. Dummer submitted another version of the Response, describing it as the Response the Center should have received. Pursuant to the Rules, paragraph 10(b), to ensure that each party has a fair opportunity to present its case, the Panel has chosen to accept the version received on March 19, 2012 as the formal Response.
Unsolicited further submissions were received by the Center from the Respondent on March 26 and March 28, 2012 (one on each day) and two on April 2, 2012. Unsolicited submissions should be accepted only in exceptional circumstances, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and Wal-Mart Stores, Inc. v. Larus H. List,WIPO Case No. D2008-0193 and the cases there cited. The Respondent has shown no exceptional circumstances as to why its unsolicited further submissions should be admitted. Accordingly, the Panel will consider only the Complaint and the Response of March 19, 2012.
The Center appointed Alan L. Limbury as the sole panelist in this matter on April 4, 2012. 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 (undisputed facts)
The Complainant is one of Australia’s most prominent auction businesses and is the largest auctioneer of used vehicles in Australia. It has traded under the name Pickles since 1964 and it uses the Pickles name to promote its auctioneering activities. It is the proprietor of Australian registered trademarks in relation, inter alia, to auctioneering services, Nos. 1420551 PICKLES ONLINE and 1420553 PICKLES, both registered on November 15, 2011 and having the priority date April 15, 2011.
The Domain Name was registered on October 22, 2007. On December 8, 2011 and for some time beforehand, it resolved to the website belonging to Grays NSW Pty Ltd (“Grays Online”), a competitor of the Complainant.
The business of the Respondent is the leasing and selling of building and construction equipment under the name “Complete Hire”. Mr. Dummer has been the sole director and company secretary of the Respondent since its incorporation in 1995. He has had dealings with the Complainant since 2002 and has been a client of the Complainant and of Grays Online as both a buyer and seller of plant and equipment for many years. He is a regular buyer and seller at all Sydney auctions.
On November 23 and December 12, 2011, the Complainant sent cease and desist letters to the Respondent seeking transfer of the Domain Name, to which there were no replies. Following those letters, since mid-December 14, 2011, the Domain Name no longer resolved to the Grays Online website but to a sponsored link portal which included links to competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant says it has had an online presence since February, 2004. It claims both common law and registered trademark rights in PICKLES ONLINE (used since 2004) and PICKLES (used since 1964), and says the Domain Name is identical to the former and confusingly similar to the latter. It says the Respondent has no rights or legitimate interest with respect to the Domain Name, which was registered or is subsequently being used in bad faith.
As to legitimacy, the Complainant says it has not authorized the Respondent to use the Domain Name nor its trademarks; that its common law rights in the PICKLES mark pre-date the Domain Name registration; and that none of the circumstances are present which could establish rights or legitimate interests pursuant to the Policy, paragraph 4(c).
As to bad faith, the Complainant says the circumstances fall within the Policy, paragraphs 4(b)(ii), (iii) and (iv) and that the redirection to the Grays Online website and the failure to respond to the Complainant’s letters also constitute “general bad faith”, citing Woolworths Limited v. Cracka IP Limited,WIPO Case No. DAU2011-0028 and Jean Heitx v. Ghidella, Rosalia,WIPO Case No. DAU2011-0023. B. Respondent
The Respondent says the Domain Name was registered to promote the marketing and sale of pickles. Mr. Dummer intended to establish an online marketing platform as a hobby for his wife and three children. Advice was obtained at the time of registration that there was no need to register a business name for an activity that was to be conducted exclusively online. A search of the trademark database confirmed that no trademark existed for PICKLES ONLINE and that there was no conflict with any other similar trademark in the category of directly marketed pickles on the internet.
The Domain Name was registered by the Respondent, Mr. Dummer’s plant and equipment business, because it had an existing account with the Registrar.
Discussions were initially undertaken with a number of local suppliers of similar items including sauces, yoghurt, olive oil, wine, cheese and meat. It was agreed that much work needed to be done to develop the online concept and that multiple products could be included in this online concept. Individual supplier/producers were initially very enthusiastic and supportive of the concept in principle as their individual product lines and sales volume did not justify the investment in an online strategy. The Respondent was to be the financial backer of this start up.
