The Complainant is Peacock Media Group Pty Ltd of South Australia, Australia, represented by Piquet Kruzas, South East Lawyers, Australia.
The Respondent is Robert Tapping of Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with VentralP Group (Australia) Pty Ltd dba VentralP Wholesale (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2013. On September 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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 details1.
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 September 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2013.
The Center appointed Ross Wilson as the sole panelist in this matter on October 23, 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’s business Solar Quotes has operated since 2009. The business specializes in advertising for the solar industry in Australia. Through its website the Complainant provides up to three quotes for solar systems with a unique post code identifier and a system of generating customized quotes based on the user’s geographical area. In the three years of operation the Complainant’s website has had over 1.7 million unique visits.
The Complainant has three registered trademarks for SOLARQUOTES.COM.AU, the earliest was registered from December 2009.
The Complainant’s representative sent a cease and desist letter to the Respondent on July 12, 2013 but has not received a response.
The disputed domain name was registered on August 10, 2012 5. Parties’ Contentions A. Complainant
The Complainant contends that it has rights in the trademarks SOLARQUOTES and SOLARQUOTES.COM.AU and that the disputed domain name is confusingly similar to its marks. The Complainant states it is not affiliated with the Respondent and that the Respondent has utilized the Complainant’s brand and goodwill to develop its own like-concept website to promote a business similar to that of the Complainant causing confusion among potential customers. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(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. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark in its entirety together with the prefix numeral three, the generic Top-Level Domain (gTLD) extension “.com” and the country code Top-Level Domain (ccTLD) extension “.au”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro,WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).2
The key difference between the Complainant’s trademark and the disputed domain name is the addition of the numeral three which in the Panel’s opinion increases the likelihood of confusion to Internet users as the Complainant business and advertising relies heavily on its offer of providing three quotes to customers (see Guccio Gucci S.p.A. v. Bravia Stoli,WIPO Case No. D2009-1170).
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use the disputed domain name that reflects the Complainant’s mark in its entirety without authorization from the Complainant. Based on the evidence provided by the Complainant the disputed domain name was intended to divert Internet user traffic to the Respondent’s website by offering services that virtually mirror the services offered by the Complainant. No rights or legitimate interests derive from such use of the disputed domain name incorporating the Complainant’s mark.
The Panel considers the Respondent lacks rights or legitimate interests. See Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognised as such.
Despite the opportunity provided through this administrative proceeding the Respondent has chosen not to rebut the Complainant’s prima facie case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
For the purposes of determining if there was bad faith registration or use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Complainant contends that the Respondent chose the disputed domain name to create an impression of association with the Complainant that would attract Internet users for commercial gain. In fact the evidence submitted included some correspondence intended for the Respondent but mistakenly emailed to the Complainant. This arguably demonstrates that Internet users are confused. Also, correspondence from the Respondent to a third party provided as evidence clearly establishes that the Respondent is aware of the Complainant’s business by stating in its email that “We are a solar leads provider similar to SolarQuotes”.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view, the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s rights. Clearly the Respondent knew of the Complainant’s mark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “It is inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection in that case of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The Panel finds it most likely that the disputed domain name was registered and used by the Respondent in an intentional attempt to benefit from the goodwill of the Complainant’s mark for financial gain.
Noting that the Respondent has not rebutted any of the Complainant’s contentions, failed to respond to the Complainant’s cease and desist letter, failed to provide full registration contact details and has no demonstrable rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being 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 disputed domain name be transferred to the Complainant.
Ross Wilson
Sole Panelist
Date: November 6, 2013
1 However, both in the Registrar’s reply and the publicly available WhoIs database, the only available contact detail for the Respondent is his email address.
2 In light of the similarities between the Uniform Domain Name Dispute Resolution Policy (UDRP) and the .auDRP, the Panel takes into account UDRP decisions (where appropriate) in rendering this decision.
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