The Complainant is Debbie Morgan Macao Commercial Offshore Limited of Macao, China, Missguided Limited of United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Mishcon de Reya, Solicitors, UK.
The Respondent is Samir Vora of Mumbai, India represented by Clayton Utz, Australia. 2. The Domain Names and Registrar
The disputed domain names and are registered with SafeNames Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2013. On August 19, 2013, the Center transmitted by email to SafeNames Ltd. a request for registrar verification in connection with the disputed domain names. On August 23, 2013, SafeNames Ltd. 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 August 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2013. The Response was filed with the Center on September 15, 2013.
The Center appointed Warwick A. Rothnie, Keith Gymer and Philip N. Argy as panelists in this matter on October 11, 2013. The Panel finds that it was properly constituted. Each member of 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 First Complainant Debbie Morgan Macao Commercial Offshore Limited owns a number of registered trade marks, including:
- Community Trade Mark (CTM) No. 008946329, MISSGUIDED, registered on September 2, 2010 for a range of goods in International Classes 9, 14, 18 and 25 including clothing, jewellery and bags;
- Australian Trade Mark No. 1450916 registered from August 2, 2011 for a figurative version of the MISSGUIDED trade mark also for a range of goods in International Classes 9, 14, 18 and 25 including clothing, jewellery and bags (based on International Trade Mark No. 1090389); and
- United States Trade Mark No. 4148443 registered on August 2, 2011 for a figurative version of the MISSGUIDED trade mark in respect of a range of goods International Classes 14, 18 and 25 including clothing, jewellery and bags.
The Second Complainant Missguided Limited is the First Complainant’s exclusive licensee. It has been operating an e-commerce business selling women’s fashion clothing and accessories by reference to the “missguided” brand from the First Complainant’s domain name since 2008. This business was launched in Australia and the United States of America (“USA”) from the domain names and in about February 2013. Except where necessary to distinguish between the two, the Panel will just refer to the Complainants for ease of reference.
The first disputed domain name was originally registered by Wasabi Frog Limited (Boohoo), which is another UK-based online retailer of women’s fashion. According to the Complainants, Boohoo is one of their closest competitors. According to the Registrar the disputed domain names and were registered on, respectively, February 7 and February 16, 2012. It appears from the record that Boohoo was the registrant of the first disputed domain name in early to mid-February 2012.
The Respondent became the registrant of both disputed domain names some time after February 2012. At or very close to the same time as he became the registrant of the disputed domain names, the Respondent also registered a number of other domain names which are not in issue in these proceedings. They included , , , and a number of other domain names which were the subject of a proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP), Debbie Morgan Macao Commercial Offshore Limited, Missguided Limited v. Samir VoraWIPO Case No. D2013-0737 (the “UDRP Proceeding”).
In June 2012, the Respondent also registered the domain names and . The Respondent also registered the domain names , and . The date of registration of these domain names is not available. Axparis, Fashion Union and Rare London are the brand names of other online women’s fashion retailers in competition with the Complainants and Boohoo.
On October 29, 2012, the Respondent applied to register MISSGUIDED as a trade mark, No. 1522755, in Australia in International Class 35 in respect of:
The bringing together, for the benefit of others, a variety of adult novelty products being body lotions, massage oils and creams, skin lubricants, electric massage apparatus, personal vibrators, pre-recorded CDs and DVDs featuring adult films or sexual instruction, imitation sexual organs, leather whips, leather wrist and ankle straps and inflatable dolls, for customers to conveniently view and purchase these products in a retail store and via a global computer network; mail order and on-line retail and wholesale services in relation to the aforesaid products.
The application was accepted by the Registrar in February 2013, but is now under opposition by the Complainants.
On October 29, 2012, the Respondent also applied to register Australian Trade Mark No. 1522765, FASHION UNION, for a range of goods in International Class 25.
On November 1, 2012, the Respondent also applied to register as trade marks:
- Australian Trade Mark No. 1523653, MR GUIDED, for a range of goods in International Class 25 and the same range of services in International Class 35 as specified for TM No. 1522755;
- Australian Trade Mark No. 1523657, AXPARIS, for a range of goods in International Class 25;
- Australian Trade Mark No. 1523660, RARE LONDON, for a range of goods in International Class 25; and
- Australian Trade Mark No. 1523663, QUIZ CLOTHING, for a range of goods in International Class 25;
On January 24, 2013, the Respondent applied to register as a trade mark in Australia, Trade Mark No. 1537555, FOREVER UNIQUE, for a range of goods in International Class 25.
