The Complainants are Dashing Pty Ltd and Dashing Print Pty Ltd of New South Wales, Australia represented by Arnotts Technology Lawyers, Australia.
The Respondent is Daniel Gundry of Frankston South, Australia, represented by Cooper Mills Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Enetica. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2016. On April 20, 2016, the Center transmitted by email to Enetica a request for registrar verification in connection with the disputed domain name. On April 22, 2016 Enetica 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 April 25, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2016. The Response was filed with the Center on May 13, 2016. The Complainant made a Supplemental submission on May 25, 2016 and both parties subsequently submitted comments to the Center on this filing.
The Center appointed Alistair Payne as the sole panelist in this matter on May 26, 2016. 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 Complainants form part of a corporate group of companies that is one of the largest providers of printing services throughout Australia and operates from premises in Sydney and in Melbourne. The Complainants trade under the DASHING mark and the Second Complainant owns an Australian trade mark registration under number 1649260 for DASHING dated October 7, 2014. The Panel will refer to both corporate entities jointly as "the Complainant", except when it is necessary to differentiate them.
The Respondent registered the disputed domain name on October 22, 2007 and states that he operates a business offering website and email hosting, domain name services, software application development, website design, mobility solutions and e-marketing services. 5. Parties' Contentions A. Complainant
The Second Complainant, Dashing Print Pty Limited, owns registered Australian trade mark 1649260 for the word mark DASHING filed on October 7, 2014. In addition, the Complainants submit that they own common law rights in the DASHING mark as a consequence of substantial reputation and long use over the last 30 years. In this regard the Complainant notes that the Complainant's corporate group sponsors a range of industry events and is extremely well known in the multi-site retail and franchise markets, as well as in the general print market. It is the largest Hewlett Packard print partner site in Australia and Hewlett Packard has promoted this relationship world-wide. The Complainant says that its corporate group is growing rapidly and projected revenue in this current financial year (to June 30, 2016) is AUD 36 million. The Complainant says that its corporate group has an annual marketing spend of AUD 600,000 and it markets the DASHING brand through websites, videos, blogs, conferences, client events, whitepapers and sponsorships. According to the Complainant its corporate group issues approximately 30,000 invoices to its clients per annum.
The Complainant submits that the disputed domain name resolves to an error page and is not being used by the Respondent for any legitimate purpose. The Complainant notes that the "" website also appears to be operating for no legitimate purpose as it also resolves to a "dummy" website.
The Complainant submits that the use of the disputed domain name to resolve to an error page, the use of the "" website for the purposes of operating a dummy website, together with the fact that the Respondent does not have any company name incorporating the word "dashing", the fact that the Respondent has not registered any trade marks that contain the word "dashing" and the fact that the Respondent does not have any White Pages telephone directly listing for "Dashing", makes it clear that the Respondent does not have a bona fide business operated under the DASHING name and is not making any legitimate use of the disputed domain name or of the domain name.
Although the Complainant admits that the disputed domain name predates the Complainant's registration of the DASHING trade mark, the Complainant contends that the Respondent knew or must have known of the Complainant prior to the Respondent's registration of the disputed domain name due to the significant reputation that the Complainant had built up in the DASHING name.
As far as use in bad faith is concerned, the Complainant submits that the Respondent is using the disputed domain name in bad faith because it is not making any bona fide use of it and is passively holding the disputed domain name in circumstances that it is not entitled to be the registrant of the domain name under the 2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the "Eligibility Policy"). The Complainant notes that the Respondent has registered the business name "Dashing Website Solutions" but there is no evidence that the Respondent actually trades under this name as required by the Eligibility Policy. Nor says the Complainant is the disputed domain name an exact match to its business name. This, says the Complainant, all amounts to evidence of registration and use in bad faith in terms of paragraph 4(a)(iii) of the Policy. In addition, the Respondent's passive holding of the disputed domain name also amounts to evidence of registration and use in bad faith.
Further, says the Complainant, the Respondent's registration of the disputed domain name prevents the Complainant from reflecting its DASHING name and mark in an Australian domain name that corresponds to the Complainant's DASHING trade mark. B. Respondent
The Respondent submits that the Complainants were both incorporated in 2013 but they do not assert that they were the successor in title to goodwill attaching to the DASHING name arising from a previous business under that name. It notes that the Complainant also seeks to rely on Australian Trade Mark No. 1649260 for the combined logo and word mark DASHING with a priority date of October 7, 2014 and that this mark is owned by Dashing Print Pty Ltd and not by Dashing Pty Ltd. In the absence of a licence to this latter company, the Respondent asserts that there is no basis for Dashing Pty Ltd to be a party to this Complaint. The Respondent further submits that the term "Dashing" is a common English term available to all traders and that in any event the Complainant does not trade under the name "Dashing" but rather it really trades under the name "" and "Dashing Print".
