The Complainant is Constable Care Child Safety Foundation Inc., of Western Australia, Australia, represented by Herbert Smith Freehills, Australia.
The Respondent is The Big Bamboo Production Co. Pty Limited of New South Wales, Australia, represented by Michael Jassy & Associates, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TPP Domains Pty Ltd. dba TPP Internet (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 15, 2013, 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 January 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2013.
On February 8, 2013, the Center received an email communication from the Respondent’s legal representative claiming that the Respondent had never received notification of the Complaint. On February 12, 2013 the Center was contacted again by the Respondent’s legal representative maintaining that notification of the Complaint had never been received. The Center was also contacted by the Complainant who stated that it had been copied on and received all emails sent by the Center to the Respondent, including the formal notification of Complaint. On February 13, 2013, the Respondent contacted the Center stating its intention to lodge a Response and requesting a copy of the Complaint. The Center forwarded a copy of the Complaint to the Respondent by email on February 13, 2013 as a courtesy.
The Respondent submitted its Response on February 19, 2013. On the same date, the Center advised that the Response would be treated as a supplementary submission.
The Center appointed John Swinson as the sole panelist in this matter on February 21, 2013. 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 is Constable Care Child Safety Foundation Inc., a not-for-profit organization incorporated on October 22, 1998. The Complainant runs community programs and educational programs aimed at addressing issues relating to children’s personal and social development. It is registered as a charitable gift fund.
The Complainant owns the registered Australian trade mark CONSTABLE CARE (logo mark), Registration No. 1409232 in classes 9 and 41, registered February 16, 2011 (the “Trade Mark”). It has also applied for the registration of Constable Care, Application No. 1495258 in classes 16 and 41. This application was lodged 7 June 2012 and has been opposed by the Respondent.
The Respondent is The Big Bamboo Production Co. Pty Limited. It was incorporated on March 18, 1992. The sole director and shareholder is Stewart Cahn. The Respondent promotes road safety to school children through various means, including the distribution of its own Constable Care branded printed materials. The Respondent has been the registered proprietor of the registered business name Constable Care’s Safety Books (BN97876508) in New South Wales since March 5, 2002.
On August 20, 2012, the Respondent applied to register the following Australian trade marks:
- CONSTABLE CARE, Application No. 1509230 in classes 9, 16 and 41; and
- CONSTABLE CARE logo, Application No. 1509247 in classes 16 and 41.
The Respondent registered the Disputed Domain Name on June 26, 2006. The Disputed Domain Name reverts to a webpage that features a “Constable Care” logo and states that the website is “under construction”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Common Law Rights
The Complainant purchased the common law rights in the Constable Care trade mark in 1995 when it purchased the company SMC Media Services Pty Ltd. It has extensively used the Constable Care trade mark in relation to its business (including in promotional materials and print and television advertisements) since this time. The Complainant has owned the domain name since April 1, 1999 and operates a website at that domain name. It also has a dedicated YouTube channel. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Respondent has no legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name.
The Complainant has requested the transfer of the Disputed Domain Name. The Respondent has refused this request. Registered or Subsequently Used in Bad Faith
The Complainant submits that the following evidence bad faith:
- at the time the Disputed Domain Name was registered, the Complainant had been using the Constable Care trade mark for over a decade and had acquired a substantial reputation and goodwill in that trade mark;
- the Disputed Domain Name has never progressed beyond a holding page (the page states that it is “under construction”), this confirms that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain;
- the Disputed Domain Name was registered in order to prevent the Complainant from reflecting its Trade Mark in a corresponding domain name; and
- the Respondent intentionally attempted to attract for commercial gain, users to its website, by creating a likelihood of confusion with the Complainant’s name or Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website. B. Respondent
The Respondent makes the following submissions. Procedural Matters
The Respondent submits that it never received an official copy of the Complaint. It did not become aware that an official Complaint had been distributed until February 7, 2013 when it received an email from the Center stating that it had failed to comply with the deadline in the Notice of Complaint. The Respondent submitted its Response on February 19, 2013 and the Center advised the Response would be treated as a supplementary submission. Common Law Rights
The Respondent submitted the following timeline:
- Stewart Cahn, the sole director and shareholder of the Respondent, was involved in the inception of the “Constable Care” concept in 1985.
