The Complainant is ENI S.p.A. of Rome, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Steve Chisari of Sydney, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with NetAlliance Pty Ltd trading as N. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 26, 2018, the Center transmitted by email to NetAlliance Pty Ltd trading as N a request for registrar verification in connection with the disputed domain name. On October 12, 2018, NetAlliance Pty Ltd trading as N transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 23, 2018, the Complainant filed an amended Complaint to address 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”), 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 October 24, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2018. The Response was filed with the Center on November 10, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 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.
On November 2o, 2018, the Complainant submitted an unsolicited supplemental filing in reply to the Response. On November 21, 2018, the Respondent made a supplemental filing objecting to the Complainant’s Supplemental Filing and seeking dismissal of the case as an abuse of process. The Respondent also requested an opportunity to make further factual and legal submissions in the event that the Panel admitted the Complainant’s Supplemental Filing into the record. On November 23, 2018, the Respondent made a further supplemental filing submitting email correspondence in rebuttal of the Complainant’s Supplemental Filing.
As it was not clear whether the Respondent’s second supplemental filing was intended to be the Respondent’s foreshadowed reply, the Panel issued Panel Order No. 1, giving the Respondent until November 30, 2018 to make any further submission and extending the date for the Panel’s decision. No further supplemental filing was received. 4. Factual Background
The Complainant is a multinational oil and gas company based in Rome. According to the Complaint, it operates in 71 countries and has over 33,000 employees. It has been operating in Australia “for decades”. It focuses on oil and natural gas exploration and extraction. Its petroleum and natural gas products including lubricants, lubricant additives, fuels, greases, solvents, bitumen and LPG are or have been distributed there. Its sponsorships in the past have included the Ferrari F1 team (although currently Shell is the sponsor).
For oils, lubricants and specialty products, it has appointed Chematek SpA as its distributor for Australia. Chematek is based in Italy, but has operations in Australia either directly or through some form of trading office, apparently known as Chematek Australia.
Amongst the numerous trademarks the Complainant has registered is Australian Registered Trademark No.256792, AGIP, registered in respect of industrial oils, lubricants, fuel, and other petroleum products in International Class 4. It has been registered in Australia since March 15, 1972.
The disputed domain name was registered by G & A Arena, the Complainant’s then-authorised distributor for Australia, from 2001 until 2013. Thereafter, it lay unregistered until the Respondent registered it in “around November 2016”.
According to the Response, in October 2016 the Respondent began making inquiries about becoming a reseller of the Complainant’s products. At that time, the Respondent operated (and still operates) a scooter hire business which, amongst other things, offered for sale lubricants and other accessories.
The Respondent was initially told by the Complainant’s office in Western Australia that the Complainant does not supply motor oils in Australia, being involved only in offshore oil and gas exploration. The Respondent made further inquiries and eventually on November 21, 2016 received an email inquiry from a representative of Chematek. Thereafter, there were a number of communications and meetings to progress negotiations.
It is not entirely clear from the Response, but it appears that the Respondent may have received from Chematek and offered for sale some of the Complainant’s products during this period.
In the course of these negotiations, on May 15, 2017, the Chematek representative requested that the Respondent cease using the name Agip, including via the disputed domain name. On the Respondent’s version of events, that objection was maintained on a number of occasions. This included an email from Chematek Australia’s CEO on August 25, 2017 which pointed out that Chematek did not have rights under its agreement with the Complainant to use or authorise the use of the Complainant’s trademark. It stated that, while it recognised this would “irritate” the Respondent, it was not just a question of Chematek’s contractual arrangements with the Complainant but also a question of trademark infringement. The email also indicated that the Complainant had questioned the registration of the disputed domain name.
On September 19, 2017, the Respondent (as buyer) entered into an agreement with Chematek SpA (as seller) to buy goods from Chematek for resale. Clause 19 of the agreement, Intellectual Property, provided that “No right or licence is granted to the Buyer under any patent copyright, registered design or trademark, or other industrial or intellectual property right.”
On September 29, 2017, the Respondent submitted a completed Customer Account Opening Form to Chematek. The form as submitted by the Respondent stated that his business trading name was I-Ride Australia and gave his email address as .
