The Complainant is Twitter, Inc. of San Francisco, California, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Jason Boyce of Cessnock, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with TPP Domains Pty Ltd. dba TPP Internet (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2015. On September 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2015, the Registrar 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 October 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2015. The Center received communications from the Respondent on October 12, 2015 and October 16, 2015. The Response was filed with the Center on October 22, 2015. The Complainant filed an unsolicited supplemental filing on October 26, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 29, 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.
On October 30, 2015 the Panel issued a Panel Order, the text being:
"The Panel has agreed to accept the Complainant's Supplemental Filing of October 26, 2015, therefore the Panel provides the Respondent with an opportunity to file a supplementary filing in response to the Complainant's Supplemental Filing. The deadline for the reply by the Respondent is November 6, 2015."
The Respondent filed a further response on November 4, 2015. 4. Factual Background
The Complainant is a United States company that operates a global information network under the name "Twitter" which allows members to consume, create, distribute and discover content via short messages popularly known as "Tweets". The Complainant's co-founder, Jack Dorsey sent the first tweet using the Complainant's service on March 21, 2006. Presently the Complainant's Twitter service has 316 million monthly active users and its revenue in the second quarter of 2015 amounted to USD 502 million.
The Complainant holds Australian trade mark registrations for the word mark TWITTER (the "TWITTER Mark") including trade mark number 1,206,941 which has been registered since October 25, 2007 for services in class 38 that include telecommunications, electronic mail services and instant messaging services.
The Domain Name was created on April 3, 2006. The Domain Name currently redirects to a website at "www." (the "Respondent's Website") which purports to offer email services at "www." and contains a number of advertisements that appear to be pay-per-click advertisements. The Respondent appears to operate a business under the name "Tyas Wittermann Creative", although the Complainant contends that such a name is a recently created pretext to justify the registration and use of the Domain Name. In 2014 the Respondent indicated on his website that he was prepared to sell the Domain Name, along with his and domain names for between AUD 500,000 and AUD 800,000. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's TWITTER Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant is the owner of the TWITTER Mark. It owns two trade mark registrations for the TWITTER Mark in Australia. The Domain Name is identical to the TWITTER Mark as the relevant portion of the Domain Name contains the TWITTER Mark in its entirety.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for TWITTER or any similar trade mark. The Respondent is not licensed or authorized by the Complainant to register the Domain Name. The Respondent is not commonly known by the Domain Name, indeed its business name, Tyas Witterman Creative, is a pretext to justify the registration and use of the Domain Name. The Respondent has not made a legitimate non-commercial or fair use of the Domain Name, indeed its use is commercial and in competition with the Complainant.
The Respondent has not made any bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with an offering of goods and services. By using the Domain Name to offer email addresses associated with the Domain Name, the Respondent clearly is engaged in an activity that is competitive with the Complainant's services offered under the TWITTER Mark especially because the Complainant's services include electronic mail services. Furthermore the Respondent's descriptions of its supposed business are unsupported by evidence.
The Domain Name was registered and is being used in bad faith. The Respondent registered the Domain Name after the Complainant commenced offering its Twitter service. The use of a domain name containing a complainant's trademark in connection with the offering of email addresses containing the domain name has repeatedly been found to constitute bad faith under domain name dispute policies. The Respondent's offering of email services from the Domain Name is an intentional attempt to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or a service on the Respondent's website.
In addition to using the Domain Name in connection with a third-party email service and displaying advertisements on the website associated with the Domain Name, the Respondent also has attempted to sell the Domain Name for at least AUD 500,000, which is well in excess of any possible documented out-of-pocket costs directly related to the Domain Name.
Further, in response to the Respondent's contentions regarding the defence of laches, auDRP panels have recognised that the doctrine or defence of laches does not generally apply under the auDRP. Thus, delay in bringing a complaint (judged by reference to the time since registration of the disputed domain name) does not, of itself, prevent a complainant from filing under the auDRP or from succeeding under the auDRP. While delay in bringing a complaint in the situation where the respondent is using the domain name in connection with relevant goods or services may result in the respondent acquiring rights or legitimate interests in the domain name, the Respondent only began using the Domain Name in its current form on or about June 2014. B. Respondent
The Respondent makes the following contentions:
(i) The Respondent has owned the Domain Name for nine years and the Complainant has in that time avoided mediation or communication with the Respondent as to its ownership of the Domain Name. Moreover it has not objected to the Respondent's use of the Domain Name.
(ii) The Complainant has brought this proceeding to harass the Respondent and, both in the Complaint and previous communications, has made improper statements to the Respondent and has attempted to smear the Respondent.
(iii) The Complaint contains numerous factual errors and basing its evidence on an inability to correctly identify the Respondent.
