The Complainant is Godiva B.V.B.A. of Sydney, Australia, represented by Mills Oakley Lawyers, Australia.
The Respondent is Acheeva Business Solutions Pty Ltd., Greg Brown of Gold Coast, Australia, self‑represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TPP Wholesale Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2017. On November 8, 2017, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On November 9, 2017, TPP Wholesale 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 November 28, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2017. The Response was filed with the Center on December 18, 2017.
The Center appointed John Swinson as the sole panelist in this matter on December 22, 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 makes and sells fine chocolates under the brand GODIVA. According to the Complaint, the Complainant owns and operates hundreds of retail stores worldwide under that brand.
The Complainant owns a number of Australian registered trade marks for GODIVA, the earliest of which was registered on August 20, 1984 (Australian registered trade mark number 413773).
The Respondent is Acheeva Business Solutions Pty Ltd, a company incorporated in Australia. The Respondent offers domain name investment, domain name brokerage, consultancy and web services to small businesses.
The Respondent registered the Disputed Domain Name on February 7, 2016. There is no active website associated with the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar
The Disputed Domain Name consists of the Trade Mark. The Respondent is not known by the Trade Mark and does not manufacture, sell, sponsor, operate or facilitate any product or service connected in a “close and substantial” manner to the Trade Mark. The Disputed Domain Name is identical or confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not affiliated with the Complainant. The Complainant has not authorized the Respondent to register or use the Disputed Domain Name or any domain name incorporating the Trade Mark.
There is no evidence of use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent’s services relate to web hosting and domain name registration.
The Respondent is not known by the Disputed Domain Name, and is not actively using the Disputed Domain Name.
The Respondent has registered the Disputed Domain Name in breach of the .au Domain Administration (“.auDA”) Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (“Eligibility and Allocation Rules”). Registered or Used in Bad Faith
The Disputed Domain Name was registered in bad faith. This conclusion is based on the following:
- There is no evidence that the Respondent has used the Disputed Domain Name at any time since its registration.
- The Respondent’s core business is the offering of web services.
- The Respondent would have been aware of the Complainant or the Trade Mark at the time it registered the Disputed Domain Name, or alternatively, could have become aware of the Complainant and the Trade Mark had it conducted a search.
- The Respondent has not responded to a letter of demand sent by the Complainant to the Respondent on October 12, 2017.
Based on the above, the Complainant considers that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant. B. Respondent
The Respondent makes the following contentions. Rights or Legitimate Interests
The Respondent acquired the Disputed Domain Name on February 7, 2016 for the purpose of creating an ecommerce website selling women’s clothing and accessories. This website has not yet been developed, but the Respondent still intends to use the Disputed Domain Name for that purpose.
The Respondent submits that the term “diva” is associated with a trendy and/or dominant female. The use of the prefix “go” is commonly used to refer to transformation. The combination of these terms in the Disputed Domain Name is used to convey the idea that the website will supply clothing to women seeking to portray an image of class and style. Registered or Used in Bad Faith
Bad faith registration requires knowledge or awareness of the Complainant or the Trade Mark. At present, the Complainant does not appear to conduct any meaningful volume of trade in Australia. The Trade Mark is largely unknown in Australia. The Complaint is motivated by the fact that the Complainant recently announced its intention to enter the Australian market.
At the time the Respondent acquired the Disputed Domain Name, the Trade Mark was not known to the Respondent. The Respondent’s intended use of the Disputed Domain Name would not cause consumer confusion. 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 is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) 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. No other terms are added. The Disputed Domain Name is identical to the Trade Mark.
The Complainant succeeds on the first element of the Policy. B. 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. This finding is based upon the following:
- The Complainant has not authorized the Respondent to register the Disputed Domain Name or to use the Trade Mark.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no active website associated with the Disputed Domain Name.
- The Respondent is not commonly known by “GODIVA” or similar.
- The Respondent does not appear to be making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.
The Respondent submits that it intends to use the Disputed Domain Name to operate a website which sells women’s clothing and accessories, and that although the website has not yet been developed, this intention remains. It seems the Respondent seeks to rely on paragraph 4(c)(i) of the Policy to demonstrate its rights or legitimate interests, and is attempting to show that it has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
However, the Respondent has provided no evidence of its intentions other than an assertion in its uncertified Response. To find the Respondent’s assertions convincing, the Panel would require a business plan or communications with a web developer or suppliers, or similar. Without more, the Panel considers that the Respondent’s intentions in respect of the Disputed Domain Name were unlikely to be bona fide.
The Respondent has failed to rebut the prima facie case established by the Complainant. The Complainant succeeds on the second element of the Policy. C. 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 subsequently used the Disputed Domain Name in bad faith.
The Respondent submits that it was not aware of the Complainant or the Trade Mark at the time it registered the Disputed Domain Name. The Respondent claims that it registered the terms “go” and “diva” as the Disputed Domain Name to reflect that its online retail store would “supply clothing to women seeking to portray an image of class and style”.
In the absence of supporting evidence, the Panel finds this explanation wholly unconvincing. Whether or not the Complainant is currently active in Australia, the Panel considers it likely that the Respondent registered the Disputed Domain Name with the Complainant in mind.
As stated by the Complainant, it is likely that the Respondent breached its warranties as to its eligibility to register the Disputed Domain Name.
The Eligibility and Allocation Rules state that . domain names must either be an exact match, abbreviation or acronym of the registrant’s name or trade mark, or be otherwise closely and substantially connected to the registrant. A . domain name is closely or substantially connected to the registrant if, for example, the domain name reflects a product that the registrant manufactures or sells, a service that the registrant provides, or an activity that the registrant facilitates, teaches or trains. See paragraph 10.5 of the .auDA Guidelines on the Interpretation of Policy Rules for Open 2LDs.
Given the Panel’s finding that it is unlikely the Respondent had any bona fide intention to use the Disputed Domain Name as claimed, it follows that the Respondent registered the Disputed Domain Name in knowing breach of the warranties relating to eligibility and allocation of “.” domain names. This is evidence of bad faith under paragraph 4(b)(v) of the Policy.
Further, the Panel is aware of two other cases in which the Respondent (or an entity associated with the Respondent) registered a domain name comprising a well-known trade mark. See HBI Branded Apparel Limited, Inc. v. G J BROWN FAMILY TRUST,WIPO Case No. DAU2016-0037 and Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd.,WIPO Case No. DAU2015-0008. In both of those cases, the relevant respondent made unsupported assertions about its intended use of the Disputed Domain Name, and in both of those cases, the panel made an adverse finding against the respondent.
In the circumstances, the Panel considers that the Respondent in this case registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name. This is further evidence of bad faith registration under paragraph 4(b)(ii) 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: January 5, 2018
Full & Egal Universal Law Academy