The Complainant is Betta Batteries Pty Ltd. of Yatala, Queensland, Australia, internally represented.
The Respondent is R & J Batteries Pty Ltd of Ballarat, Victoria, Australia represented by CBL Business Lawyers, Australia. 2. The Domain Name and Registrar
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 July 14, 2017. On July 14, 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 July 17, 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”), 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 20, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2017. The Response was filed with the Center on August 5, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 10, 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 was incorporated under its current name in February 2014. It is the wholesale distributor for Australia of Lead Crystal Batteries, which are apparently manufactured in China. According to the Complaint, such Lead Crystal Batteries have been imported into Australia and distributed since 2010.
The Complainant has pending trade mark applications for “Lead Crystal Batteries” and “Powered by Betta Batteries”. Although not identified in the Complaint, these are respectively Trade Mark Application Numbers 1780991 and 1781047 filed on July 4, 2016 and July 8, 2016.
The Respondent is a distributor of batteries, but not of Lead Crystal Batteries.
The sole director and secretary of the Respondent is one Stanley Robson. Mr. Robson is the sole director of another company, Sure Industries Pty Ltd. Sure Industries holds one half of the issued share capital in the Respondent.
According to the Response, in about 1997, Mr. Robson and his then business partner, a Mr. Webb, conducted a business distributing batteries through Sure Industries from the site in Ballarat where the Respondent currently operates its business.
In March 2004, Sure Industries and Messrs Robson and Webb registered the business name “R & J Batteries”. Under that name, they distributed “Delkor” brand batteries.
In 2005, Messrs Robson and Webb acquired the distribution rights to “AC Delco” brand batteries also. They incorporated another company, Betta Batteries Distributors Pty Ltd on April 5, 2005 to operate the business distributing those products.
Betta Batteries Distributors Pty Ltd also operated from the same site in Ballarat as the Respondent. Mr. Webb ceased to be a director or shareholder in Betta Batteries Distributors Pty Ltd in February 2016. Mr. Robson and a lady, presumably his wife, sister or daughter, are the directors and shareholders of this company.
In July 2007, Messrs Robson and Webb rationalised their business operations to an extent by amalgamating the business operations of Sure Industries (then trading as R & J Batteries) and Betta Batteries Distributors Pty Ltd. The notification to customers of the change of arrangements was made on letter headed with a logo form “betta Battery Distributors” and the strap line “Betta, Products, Betta Service, Betta Batteries!”
The evidence submitted with the Response does not indicate whether the “Betta Batteries” name or trade mark continued to be used after the amalgamation. As noted above, however, the company Betta Batteries Distributors Pty Ltd is still in existence and controlled by the Robsons.
The Respondent was incorporated in 2011 and took over the business previously being operated by Sure Industries under the name “R & J Batteries”.
On June 16, 2014, the Respondent applied to register Trade Mark Application Number 1628814 for “Betta Batteries” in International Class 9. That application subsequently lapsed. The Respondent, however, has a further pending application, Trade Mark Application Number 1733629, derived from that application.
In October 2014, both the Respondent and one of the Complainant’s distributors, Alpha Energy, were exhibitors at the All-Energy Australia 2014 exhibition and conference held in Melbourne. It does not appear to be controversial between the parties that, in the course of that show, people from the Respondent visited Alpha Energy’s stall.
On November 26, 2014, the Respondent registered the disputed domain name. According to the Response, the Respondent’s website for the disputed domain name went live on February 27, 2015. Since then, the Respondent has been offering for sale its battery products through that website.
The Complainant has submitted print outs from the Wayback Machine, however, that show that on February 28, 2015 the disputed domain name resolved to the website of Airpure Australia Pty Ltd and between February 27 and February 29, 2016 to the website of Master Australia Pty Ltd. Neither of these companies is related to the Respondent, or companies associated with the Robsons, in any way. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights to a name, trade mark or service mark and, if so, the disputed domain name must be identical or confusingly similar to the name or mark.
