The Complainants are Mrsupplement Australia Pty Limited and M Pty Limited of Seven Hills, New South Wales, Australia represented by Banki Haddock Fiora, Australia.
The Respondent is Tony Hatzeandreou of Lakemba, New South Wales, Australia represented by Axis Legal Pty Limited, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PlanetDomain Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 2012, 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”), 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 June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Response was filed with the Center on July 11, 2012.
The Center appointed John Swinson as the sole panelist in this matter on July 17, 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
The Disputed Domain Name was registered with the Registrar on December 5, 2010.
The Complainants, Mrsupplement Australia Pty Limited (the “First Complainant”) and M Pty Limited (the “Second Complainant”), are online retailers of food and dietary supplements. They employ 15 staff and have an annual turnover of more than AUD$ 10 million.
The Second Complainant was incorporated in March 2004. The First Complainant was incorporated in August 2010.
The First Complainant owns the following Trade Marks:
- Registration No. 1157620 for M MRSUPPLEMENT.COM.AU YOUR PERFECT TRAINING PARTNER! logo mark (registered January 23, 2007) (the “Logo Mark”);
- Registration No. 1403661 for MR SUPP (registered January 27, 2011); and
- Registration No. 1403662 for MR SUPPLEMENT (registered January 27, 2011)
- (together, the “Trade Marks”).
The First Complainant licenses the Second Complainant to use the Trade Marks.
The First Complainant is the registered owner of, or is entitled to control, the following domain names:
- (the registration date was not provided, the Panel assumes this domain name was registered prior to the other domain names listed below);
- (registered July 10, 2009), redirects to ;
- (registered May 20, 2009), redirects to ; and
- (registered October 4, 2009), redirects to .
The Second Complainant is the registered owner (on behalf of the First Complainant) of the domain name (registered August 30, 2011), which redirects to .
The Respondent is a sole trader who sells food and dietary supplements. He has the Australian Business Number 25 340 359 421, which has been active since October 5, 2009. His trading name, “Mr Supplements”, was registered on November 19, 2009.
The Respondent lodged a trade mark application for the logo mark MR SUPPS on May 4, 2012 (Application No. 1489484). This application is pending. According to the Trade Marks Office database, an adverse report was issued by the Trade Marks Examiner on July 8, 2012 (but the Panel does not have a copy of this report). 5. Parties’ Contentions A. Complainants
The Complainants make the following submissions.
General
The Complainants are Australia’s largest online retailer of food and dietary supplements, with a substantial customer base and corresponding reputation and goodwill.
The Complainants are commonly referred to as “Mr Supplement” and have also been referred to as “Mr Supplements” and “Mr Supp”. Identical or Confusingly Similar
Although the word “supplement” is commonly used to describe the products sold by the Complainants, the Logo Mark is distinctive due to the addition of “.” (indicating the online nature of the business) and “Mr” (see similar trade marks for “Mr Peanut”, “Mr Clean” and “Mr Video”).
The Disputed Domain Name is confusingly similar to the Trade Marks, including the Logo Mark (notwithstanding the graphic element). Rights or Legitimate Interests
The Complainants have not licensed the Respondent to use any of the Trade Marks or to register the Disputed Domain Name.
The Complainants have common law rights in “Mr Supplements”, “Mr Supplement” and “Mr Supp”, from the date each of these were registered as domain names (see paragraph 4). The Complainants have provided evidence which shows that they have been referred to by these names on Facebook.
The Complainants’ representatives sent the Respondent a letter of demand on March 13, 2012. The next day the Respondent telephoned the Complainants’ representative and said, “What’s this all about? I’ve checked trademarks and his is Mr Supp and mine is Mr Supps. It’s different.” The Respondent also said that his ABN registration for MR SUPPLEMENTS was different to the Complainants’ logo mark. The Respondent’s solicitors replied, claiming that the Respondent first commenced selling dietary supplements “under his own brand” on November 22, 2009 and following registration of the Disputed Domain Name, the Respondent’s website was “launched in early 2011”. The website has a 2012 copyright notice and has not been archived, both of which indicate that it was first posted on in the last six months.
The Respondent has not been trading as “Mr Supps”, he has an ABN is his own name, trading as “Mr Supplements”.
Due to the significant reputation of the Complainants in the market for dietary supplements, the Respondent made a conscious decision to register the Disputed Domain Name, believing it to be permissible because it was different from “MR SUPPLEMENT”. He would have found that , and (registered by other parties) and the domain names registered by the Complainants were unavailable to him, leaving him with the Disputed Domain Name.