On October 2, 2017, the Respondent placed an order with Chematek for approximately AUD 3,000 worth of the Complainant’s products. The product descriptions did identify the products using some of the Complainant’s brand names including i-Ride and Rotra. The brand names listed did not include “Agip”.
Subsequently, the Respondent offered these products for sale at least via his “Scooter Hire” website. At least one of the products being offered bore the AGIP trademark.
In February 2018, the Respondent made a claim to Chematek in respect of faulty bottle tops. Chematek appears to have rejected this claim on the basis that the agreement required complaints about defective goods delivery to be made within five days of receipt and so this complaint was well out of time. The continued unauthorized use of the disputed domain name was raised again.
The Respondent was not satisfied with this response. He listed the disputed domain name for sale through the Registrar for the sum of AUD 10,000. Also, in August 2018, he lodged a complaint about Chematek’s conduct over the faulty products with the NSW Fair Trading office.
On May 31, 2018, the Respondent registered the business name Agip Lubricants Australia.
On September 28, 2018, the Respondent reached agreement with an individual to transfer the disputed domain name for AUD 2,000. The sale has not gone through as a result of the filing of the Complaint. 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.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. See, e.g.,auDA Overview of Panel Views on Selected auDRP Questions, First Edition 2014 (“auDA Overview”), section 4.2.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.
While the Panel does have some reservations that a number of matters which the Complainant’s proposed Supplemental Filing seeks to address could and should have been addressed in the Complaint, on balance the Panel considers that it is appropriate to admit the proposed Supplemental Filing into the record. First, the Response does raise a number of defences based on correspondence or communications with Chematek which the Complainant was not involved in. It is at least arguable that the Complainant should have explored matters more thoroughly with its distributor, but the Complainant did submit its proposed Supplemental Filing promptly. Moreover, while the Respondent has objected to the admissibility of the proposed Supplemental Filing, the Respondent has not pointed to any particular prejudice which would flow from admission. On the contrary, the Respondent has submitted materials in rebuttal and, having been given further time to submit any additional materials or argument it considered necessary, did not submit any further materials. Accordingly, the Panel admits the Complainant’s Supplemental Filing into the record. In the interests of ensuring that both parties are given a fair opportunity to present their respective cases, the Panel also admits the Respondent’s Supplemental Filings into the record. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, 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 in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Complainant has proven that it owns at least the registered trade mark for AGIP, Australian Registered Trademark No. 256792.
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 trademark: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001; auDA Overview, section 1.2. 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.
Disregarding the Top-Level suffix, “.”, as a functional component of the domain name system, the disputed domain name is identical to the Complainant’s trademark. The Complainant has therefore established the first requirement under the Policy. 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 use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) 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 noncommercial 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 panels have recognized 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; auDA Overview, section 2.1.
The Complainant states that it has never authorised the Respondent to use its trademark or the disputed domain name. In addition, the Respondent is not affiliated with it and was not commonly known by the name “Agip”.
The Respondent says first that he did a trademark search before registering the disputed domain name and found that the Complainant’s trademark had lapsed. In addition, the Respondent says that the Complainant’s products were not available for sale in Australia and appears to argue that the Complainant had abandoned its trademark in Australia. The Respondent also claims that he registered and used the disputed domain name with the knowledge and consent of the Complainant and its Australian distributor, Chematek. Thirdly, the Respondent says that he has used the disputed domain name only to offer for sale the Complainant’s genuine products.
The Respondent’s first argument appears to be wrong. According to IP Australia’s online ATMOSS records, Australian Registered Trademark No. 256792 was renewed for a further period of 10 years on March 15, 2007. It was timely renewed in January 2017 for a further period of 10 years.
The record about whether the Complainant’s products were available in Australia is not particularly clear. However, the trademark was registered and consequently its use in relation to relevant goods or services without permission would be an infringement even if the Complainant was not using its products in the market. The Complainant would retain its rights until the registration were removed for non-use. Even if the Respondent were able to establish that the trademark had not been used for the relevant continuous period of three years, however, removal is not automatic. The Registrar (and the Court) have a discretion not to order removal even where the conditions for removal have been made out. Moreover, removal operates prospectively only. Accordingly, the argument that the Complainant did not have relevant trademark rights in Australia cannot succeed, especially in the face of the Complainant’s subsisting trademark registration.