The Complainant’s name satisfies this requirement as Note 1 to the Policy states that a complainant’s company name is a “name” for the purposes of paragraph 4(a).
The Complainant’s pending trade mark application does not qualify. Generally speaking, as under the UDRP, panels have not accepted a pending trade mark application as qualifying as a right for the purposes of paragraph 4(a): see auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.1C. The situation is further complicated in the present case as the Respondent’s own pending application has a priority date earlier than the priority date of the Complainant’s pending application. The circumstances outlined in section 4 above may give rise to a potential dispute between the Complainant and the Respondent over the possible application of section 44(4) of the Trade Marks Act 1995 (Cth) if the Respondent’s application is accepted for registration. How any such dispute would be resolved, should it arise, would depend very much on the evidence that is ultimately adduced. For present purposes, it is sufficient to note that the Complainant’s claim to rights based on its pending trade mark application is sufficiently inchoate that it is not appropriate for the Panel to depart from the usual rule.
Thirdly, the Complainant appears to be claiming it has common law rights in “Betta Batteries” or the expression “Powered by Betta Batteries” on the basis of the use of the latter expression, at least, in Australia since 2010. A part of the claim itself (if the Complainant is making it) consists of a photograph of the display by Alpha Energy Pty Ltd at the All-Energy exhibition referred to in section 4 above. According to the Complaint, what the photograph in Annex 8 shows is as follows:
“one can see a prominent banner in relation to Lead Crystal Batteries. From the angle of the photograph, much of the bottom of that banner cannot be seen, but the text at the bottom, where the letters “tteries” is visible, in fact said “powered by Betta Batteries”.”
The photograph prominently features a logo form of “Alpha Energies”. There is, as the Complainant contends, a large banner with the very prominent header “Lead Crystal Batteries”. It is also possible to see the “tteries” referred to by the Complainant in the very bottom of the banner. It appears to be immediately under the URL “”. It may well say what the Complainant contends. Whether anyone visiting the display would see it in full is far from clear, however, as some items are also placed at or around the base of the banner and are the reason why what is printed there cannot be seen.
This evidence falls considerably short of what is required to show that the Complainant has acquired rights in “Betta Batteries” or the expression “Powered by Betta Batteries” at common law as an unregistered trade mark: see auDRP Overview 1.0, section 1.7.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proven name, trade mark or service mark: see, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Given this approach, it is not in dispute between the parties that the disputed domain name is identical or confusingly similar to the Complainant’s name. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you 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; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark 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 trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous auDRP panels have recognised the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
Under the UDRP, the proof of a relevant trade mark and that the respondent is not associated with or licensed by the complainant may, depending on the circumstances, be sufficient to raise the required prima facie case. Arguably, the same could also apply under the Policy.
One complication is that a complainant under the Policy need only establish rights in a “name”, not just a trade or service mark (whether registered or not). The difficulty that gives rise to is that under Australian law registration of a company or business name does not confer rights against third parties. As the Complainant points out, it does preclude registration of a near identical name, but that is all – as the coexistence on the company’s register of both the Complainant and the Respondent’s related company Betta Batteries Distributors Pty Ltd illustrates. A person only gains rights in a “name” enforceable against third parties by registering it as a trade mark or through use giving rise to protectable rights at common law or under the Australian Consumer Law.
For the reasons discussed in section 5A above, the Complainant has not demonstrated such rights.
Moreover, in the present case, a body corporate related to the Respondent, Betta Batteries Distributors Pty Ltd, began using the name and trade mark, “Betta Batteries”, in 2005, long before the Complainant commenced operations or claims that its products, Lead Crystal Batteries, were introduced into Australia. Three points arise from this.
First, if the disputed domain name had been registered by Betta Batteries Distributors Pty Ltd, that company would (subject to the second consideration below) have been in a position to rely on at least paragraph 4(c)(ii) above.