The Respondent’s use of the trading name MR SUPPLEMENTS and/or MR SUPPS cannot amount to bona fide use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services, because at all material times the Respondent was aware of the Complainants’ prior rights.
The Respondent has registered the Disputed Domain Name in an attempt to divert online business from the Complainants. This is not a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
The Respondent has now lodged an application for registration of a trade mark. This was done primarily to circumvent the application of the auDRP (see paragraph 2.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Registered or Subsequently Used in Bad Faith
The Respondent has registered and is using the Disputed Domain Name in bad faith.
For the reasons set out above, it is submitted that Disputed Domain Name was registered in bad faith, primarily for the purpose of disrupting the business or activities of the Complainants.
The Disputed Domain Name is being used in bad faith. The Respondent is intentionally attempting to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainants’ names and Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainants have experienced such confusion. They receive between two and four calls each month due to confusion between the Respondent and the Complainants.
The following further evidence the Respondent’s bad faith:
- the Respondent’s homepage incorrectly states that the Respondent is a company owner;
- the Respondent’s homepage is visually similar to the Complainants’ website;
- the Respondent’s website does not indicate who operates the website, or how they can be contacted (other than by email), this is contrary to accepted international standards for e-commerce; and
- the Respondent does not comply with relevant codes in relation to therapeutic goods. B. Respondent
The Respondent makes the following submissions.
General
The Respondent commenced selling dietary supplements under his brand “Mr Supps” on eBay on November 22, 2009. The Respondent has invested a substantial amount of time and funds into building up his reputation online and this resulted in the Respondent being given Top Rated Seller status on eBay.
“Supps” was chosen as it is a common abbreviation for the word “supplements” in the bodybuilding, fitness and health industry. Identical or Confusingly Similar
There is no similarity between the Disputed Domain Name and the Complainants’ Logo Mark.
The word “Mr” is not distinguishable as a prefix because of its wholly descriptive nature. There are numerous other similar traders whose registered trademarks in Australia also include the words “Mr” and/or “supplement(s)”.
The Complainants applied for registration for the remaining trade marks on January 27, 2011. The Respondent presumes that the Complainants applied for these trade marks to trade off the Respondent’s reputation in the name “Mr Supps”. Rights or Legitimate Interests
The Respondent has legitimate interests in respect of the Disputed Domain Name for the following reasons:
(a) before receiving the notice of the dispute, the Respondent used the Disputed Domain Name on his eBay site and his website in connection with a bona fide offering of dietary supplement goods;
(b) the Respondent has been commonly known as “Mr Supps” on the eBay site as a supplement seller since November 22, 2009; and
(c) the Respondent has been making fair use of the Disputed Domain Name and is not intentionally attempting to attract Internet users by creating a likelihood of confusion with the Trade Marks, nor is the Respondent attempting to tarnish the Trade Marks (the Respondent’s and the Complainants’ websites bear different logos, which are not confusingly similar (see below)).
Registered or Subsequently Used in Bad Faith
The Respondent registered the Disputed Domain Name primarily for the purpose of selling his goods via the website (together with the eBay site). He was inspired to register the Disputed Domain Name as it was his eBay ID.
The Respondent has not used the Disputed Domain Name in any way which would confuse the public. The Respondent has never received any inquiries from customers who are searching for the Complainants or their website. Reverse Domain Name Hijacking
The Complainants have brought this Complaint in bad faith to harass the Respondent. This is an abuse of the administrative proceedings as the Complainants:
(a) knew that the Respondent has been trading under the brand “Mr Supps” on the eBay site and online since 2009;
(b) knew that the Respondent used the Disputed Domain Name as part of a bona fide business offering;
(c) knew or clearly should have known at the time that it filed this Complaint that they could not prove one of the essential elements required by the Policy;
(d) have made an attempt at Reverse Domain Name Hijacking through use of their superior financial status;
(e) have raised groundless actions against the Respondent, namely:
(i) by sending a letter of demand regarding trade mark infringement (although the Trade Marks are not confusingly similar and were not registered before the Disputed Domain Name);
(ii) made a groundless complaint to the Australian Department of Health and Aging (Therapeutic Goods Administration) in relation to the Respondent’s website;
(iii) made a VeRO complaint to eBay to change the Respondent’s eBay ID; and
(iv) filed this auDRP Complaint and its accompanying evidence inappropriately by disclosing a “without prejudice” letter. Further, the entirety of the correspondence between the parties was not annexed (a letter from the Complainants’ solicitors, dated April 17, 2012, offering the Respondent AUD$ 4,000 to comply with undertakings requested by the Complainants). 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainants.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case. A. Procedural Issues
In this case, the Respondent’s “without prejudice” letter of April 11, 2012 was arguably written for the purposes of settlement. This raises the issue of whether it is subject to the common law without prejudice rule. The majority of UDRP proceedings have come down against the application of the common law rule in these circumstances (for an extensive analysis see The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453).
