The Complainant is Power On Systems Pty Ltd of Glendenning, Australia, represented by McBride Legal, Australia.
The Respondent is Combined Battery Systems Pty Ltd formerly known as Ceil Motive Power Pty Ltd of Wetherill Park, Australia, represented by Coleman Greig Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with TPP Domains Pty Ltd. dba TPP Internet (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 15, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 2, 2018.
The Center verified that the Complaint together with the amended 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 March 5, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2018. On March 21, 2018, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(d) of the Rules, the Center granted the extension and confirmed the new due date for Response was March 29, 2018. The Response was filed with the Center on March 28, 2018.
The Center appointed Alan L. Limbury as the sole panelist in this matter on April 4, 2018. 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 and the Respondent are competitors.
By an agreement dated August 25, 2009, the Respondent was authorized to market and sell lead acid storage batteries under the trademark CEIL, which had been registered in Australia in Class 9 on September 27, 2000, No. 800960, by a subsidiary of Exide Industries Limited of India.
The Domain Name was registered by the Respondent under its then corporate name, Ceil Motive Power Pty Limited, on May 31, 2012. The website to which the Domain Name resolved was used by the Respondent to promote and sell CEIL branded batteries until approximately 2016.
On April 8, 2015 the Respondent registered the business name Ceil Battery Systems.
On April 8, 2017 the Complainant registered the business name Ceil Power Systems.
By letter dated May 2, 2017, addressed "To whom it may concern", Exide Industries Limited declared that the Complainant is "hereby authorized to promote and sell our motive power products in Australia under the CEIL brand" and that the Complainant is its authorized agent in Australia, approved to use the CEIL mark until December, 2020.
By letter to the Respondent dated September 12, 2017 Exide Industries Limited stated that the agreement with the Respondent had expired on August 24, 2014 and demanded that the Respondent cease further use of the CEIL mark and any identical or confusingly similar material.
On October 10, 2017 the Respondent changed its corporate name from Ceil Motive Power Pty Limited to Combined Battery Systems Pty Limited.
The Respondent's website now offers batteries similar to those of the Complainant, without CEIL branding. 5. Parties' Contentions A. Complainant
From approximately 2006 to 2017 the Respondent traded as Ceil Battery Systems, which it registered as a business name in 2015. During that time the Respondent became widely known by the acronym of its trading name, CBS, and in the Australian market both the trading name and the acronym became synonymous with the CEIL trademark. The Respondent advertised the business name and the acronym from the website to which the Domain Name resolved.
Accordingly there continues to exist a strong connection in the marketplace between the CEIL trademark, the Respondent's business name Ceil Battery Systems, its acronym CBS and the Domain Name . In the circumstances, the Domain Name is confusingly similar to the Complainant's business name Ceil Power Systems in which it has rights through registration, and to the CEIL trademark, in which the Complainant has rights as an authorized user.
The Respondent has no rights or legitimate interests in respect of the Domain Name. Until approximately 2016 the Respondent's website advertised CEIL branded products. It now advertises similar products without that branding but with a logo that is deceptively similar to that branding, shown in Annex 9. Hence the Domain Name remains synonymous in the Australian marketplace with the CEIL trademark and the Complainant's business name.
As a result of a dispute between the Complainant and the Respondent over the Respondent's unauthorized use of the CEIL trademark, the Respondent changed its corporate name from Ceil Motive Power Pty Limited to Combined Battery Systems Pty Limited in October 2017 yet the Respondent still uses the Domain Name.
The Respondent is aware of the connection in the marketplace between the Domain Name and the CEIL trademark in which the Complainant has rights and, despite no longer having rights in that mark, the Respondent continues to sell products very similar to the Complainant's. The Respondent's conduct in doing so is intentionally to attract the Complainant's customers to the Respondent's website; to create confusion in the marketplace; to capitalize on the historical (and now unauthorized) connection with the CEIL trademark; and to disrupt the Complainant's business. This is likely to amount to misleading or deceptive conduct under section 18 of the Australian Consumer Law or passing off at common law.