The Panel is not prepared to deny the availability of paragraph 4(c)(ii) to the Respondent in circumstances where both it and Betta Batteries Distributors Pty Ltd are, and have at all times, been under common control. They are, as noted above, related bodies corporate for the purposes of the Corporations Act 2001 (Cth). In that connection, the Panel notes that an earlier panel (of which the Panel was a member) did not deny the possible application of paragraph 4(c)(i) and (ii) in circumstances where the prior use had been by companies associated with the named respondent: Jacuzzi, Inc. v. Wangra Pty Ltd,WIPO Case No. DAU2005-0001.
Secondly, one of the potential points of distinction between the present case and Jacuzzi, Inc. v. Wangra Pty Ltd, supra, is that it is not clear on the record in this administrative proceeding that the Respondent (or its predecessors) continued to use “Betta Batteries” after 2007. The Panel rather suspects it did not.
Thirdly, the Respondent itself did apply to register its trade mark in June 2014. For much the same reasons as apply against complainants relying on trade mark applications to establish rights under the first limb of the Policy, panels generally do not accept a trade mark application by the Respondent as establishing rights or a legitimate interest: see, e.g., auDRP Overview 1.0, section 2.7. Moreover, the mere fact of making a trade mark application does not of itself preclude a conclusion that the respondent was acting in bad faith.
In the present case, the Respondent relies on the timing of the application, June 2014, to rebut the Complainant’s allegation that the Respondent registered the disputed domain name in bad faith. The Complainant alleges that the Respondent learned about the Complainant’s expression “Powered by Betta Batteries” in October 2014 while visiting the Alpha Energy display at the All-Energy exhibition in October 2014. Having learned that, the Respondent then sought to register the disputed domain name in bad faith in breach of the Complainant’s rights.
If the Respondent and its predecessors continuously used the trade mark “Betta Batteries” from its adoption in 2005 including after the amalgamation of the two businesses in 2007, the Respondent would have established the circumstances applicable under paragraphs 4(c)(ii) and (i).1
If the Respondent and its predecessors have not been using the trade mark continuously since then, the circumstances in which the trade mark and disputed domain name came to be revived are not clear on the record.
From the limited evidence provided by the Complainant about its use of its name and trade mark, it is not possible for the Panel to conclude that the Respondent must have known about the Complainant and chose to try and get in ahead of the Complainant as opposed to adopting a trade mark that had previously been used in the business.
Even if the Respondent did act following the discovery of the Complainant, it is far from clear that the Respondent would not have been within its rights. If the Respondent could show that it (and its predecessors) had developed a reputation in the trade mark, that may well be sufficient to give it enforceable rights: see, e.g., Mark Foys Pty Ltd v TVSN (Pacific) Ltd [2000] FCA 1626 at [49] – [62]. On the other hand, it is possible that the Respondent (or those associated with it) may well be found to have abandoned any rights to the expression: see, e.g., Thai World Import & Export Co Ltd v Shuey Shing Pty Ltd (1989) 17 IPR 289.
The record in this administrative proceeding does not provide a sound basis to make a determination on these matters. It may well require the processes of discovery and cross-examination available through the court system. In the circumstances outlined above, the Panel is not able to find that the Complainant has proved the Respondent does not have rights or a legitimate interest in the disputed domain name. Accordingly, the Complaint must be denied. C. Registered or Subsequently Used in Bad Faith
Given the findings in section 5B above, the Complaint must be denied and no useful purpose would be served by consideration of the third requirement under the Policy. 6. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: August 22, 2017
1 The Panel notes the two instances from the Wayback Machine where the disputed domain name did not resolve to the Respondent’s website. Although both instances are unrelated to the Respondent, it appears that the Respondent and the two businesses that were indexed by the Wayback Machine were using the same host or ISP. Accordingly, the Panel agrees with the Respondent that this material should be regarded as isolated instances resulting from some aberration in the automatic indexing system rather than some systematic use by the Respondent.
Full & Egal Universal Law Academy