The Complainant is United Breweries Limited of Bangalore, India, represented by Cullens Patent and Trade Mark Attorneys, Australia.
The Respondent is Nadoli Pty Ltd, G.P. Singh of St Ives, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2017. On August 17, 2017, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the Domain Name. On August 21, 2017, NetRegistryPty 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 August 25, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2017. The Response was filed with the Center on September 14, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 21, 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 an Indian brewing company, formed by the merger of five breweries in South India in 1915. In 1978 the Complainant launched a brand of beer under the name "Kingfisher". Kingfisher Beer has a significant market share in India and is exported to 69 countries, including Australia.
The Complainant is the owner of numerous Australian trade mark registrations consisting of the word "kingfisher". In particular it is the owner of the word mark for KINGFISHER PREMIUM LAGER BEER (the "KINGFISHER Mark"), trade mark no. 712814, which was first registered on July 15, 1996 for "beer". The Complainant also has a number of registered marks that incorporate a distinctive logo, consisting of a kingfisher bird looking down with its wings high in the air (the "KINGFISHER Logo").
The Domain Name, , was registered on September 11, 2015. The Domain Name is presently inactive (it resolves to a site operated by "W" that states "Looks like this Domain isn't connected to a Website yet!") but prior to the notification of the Complaint resolved to an Internet site (the "Respondent's Website") which featured the KINGFISHER Mark and Logo and included the statement "www., Wholesalers & Distributors of Kingfisher Beer in Australia". The Respondent appears to sell and distribute Kingfisher Beer in Australia through the Respondent's Website, though it is not the authorised distributor of Kingfisher Beer in Australia. The Respondent is the holder of a registered business name for "KingFisherB", registered with the Australian Securities and Investments Commission on October 26, 2015. 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 KINGFISHER Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is subsequently being used in bad faith.
The Complainant is the owner of the KINGFISHER Mark, having registered this mark in Australia. The Domain Name is confusingly similar to KINGFISHER Mark since the only difference is the inclusion in the KINGFISHER Mark of the descriptive words "premium lager".
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The use of the Domain Name implies that the Respondent is an authorised distributor of the Complainant and has the consent of the Complainant to use its trade marks. This is not the case, nor does the Respondent adequately disclaim its relationship with the Complainant. The use of the Domain Name for the Respondent's Website does not generate any rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered and is being used with the intention of creating a likelihood of confusion, namely suggesting that the Respondent is affiliated with the Complainant, an affiliation that does not exist. In particular the Respondent's Website contains numerous representations of a connection between the Respondent and the Complainant that go well beyond what is necessary for a reseller to operate a website. Where a person makes representations that would lead consumers to believe they are an authorised distributor, this unfairly takes advantage of the goodwill and reputation associated with the brand. Such representations fall below the acceptable standard of commercial conduct, and constitute bad faith. B. Respondent
The Respondent makes the following contentions:
The Respondent uses the Respondent's Website for the sale and promotion of Kingfisher Beer, for which the Respondent is a wholesaler and distributor. The Respondent purchases Kingfisher Beer from Asahi Premium Beverages, the official distributor of Kingfisher Beer in Australia and uses the Respondent's Website to sell the beer. The Respondent's Website clearly states that the Respondent does not own the KINGFISHER Mark and uses the Complainant's trade marks for illustrative purposes only.
The Respondent has registered the Domain Name as a business name with the Australian Securities and Investment (sic) Commission. The Respondent is a law-abiding business that is associated with Asahi Premium Beverages and engages in the sale, distribution and promotion of Kingfisher Beer. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have a name, 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 KINGFISHER Mark, having registrations for the KINGFISHER Mark as a trade mark in Australia.
The Domain Name, , consists of the KINGFISHER Mark with the removal of the descriptive words "premium lager" and the addition of ".". As the Domain Name reproduces the distinctive element of the KINGFISHER Mark (being "kingfisher") in its entirety the Panel finds that the Domain Name is confusingly similar to the KINGFISHER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant has to 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."
In essence, the Respondent claims rights or legitimate interests on three grounds, being:
a) That it is an official distributor of Asahi Premium Beverages, the brewers and distributors of Kingfisher Beer in Australia;
b) That it has made a bona fide use of the Domain Name for a website offering Kingfisher Beer for sale and distribution; and
c) That it has registered KingFisherB as a registered business name with the Australian Securities and Investments Commission ("ASIC").
With respect to the first ground, the Response does not provide any evidence that it is the official distributor of Kingfisher Beer for Asahi Premium Beverages, including any formal distribution agreement with Asahi Premium Beverages. Furthermore the Response does not set out what rights Asahi Premium Beverages have to use the KINGFISHER Mark in Australia and what rights the Respondent has by reason of any relationship it may have with Asahi Premium Beverages. In the absence of clear documentary evidence of the existence and extent of the relationship between the Respondent and Asahi Premium Beverages, the Panel does not accept that the Respondent has rights or legitimate interests in the Domain Name arising out of any relationship with Asahi Premium Beverages (nor, the Panel notes, would the establishment of such relationship necessarily provide any rights or legitimate interests for purposes of the Policy).
The Respondent's Website appears to be selling/distributing the Complainant's genuine branded Kingfisher Beer. As the Complainant has not made any submissions otherwise the Panel accepts that the goods sold on the Respondent's Website are genuine Kingfisher Beer, purchased from Asahi Premium Beverages. This potentially indicates that the Respondent may have rights or legitimate interests in the Domain Name, provided that the Respondent is able to prove that it is a reseller or distributer of the Complainant's trade marked products only, and that it meets certain other requirements such as adequately disclosing his relationship with the trade mark owner (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data"); see also paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDRP Overview 1.0"), in which the Oki Data case is cited as representative of the majority view of auDRP panelists).
