The Complainant is Sambazon, Inc. of San Clemente, California, United States of America (“United States”), represented by K&L Gates LLP, Australia.
The Respondent is Christopher Andrew Norden of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Address Registration Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2015, Web Address Registration 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 [together with the amendment to the Complaint/amended 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 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on October 2, 2015. 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 has registered device marks which include the term SAMBAZON, which it says it invented, including Australian trademark SAMBAZON, registered October 20, 2005. The mark is registered in Class 29 for nutritional supplements not for medical use, Class 32 for “fruit beverages, guarana soda and fruit flavored drinks.”
Since 2008, the Complainant has been selling its products in Australia via distributors. The packaging of those products has not always featured the Complainant’s trademark. However, the Complainant’s correspondence with distributors – such as sales invoices – have featured the trademark. Since 2014 the Complainant has been selling branded product which features its trademark in Australia via Costco (a discount retail chain). In less than 12 months, these sales have generated around AUD 260,000 in revenue for the Complainant.
The disputed domain name was registered on September 14, 2008. 5. Parties’ Contentions A. Complainant
The following is summarized from the Complaint.
Central to this Complaint is the Complainant’s commercial relationship with two companies, Amazonia Pty Ltd (“Amazonia”) and Amazonia (Aust) Pty Ltd (“Amazonia Australia”). Amazonia signed a confidentiality agreement with the Complainant in August 2008. The agreement is signed by Mr. Martens, who is a director of Amazonia and Amazonia Australia. Amazonia’s first order for the Complainant’s products was placed in September 2008. The Respondent registered the disputed domain name on the same day that this first order was placed. The Respondent and Mr. Martens were founding directors of Amazonia Australia and remain directors today.
The Complainant entered into supply contracts in January 2009 and January 2010 with Amazonia Australia. After entering into the supply agreement, the Complainant proceeded to sell its products to Amazonia Australia and not to Amazonia.
In mid-2014, the Complainant terminated its supply relationship with Amazonia Australia. In around July 2015, the Complainant’s CEO became aware that the Respondent was the registered owner of the disputed domain name. The Complainant had never been made aware of the registration of the disputed domain name by the Respondent.
The Complainant requested the Respondent to transfer the disputed domain name to the Complainant. The Respondent initially replied that it would do so in exchange for his expenses in registering the disputed domain name, but later said that he would transfer it for USD 10,000.
The disputed domain name is not currently being used by the Respondent. No web pages for the disputed domain name have been archived by the Wayback Machine Internet Archive. This indicates that the disputed domain name has not resolved to a web page since it was registered.
The Complainant says that the disputed domain name is confusingly similar to its mark, as the only word element of its mark is the word “sambazon” which comprises the disputed domain name.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant says that the rights being considered are those of the Respondent, and not Amazonia or Amazonia Australia. The Complainant has had a prior commercial relationship with Amazonia and Amazonia Australia, but not with the Respondent.
The Respondent cannot demonstrate any of the rights set out in paragraph 4(c) of the Policy. The Complainant refers to Oki Data Americas, Inc vs ASD, Inc.,WIPO Case No. D2001-0903, which set out the criteria for a distributor making a bona fide offering of goods or services in connection with a domain name. The fact that the disputed domain name has never resolved to a website operated by the Respondent means that the Respondent cannot possibly claim to have rights or legitimate interests in the disputed domain name.
The Respondent has also registered and used the disputed domain name in bad faith. The Respondent’s conduct evinces an intention by the Respondent to deny the Complainant the ability to register the disputed domain name. Now that Amazonia Australia’s distributorship relationship with the Complainant has been terminated, the Respondent is effectively holding the Complainant to ransom by demanding an exorbitant payment. The Complainant refers to a number of past decisions under the Policy, found in favor of complainants, where distributors with no rights or legitimate interests in domain names have offered to sell them for excessive costs. B. Respondent
The Respondent did not reply to the Complaint. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered in bad faith or subsequently used in bad faith.
Each of these elements are addressed in turn below. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it “has rights” in a mark. The Complainant’s provided evidence of its registered trademark rights which are clearly sufficient for this purpose.
The Complainant must next establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The mark in which the Complainant has rights is comprised of an image across which the word “sambazon” appears. The Complainant’s trademark registration describes the image comprising its mark as “American Indian wears headdress & earrings in oval frame with rays”. The Complainant argues that the disputed domain name is identical or confusingly similar to its mark because the dominant element of is mark is wholly incorporated in the disputed domain name.
