The Complainant is iXsystems, Inc. of San Jose, California, United States of America ("United States"), represented by Burke Law Group, United States.
The Respondent is IEXTENT Pty. Ltd., Sam Wun of Surrey Hills, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 23, 2017. On March 23, 2017, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On March 24, 2017, 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 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 March 29, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2017.
The Center appointed John Swinson as the sole panelist in this matter on May 2, 2017. 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 is iXsystems, Inc., a company which sells computer servers, networking devices and related computer equipment on a worldwide basis. The Complainant has been providing these products under the name "IXSYSTEMS" since at least 2005. According to the Complaint, the Complainant has an international network of customers, resellers and suppliers, including in Australia. Approximately USD 1 million in sales has been made in relation to Australia to date.
The Complainant owns United States registered trade mark number 3322770 for IXSYSTEMS which was registered on October 30, 2007 (the "Trade Mark"). The Complainant has also recently applied for a trade mark for IXSYSTEMS in Australia, which has been accepted for registration.
The Complainant owns a domain name which incorporates the Trade Mark, being , at which it offers its computer products for sale. The Complainant registered this domain name on August 1, 2005.
The Respondent is IEXTENT Pty. Ltd., Sam Wun. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on July 10, 2016. At present, there is no active website associated with the Disputed Domain Name. However, at the time the Complaint was filed, the Disputed Domain Name resolved to a website headed "IXSYSTEMS AUSTRALIA", which offered for sale similar computer products to those offered by the Complainant, including what appear to be some of the Complainant's products. The footer of each page of the website stated:
"IXSYSTEMS AUSTRALIA
Australian leading IT company provides all-around services from IT infrastructure, development to hardward [sic] distribution.
We have also extended our service to distribute high-end quality IT product in the public market." 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant has continuously used the name "IXSYSTEMS" as a trade name around the world since 2005. The Complainant registered the Trade Mark on or about October 30, 2007, and the domain name on or about August 1, 2005. Rights or Legitimate Interests
The Respondent's name is IEXTENT Pty. Ltd., Sam Wun. It has never used "IXSYSTEMS" as its corporate name, or applied for a trade mark for "IXSYSTEMS". The Complainant has not authorized the Respondent to use its name, and is not affiliated with the Respondent. The Complainant has not sold any products to the Respondent, so any of the Respondent's products labelled "IXSYSTEMS" are almost certainly counterfeit goods.
The Respondent's conduct appears to be intended to create market confusion and misappropriate goodwill generated by the Complainant. The Respondent falsely implies that the Respondent's website is affiliated with the Complainant. Registered or Subsequently Used in Bad Faith
The Respondent has misrepresented its eligibility to register a "." domain name, as the Disputed Domain Name is not an exact match, an abbreviation or an acronym of the Respondent's name or trade mark, and it is not otherwise closely and substantially connected to the Respondent.
The Respondent's sole purpose in registering the Disputed Domain Name was to misappropriate goodwill from the Complainant's substantial investment in its brand. The Respondent's use of the tagline "IXSYSTEMS AUSTRALIA", inclusion of photographs of the Complainant's products and previous inclusion of photographs of the Complainant's headquarters and staff (including the Complainant's Chief Executive Officer) show that the Respondent is misrepresenting itself as an affiliate of the Complainant.
The Respondent's website offers counterfeits of the Complainant's products for sale, as well as products which compete with those of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 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, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark 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 has subsequently been used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent's failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059).1 However, the Panel may draw appropriate inferences from the Respondent's default. 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, trade mark or service mark in which the Complainant has rights.
The Disputed Domain Name wholly incorporates the Trade Mark, with no additional words or letters. The Disputed Domain Name is identical to the Trade Mark.
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 respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case.
There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. There is also no evidence that the Respondent has been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
The Complainant submits that it has not authorized the Respondent to use the Trade Mark, and that the Respondent is not affiliated with the Complainant. It also submits that the products which were previously offered for sale via the website at the Disputed Domain Name were "almost certainly" counterfeit, as the Complainant has never sold any of its products to the Respondent.
It appears to the Panel that one of four circumstances applies in respect of the Respondent's use of the Disputed Domain Name:
- It may be that the products which were offered for sale by the Respondent under the Trade Mark were not counterfeit, but were second-hand goods or were otherwise legally (if not legitimately) obtained by the Respondent and the Respondent was reselling these goods as an unauthorized distributor of the Complainant.
In certain circumstances, a third party may legitimately sell a trade mark owner's products using a domain name which incorporates the relevant trade mark without the trade mark owner's permission (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data"), and the test set out in that decision). However, the Respondent's prior use of the Disputed Domain Name does not meet the Oki Data test, so cannot be considered legitimate. Further, in any event, there is currently no website at the Disputed Domain Name. If the Respondent is no longer selling the Complainant's products, the principles from Oki Data do not apply (see e.g., ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd.,WIPO Case No. DAU2015-0014).
- The Respondent may have been selling counterfeit goods as submitted by the Complainant.
- The Respondent may have been running a "bait and switch" scam, where it used the Trade Mark and advertised the Complainant's products for sale to generate Internet traffic to a website at the Disputed Domain Name, then sold customers competing or lower quality products.
- Finally, given the website at the Disputed Domain Name was removed following notice of the dispute, it may be that the website was fraudulent and the Respondent had no products to sell.
Use of the Disputed Domain Name in any of the above circumstances is not legitimate. The Respondent had the opportunity to file a Response to demonstrate its rights and legitimate interests in the Disputed Domain Name, but did not do so. Without further evidence from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
Under Paragraph 2 of the Policy, by applying to register or renew a domain name, registrants warrant that statements made in the domain name application are complete and accurate, including those as to eligibility.
As submitted by the Complainant, it is possible that the Respondent did not meet the eligibility requirements to register the Disputed Domain Name as set out in .auDA's policy "2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs" (the "Eligibility Rules").
The Eligibility Rules state a "." domain name must be an exact match, abbreviation or acronym of the registrant's name or trade mark, or otherwise closely and substantially connected to the registrant. According to the "2012-05 - Guidelines on the Interpretation of Policy Rules for Open 2LDs" (the "Guidelines"), a registrant will have a "close and substantial connection" with the relevant domain name if that domain name reflects a product that the registrant manufactures or sells.
The Disputed Domain Name is not an exact match, abbreviation or acronym of the Respondent's name.
If the Respondent is actually selling the Complainant's goods, even as an unauthorized reseller, it may meet the close and substantial connection requirement (although the Panel questions whether this would be the case in circumstances where the Respondent is using the Disputed Domain Name to sell other products as well as those under the Trade Mark). If it is not selling the Complainant's goods, then the Respondent has misrepresented its eligibility to register the Disputed Domain Name in breach of Paragraph 2 of the Policy, which may be sufficient to constitute bad faith registration (see Paragraph 4(b)(v) of the Policy). However, the Panel does not need to decide this point.
The Respondent was clearly misrepresenting itself on the website at the Disputed Domain Name as being "IXSYSTEMS AUSTRALIA". Even if the Respondent was selling the Complainant's goods, this does not give the Respondent the right to falsely hold itself out as being associated with the Complainant (and particularly to the degree that the Respondent was doing so prior to the website being taken down). The Respondent's use of the Disputed Domain Name is a blatant attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant. This is a clear example of use in bad faith (see Paragraph 4(b)(iv) of the Policy).
The Complainant succeeds on the third element 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.
John Swinson
Sole Panelist
Date: May 15, 2017
1 In light of the substantive and procedural similarities between the auDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has cited authorities decided under the UDRP where appropriate.
Full & Egal Universal Law Academy