- The “Constable Care” program was officially launched on February 28, 1986 and three trade marks were registered in 1986 and 1987.
- A series of transactions in August 1988 resulted in Stewart Cahn (through his company Stewart Cahn Enterprises Pty Ltd) operating the “Constable Care” business.
- In August 1990, Stewart Cahn set up SMC Media Services Pty Ltd with his father. This company took over the running of the “Constable Care” business.
- In September 1996, SMC Media Services Pty Ltd entered into a transaction with the Community Policing Crime Prevention Council of WA Inc. for the sale of the “Constable Care” business in Western Australia. This sale included the rights to any intellectual property in “Constable Care”, but limited to Western Australia.
- In 2000, SMC Media Services Pty Ltd was placed into voluntary administration. All assets associated with the “Constable Care” business (including the trade marks) were transferred to Stewart Cahn and/or his nominee company Adrema Pty Ltd.
- Stewart Cahn has run the “Constable Care” business since 2000 (initially as Adrema Pty Ltd and now as The Big Bamboo Production Company Pty Ltd (the Respondent)). Identical or Confusingly Similar
The Respondent acknowledges that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. It submits that the Trade Mark registered by the Complainant should have been registered with a geographical restriction to Western Australia. Rights or Legitimate Interests
The Respondent has been holding meetings since June 2008 regarding the design and development of the website at the Disputed Domain Name. The Respondent provided evidence of emails with the website designers and copies of screen shots of proposed pages. Due to personal reasons, little progress was made on the website for a period of time.
The Respondent intends for the website to be fully interactive, featuring games and activities and attracting sponsorship. It is ready to finalize the development of the website. Registered or Subsequently Used in Bad Faith
The Disputed Domain Name is being used for the legitimate purpose of maintaining a presence for the Respondent on the internet and as a launch pad for the full version of the Respondent’s website. The Respondent considers that the use of the Constable Care trade mark outside of Western Australia is an infringement of its common law rights. Reverse Domain Name Hijacking
The Respondent submits that the Panel should make a finding of reverse domain name hijacking by the Complainant. 6. Discussion and Findings
To succeed, the Complainant 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 Complainant has 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 Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. Therefore, the Panel finds it appropriate to refer to UDRP precedent in certain instances when deciding this case. A. Procedural Matters
The due date for the filing of a response was February 7, 2013. The Respondent filed its Response late, on February 19, 2013. In correspondence with the Center on February 8, February 12 and February 13, the Respondent advised that it had not received an official copy of the Complaint.
The Policy contemplates a “speedier” resolution of domain name disputes and provides strict time limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a Panel. Paragraph 10(b) of the Rules gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, Panels will only accept supplementary filings in exceptional circumstances (see eg. F GmbH v. Mr. Chris Olic,WIPO Case No. D2005-0994 and Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc.,WIPO Case No. D2005-0603).
The Panel has reviewed the case file. The Respondent claims that it received four emails relating to the proceedings, but never an official copy of the Complaint. The Panel notes that the same email address for the Respondent has been used in all correspondence, including emails on January 17, 2013 which attached the Complaint and annexures. It also appears that the mailing address provided to the Center and to which the Center sent the Notice of Complaint was incorrect, so the Respondent never received a physical copy of the Complaint.
The Respondent has been active in protecting its rights in the Constable Care name (eg. filing a Notice of Opposition in relation to the Complainant’s trade mark application and comprehensively responding to the Complainant’s cease and desist letter) and responded promptly (through its legal representative) when it was notified of its default. In light of this, the Panel finds the Respondent’s claim that it never received an official copy of the Complaint to be plausible. Further, the Response was submitted to the Center before the Panel’s commencement of the decision making process and the lateness of the Response has not delayed the decision. In the interests of fairness, the Panel will accept the late Response. B. Identical or Confusingly Similar
The Disputed Domain Name is identical or confusingly similar to the Trade Mark in which the Complainant has rights.
The Respondent does not contest this point.
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Paragraph 4(c) lists (non-exhaustively) three circumstances that can demonstrate the Respondent’s rights or legitimate interests 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 organization) 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 non-commercial 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 its business name registration for Constable Care’s Safety Books (BN97876508), which it has held since March 5, 2002.