In 2008, the global financial crisis put enormous pressure on the operations of the Respondent and all non core activities were put on hold until strength could be returned to the company’s financial position.
A representative of the Complainant contacted Mr. Dummer approximately three years ago confirming interest in the Domain Name. Mr. Dummer said it was not for sale as he intended to use it for an online business venture. Hence, the Complainant was aware that the Domain Name had been registered before it applied to register the PICKLES ONLINE trademark.
The Domain Name was forwarded to the Grays Online website in order to promote a sale that Mr. Dummer intended to undertake with Grays Online. Mr. Dummer was made aware of this feature by his IT consultancy firm, which suggested that a more cost effective way of selling his wife’s pickles may be to use the Grays Online marketing platform to gain some initial sales and to get a better feel for the market for this low margin, labour intensive product and to give it a try. The sale did not eventuate as not enough product could be sourced to make it viable, however leaving the name forwarding in place was simply an oversight/error, corrected immediately upon being notified by the Complainant’s solicitors. At no stage did it occur to Mr. Dummer that this activity would cause any issue and it was simply enabled by forwarding the Domain Name details to Grays Online who sell all sorts of items including meat, cheese, wine, olive oil and a far more diverse range of items than the Complainant currently offers.
The Complainant is primarily a traditional auctioneering business where buyers and sellers alike attend their depots to bid on items they sell whereas Grays Online are focused on web based marketing and auction sales. Their strengths are at opposite ends of the market. They co-exist and enjoy enormous success due to their non competing business models.
Mr. Dummer says he did not see the letter of November 23, 2011 until the subsequent letter of December 12, 2011 was sent, whereupon he sought legal advice and it was decided not to respond to the heavy handed request. The forwarding function was cancelled immediately as requested. Mr. Dummer was not aware that sponsored links were activated, is unsure how this has occurred, did not instruct the Registrar to undertake this activity nor has the Respondent received a fee or reward from the Registrar or any other party. This activity will cease when the Domain Name is unlocked.
The Respondent denies that the Domain Name is identical or confusingly similar to the Complainant’s trademarks, noting that the PICKLES ONLINE mark was registered 4 years after the Domain Name was registered and that selling pickles online has no connection or relevance to Pickles’ plant and equipment auctions.
As to legitimacy, the Respondent denies that a prima facie case has been established, saying the Complainant’s permission was not and is not required to register the Domain Name because there is no link or connection between the trademark and the market for pickles. The Respondent asserts that it has a legitimate and ongoing interest in the Domain Name, which has not yet been used for the purpose intended due to lack of financial resources. Mr. Dummer and his family and children have an interest, hobby and passion that have been passed down through many generations.
The Respondent does not contend that it is commonly known by the Domain Name. In response to the Complainant’s submission that the Respondent has not made any legitimate, non-commercial or fair use of the Domain Name, the Respondent says that, as previously outlined, the business model has taken longer to develop than initially planned with limited resources.
The Respondent says all actions were undertaken in good faith; no bad faith or confusion was ever intended and no financial gain was ever received. The Domain Name was temporarily used to promote a proposed sale of pickles relish online. No authority was given by the Respondent to use the Domain Name for any other purpose and the Respondent was unaware of and did not consent to any such use. After being advised that the Domain Name was being forwarded to Grays Online, it was immediately stopped as requested. The sponsored link activity has been undertaken without the Respondent’s authority, knowledge or consent and will cease as soon as it can be addressed. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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
The relevant time at which it is necessary for a Complainant to show that it has rights is when the Complaint is filed see Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin,WIPO Case No. D2005-0038 and the cases there cited. It is common ground that, at that time, the Complainant had rights in its registered trademarks PICKLES and PICKLES ONLINE. The fact that both marks were registered after the registration of the Domain Name may be relevant to the legitimacy and bad faith elements.
The Domain Name is clearly identical to the Complainant’s PICKLES ONLINE mark, the “.” suffix being inconsequential and to be ignored.
The word “online” is descriptive and does not detract from the distinctiveness of the Complainant’s PICKLES mark. The Panel finds the Domain Name to be confusingly similar to that mark.
The Complainant has satisfied Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under Paragraph 4(a)(ii) of the Policy, the Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. If a prima facie case is made, the Respondent carries the burden of demonstrating, by evidence as distinct from assertion, that it has rights or legitimate interests in the Domain Name.
