The Complainant is Pindan Pty Ltd of Belmont, Australia, represented by Hotchkin Hanly Lawyers, Australia.
The Respondent is Kre8 Brand Pty Ltd of North Perth, Australia, represented by Galic & Co Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NetRegistry Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 29, 2013, the Center transmitted by email to NetRegistry Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On December 9, 2013 NetRegistry Pty 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 December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. On December 30, 2013, the Respondent requested an extension of the Response due date. On January 3, 2014, the Center extended the Response due date to January 8, 2014. The Response was filed with the Center on January 8, 2014.
On January 14, 2014, the Complainant emailed the Center, seeking permission to reply to the Response. On January 15, 2014 the Center informed the parties that it would be in the sole discretion of the Panel, once appointed, to determine whether to consider and/or admit any supplemental filing in rendering its decision. The Complainant filed a supplementary statement on January 30, 2014.
The Center appointed John Swinson as the sole panelist in this matter on January 27, 2014. 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.
The Panel, via a procedural order, gave the Respondent the opportunity to make any comments regarding the content of the Complainant’s supplementary statement by February 7, 2014. The Respondent filed a supplementary statement on February 7, 2014. 4. Factual Background
The Complainant is Pindan Pty Ltd, an Australian company. The Complainant provides residential construction services.
The Complainant owns the following business name registrations:
- “Switch Homes for Living”, registered on May 13, 2009; and
- “Switch feel at home”, registered on September 18, 2013.
The Respondent is Kre8 Brand Pty Ltd (ACN 129 379 826), a branding and marketing company, trading under the name “Telos Brand”. The Respondent submits that all of its assets have been transferred to Different Pty Ltd (ACN 164 622 986). In the Respondent’s Response and in its supplementary submission, Different Pty Ltd is listed as a Respondent. The Panel finds this inclusion unnecessary, as the Disputed Domain Name is registered in the name of Kre8 Brand Pty Ltd.
The Respondent registered the Disputed Domain Name on October 7, 2013. The Disputed Domain Name currently resolves to a parking page. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Background Information
The Complainant outlines the following chronology:
- March 2009: the Complainant invites branding agencies to tender marketing proposals for a new home project division. The Respondent recommends “Switch Homes for Living” as the name for the new division. It wins the tender and is engaged as the Complainant’s branding and marketing consultant (there were no written terms of engagement).
- March 20, 2009: the Respondent engages Clarity Software Pty Ltd (“Clarity”) to register the domain name . This domain name is registered in Clarity’s name, however, the Respondent verbally represents to the Complainant that it will be transferred to the Complainant “at some point”.
- 2009-2013: the Respondent provides branding and marketing services for the Complainant. The renewal fees for the domain name are invoiced to and paid by the Complainant.
- May 14, 2013: the Complainant discusses marketing services with another company. The Respondent emails Clarity, requesting that the domain name be transferred to the Respondent.
- June 21, 2013: the Respondent requests transfer of the domain name again.
- June 2013: the Complainant invites various marketing companies, including the Respondent, to pitch for a rebranding.
- July 9, 2013: a representative of the Respondent advises the Complainant that the Respondent disagrees with the rebranding and will not be pitching.
- July 11, 2013: the Respondent registers the business name “Switch Modular”.
- July 31, 2013: the Respondent requests transfer of the domain name again (this time for it to be transferred to Different Pty Ltd).
-- August 9, 2013: the domain name is transferred to Different Pty Ltd.
-- September 19, 2013: the Complainant registers the business name “Switch feel at home”.
- October 7, 2013: the Respondent registers the Disputed Domain Name.
-- October 22, 2013: following an earlier discussion, the Respondent demands $150,000 for the Complainant’s cessation of the Respondent’s services.
-- October 29, 2013: the Complainant sends a letter, demanding the transfer of both domain names.
-- October 31, 2013: the Respondent requests $150,000 for the domain names. Identical or Confusingly Similar
The Complainant registered the business name “Switch Homes for Living” on May 13, 2009. The Complainant widely promoted and advertised its services during this time, resulting in the words “Switch Homes” and “Switch” being recognized and associated with the Complainant. The Complainant has developed common law trade mark rights over “Switch”. The Complainant also registered the business name “Switch feel at home” on September 19, 2013.