In Oki Data, the panel set out four minimum factor requirements in helping to decide whether a respondent is making a bona fide use of a disputed domain name being:
- The respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (the respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use);
- The site must accurately disclose the respondent's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of the complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official website for Quaife, an English company; moreover, the respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (no bona fide use when the respondent suggested that it was the manufacturer of the complainant's products);
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark").
In this case the Respondent appears to be offering Kingfisher Beer and only Kingfisher Beer from the Respondent's Website. However the Respondent's Website does not accurately disclose the lack of a relationship between the Respondent and the Complainant.
The Respondent's Website displays the KINGFISHER Logo and the words "Wholesalers & Distributors of Kingfisher Beer in Australia" in prominent form at the top of the webpage, while at the bottom of the Respondent's Website, the Respondent provides a disclaimer in that repeats that the Respondent is a wholesaler and distributor and confirms that the Respondent does not own the marks and logos used on the Respondent's Website. The disclaimer does not describe the relationship (or lack thereof) with the Complainant or indicate that the Respondent is not an authorised distributor and is otherwise unconnected with the Complainant. Even if the disclaimer on the Respondent's Website is complete and accurate, the Panel notes the Uniform Domain Name Dispute Resolution Policy cases of Sensis Pty Ltd., Research Resources Pty Ltd. v. Kevin Goodall,WIPO Case No. D2006-0793 and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island,WIPO Case No. D2004-0711, which, when applying the principles suggested in Oki Data suggest that a disclaimer in faint grey type and/or at the bottom of the page is not effective because it is below the place where a customer would click to order the Respondent's products and is not perceptible immediately by the public.
Furthermore the content of the Respondent's Website, including the prominent use of the KINGFISHER Logo, Kingfisher advertising slogans and various representations on the website, strongly implies that the Respondent is the sole or authorised distributor of Kingfisher Beer in Australia, which is not the case. The Panel considers that the present case is similar to the case of GM Holden Ltd. v. Bradley John Lawles,WIPO Case No. DAU2010-0010, in which the then panel, when confirming that the then respondent's use of for a website relating to the service of Holden cars did not give rise to rights or legitimate interests, said:
"The prominent use on the website under this Domain Name of compendious expressions such as 'Holden Service and Repair Specialist', 'Platinum Automotive Group - Servicing Holden', 'Your Specialist Servcing [sic] Holden in Sydney', 'Servicing Holden Excellence' and 'Professional Organisation Servicing Holden' strongly suggest some form of accreditation from the Complainant, the absence of which is not disputed by the Respondent, and, in particular, that the service and repair of the Complainant's motor vehicles is the pre-eminent concern of the Respondent's business (although there is a curious slip-up on the Contacts page, which refers to 'BMW Service'). This is not true."
By reason of the matters set out above, the Oki Data factors have not been met and the Respondent cannot be said to have made a bona fide use of the Domain Name in connection with the offering of goods or services.
Finally the Respondent is the registrant of the business name "KingFisherB". The auDRP Overview 1.0, paragraph 2.7B, in response to the question "Does a respondent's registration of a business name or a company name corresponding to a disputed domain name automatically generate rights or legitimate interests?" states:
"The fact that a respondent has registered a business name or a company name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name or the company name. The reason for this is that the registration of a business name or company name does not provide proprietary rights in the name. The registration of a business name is a legislative requirement that needs to be satisfied where an entity trades under a name that is not its own personal name or company name. The registration of a company name is a legislative requirement that needs to be satisfied where an entity is incorporated.
The critical issue appears to be whether the respondent has traded under the business name or company name in good faith. The respondent will generally be able to establish that it has rights or legitimate interests in a domain name that corresponds to its registered business name or company name where it has actually traded, or intends to trade, under that name. Where, however, the trading under the business name or company name, or the purpose of the business name or company name registration, is not bona fide, neither trade under the name nor the fact of registration of the name will be sufficient to establish that the respondent has rights or legitimate interests in the corresponding domain name."
The Respondent is known as Nadoli Pty Ltd. The Response does not submit or otherwise put on evidence that it trades under the business name KingFisherB or is commonly known as KingFisherB. The Panel finds that the Respondent is not commonly known as KingFisherB.
Furthermore, even if the Respondent has traded under the KingFisherB business name, the Panel is also not satisfied that was in good faith. The only evidence of the Respondent's use of KingFisherB is as the name of the Domain Name and on the Respondent's Website. The Panel has already found above that the Respondent has not made a bona fide use of the Domain Name in connection with the offering of goods or services.
As the Respondent does not meet all the requisite criteria set out in the Oki Data case, nor does it show that it has traded under its registered business name in good faith, the Panel finds that the Respondent lacks rights or legitimate interests in the Domain Name. C. 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 trademark 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 trademark 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on Respondent's web site or location.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the disputed domain name in bad faith.
The Panel finds that the Respondent was aware of the Complainant and its reputation in the KINGFISHER Mark at the time the Domain Name was registered. The Domain Name resolves to a website that sells and distributes the Complainant's Kingfisher Beer. In the circumstances, the Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell the Complainant's Kingfisher Beer. The Respondent is using the Domain Name that is confusingly similar to the KINGFISHER Mark to sell products in competition with the Complainant (or its authorised distributors) and without the Complainant's approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant's KINGFISHER Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. D. Complainant's Eligibility
The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trademark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the distinctive "Kingfisher" element of the KINGFISHER Mark in its entirety with the descriptive term "beer", 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: October 5, 2017
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