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 the Respondent has been commonly known (disregarding as inconsequential the suffix “.”) (see eg. Banco Espírito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890; John Hayes v. Vaughan Enterprises,WIPO Case No. D2004-0531 and Kronopol Sp. z o.o v. Lamwood Products (1990) Limited, Levana Schwartz,WIPO Case No. D2007-1596). The Panel prefers the approach taken in John Hayes v. Vaughan Enterprises and Kronopol Sp. z o.o v. Lamwood Products (1990) Limited, Levana Schwartz which focuses attention on the distinctive element common to both the domain name and name claimed to be commonly used.
Here, the Respondent’s business name, and the Disputed Domain Name are not identical. However, as the common element (“Constable Care”) is the same and the additional words are somewhat descriptive, 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 it has been commonly known by the business name (Constable Care’s Safety Books) since at least 2002.
Prior to 2002, the Respondent has provided evidence that Stewart Cahn, its sole director and shareholder, was using “Constable Care” in the course of running his jointly owned business SMC Media Services Pty Ltd. The Respondent submits that this business was sold in September 2006, but that this sale limited the rights to use “Constable Care” to Western Australia. The Respondent provided a copy of an unsigned Business Purchase Agreement, dated September 2006 and a signed cover letter from the Complainant’s solicitors relating to that draft. Although the Agreement is unsigned, the Respondent’s submissions regarding the sale of the business are consistent with the Complainant’s submission that it purchased the common law rights to “Constable Care” as part of the SMC Media Services Pty Ltd business (the Panel notes that the Complainant submits this happened in 1995). The lawyers used by the Complainant in relation to this transaction are the same as the Complainant’s authorized representative for this proceeding.
It is unclear why the Complainant did not provide a copy of that agreement in its Complaint.
The relevant parts of the Agreement are the definitions of “Constable Care” and “Business”:
- “Constable Care” means the use in Western Australia of the intellectual property in the name, drawing, design and artwork associated with the characters set out in schedule 3 and schedule 4; and
- “Business” means the business associated with Constable Care carried out by the Seller in Western Australia.
The interpretation of this Agreement put forward by the Respondent (that SMC Media Services Pty Ltd only sold the rights to “Constable Care” in relation to Western Australia) would mean that SMC Media Services Pty Ltd (now the Respondent) retained the rights to use Constable Care in all other States of Australia. It appears that the Respondent has been using Constable Care since that date outside of Western Australia, and has provided evidence of this use (which included use in child safety activity books). In short, the evidence before the Panel leads to the conclusion that both parties have rights to use Constable Care, in different parts of Australia.
As to paragraph 4(c)(i), the Panel accepts that the Respondent received notice of the subject matter of the Dispute on June 6, 2012 when it received a cease and desist letter from the Complainant’s 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 timeline provided by the Respondent is relevant in assessing whether the Respondent’s use was bona fide. According to this timeline, the Respondent has been using a name corresponding to the Disputed Domain Name since 1986 in connection with goods and services relating to children’s road safety. Further, the Panel has reviewed the Respondent’s evidence regarding the design and development of the website at the Disputed Domain Name and finds that it has been making demonstrable preparations to use the Disputed Domain Name in connection with these goods and services prior to June 6, 2012.
Previous Panel decisions have found that there is no use if only an “under construction” sign appears on a website. This is not the case here. The website at the Disputed Domain Name features a labeled picture of “Constable Care” and a speech bubble stating “THINK SAFETY”.
In light of the above, the Complainant has failed to show that the Respondent lacks a legitimate interest. The second element of the Policy is not satisfied.
In certain cases, where there are factual issues in dispute, or complex legal issues raised, making a decision in accordance with the Policy and the Rules is fraught with dangers. There is no oral examination of witness and no automatic right of reply. Here, there is an unsigned business sale agreement (which is open to possible interpretations), conflicting pending trade mark applications, a pending trade mark opposition proceeding, and a complicated factual assertion to establish the Respondent’s chain of title to an unregistered trade mark. In a different forum, with additional evidence, the decision maker may reasonably reach different conclusions to that arrived at by this Panel. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant 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 Complainant does not appear to have acted in bad faith. It has made out an arguable case, and the facts do not support a finding that the Complainant 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
Date: March 8, 2013
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