The Respondent submits that the Complainant's basis for arguing that the Respondent has no rights or legitimate interests in the disputed domain name is incorrect. The Respondent says that it has owned the registered business name "Dashing Website Solutions" since September 4, 2007 and has continuously used the "Dashing" name, in good faith, in connection with its business and its business website offering web services. The Respondent presents example invoices, sample web archive screenshots over the period 2007 – 2015 and records that it maintains demonstrate that its email is active at the disputed domain name. In short it submits that bona fide use before being put on notice of a dispute rebuts the presumption that a respondent lacks rights or legitimate interests in a domain name (See Lance John Picton v. KK Factory Seconds Online / Dean James Mackin,WIPO Case No. DAU2007-0005).
The Respondent submits that the Complainant admits that the disputed domain name was created before the date of registration of the Complainant's trade mark registration and that both Complainant companies were incorporated more than 5 years after the Respondent commenced trading under the "Dashing" name. He says that he did not register the disputed domain name with knowledge of the Complainant's alleged use or rights and therefore his registration could not have been in bad faith.
The Respondent says that there is no evidence of any of the circumstances under the Policy that suggest bad faith and that this is not a case of cybersquatting. In particular the Respondent notes that there is nothing that points to him having acquired the disputed domain name for the purposes of rental, sale or transfer. In fact in September 2014 he notes that the Complainant's lawyers sent an email asking if its client could take over the registration. The Respondent notes that this correspondence was not disclosed by the Complainant.
The Respondent notes that it is a web developer and does not compete with the Complainant who is a printer and that there is no evidence to suggest that it has sought to prevent the Complainant from reflecting its trade mark in a domain name, to disrupt its business, or to confuse and divert Internet users from the Complainant's website. Finally, the Respondent says that it is not in breach of the Eligibility Policy and that the disputed domain name is an abbreviation of the Respondent's name and common law trademark being "Dashing Website Solutions". The Respondent claims that there was no reasonable prospect of this Complaint succeeding as at the date of filing and that it amounts to reverse domain name hijacking. It makes this claim on the following basis:
a) The Complainant has at no time served the Respondent with a cease and desist letter, outlining the subject matter of its dispute;
b) The term "Dashing" is a generic laudatory term;
c) The Complainant has withheld evidence of its attempted purchase/acquisition of the disputed domain name from the Panel;
d) The Complainant admits that the creation date of the disputed domain name predates the priority date of its trade mark registration;
e) The Complainant has failed to make out any of the grounds of the auDRP;
f) The Complainant is legally represented and advised, and ought to have known that there was no proper basis to bring this auDRP proceeding. 6. Discussion and Findings
The Complainant made a supplemental submission out of time on May 25, 2016. The Panel exercises its discretion to accept this submission into the record as it raises, in particular, certain new factual issues as noted below concerning the use of the website at the disputed domain name. A. Identical or Confusingly Similar
The Second Complainant has demonstrated that it owns a registered Australian trade mark for the word mark DASHING under trade mark registration number 1649260 filed on October 7, 2014. The disputed domain name wholly incorporates the DASHING mark and has no additional element before "." to distinguish it from the Second Complainant's trade mark. Both Complainant companies are part of the same corporate group and the Panel accepts the submission that the group uses this mark under an implied licence. As a result the Complainant succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant submits that the disputed domain name resolves to an error page and has not been used by the Respondent for any legitimate purpose. The Complainant notes that the "" website also appears to be operating for no legitimate purpose as it also resolves to a "dummy" website.
The Complainant submits that the use of the disputed domain name to resolve to an error page, the use of the "" website for the purposes of operating a "dummy website", together with the fact that the Respondent does not have any company name incorporating the word "dashing", the fact that the Respondent has not registered any trade marks that contain the word "dashing" and the fact that the Respondent does not have any White Pages telephone directly listing for "dashing", makes it clear that the Respondent does not have a bona fide business operated under the DASHING name and is not making any legitimate use of the disputed domain name.
