The Complainant is Datacom Group Limited of Wellington, New Zealand, represented by Norton Rose Fulbright LLP, Australia.
The Respondent is Datacom Systems Australia Pty Ltd of Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NetRegistryPty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2018. On May 7, 2018, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2018, 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 Complainant filed an amended Complaint on May 17, 2018 to resolve an administrative formality.
The Center verified that the Complaint together with the amended 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 May 17, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2018.
The Center appointed John Swinson, Andrew F. Christie, and Debrett G. Lyons as panelists in this matter on June 18, 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 is Datacom Group Limited, an information technology goods and services company. The Complainant was founded in 1965 and since that time has offered management and consulting services, cloud services, data center services, custom software development, procurement services, business process management, and payroll services.
Those goods and services have been offered by reference to trade mark DATACOM (the “Trade Mark”).
The Complainant owns a number of registrations for the Trade Mark including:
- New Zealand registered trade mark number 181450 filed on May 2, 1988 and registered on August 27, 1996;
- New Zealand registered trade mark number 181451 filed on May 2, 1988 and registered on August 27, 1996;
- New Zealand registered trade mark number 181452 filed on September 5, 1996 and registered on August 27, 1996;
- New Zealand registered trade mark number 212670 filed on September 5, 1991 and registered on June 25, 1996;
- Australian registered trade mark number 1884570 filed on November 2, 2017; and
- International Trademark number 1391460 registered on November 2, 2017.
The Respondent is Datacom Systems Australia Pty Ltd. The Respondent did not file a Response, and consequently little information is known about the Respondent. At the time the Complaint was filed, the Disputed Domain Name resolved to what appears to be an error page. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Disputed Domain Name consists of the words “datacom” and “systems”. The country code suffix “.” in the Disputed Domain Name should be disregarded when assessing the similarity of the Disputed Domain Name to the Complainant’s Trade Mark, as the suffix is a technical requirement for registration of the Disputed Domain Name. The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark because the distinctive and dominant feature of the Disputed Domain Name is the word “datacom”, which is identical to the Trade Mark.
The Complainant submits that the inclusion of the additional word “systems” does not sufficiently differentiate the Disputed Domain Name from the Trade Mark. The word “systems” is descriptive when considered in relation to computer services, software goods, and information and communications technology goods and services. The addition of descriptive terms to a trade mark does not have the effect of adding a distinguishing feature to the domain name.
Rights or Legitimate Interests
The Complainant has been using the Trade Mark since 1965 and has had registered rights in the Trade Mark since 1988. This is well before the Respondent registered the Disputed Domain Name. Therefore, the Complainant’s rights in the Trade Mark predate the registration of the Disputed Domain Name.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain name in connection with a bona fide offering of goods or services. There is no bona fide offering of goods or services at the Disputed Domain Name as it is a parked page containing links to other parked websites. The use of a domain name to operate a page comprising pay-per-click (“PPC”) links, which divert to further parked pages, is sufficient to show that the Respondent is in no way making a bona fide offering of goods and services. The Respondent is attempting to capitalize on the reputation and goodwill of the Trade Mark to mislead Internet users.
There is insufficient evidence to demonstrate that the Respondent has been commonly known by the Disputed Domain Name or has any trade mark rights in “DATACOM”. The Respondent has no relationship with the Complainant and is not an authorized provider of the Complainant’s goods or services. The Respondent has in limited circumstances, by way of a representative named Luke Kiana, corresponded with a third party customer using the Disputed Domain Name as part of its email address. The copy of the invoice from Luke Kiana shows the Complainant’s Trade Mark and logo being used.
The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.
Registered or Subsequently Used in Bad Faith
The Respondent has registered the Disputed Domain Name for the purpose of disrupting the Complainant’s business and activities. The Respondent has incorporated the Complainant’s well-known Trade Mark into the Disputed Domain Name. There are no additional elements sufficient to distinguish it from the Trade Mark that would prevent confusion arising between the Disputed Domain Name and the Trade Mark.
The Panel may draw an inference of registration and use in bad faith from the fact that the Respondent has used the Disputed Domain Name in trade to issue an invoice to a third party that bears a logo containing the Complainant’s Trade Mark. The Respondent’s use of the Trade Mark in the Disputed Domain Name, and its logo, demonstrate that the Respondent seeks to take unfair advantage of the Complainant’s Trade Mark.
The Respondent is “passively holding” the Disputed Domain Name which suggests it is doing so for the purpose of disrupting the Complainant’s business activity. The Disputed Domain Name resolves to a parked page with the intent of diverting Internet users away from the Complainant’s website. 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., Harness Racing Australia v. Acronym Wiki Pty Ltd,WIPO Case No. DAU2011-0007). 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 is confusingly similar to the Trade Mark. The Trade Mark is clearly recognizable within the Disputed Domain Name, with the addition of the term “systems”. The Panel considers that the most distinctive part of the Disputed Domain Name is the Complainant’s Trade Mark. The addition of the term “systems” does not alleviate the confusing similarity.
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 for the following reasons:
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or that the Respondent has registered or common law rights in relation to the Disputed Domain Name. The Respondent’s registered company name is Datacom Systems Australia Pty Ltd; however, the Complainant has submitted that there is insufficient credible evidence that the Respondent has traded under this name. According to research conducted by the Panel, the Respondent is not registered for GST (Goods and Services Tax) in Australia and so is unlikely to be a trading entity. It is open for the Panel to conclude that the Respondent is not commonly known as “Datacom Systems” or “Datacom Systems Australia”.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. At present, there is no active website associated with the Disputed Domain Name.
- 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. According to the Complainant the website to which the Disputed Domain Name resolved contained PPC links; however, the evidence provided by the Complainant did not establish this and at present the Disputed Domain Name resolves to a website that appears to be an error page. This is not indicative of a bona fide offering of goods and services and does not demonstrate rights or legitimate interests in the Disputed Domain Name (see section 2.6 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview 1.0”).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, 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 has registered or has subsequently used the Disputed Domain Name in bad faith.
The Complainant was founded over 50 years ago and, according to the Complainant, has used consistently and acquired a strong reputation in the Trade Mark in relation to IT services. The Complainant and its associated entities have acquired this reputation through extensive use of the Trade Mark. The Respondent registered the Disputed Domain Name on March 30, 2018, which is significantly after the Complainant was founded or registered its Trade Mark. Furthermore, the Disputed Domain Name contains the Complainant’s Trade Mark and the word “systems”, which is descriptive of some of the Complainant’s business activities. The Disputed Domain Name currently resolves to an error page.
The Complainant has provided evidence of the Respondent using the Disputed Domain Name as an email address for sending an invoice. The Respondent’s invoice uses the Complainant’s Trade Mark. It is highly probable that the Respondent has knowledge of the Complainant’s business and has used the Disputed Domain Name to impersonate the Complainant.
In the circumstances, the Panel considers it likely that the Respondent registered the Disputed Domain Name with the Complainant in mind, to trade off the Complainant’s reputation and Trade Mark. By using the Disputed Domain Name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s Trade Mark. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Given the above, and in the absence of a Response or any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded 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 domain name be transferred to the Complainant.
John Swinson
Presiding Panelist
Andrew F. Christie
Panelist
Debrett G. Lyons
Panelist
Date: July 2, 2018
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