(iv) The Complainant's evidence that it registered the domain name in 2000 is ambiguous and misleading, indeed the Complainant only purchased the Domain Name in 2006. Furthermore, prior to July 2006, the Complainant's Twitter service was only available to in-house employees.
(v) The Complainant's evidence of bad faith registration is fabricated or implausible as they do not explain why the Respondent, at the date of registration in March 2006, would be aware of a service which, at the time, was only available to a small number of people in a different part of the world.
(vi) The website traffic for the Respondent's Website is so low that it is impossible to consider that the Respondent's Website gains any benefit from the Complainant's business.
(vii) The Respondent has continuously used the Domain Name to sell its goods and services including web design and sub-hosting and email services under the Tyas Witterman brand. In early 2006 the Respondent worked on plans to develop an Internet business with ambitions to build a web business where individuals, tradespersons and social clubs could advertise their own small business / venture on a sub-hosted website. The Respondent hosted a few clients in early years and thus has provided bona fide web design and sub-hosting at the Domain Name. Since 2012 the Respondent has provided email services from the Domain Name under the Tyas Witterman Creative name. While the Respondent's growth has been small it can be explained by a lack of financial resources.
(viii) The Respondent's continued use of the Domain Name does not amount to trade mark infringement as it is not use out of context or as a business name.
(ix) The Complainant is based in the United States while the Respondent is based in Australia. As such the Complainant cannot claim to be confusion with a dissimilar service in a different country.
(x) The Respondent, as a legitimate tax-paying business, is making fair use of the Domain Name.
(xi) The Respondent registered the Domain Name in 2006 in good faith, as the Complainant's service was unknown at the time.
(xii) The Respondent has not engaged in any cyberflight or cybersquatting.
(xii) In 2012, the Complainant opposed the Respondent's registration of TWITTER.COM.AU as a trade mark. In submissions before the delegate of the Trade Marks Registrar, the Complainant's representative did not make any allegation that the Respondent was acting in bad faith. The Complainant has hence admitted that the Respondent's use is fair and lawful.
(xiv) The Complainant cannot claim that the Respondent, by offering the Domain Name for sale for AUD 500,000 was an offer greater than any documented expenses without any evidence of the Respondent's expenses or value of business assets.
(xv) The Respondent was entitled to offer the Domain Name, as part of a broader package of business assets for sale in 2014, after having owned the Domain Name for eight years. 6. Discussion and Findings A. Supplemental Filing
Following the filing of the Response, the Complainant sent an additional unsolicited communication to the Center. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Paragraph 12 states: "In addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties."
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under both the Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP") see, i.e., The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447.1 The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known of the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel has decided to allow the Complainant's supplemental filing as it relates to matters raised in the original Response that the Complainant could not reasonably have known of the existence when it made its primary submission, namely the Respondent's claim in relation to laches and the Respondent's evidence as to the use of the Domain Name. The Panel equally has provided the opportunity for the Respondent to address the matters raised in the Complainant's supplemental filing, which it has done in its filing of November 4, 2015. B. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's name, trade or service mark.
The Complainant is the owner of the TWITTER Mark, having registrations for the TWITTER Mark as a trade mark in Australia. The Domain Name consists of the TWITTER Mark and the suffix ".". Disregarding the "." suffix, the Domain Name is identical to the TWITTER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. C. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 name or a name corresponding to the 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) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the TWITTER Mark or a mark similar to the TWITTER Mark. There is no evidence that the Respondent has used the Domain Name in connection with a legitimate non-commercial use.
There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. The Respondent's name is Jason Boyce. To the extent that it is known by or trades under the "Tyas Witterman Creative" name, such a name is not similar to the Domain Name.
The only question is whether the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with an offering of goods and services. The Domain Name currently redirects to the Respondent's Website where the Respondent purports to offer email hosting services. The Respondent has also indicated that it seeks to offer a small business web-hosting platform and the product is currently under development.
However the Response does not provide:
a) Any documentary evidence of any goods and services supplied by the Respondent under the Domain Name since 2009;
b) Any documentary evidence that it presently offers email hosting services; or
c) Any documentary evidence that the Respondent is currently developing a web-hosting platform.
As such the Respondent has not satisfied its evidentiary burden of showing any existing use of the Domain Name or demonstrable preparations for use.
Even in the event that the Panel was satisfied that the Domain Name is and has been used for email hosting services and a small business web-hosting platform, such use is not a bona fide use. The Respondent's use of the TWITTER Mark to offer electronic mail services may amount to prima facie trade mark infringement of the Complainant's registered trade mark in Australia (registered for services that include electronic mail services) and the Respondent has provided no evidence or submissions to suggest otherwise. Use of a domain name in such a manner cannot be bona fide use. See America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374; AutoNation, Inc. v. Paul Schaefer,WIPO Case No. D2001-0289 and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. The Panel finds that the Respondent lacks rights or legitimate interests in the Domain Name.