The Panel finds that the letter can be considered when determining this dispute. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights.
The Panel accepts that the First Complainant owns, and the Second Complainant is licensed to use, the Trade Marks.
Additionally, the Panel accepts that the Complainants have rights in the following names (as company, business or other legal or trading names as registered with the relevant Australian government authority):
- the registered company name “Mrsupplement Australia Pty Limited”; and
- the registered company name “M Pty Limited”.
The Complainants also submit that they have acquired common law trade mark rights in relation to “Mr Supplements”, “Mr Supplement” and “Mr Supp” given their extensive use of those terms as trade marks. In order to establish common law trade mark rights, the Complainants must show that these names have become a distinctive identifier associated with the Complainants or their goods and services (see generally, Fairview Commercial Lending, Inc. v. Aleksandra Pesalj,WIPO Case No. D2007-0123). Here, the Complainants have submitted evidence in support of common law rights.
The Panel does not need to determine whether the Complainants have provided sufficient evidence of their common law rights, as the Complainants have rights in relation to the Trade Marks and their registered company names.
It is not relevant for the purposes of this element that the Complainants acquired some of these trade mark rights after the Disputed Domain Name was registered; however, the Panel may take this into consideration when considering the other elements of the Policy.
Here, the Complainants’ MR SUPP registered trade mark is confusingly similar to the Disputed Domain Name. “Supp” is the dominant feature of both the trade mark and the domain name. The addition of “S” at the end of the Disputed Domain Name is insufficient to prevent user confusion. Further, the addition of the “.” suffix does not render the Disputed Domain Name sufficiently different from the MR SUPP mark. As such, the Panel finds that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainants have rights.
While the other Trade Marks and the Complainants’ company names may also be confusingly similar, the Panel does not need to consider these as the finding of confusing similarity in relation to the MR SUPP mark is sufficient to satisfy this element.
The Complainants succeed on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainants assert that the Trade Marks are well-known, and that they also had a common law reputation in “Mr Supplements”, “Mr Supplement” and “Mr Supp” prior to registration of the corresponding registered trade mark. The Complainants also assert that they have not authorized the Respondent to use the Trade Marks or to register the Disputed Domain Name and that the Respondent has not been making a bona fide use of the Disputed Domain Name because he was using it to divert business from the Complainants. In the Panel’s view, this establishes a prime facie case against the Respondent and the burden shifts to the Respondent to provide evidence of his rights or legitimate interests under paragraph 4(c) of the Policy (see Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753).
Paragraph 4(c) lists (non-exhaustively) three circumstances that can demonstrate the Respondent’s rights or legitimate in the Disputed Domain Name:
(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); or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
In relation to paragraph 4(c)(ii), the Respondent has provided a copy of his Feedback profile from eBay which shows that he opened his account with the member name “mr-supps” on November 22, 2009. (This member name is now “mr-gifted”, and the Respondent uses “Mr Supps” as the name of his eBay store.)
A number of cases have addressed whether paragraph 4(c)(ii) of the Policy requires that the domain name correspond precisely with the name by which a respondent has been commonly known (disregarding as inconsequential the suffixes “.” and “.”) (see e.g., Banco Espírito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890 and John Hayes v. Vaughan Enterprises,WIPO Case No. D2004-0531). The Panel prefers the approach taken in John Hayes v. Vaughan Enterprises and Arizona Golf Properties, Inc. v. Mr. Dean Benigno d/b/a Realty Executives,WIPO Case No. D2003-0571, which focuses attention on the distinctive element common to both the domain name and name claimed to be commonly used.
Here, due to the hyphen in the Respondent’s eBay name, “mr-supps” and “mrsupps” are not identical. However, as the common elements are the same, the Panel finds that the Respondent has a right and a legitimate interest in the Disputed Domain Name because the evidence before the Panel establishes that he has been commonly known by the name “mr-supps” on eBay since 2009.