The Respondent also applied to register each of the trade marks listed above in New Zealand shortly after the Australian applications were filed. All were for a range of goods in International Class 25. The applications for MISSGUIDED and MR GUIDED, however, were for the services in International Class 35 set out above as well as for the range of goods in International Class 25. The applications in New Zealand included an application for CHELSEA GIRL for the range of goods in International Class 25. The Respondent also filed applications for MISSGUIDED in Canada and the USA for the services in International Class 35. The Canadian application also specified the goods in International Class 25.
Apart from MR GUIDED, each of the trade marks which the Respondent has applied to register are the brand names of various online retailers of women’s fashion which compete with both the Complainants and Boohoo.
In about late December 2012/early January 2013, the first disputed domain name resolved to a website which offered for sale and appears in fact to have made some sales of what were described as adult novelty sex toys. According to the Respondent, the second disputed domain name was used to re-direct to the main website Internet browsers who misspelled the URL.
In February and March 2013, there was some correspondence between lawyers acting for the Complainants and the Respondent. Since about April 2013, the website to which the first disputed domain name resolved has been “Under Maintenance”. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to succeed, the Complainants must demonstrate each of the following:
(i) that the disputed domain names are identical or confusingly similar to a name1, trade mark or service mark in which they have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names2; and
(iii) that the disputed domain names have been registered or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain names are identical with, or confusingly similar to, a name, trade mark or other rights in which the Complainants have rights.
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trade mark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trade mark.
The Complainants have proven ownership of the registered trade marks referred to in Section 4 above. It is also evident that the Complainants would have established common law rights in the UK in the MISSGUIDED marks by dint of the extensive usage there.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the domain name itself to a complainant’s proved trade marks: See for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The presence of the second level domain, “.”, may be disregarded as a functional requirement of the domain name system: GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
The Respondent seeks to distinguish the first disputed domain name from the Complainants’ Australian and USA trade marks because they depict the word “missguided” in lower case with a stylized font and include the peace symbol, a depiction of a heart and the word “fashion”. These elements, however, are presented in a subsidiary form as a kind of strap line or tag line. The word “missguided” is plainly the dominant and distinctive element. The potential likelihood of confusion is not diminished by the change in case or font.
On this basis, the first disputed domain name is identical to the Complainants’ CTM for the MISSGUIDED word mark. The first disputed domain name is also confusingly similar to the Complainants’ Australian and USA registered trade marks.
The second disputed domain name is a plain English term. It can also be seen as a misspelling of the Complainants’ trade mark, MISSGUIDED. The Respondent admits that he registered it to use it to re-direct people who had misspelled the URL of the first disputed domain name. In this context, therefore, it can be seen as confusingly similar to the Complainants’ trade marks: See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10. Further, given the Respondent’s explanation for registering it, the Panel considers that the second disputed domain name stands or falls according to the fate of the first disputed domain name.
Accordingly, the Panel finds that the Complainants have established that the disputed domain names are identical or confusingly similar to the Complainants’ trade marks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a 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 names or a name corresponding to the domain names 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
It is not in dispute between the parties that the Respondent has no licence, authorization or other affiliation with the Complainants. Nor do either of the disputed domain names derive from the Respondent’s name. The Respondent does not have a registered company or business name in Australia for “Missguided”. Thus, paragraph 4(c)(ii) does not apply. As the website to which the first disputed domain name resolved did at least offer for commercial sale goods for some limited period, the terms of paragraph 4(c)(iii) of the Policy do not apply.
In broad summary, in relation to paragraph 4(c)(i), the Complainants contend that the Respondent has no real interest in the disputed domain names, has never intended to trade in good faith in adult sex toys, and is really some sort of catspaw for Boohoo and seeking to besmirch the Complainants’ business and derail its international expansion by associating the Complainants’ trade mark with adult sex toys.
In answer, the Respondent contends that he was operating a legitimate business (at least until it ceased in April 2013) in a field very different to the field covered by the Complainants’ trade marks and so outside the scope of those registered trade marks. He says that he chose the name “missguided” because it sounded “naughty” and hinted at the type of products it was selling. It is possible to infer from this that the Respondent was not aware of the Complainants’ trade marks or business. The Respondent, however, does not say so in terms. Nonetheless, the Respondent is effectively inviting the Panel to find that he chose the name solely for its aptness as an allusive reference to the products he claims to be selling. In support, the Respondent also relies on:
(a) his accepted (but opposed by the Complainant) trade mark application;
(b) the television advertising of the business that the Respondent says he undertook between December 31, 2012 and January 18, 2013 and again between February 27, 2013 and March 8, 2013.
(c) the operation of the website to which the disputed domain names resolve; and
(d) the fact that the Complainants did not launch their Australian business until February 2013, long after the website to which the disputed domain names resolve was operational.