The issue of whether a domain name is identical or confusingly similar to a mark is to be judged objectively, against the dominant textual elements of a complainant’s mark, rather than graphic or stylized elements. This approach is supported by a series of prior UDRP and Policy decisions. See e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031, and the cases cited therein. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”
Following this approach, the image which comprises the Complainant’s mark need not be considered for the purpose of comparison. It is also well-established that the Top-Level Domain extension, being a functional element of a domain name, generally is not relevant.
This leaves the term “sambazon”, which appears prominently in, and is the only textual element of, the Complainant’s mark. It is self-evident that this term, as incorporated in the disputed domain name, is identical to the Complainant’s mark. The Complainant has therefore established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
At a minimum, the burden on the Complainant under this element is to establish a prima facie case against the Respondent. A prima facie case is one that is credible in the absence of evidence to the contrary. This general position under the Policy is the same as that under the UDRP: see the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA Overview”), paragraph 2.1.
The Complainant has established a prima face case against the Respondent in relation to this second element under the Policy. The burden is therefore on the Respondent to rebut that argument.
The Complainant’s argument is that the Respondent cannot demonstrate any relevant rights or legitimate interests as a distributor of the Complainant’s products. This is because the Respondent, without the Complainant’s permission, registered the Complainant’s trademark in the disputed domain name and has made no active use of it. The Complainant says that the Respondent, in his individual capacity, never had a commercial relationship with the Complainant, and cannot demonstrate any of the circumstances that might establish rights or legitimate interests set out in paragraph 4(c) of the Policy.
The Complainant refers to a number of prior decisions under the Policy, which involved similar circumstances to this case. That is, cases which involved a distributor which had registered a complainant’s mark in a domain name without authorization, and had not actually offered the goods for sale using the disputed domain name. For example, the Complainant refers to AW Faber-Castell (Aust) Pty Ltd. v. Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust,WIPO Case No. DAU2013-0018. That panel found that, in those circumstances, the complainant established a clear prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. The Complainant cites other cases which are relevantly similar.
Those cases present a precedent for following a similar approach in this case. Although the Policy does not have a formal doctrine of precedent (stare decisis), panels tend to follow the approach of prior panels to the same issue, at least where a number of such panels have come to the same conclusion. See paragraph 4.1 of the auDA Overview.
The Respondent has made no answer to the case against him. Following the precedent set out above, this would usually result in a finding for the Complainant against this element, unless there is any other evidence in the case file which casts doubt on the Complainant’s case. There is no such evidence in this case. There is no evidence of the circumstances set out in paragraph 4(c) of the Policy. The Respondent has been a distributor of the Complainant’s products.1 But this fact does not, by itself, indicate that the Respondent has any rights or legitimate interests in the disputed domain name.
(Although not necessary for its finding, the Panel is not persuaded that anything turns on the fact that the Respondent was not, in his individual capacity, a distributor of the Complainant’s products. As stated in the Complaint, the Respondent was a director of the company licensed by the Complainant. In that capacity, the Respondent would have been and officer and agent of the company.)
For these reasons, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
The third element which the Complainant must show is that the disputed domain name has been registered or used in bad faith. The circumstances in this case strongly indicate that the disputed domain name has been registered and used in bad faith.
Firstly, the Respondent has made no reply to the case against it.
Secondly, the Respondent was undoubtedly aware of the Complainant and its trademark when he registered the disputed domain name which is entirely comprised of the Complainant’s mark. The Respondent had no license or permission to do so. While the Complaint is silent on how the Complainant came to discover the registration of the disputed domain name, the unrebutted case is that the Respondent did not inform the Complainant of the registration.
Thirdly, as evidenced in the Complaint, the Respondent has made an unsolicited offer to sell the disputed domain name for a sum clearly in excess of his out-of-pocket costs. Such conduct can, in appropriate circumstances, amount to bad faith. See auDA Overview, paragraph 3.1A.
Finally, the disputed domain name was registered by the Respondent in September 2008, coincident with its distributorship agreement with the Complainant, and then passively held ever since. There is no evidence that the Respondent sought to make any active use of the disputed domain name for a good faith purpose, or discuss the registration and use of the disputed domain name with the Complainant.
The Panel notes that there has been a substantial period since the Respondent’s registration and the initiation of this Complaint. The Panel does not consider that this delay is material to the issue of bad faith. Delay in bringing a complaint does not provide a defense per se under the Policy.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(b)(i) of the Policy. 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.
James A. Barker
Sole Panelist
Date: October 16, 2015
1 Although not necessary for its finding, the Panel is not persuaded that anything turns on the fact that the Respondent was not, in his individual capacity, a distributor of the Complainant’s products. As stated in the Complaint, the Respondent was a director of the company licensed by the Complainant. In that capacity, the Respondent would have been and officer and agent of the company.
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