The Panel is also unable to accept the Respondent’s argument that he registered and used the disputed domain name with the knowledge and consent of the Complainant or its Australian distributor. First, the chronology outlined above indicates that the Respondent registered the disputed domain name in November 2016, before any relationship had been concluded, either formally or informally.
Secondly, it is clear from the communications between the parties as outlined by the Respondent that Chematek on a number of occasions raised objections to his registration and use of the disputed domain name. While Chematek did receive a Customer Account Opening Form which nominated the Respondent’s email address as “[…]@”, the overarching agreement which governed the relationship and was executed at the same time included clause 19 prohibiting use of the Complainant’s trademarks.
The Panel does not consider the conduct of the parties disclosed in the record in this administrative proceeding was a disentitling waiver by Chematek over the disputed domain name. Nor do the circumstances suggest that the Respondent was induced either to register the disputed domain name or invest in its promotion by Chematek in a way which gives rise to an estoppel against Chematek. The Respondent does say that he invested substantial time and money without compensation by Chematek in developing his marketing proposal for the business and preparing promotional materials. However, that was in a context where Chematek made repeated demands to stop using the disputed domain name.
This leads to a further consideration. Under its arrangements with the Complainant, Chematek did not have rights to license the Complainant’s trademarks. The Respondent was put clearly on notice of this limitation, and the Complainant’s concerns about the registration of the disputed domain name, by at least the email from Chematek Australia’s CEO in August 2017.
Thirdly, it does not appear to be in dispute that the Respondent was in fact offering for sale the Complainant’s genuine products. Precisely how this was done is less clear. The Respondent has submitted evidence showing that at some point(s), the disputed domain name resolved to a website which promoted the Respondent’s services as a “Lubricants Advisor”. At other times, and this appears to have been the case until the Respondent’s website became inactive, the disputed domain name resolved to the website of the Respondent’s scooter hire business. The page on that website on which any of the Complainant’s products were being offered for sale was just one of a number of pages. The “Agip” product was just one of a number of different products. Moreover, other pages on the site, including the homepage, were promoting products other than the Complainant’s products. See, e.g., auDA Overview, section 2.3.
The examples of that website in evidence did not clearly disclose the relationship of the Respondent to the Complainant. The disputed domain name itself consisted wholly of the Complainant’s trademark. The use of a domain name of that character in connection with a website of the character described would appear highly likely to convey a representation that the Respondent was associated with, or endorsed by, the Complainant much more closely than as the mere reseller of a few of its products.
Accordingly, the Panel finds that, on the record in this case, the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy. The Complainant therefore has established the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith
In contrast to the Uniform Domain Name Dispute Resolution Policy (UDRP), the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. Registration or use in bad faith are disjunctive requirements under the Policy, not conjunctive as under the UDRP:
The requirement of bad faith, as under the UDRP, typically implies an attempt to take advantage of the trademark significance of the disputed domain name without permission.
The Respondent was clearly well aware of the Complainant and its trademark when he first registered the disputed domain name. If nothing else, he had made inquiries in the market to ascertain if its products were available for sale. The Respondent also apparently undertook some form of trademark search before registering the disputed domain name.
Whatever may be thought about the Respondent’s motives in registering the disputed domain name, his decision to list the disputed domain name as being for sale for an asking price of AUD 10,000 was clearly an attempt to take advantage of the significance of the disputed domain name as the Complainant’s trademark. So also the agreement to sell the disputed domain name at the “reduced” price of AUD 2,000. See, e.g., AW Faber-Castell (Aust) Pty Ltd. v. Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust,WIPO Case No. DAU2013‑0018.
Accordingly, the Panel finds that the Respondent at least has used the disputed domain name in bad faith. The Complainant therefore has established the third requirement under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: December 9, 2018
Full & Egal Universal Law Academy