While the learned panelist in the UDRP Proceeding did reject the Respondent’s claim to rights or legitimate interests, the Panel here notes that this proceeding must be decided on the facts in this case. This is important both because there are some differences between the Policy and the UDRP and also because the facts are to some extent different. For example, in the UDRP Proceeding, the learned panelist found that there had been no use of the domain names in issue in that proceeding at all while in this proceeding there has been at least some use of the first disputed domain name. The nature and extent of that use is in dispute between the parties.
A pending trade mark application does not confer enforceable legal rights unless and until it has been formally granted. Once granted, however, the rights date from the date of application. This has led some panels to hold that a pending trade mark application alone does not establish rights or legitimate interests under the Policy. See e.g. V, Inc. v. Ronald Lee Bradley, WIPO Case No. DAU2012-0003; Curtain Communications Pty Ltd. v. Leann Webb,WIPO Case No. DAU2008-0022; Zillow Inc. v. Felix-Hoffman Anne-Simone, WIPO Case No. DAU2006-0015.
In the present case, the Respondent became the registrant of the disputed domain names before he applied to register the trade mark, No. 1522755. He says that he acquired the registration of the disputed domain names for use in connection with his proposed adult sex toys business. The subsequent trade mark application and the operation of a business from the website, however limited, provide some corroboration of that claim.
The Response also states that the Respondent advertised his business on television between December 31, 2012 and January 18, 2013 and again between February 27, 2013 and March 8, 2013.. “Tab 4” to the Response annexes 31 slides which are said to depict those advertisements. However, no advertising schedule or media buying reports or contracts have been submitted to verify when and where this advertising occurred, if it did. Google Adsense reports are annexed and do show higher activity in the periods December to January and March than in February 2013, which may support an inference that advertising did occur in those months as claimed
The apparently small scale and very intermittent operation of that business would not be enough by itself to discount the Respondent’s claim to bona fide use or demonstrable preparations to use the disputed domain names, if that were all. In the present case, however, that is not all that needs to be taken into account.
First, the disputed domain names were originally registered by Boohoo, one of the Complainants’ closest competitors by February 2012. The disputed domain names were transferred to the Respondent some time later. The Respondent has not chosen to explain the circumstances in which that transfer came about.
Secondly, shortly after the Respondent acquired the disputed domain names, he also started registering domain names based on Axparis, Fashion Union and Rare London, the brand names of other women’s fashion clothing retailers competing with both the Complainants and Boohoo. Once again, the Respondent has chosen not to reveal the circumstances behind his decision to register those domain names.
Thirdly, when the Respondent applied to register trade mark No. 1522755 for MISSGUIDED in International Class 35 in Australia, he also applied to register trade marks for AXPARIS, FASHION UNION, QUIZ CLOTHING and RARE LONDON – all brand names for other women’s fashion clothing retailers competing with both the Complainants and Boohoo. These applications were not made in class 35 for the services relevant for the Respondent’s claimed business, but in International Class 25 for the goods which those brand names supply. Once again, the Respondent has chosen not to explain why he applied for those trade marks in class 25 but not in class 35.
Additionally, trade mark applications were also made for these trade marks in New Zealand, all specifying only goods in International Class 25. Applications were also made in New Zealand, Canada and the USA for MISSGUIDED, each specifying the services in International Class 35 claimed in the Respondent’s Australian trade mark application. However, the New Zealand and Canadian applications also specify clothing goods in International Class 25.
Fourthly, the print outs of the website included in the Response state that “MIssguided was created by two friends who share the same hedonistic passion for sexy sophisticated design.” It does not further identify these two friends or the entity operating “Missguided” other than as “Missguided” (which is not registered as a company or business name in Australia for this type of business).
Fifthly, orders placed through the website generated receipts and correspondence from Direct Desires Ltd. There is no Australian company registered by that name. The correspondence also included a telephone number in the UK and used a Paypal account set up in the UK. The correspondence from Direct Desires Ltd in relation to the purchases included emails which came from the email account “Missguided (d[…].gemmell@[redacted])”.
There is a Direct Desires Ltd incorporated in Scotland. The name of its sole shareholder Mr. D[ ] Robert Gemmell corresponds to the name used in the correspondence discussed in the above paragraph.
Sixthly, Mr. D{ } Gemmell has been identified in the press in the UK as admitting that he is a friend of the principal of Boohoo. Mr. Gemmel’s Twitter stream indicates he has friendships with other officers of Boohoo and their families.
In this connection, the Panel notes that the trade mark firm used by the Respondent to file his Australian applications is also the same firm which functions as the address for service for Boohoo’s trade mark registration for BOOHOO in Australia.
In February 2013, the website to which the first disputed domain name resolved stated that it offered free international delivery to purchasers overseas. An order placed that day from the UK was initially accepted. It was refunded one week later, however, with the message “Sorry we only deliver within Australia.” Unlike the matters set out above, the Respondent did offer an explanation for this – in effect, teething problems.