The Complainant does not contend that the Domain Name was registered in bad faith. However, since August 24, 2014 when the Respondent lost the authority to use the CEIL trademark and to supply CEIL branded products, for the reasons outlined above the Respondent has used and continues to use the Domain Name in bad faith. B. Respondent
No evidence has been put forward as to any confusion in the relevant market between the Domain Name (which contains neither the word "Ceilˮ, nor the word "Powerˮ) and the Complainant's business name. The Domain Name and the Complainant's business name have nothing in common other than the word "systems".
The Respondent has as a footer to all its outgoing emails a notation as follows: "Please note we have changed our name from Ceil Motive Power to Combined Battery Systems. We no longer stock or sell the Ceil product or have any association with the Ceil brandˮ.
Absent evidence to the contrary, and having regard to the efforts of the Respondent to ensure there is no confusion in the market place, the Respondent asserts that its use of the Domain Name is in no way confusingly similar to the Complainant's business name.
The CEIL trademark bears no resemblance to the Domain Name other than both containing the letter "cˮ.
The Complainant has offered no evidence of confusion between the Domain Name and the Complainant's trademark and the Respondent is not aware of any such confusion in the marketplace.
The Respondent denies that it has no right or legitimate interests in respect of the Domain Name, which accurately reflects the name of the Respondent's company Combined Battery Systems Pty Ltd. The Respondent makes it clear to all persons with whom it has email communication that it has no relationship with and does not stock or supply Ceil products.
The Complainant's assertion that the Respondent's ongoing use of the Domain Name constitutes an intention to disrupt the Complainant's business and to attract the Complainant's customers is unsupported.
The email footer set out above is ample evidence that the Respondent's intentions are not to mislead or deceive.
As to the Complainant's contention that the Respondent's ongoing use of the Domain Name is in bad faith, the Respondent says the Domain Name bears no relationship to the business of the Complainant and contains no references to words or marks that are the property of the Complainant. No evidence has been put forward by the Complainant as to any confusion in the relevant market place or of the Respondent presently selling or purporting to sell Ceil branded batteries. The Respondent actively seeks to disavow any persons with whom it communicates by email or by phone of the existence of any relationship between it and the Ceil brand or the Complainant.
There is no doubt that the Respondent is a competitor of the Complainant because both supply batteries into the same market. However this fact does not support the assertion that the Respondent is using the Domain Name in bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires the Complainant to prove three elements:
(i) the Domain Name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Note 2); and
(iii) the Domain Name has been registered or subsequently used in bad faith.
Note 1 provides that for the purposes of the Policy, a "name … in which the complainant has rights" refers to the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or the complainant's personal name.
Note 2 provides that, for the purposes of the Policy, "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration. A. The Complainant's Rights
The Complainant has provided evidence, which the Panel accepts, that it has rights in the CEIL trademark as an authorized user and that it has rights in the business name Ceil Power Systems which it registered with the relevant Australian authority on April 8, 2017. B. Identical or Confusingly Similar
As to identity, in GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001 (March 5, 2003) a three-member panel decided that, as is the case under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc.,WIPO Case No. D2000-0113 (April 14, 2000); Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802 (September 9, 2000); Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000-0102 (April 20, 2000) and Blue Sky Software Corp. v. Digital Sierra Inc.,WIPO Case No. D2000-0165 (May 1, 2000).
In the present case the Panel finds that, disregarding the inconsequential top-level suffixes "", the Domain Name is neither essentially nor virtually identical to the CEIL mark or to the Ceil Power Systems business name.
As to confusing similarity, the Complainant says the Domain Name is confusingly similar to the Complainant's business name Ceil Power Systems and to the CEIL trademark because there remains a strong connection in the marketplace between the CEIL trademark, the business name Ceil Battery Systems used by the Respondent between 2006 and 2017, the acronym CBS and the Domain Name and that the Domain Name has become synonymous with the CEIL trademark.