The Disputed Domain Name is:
- identical to the Complainant’s registered “Switch feel at home” business name;
- confusingly similar to the Complainant’s registered business name “Switch Homes for Living”; and
- confusingly similar to the Complainant’s common law trade mark “Switch”. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- it has not used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;
- it has never been commonly known by the Disputed Domain Name;
- it has no trade mark applications or registrations for or relating to the Disputed Domain Name; and
- the Complainant has not authorized the Respondent to use the “Switch” trade mark or to register the Disputed Domain Name. Registered or Subsequently Used in Bad Faith
The Disputed Domain Name was registered for the purpose of selling, renting or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. This is supported by:
- the fact that the registration followed the Respondent’s cessation of provision of marketing services to the Complainant and the Complainant’s registration of “Switch feel at home” as a business name;
- the Respondent’s request for $150,000 in exchange for the transfer of the Disputed Domain Name and another domain name;
- the Respondent’s knowledge of the Complainant’s reputation, including the brand name “Switch”; and
- the Respondent’s passive holding of the Disputed Domain Name. B. Respondent
The Respondent makes the following submissions. Background Information
The Respondent outlines the following chronology:
- January 2009: the Complainant approaches the Respondent to build a brand for its new residential homes division. The Respondent created a brand name including the name “Switch Homes For Living” and a full design supporting the complete look. There was no contract for the work and all copyright for the work remains with the Respondent.
- May 13, 2009: the Respondent registers the business name “Switch Homes For Living”.
- May 2009: the Respondent instructs Clarity to register the domain name on behalf of the Respondent.
- June 2, 2009: the Respondent transferred the above business name to the Complainant.
- June 2009: the Complainant proposes that the Respondent work exclusively for the Complainant for $25,000 a month (payment would be built into the future budget). A Partnership Agreement and Understanding was formed (the Respondent’s services were 25% of the annual advertising budget). The Respondent created, produced and coordinated all brand material for the “Switch Homes for Living” brand (including the website).
- March 2013: a representative of the Complainant promotes his views regarding changing the Switch branding and promoting the company as a high-end builder. The Respondent advised him against this.
- May 2013-June 2013: the Respondent is instructed to, and does, redesign the branding. The Respondent presents the redesign to a representative of the Complainant.
- June 4, 2013: the Complainant advises that it has appointed another company as its in-house marketing department.
- June 2013: the Respondent confronts the Complainant regarding the redesign brief. The Respondent receives a copy of the brief on June 27, 2013.
- July 9, 2013: the Respondent declines to submit to the brief.
- July 11, 2013: the Respondent registers Switch Modular as a business name.
- July 2013: the Respondent transfers its assets to Different Pty Ltd.
- October 7, 2013: the Respondent registers the Disputed Domain Name.
- October 18, 2013: the Complainant registers “Switch feel at home” as a business name. Identical or Confusingly Similar
The Complainant did not formally trade as “Switch Homes” or “Switch feel at home” until October 18, 2013. The business name “Switch feel at home” belongs to the Chamois Unit Trust. Rights or Legitimate Interests
The Respondent submits that the three circumstances outlined in paragraph 4(c) of the Policy apply to demonstrate its rights or legitimate interests in the Disputed Domain Name. Registered or Subsequently Used in Bad Faith
The Respondent submits that none of the indicators of bad faith outlined in paragraph 4(b) of the Policy are present. 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 Policy contemplates a “speedier” resolution of domain name disputes. Accordingly, the Policy and the Rules only contemplate the filing of a complaint and a response, with 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(d) 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.
The Complainant’s supplementary statement identified that the Response had been filed by Different Pty Ltd, which was not a Respondent to the proceeding. The Respondent’s supplementary submission clarified that the proper Respondent was Kre8 Brand Pty Ltd. As discussed above, the Panel has chosen not to include Different Pty Ltd as a Respondent.