The Complainant has provided evidence of its use, since 1988, of the name PICKLES as a trademark, as distinct from its corporate name, in connection with the provision of auctioning services. The Panel finds that, prior to the registration of the Domain Name, the Complainant had, through use, acquired common law trademark rights in the name PICKLES in connection with auctioneering services.
The Response concedes that Mr. Dummer, the sole director and company secretary of the Respondent, had dealings with the Complainant since 2002 and has been a customer, as buyer and seller at the Complainant’s auctions, for many years. The Panel finds that Respondent, through Mr. Dummer, was well aware of the Complainant’s PICKLES mark when the Domain Name was registered in 2007.
Under these circumstances, in the absence of permission from the Complainant for the Respondent, whose name is Complete Hire Pty Ltd, to register the Domain Name or to use the Complainant’s PICKLES mark, and in light of the uses to which the Domain Name has been put, the Panel finds that the Complainant has established a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of the Respondent.
In seeking to demonstrate that it has rights or legitimate interests in the Domain Name, the Respondent relies on the Policy, paragraph 4(c)(i):
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring).”
It should be noted that any such finding is to be based on evidence presented. The Respondent has provided no evidence to support its assertion that the Domain Name was registered in order to engage in the online marketing and sale of pickles. If, as asserted, discussions were initially undertaken with a number of local suppliers of similar items including sauces, yoghurt, olive oil, wine, cheese and meat, one would think it to have been possible to provide one confirmatory statement from one of them. Likewise, one would think it might have been possible to obtain a confirmatory statement from the IT consultant who suggested forwarding the Domain Name to the Grays Online website as a more cost effective way of selling Mr. Dummer’s wife’s pickles.
In the absence of any evidence whatsoever to support any of the Respondent’s assertions as to why the Domain Name was registered and why it was forwarded to the website of a competitor of the Complainant, the Panel finds that the Respondent has not rebutted the Complainant’s case and has no rights or legitimate interests in the Domain Name.
The Complainant has therefore satisfied Paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith
The Complainant must prove on the balance of probabilities that the Domain Name was registered in bad faith or that it has subsequently been used in bad faith. The Complainant invokes paragraphs 4(b)(ii), (iii) and (iv) in this regard:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.”
As to (ii), there is no evidence of a pattern of conduct by the Respondent. As to (iii), the Respondent is not a competitor of the Complainant.
As to (iv), the Respondent’s sole director and company secretary has been a customer of the Complainant since 2002 and must have been well aware of the Complainant’s common law trademark PICKLES when the Domain Name was registered. The Panel treats his knowledge as the Respondent’s knowledge.
Having regard to the absence of any evidence to support the Respondent’s assertions that the Domain Name was registered in order to conduct the online marketing and promotion of pickles, the Panel infers that there was no such innocent motivation on the part of the Respondent and that the Domain Name was registered in order to benefit in some way from the confusion of internet users likely to be generated by the Domain Name, alternatively in order to cause some detriment to the Complainant from that likely confusion.
The only uses to which the Domain Name has been put have been to forward it to the website of a competitor of the Complainant and, following the cease and desist letters, to resolve to a sponsored link portal which included links to competitors of the Complainant. Sponsored links of that kind usually generate “Pay Per Click” revenue, which may or may not be shared by the registrant and the portal host. The presence of such links leads this Panel to conclude that the Respondent used the Domain Name to attract internet users to the sponsored link portal for commercial gain.
The Respondent seeks to distance itself from the sponsored link portal, claiming to have been unaware of the sponsored links and unsure how this occurred, saying that it did not instruct the Registrar to undertake this activity. The Respondent also denies receiving a fee or reward from the Registrar or any other party. These facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons, as stated in Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912:
“(i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.”
The Panel therefore finds that circumstances contemplated by paragraph 4(b)(iv) are fully met. The Panel concludes that the Domain Name was registered in bad faith and that it was also used in bad faith. 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 provided that the Registrar is satisfied that the Complainant is eligible to be the holder and registrant of a domain name in the “.” domain name space. In the alternative, should the Registrar not be so satisfied, the Panel orders that the Domain Name be cancelled.
Alan L. Limbury
Sole Panelist
Dated: April 16, 2012
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