The Complainant asserts in its supplemental submission that at no time prior to the Respondent being served with the Complaint and since the disputed domain name was first registered in 2007, has the disputed domain name been used to host any website advertising the Respondent's "DashingW" business. However, submits the Complainant, it is clear that as soon as the Respondent was served with the Complaint, it sought to address deficiencies in its position by publishing a new or amended website at the domain name. Prior to that time, says the Complainant, the Respondent failed to include any contact details, or permit any user of its website to browse any page of the website. In addition, following service of the Complaint, the Complainant notes that the Respondent also modified the "dummy website" at "".
By contrast, the Respondent submits that it registered its business name "Dashing Website Solutions" in early September 2007 and as well as having provided evidence of this registration, has provided invoices for jobs carried out by the business operating under this name back as far as 2007. The Respondent has also submitted past screen shots of its websites at "" that advertise its business. This evidence conflicts with the Complainant's assertions and supporting evidence that no website existed at the disputed domain name prior to the commencement of these proceedings and that the Respondent had altered its website following the service of the Complaint.
The Panel notes that both the Respondent's registered business name and the disputed domain name were registered many years prior to the Complainant's registered trade mark. Although the Complainant asserts that it owns common law rights in the DASHING name or mark there is insufficient evidence of its usage before the Panel at the date of registration of the disputed domain name, to support an inference that the Respondent must have been aware of the Complainant's business and use of the DASHING name or mark and accordingly that its registration of the disputed domain name was not bona fide. It seems quite conceivable to the Panel that the Respondent may, as it submits, have chosen the common and laudatory English word "dashing" as part of its name or mark. As a consequence the Panel finds that it cannot be said that the Respondent has "no rights or legitimate rights" in the disputed domain name as required under this limb of the Policy and the Panel finds that the Respondent has therefore successfully rebutted the prima facie case made out by the Complainant. Accordingly, the Panel finds that the Complaint does not succeed under the second limb of the Policy. C. Registered or Subsequently Used in Bad Faith
Although the Panel has found that the Complaint fails under the second limb of the Policy and therefore cannot succeed overall, the Panel notes that it also finds that the Complaint also fails under the third element of the Policy.
As noted above under the second element of the Policy, the disputed domain name and the Respondent's business name were registered many years prior to the Complainant's registered trade mark. Although the Complainant asserts that it owns common law rights in the DASHING name or mark, as noted above, there is insufficient evidence of its usage and reputation before the Panel at the date of registration of the disputed domain name (being 2007) to support an inference that the Respondent must have been aware of the Complainant's business and use of the DASHING name or mark at that time and accordingly that its registration of the disputed domain name was made in bad faith.
As far as use is concerned, the Respondent has provided in support of its assertion that it operated a bona fide business that used the disputed domain name, copies of invoices dating back as far as 2007. Although there is conflicting evidence from the respective parties concerning the Respondent's actual use of a website at the disputed domain name, this could, from the Complainant's perspective, at the very best be interpreted as passive use by the Respondent as there is no evidence that the disputed domain name has been used by the Respondent in competition with the Complainant or for overtly illegitimate purposes. In this regard the Panel notes that the Respondent's business name registration is for "Dashing Website Solutions" and the invoices provided in evidence were issued in this name. The disputed domain name incorporates the main distinctive element of this business name and despite there being conflicting evidence as to its subsequent use there is insufficient evidence to support an inference that it was initially registered for an illegitimate purpose or was subsequently held passively by the Respondent in bad faith.
As a result the Panel finds that the disputed domain name has not been registered or used in bad faith and the Complaint also fails under this element of the Policy. 7. Reverse Domain Name Hijacking
Although this is a case in which the disputed domain name was registered prior to the Complainant's registered trade mark, the Complainant had apparently been operating under the DASHING name or mark prior to registration of its trade mark. Had the Complainant provided sufficient evidence of its use and reputation throughout Australia at or prior to the registration of the disputed domain name the Panel might possibly have been in a position to draw appropriate inferences in favour of the Complainant's case, in particular in view of the conflicting evidence concerning use of the website at the disputed domain name. However on the evidence as presented and in circumstances that the parties are not direct competitors, the Panel has been unable to do so. In these circumstances it is not clear that the Complainant's case was doomed to fail from the outset and the Panel therefore does not consider it appropriate or justified to make a finding of reverse domain name hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: June 6, 2016
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