As to paragraph 4(c)(i), the Panel accepts that the Respondent received notice of the subject matter of the Dispute on March 13, 2012 when he received a letter of demand from the Complainants’ solicitors. The question is whether, prior to this date, the Respondent was making a bona fide use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services.
The following timeline is relevant in assessing whether the Respondent’s use was bona fide:
- March 4, 2004: the Second Complainant is registered as a company;
- January 23, 2007: the Logo Mark is registered by the Complainants;
- 2009 (various dates): the Complainants’ domain names are registered;
- November 22, 2009: the Respondent opens an eBay account as “mr-supps”;
- December 5, 2010: the Disputed Domain Name is registered;
- January 27, 2011: the Complainants register the remaining Trade Marks, including MR SUPP; and
- March 13, 2012: the Respondent receives notice of the subject matter of the Dispute.
The Respondent has been using a name corresponding to the Disputed Domain Name (being his eBay member name “mr-supps”) since November 22, 2009. At the time the Respondent created this name the Complainants had rights in the Logo Mark and used the company name M Pty Limited.
At this point, it is worth noting that this is not the appropriate forum for any findings regarding whether the Disputed Domain Name has infringed the Complainants’ rights in the Logo Mark. The auDRP authorizes a Panel to determine whether a domain name incorporating a complainant’s trade mark violates the terms of the respondent’s registration. The Panel is not authorized to rule on whether the registration and use of the Disputed Domain Name is a trade mark infringement (see e.g., Sunovion Pharmaceuticals Inc. v. ProCommerce, LLC,WIPO Case No. D2012-0232).
The Complainants also provided evidence of common law rights. At the time the Respondent created his eBay name, the Complainants held registrations for the domain names , , and , all of which directed users to the website at the domain name. The Complainants have provided some evidence of being referred to as “Mr Supplements”, “Mr Supplement” and “Mr Supp” on Facebook; however, as this evidence is from 2010, it is not relevant in determining the Complainants’ common law rights at the date the Respondent set up his eBay account.
The Panel finds that the Complainants may have had common law rights in the name “Mr Supplement” at the date that the Respondent created his eBay name. However, at this time, the Panel does not have sufficient evidence to determine whether the Complainants had common law rights in “Mr Supp” or “Mr Supps” at that time. On the Complainants’ own evidence the domain name was merely a redirection to the website at , so there is little evidence of independent use or reputation in “Mr Supp” by the Complainants in November 2009.
The Respondent asserts that he was not aware of the Complainants or their website until he received the letter of demand. Even if the Respondent had been aware, the file note annexed to the Complaint indicates that the Respondent considered that the Disputed Domain Name was sufficiently different from any mark or name in which the Complainants had rights.
The Respondent’s response the Complainants’ letter of demand states that his business (conducted through eBay and the website at the Disputed Domain Name) turns over AUD$ 2,000 - AU$D 2,500 per week, and the Respondent’s eBay profile states that he is a “top-rated seller”. The Respondent had been carrying on this business for a period of over two years before receiving notice of the subject matter of the Dispute.
Thus, the Panel considers that there is not sufficient evidence to demonstrate that, in November 2009, the Respondent registered the Disputed Domain Name knowing of the Complainants or knowing of the Complainants’ use of “Mr Supp”, or with the intent to trade off the reputation of the Complainants. Thus, use by the Respondent of “Mr Supps” as an eBay member name, and subsequently in the Disputed Domain Name, was (in this Panel’s view, based on the evidence presented), a bona fide use of “Mr Supps”. The fact that the Respondent has been using “Mr Supps” since 2009 without protest from the Complainant is also relevant here.
In light of the above, the Panel finds that the Respondent has been making a bona fide use of a name corresponding to the Disputed Domain Name, in connection with an offering of goods, being dietary supplements, since the date he created his eBay account. Further, since the date the Disputed Domain Name was registered, the Respondent has been making a bona fide use of the Disputed Domain Name.
Accordingly, the Complainants have failed to show that the Respondent lacks a legitimate interest. The second element of the Policy is not satisfied. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.
In light of the Panel’s finding of in relation to the second element of the Policy, it is unnecessary to consider this element. E. Reverse Domain Name Hijacking
The Panel makes no finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith” against a respondent. The Complainants do not appear to have acted in bad faith. They have made out an arguable case, and the facts do not support a finding that the Complainants brought the case despite knowing that all of the elements would not be satisfied. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Dated: July 25, 2012
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