The Complainant is Brivis Climate Systems Pty Ltd of Braeside, Victoria, Australia, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is The Trustee for the Ferreri Family Trust / Dynamic Services HVAC&R Pty Ltd, Dynamic Services HVAC&R Pty Ltd of Kensington, Victoria, Australia. 2. The Domain Names and Registrar
The disputed domain names and (Domain Names) are registered with PlanetDomain Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2014. On the same day, the Center transmitted by email to PlanetDomain Pty Ltd. a request for registrar verification in connection with the Domain Names. On July 14, 2014, PlanetDomain Pty Ltd. transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 July 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2014.
The Center appointed William P. Knight as the sole panelist in this matter on August 22, 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. 4. Factual Background
The Complainant and its predecessors in title have been in business in Australia under the name BRIVIS since the 1950’s, distributing a range of climate control and heating and cooling systems and other goods, as well as offering supplementary services around the maintenance and repair of those goods. One of the Complainant’s predecessors, Brivis Australia Pty Limited, registered and commenced use of the domain name which continues in use by the Complainant to this day. The Complainant itself was incorporated in 2001.
The Complainant is the owner of a number of trade mark registrations incorporating the word BRIVIS in respect of a range of heating and cooling goods, and services in relation to the installation, maintenance and repair of those goods, the earliest of which has a priority date of March 25, 1970. Its registered trade mark BRIVIS in respect of, inter alia, installation, maintenance and repair services; installation, maintenance and repair of apparatus for heating and cooling has a registration date of March 5, 2012.
According to the Registrar, both the Domain Names were created on January 22, 2010 and registered to the Respondent on January 18, 2014. A search of the Wayback Machine database indicates that the Domain Name was in use at least before March 4, 2012 for the purpose of promoting services of the Respondent in providing repairs for the Complainant’s products in the Melbourne area, with a link to the Respondent’s website, which in turn promoted the Respondent’s services with respect to products of a number of suppliers, including those competing with the Complainant. The Domain Name does not appear to have been used.
The Complainant and the Respondent engaged in correspondence in 2009 in relation to the Respondent’s registration of the domain name . This dispute was resolved in 2009 with the Respondent transferring that domain name to the Complainant.
The Complainant and the Respondent also engaged in correspondence in 2014, originally in relation to the Domain Name and subsequently in relation to the Domain Name as well. As a result of this correspondence with the Complainant, the Respondent made several undertakings in relation to the Domain Names, including that it would not use the BRIVIS mark within any domain name, including the Domain Names. In the correspondence with the Complainant the Respondent declined a request to transfer the Domain Names, but indicated it would “give consideration to sale” of the Domain Names. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Names are identical or confusingly similar to its BRIVIS trade mark registration and its common law reputation rights in the BRIVIS mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names;
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant argues that it has enjoyed a significant presence in the relevant heating and cooling marketplace under the BRIVIS mark since the 1980s.
The Complainant argues that the Domain Names are either identical or confusingly similar to its registered BRIVIS trade mark registration and company name Brivis Climate Systems Pty Ltd as the Domain Names wholly comprise the BRIVIS mark.
The Complainant argues that the Respondent has no registered trade mark rights in the BRIVIS mark. The Complainant asserts that it has never authorised or licensed the Respondent any use of its marks and that there is no affiliation between the two entities. The Complainant argues that the Respondent was aware of the Complainant’s rights in the BRIVIS mark before 2009 or, in the alternative, at least since 2009. The Complainant alleges that the Respondent’s transfer to it of the domain name in 2009 was a concession that the Respondent did not have a right or legitimate interest in the BRIVIS mark or, in the alternative, it no longer had such a legitimate interest as of that transfer. The Complainant alleges further that in its 2014 correspondence with the Respondent, the Respondent’s undertakings not to use the BRIVIS mark in any domain name, including in the Domain Names, constituted a concession that the Respondent had no rights or legitimate interests in the Domain Names.
The Complainant argues that the Respondent was aware of the Complainant’s rights in the BRIVIS mark when it registered the Domain Names due to the correspondence and transfer in relation to the domain name. The Complainant argues that the Domain Names were therefore registered in bad faith. In the alternative, the Complainant argues that the Respondent registered the Domain Names to attract commercial gain to its business by creating a likelihood of confusion between the Respondent’s services and the Complainant’s BRIVIS mark. The Complainant also argues that the Respondent registered the Domain Names with the purpose of selling, renting or otherwise transferring them to the Complainant, as evidenced by the Respondent’s indication that it would consider an offer for sale of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Names from the Respondent:
1. The Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
2 The Respondent has no rights or legitimate interests in respect of the Domain Names; and
3. The Domain Names have been registered or are being used in bad faith.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent’s default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trade mark rights in BRIVIS dating back through its predecessors in title to March 25, 1970 and substantial common law rights in the trade mark BRIVIS dating back well before that date.