It would appear from the communications related to orders placed through the website referred to above that the business which was running the website was in fact Direct Desires Ltd. The Respondent is not a director or shareholder of Direct Desires Ltd. It is not clear, therefore, on what basis he claims in the Response that the business is “his” business or what his relationship with Direct Desires Ltd or Mr. Gemmell is.
These matters are circumstantial, or largely circumstantial. They do give rise, however, to inferences which support the Complainants’ case that the Respondent did not register or use the disputed domain names for the purposes of a bona fide offering of goods or services as the Respondent claims, especially in circumstances where the business in question appears to have been operated by some other person, Direct Desires Ltd (and Mr. Gemmell), who has a relationship with the Complainants’ closest competitor. They raise at least a prima facie case and, to the Panel, a strong prima facie case, that the Respondent was not using or intending to use the disputed domain names in connection with a bona fide offering of goods, as he claims. This prima facie case called for rebuttal by the Respondent. The Respondent, however, has effectively offered only a bare denial and has not sought to explain or rebut the substance of the Complaint.
In summary, the Respondent has not sought to explain:
- how and why he became the registrant of the disputed domain names shortly after they had been registered by Boohoo;
- why he registered domain names based on brand names of other online retailers of women’s fashion which compete with both the Complainants and Boohoo (but none based on “boohoo”);
- why he has applied to register as trade marks the brand names of other online retailers of women’s fashion which compete with both the Complainants and Boohoo (but none based on “boohoo”);
- why those trade mark applications are in class 25 in relation to clothing rather than for the services in class 35 for which he sought registration of MISSGUIDED;
- what his relationship with Direct Desires Ltd and Mr. Gemmell is, especially in circumstances where it appears Mr. Gemmell has a close relationship with the principal and other officers of Boohoo;
- why the business ceased in April 2013.
He has chosen not to explain these matters while at the same time offering explanations for other matters such as why the sale to a purchaser in the UK was not completed even though the website stated, according to the Respondent incorrectly, that international delivery was free.
Having regard to these matters, therefore, the majority of the Panel finds that the Complainants have established the second limb under the Policy. C. Registered or Subsequently Used in Bad Faith
Under the third limb, the Complainants must show that the Respondent has registered or used the disputed domain names in bad faith. This is another area of difference with the UDRP, as it is necessary to show only one or the other, not both.
On this point, the Panel notes that the Respondent obtained the registration of the disputed domain names well before he had applied to register Trade Mark No. 1522755. It is not clear to the Panel therefore how the registration of the disputed domain names could be supported under auDA’s eligibility requirements on the basis of that trade mark application. Schedule B of auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs states that eligibility to register a domain name in the . space provides:
1. To be eligible for a domain name in the 2LD, registrants must be:
a) an Australian registered company; or
b) trading under a registered business name in any Australian State or Territory; or
c) an Australian partnership or sole trader; or
d) a foreign company licensed to trade in Australia; or
e) an owner of an Australian Registered Trade Mark; or
f) an applicant for an Australian Registered Trade Mark; or
g) an association incorporated in any Australian State or Territory; or
h) an Australian commercial statutory body.
It is plain that the Respondent did not qualify on any of these bases.
Be that as it may, having regard to the matters set out in section 5B above, the Panel finds that the Respondent at least registered the disputed domain names in bad faith contrary to the Policy. 6. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the majority of the Panel orders that the disputed domain names and be transferred to the Complainants.
Warwick A. Rothnie
Presiding Panelist
Keith Gymer
Panelist
Philip N. Argy
Panelist (Dissenting)
Date: October 30, 2013 DISSENTING OPINION
Whilst I agree in substance with my colleagues’ views in relation to the first and third limbs of the Policy, I have not been able to conclude that the Respondent has “no rights” in respect of the disputed domain names. The Respondent has not just a pending trade mark application in Australia for MISSGUIDED in the class relevant to the novelty products he claims to sell through his website, but that application has been formally assessed and accepted by the Registrar of Trade Marks. In other words, it has been found to be eligible for registration and barring a successful Opposition, it will proceed to registration. An Opposition has been filed by the Complainants but the evidence in support of that Opposition was not filed by the due date and remains outstanding.
In my view, as a matter of plain English, as at the date of filing of the Complaint, the Respondent “has rights and legitimate interests” in respect of the disputed domain names based on his accepted Australian trade mark application for the word MISSGUIDED. The Complainants having thus failed to make good their second limb argument, I would dismiss the Complaint.
Philip N. Argy
Panelist (Dissenting)
Date: October 30, 2013
1 For the purposes of the Policy, auDA has determined that a “name … in which the complainant has rights” refers to:
a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
b) the complainant’s personal name.
2 For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
Full & Egal Universal Law Academy