Paragraph 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0") July 2014, notes that the test for confusing similarity is the same as that under the UDRP:
"The test for confusing similarity is typically undertaken by a comparison of the domain name with the trademark or name alone, independent of the other marketing and use factors that might be considered in a trademark infringement or a misleading and deceptive conduct case. Application of the confusing similarity test typically involves a straightforward visual or aural comparison of the trademark or name with the alphanumeric string in the domain name, to determine the likelihood of Internet user confusion. In order to satisfy the test for confusing similarity, the relevant trademark or name would generally need to be recognisable as such within the domain name…
Where the domain name consists of the acronym of the complainant's trademark or name, the domain name is unlikely to be considered confusingly similar to the mark or name unless the complainant can establish a reputation in the acronym.
The applicable top-level suffixes in the domain name (e.g., ".") would usually be disregarded under the confusing similarity test, except in certain cases where one or other, or both, of the top-level suffixes form part of the relevant trademark or name.
auDRP panels generally ignore the content of any website to which the domain name resolves, on the basis that identity or confusing similarity is to determined simply by way of a string comparison – i.e., by comparison of the domain name's text with the text of the complainant's trademark or name."
In adopting this approach, the Panel in GlobalCenter held that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480 (March 26, 2002); Koninklijke Philips Elecs. N.V. v. In Seo Kim,WIPO Case No. D2001-1195 (November 12, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc.,WIPO Case No. D2001-1121 (November 7, 2001) and the cases there cited.
Comparing the Domain Name's text with the Complainant's CEIL trademark and with its Ceil Power Systems business name and disregarding the top-level suffixes "" the Panel finds, that the Domain Name is not confusingly similar to either of them.
There remains the question whether the Complainant can establish confusing similarity in this case on the basis that the Domain Name has become synonymous with the CEIL trademark, i.e., equivalent in meaning; expressing or implying the same idea. This is not the same as similarity, i.e.,having a likeness or resemblance.
As to this question, the Panel notes the statement in the auDA auDRP Overview 1.0, above:
"Where the domain name consists of the acronym of the complainant's trademark or name, the domain name is unlikely to be considered confusingly similar to the mark or name unless the complainant can establish a reputation in the acronym."
The Complainant does not assert that the Domain Name itself or the first three letters of the Domain Name, "cbs" are an acronym of the Complainant's CEIL trademark and clearly they are not. They are an acronym of the Respondent's former business name Ceil Battery Systems and its present company name Combined Battery Systems Pty Ltd.
What is clear is that the Respondent sold CEIL branded products and no longer does so. Under these circumstances, assuming for present purposes, without deciding, that it may be sufficient in order to satisfy the first element of the Policy to show that a domain name that is not identical or confusingly similar to a trademark is nevertheless generally viewed in the relevant marketplace as synonymous with that trademark, it would be necessary for a complainant to produce evidence to that effect.
Here the only evidence the Complainant has produced in support of its assertion that the Domain Name is synonymous with its CEIL mark is the logo shown in Annex 9 which the Complainant contends is deceptively similar to that branding. There are two difficulties with this. First, such evidence is generally excluded from consideration when assessing whether a domain name is confusingly similar to a trademark or name. See WIPO Overview 3.0, sections 1.15, 1.7. Second, taking that evidence into consideration for the purposes of this case, the Panel finds that the logo presently used is not deceptively similar to the CEIL branding of the Respondent's former logo. Although both logos depicted in that Annex are similar in structure and bear the heading CBS, the present logo uses the words "Trusted Battery Systems" instead of "Ceil Battery Systems" and does not include the previous statements "Powered by Ceil Motive Power Pty Ltd" and "visit us at www.".
In the result, the Complainant has produced no evidence establishing that the Domain Name is synonymous with the CEIL trademark, so even on the assumption that such evidence would satisfy the test of confusing similarity, the Panel finds that the Complainant has failed to establish this element. C. Rights or Legitimate Interests and Registered or Subsequently Used in Bad Faith
Since the Complainant has not established the first element required under the Policy, the Complaint cannot succeed and it is unnecessary for the Panel to consider the other elements. For completeness however, the Panel notes that this case involves issues better suited to resolution by a court, namely insofar as the Complainant claims the Respondent's conduct amounts to misleading or deceptive conduct under section 18 of the Australian Consumer Law or passing off at common law. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Sole Panelist
Date: April 12, 2018
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