Neither of the Domain Names is identical to the BRIVIS trade mark as each contains an additional word, being “repairs” and “service”. The Panel is, however, satisfied that the Domain Names are confusingly similar to the BRIVIS mark because they wholly contain it, the additional words “repairs” and “service” are both descriptive in relation to the services offered by the Respondent (as well as the Complainant), in respect of which the Complainant has trade mark rights, and the addition of “.” has no distinguishing significance here. B. Rights or Legitimate Interests
The Panel finds that the Respondent was aware of the Complainant’s established reputational rights at the time of registering the Domain Names. The Panel agrees with the Complainant that the correspondence between the parties in relation to the domain name and the Respondent’s subsequent surrender of that domain name indicate the Respondent’s awareness of the Complainant’s trade mark rights. The nature of the business of the Respondent and website that it instituted at the Domain Name makes that perfectly obvious in any event. It is equally clear that the Respondent has not been granted authorisation from the Complainant to use its BRIVIS trade mark in the Domain Names.
That is not quite the end of the matter, however. The nature of the Respondent’s business and the use of the Domain Name , for a time, in relation to the offering of the Respondent’s repair services for the Complainant’s products clearly raises the issue of whether the Respondent was entitled to assert a legitimate interest in the Domain Names.
Paragraph 4(c) of the Policy sets out examples of circumstances in which a respondent may establish rights or legitimate interests in a domain name in responding to a complaint. Germane to this Complaint is paragraph 4(c)(i) which provides “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
Paragraph 2.1A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) of July 2014 states that “If a respondent is using a descriptive word to describe its goods or services without intending to take advantage of the complainant’s rights in that word, then it has a right or legitimate interest in a domain name that contains that word. It is not necessary for the respondent to do business under the exact term incorporated in the domain name – it is sufficient if there is a ‘connection’ between the domain name’s descriptive meaning and the respondent’s offering of goods or services. However, the respondent’s use of the domain name must not be a “sham”; panels have been alert to disregard a respondent’s use of the domain name to resolve to a website that is ‘spurious’ or a ‘shell’.”
The auDA auDRP Overview 1.0 further states that one must consider for this purpose a respondent’s motivation for registration or use, of a domain in order to determine whether it was in good faith. It is here that this part of the determination under the Policy overlaps with a determination of good faith for the purpose of the third requirement to be established by a complainant under paragraph 4(a) of the Policy.
As to what constitutes an appropriate ‘connection’ and the required good faith to constitute rights or legitimate interests in a domain name, the decisions in respect of the same issues under Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are helpful, as the Policy and the UDRP share substantial similarities. In order for the Respondent to have a legitimate interest in registering and using either or both of the Domain Names in this type of case – in order to say “I repair BRIVIS products” or “I provide services in respect of BRIVIS products” - the consensus of prior UDRP panel decisions is that the Respondent must meet four criteria, as collected in the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, as follows:
a. Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
b. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).
c. The site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products).
d. The Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller. See Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946.
It is unfortunate that the Complainant did not make any submissions concerning this issue. In fact, this issue was not dealt with the Complaint, although it does emerge from the Annexures to the Complaint.
On balance, the Panel concludes that the Respondent, even if it had replied, would have had difficulty in establishing a legitimate interest in either of the Domain Names under the Oki Data principles, for the following reasons:
1. in respect of , the website of the Respondent addressed by this Domain Name did not clearly disclose the relationship between the Complainant and the Respondent suggesting, as appears not to have been the case, that the Respondent was an authorized service provider of the Complainant or had some other business connection with the Complainant;
2. that website, by providing a link to the Respondent’s own website, opened the avenue of reference to other products competing with those of the Complainant;
3. in respect of , this Domain Name has not been used and there is no evidence of preparations to use it;
4. it is disturbing that the Respondent first registered and then, finding that objected to by the Complainant, then registered the Domain Names in the face of that objection;
5. the Respondent knew that it was not entitled to include the trade mark BRIVIS in its domain names, however tenuous the claim of the Complainant may have been regarding any potential infringement of those trade marks by the Respondent’s conduct, simply because of the undertakings it had already given. This raises the question as to whether the Respondent really intended to use these Domain Names at all in a real business sense or just wished to aggravate the Complainant.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered or Subsequently Used in Bad Faith
For the same reasons given in the preceding section, the Panel also concludes that the Respondent registered the Domain Names in bad faith. The subsequent use of the Domain Name also constituted use in bad faith. The Domain Name has not been used but, in the circumstances, it is appropriate to conclude that its retention without use as a kind of lingering threat to the Complainant is also sufficient to constitute use of a domain name in bad faith.
The Panel therefore concludes that the Respondent has registered or used each of the Domain Names 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 domain names and be transferred to the Complainant.
William P. Knight
Sole Panelist
Date: August 27, 2014
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