The Panel accepts the parties’ supplementary statements to the extent that they clarify the proper Respondent to the proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The evidence is somewhat confused regarding the “Switch feel at home” business name. The Complainant asserts that it owns this business name registration. The Respondent has submitted that the proper holder of this business name is The Trustee for Chamois Unit Trust (the “Trustee”), not the Complainant. The business name records show the Trustee as the owner of this business name. As the Complainant has not provided any material explaining its relationship with the Trustee, the Panel has undertaken independent research (as it is entitled to). It has reviewed the various business names associated with ABN 40 070 129 815 (which is the Australian Business Number given for the Trustee) in the business name record for the “Switch feel at home” business name. The Panel notes that ABN 40 070 129 815 is also the Australian Business Number given for Pindan Pty Ltd (the Complainant) in the business name record for “Switch Homes for Living”. The Panel notes that the place for service and the principal place of business of the Trustee and the Complainant are the same. In light of this, the Panel infers that the Trustee and the Complainant are one and the same, and the Complainant owns the business name registration for “Switch feel at home”.
The Respondent has submitted that the Complainant did not register this business name until October 18, 2013. However, the business names register reveals that “Switch feel at home” was registered on September 18, 2013.
The Disputed Domain Name is identical to the Complainant’s “Switch feel at home” business name.
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) of the Policy 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 the Respondent of the subject matter of the dispute, the Respondent’s 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 (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
The chronologies provided by both parties, whilst somewhat inconsistent, demonstrate that there was a business relationship between the parties. The Respondent was providing the Complainant with branding and marketing services. Both chronologies reveal that the Respondent advised the Complainant that it would not be pitching for the rebrand on July 9, 2013. It is appears that this was the date that the business relationship between the parties ended. In any event, the relationship between the parties was clearly over when the Respondent registered the Disputed Domain Name on October 7, 2013.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- there is no indication in the record that the Respondent has been commonly known by the Disputed Domain Name; and
- the Disputed Domain Name is not in use (it is simply a holding page). This is not a legitimate noncommercial or fair use of the Disputed Domain Name, nor does it constitute a bona fide offering of goods or services.
The Respondent submitted that all three circumstances under the Policy (outlined above) apply to demonstrate its rights or legitimate interests in the Disputed Domain Name. However, it provided no evidence to support this submission (and rebut the Complainant’s prime facie case).
In light of the above, the Respondent has failed to demonstrate rights or legitimate interests in the Disputed Domain Name. 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.
The Disputed Domain Name is not being actively used. It resolves to a parking page. Passive holding does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 and Atlas Copco Aktiebolag v. MKC Supply Inc,WIPO Case No. D2011-1844). The question is whether the Respondent’s passive holding of the Disputed Domain Name can be considered registration or use in bad faith, taking into account all the circumstances of the present case.
Due to the parties’ prior business relationship, the Respondent clearly knew of the Complainant at the time it registered the Disputed Domain Name. As discussed above, it is difficult to determine the exact date that the business relationship between the parties came to an end. It is likely that it was around July 9, 2013 (when the Respondent declined to pitch for the rebrand). When the business relationship ended, the Respondent was no longer affiliated with the Complainant and its brand. It had no legitimate reason to register a domain name identical to the Complainant’s business name (which, as clarified above, was registered by the Complainant on September 18, 2013).
Both parties’ submissions clearly indicate that the Respondent will not be providing the Complainant with branding and marketing services in the future. As such, it appears to the Panel that the Respondent registered the Disputed Domain Name to either prevent the Complainant from reflecting its business name in a corresponding domain name and/or to disrupt the Complainant’s business activities.
Moreover, as was observed in Bank of Alabama v. Sumith Rodrigo & Co.,WIPO Case No. D2004-0912 (December 16, 2004), “a registrant cannot use a domain name to ‘leverage’ a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar.” See also Red Frog Events, LLC v. Maximum Adventure Pty Ltd.,WIPO Case No. DAU2012-0002. One may draw the conclusion that the Respondent registered the Disputed Domain Name because it was upset that it had lost the Complainant’s business, and was hoping to use the Disputed Domain Name to obtain a $150,000 payment from the Complainant. This is bad faith use of the Disputed Domain Name by the Respondent.
Accordingly, the Panel finds that the third element of the Policy is made out. 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.
John Swinson
Sole Panelist
Date: February 13, 2014
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