Equally, the fact that the Respondent may be a legitimate business that is paying tax in Australia does not mean that it is making fair use of the Domain Name. The Respondent is not using the Domain Name to sell goods and services that are described by the domain name, rather it purports to use the Domain Name to sell email services – services for which the Complainant holds a trade mark registration.
Finally the mere fact that the Complainant is based in the United States and the Respondent is based in Australia does not prevent the possibility of confusion. The Complainant operates an online service that is accessible in Australia, used by Australians and has registered the TWITTER Mark in Australia.
Accordingly, the Panel finds that the Complainant has made out a prima facie showing of the Respondent's lack of rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent to the satisfaction of the Panel. D. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith. In the absence of clear evidence as to the motivation of the Respondent at the time the Domain Name was registered, the Panel makes no finding as to whether the Respondent registered the Domain Name in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the TWITTER Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent's Website consists of a website purporting to offer email services to the public. The services purporting to be offered, being email services, indirectly compete with the Complainant's Twitter service and directly compete with the services, being email services, for which the TWITTER Mark is registered in Australia. Notably, on the Respondent's evidence the Respondent commenced the operation of his email service in 2012, more than five years after the TWITTER Mark was registered for services including email services in Australia.
Furthermore the Respondent's Website contains a number of advertisements that appear to be pay-per-click advertisements, for which the Respondent likely receives revenue every time a person visits the Respondent's Website or clicks on the advertisement. Consumers interested in using the Complainant's Twitter service may visit the Respondent's site and either:
a) be confused into thinking that the Respondent's Website offers the Complainant's services or is somehow connected to the Complainant; or
b) purchase the Respondent's products; or
c) click on one of the advertisements displayed on the Respondent's Website.
It is therefore highly likely that the Respondent receives revenue from Internet users who happen to come across the Respondent's Website by means of confusion with the TWITTER Mark. The Panel is not persuaded by the Respondent's submission that the limited web traffic to the Respondent's Website means that confusion does not occur; rather confusion arises inherently given the similarity between the Domain Name and the TWITTER Mark. The Panel finds that the Respondent's use amounts to use in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant makes further submissions regarding the creation of the "Tyas Witterman" name and the Respondent's offer to sell the name for AUD 500,000. Given the findings made above, it is not necessary to consider those submissions.
The Respondent has made a number of submissions to the effect that the Panel should not make a finding that the Respondent has registered or used the Domain Name in bad faith. The Panel addresses them as follows:
a) With respect to the submission that the Respondent did not register the Domain Name in bad faith, given the finding that the Respondent is using the Domain Name in bad faith, it is not necessary to consider this submission.
b) With respect to the submission that the Complainant cannot assert that the Respondent's offer for sale was greater than its documented expenses without evidence of those expenses, and the submission that the Respondent was entitled to offer his business for sale in 2012, no finding has been made in respect of whether the Respondent's offer amounted to bad faith, and therefore it is not necessary to consider that submission.
c) With respect to the submission that the Respondent has owned the Domain Name for nine years and the Complainant has not objected to the use of the Domain Name there are several matters to be addressed:
Firstly it is not incumbent on either a complainant or a respondent to communicate with the other party prior to commencing proceeding and the failure of a complainant to do so does not prevent a finding of bad faith.
Secondly, with respect to the supposed statement made by counsel for the Complainant before the delegate of the Trade Marks Registrar that the Complainant did not wish to imply that the Respondent had in making the application been actuated by improper motions, such submissions were made specifically in respect of the Respondent's application to register TWITTER.COM.AU as a trade mark in Australia and have no relevance to the present proceeding.
Finally, with respect to the failure of the Complainant to object to the registration and use of the Domain Name, while, in some cases, the failure to object may result in the possible applicability, in appropriate and limited circumstances, of a defense of laches under the Policy, the present case is not a case where the defence of laches could apply. There is no evidence that the Complainant was aware of the registration of the Domain Name in 2006 nor that it had ever given its permission, on an express or implied basis, for the registration and use of the Domain Name. Finally there is no evidence that the Respondent has detrimentally relied on any statement or action of the Complainant.
In conclusion, the Respondent's use of the Domain Name, linked to a website that offers advertisements on a pay-per-click basis, and/or for a service (being email services) that either directly or indirectly competes with the Complainant amounts to use in bad faith under paragraph 4(a)(iii) of the Policy. E. Complainant's Eligibility
The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trade mark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the TWITTER Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name. 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 Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: November 4, 2015
1 The Panel, noting the similarities between the .auDRP and UDRP, has cited authorities
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