The Complainants are Makegoods Pty Limited and Niche Group Holdings Pty Limited of Ultimo, Australia, represented by Clarifis Intellectual Property, Australia.
The Respondent is Zoran Petkovic, GMP Constructions Pty Ltd of Wetherill Park, Australia, represented by Cooper Mills Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Synergy Wholesale Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2019. On January 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, the Registrar 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 Domain Name Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for .au Domain Name 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 January 30, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2019. The Response was filed with the Center on February 18, 2019.
The Center appointed Warwick A. Rothnie, David Stone and The Hon Neil Brown Q.C. as panelists in this matter on March 7, 2019. The Panel finds that it was properly constituted. Each member of 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 Second Complainant, Niche Group Holdings Pty Limited, is the owner of two registered trade marks in Australia:
(a) Registered Trade Mark No. 1917385; and
(b) Registered Trade Mark No. 1917389.
Both are figurative marks, featuring a representation of a tape measure in black and yellow and the words, respectively, “MAKEGOODS.COM.AU” or “MAKEGOODS”. Both have been registered from April 3, 2018 (i.e., their filing date). They are both registered in respect of services in International Classes 37 and 39 relating to construction and repair or renovation-related services including in particular “office space de‑installation services”.
The First Complainant, Makegoods Pty Limited, essentially provides “office space de-installation services”. That is, the main part of its business is reinstating offices and other premises to their original state after a tenant’s lease has expired and the tenant has vacated the premises. It has been providing these services since its incorporation in 2011 as the successor in title to another company which had commenced operations in 2009.
The Second Complainant provides these services under and by reference to the trade marks MAKE GOODS and/or MAKEGOODS.COM.AU. According to the Complaint, the First Complainant uses these trade marks as the exclusive licensee of the Second Complainant. Also according to the Complaint, the provision of these services by reference to the trade marks has generated tens of millions of dollars in revenues and the First Complainant has invested “hundreds of thousands of dollars” in advertising and promotion across the Sydney Metropolitan area. This included operating a website to which the Complainants’ domain name has resolved at all times relevant.
The director of both Complainants, a Mr. Adam D’Angelo, previously held the disputed domain name from June 2010 until sometime late in 2018. It was another company of which he was the director which carried on the business before the business was transferred to the First Complainant. During his stewardship, the disputed domain name redirected to the website at .
The circumstances in which Mr. D’Angelo lost control of the disputed domain name are not clear.
What is clear is that the disputed domain name came into the hands of Small Business Central first. Small Business Central offered to sell the disputed domain name to Mr. D’Angelo or the Complainants for a price between AUD 5,000 and AUD 10,000.
On January 2, 2019, however, the Respondent registered the disputed domain name. It refused to surrender the disputed domain name to the Complainants.
Since the Respondent became the registrant, the disputed domain name has redirected to the Respondent’s website at .
The Respondent is a construction company providing office and store fit out and construction services to a number of large Australian companies. It has been doing so since the 1990s. An important part of its business are its refurbishment, or “make good”, services. That is, part of its business involves reinstating offices and other premises to their original state when a tenancy or other occupancy has finished. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants 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 Complainants have 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. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, their name, trade mark or service mark.
There are two parts to this inquiry: the Complainants must demonstrate they have rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Second Complainant has proven that it owns the registered trade marks set out in section 4 above. The Complainants contend that the First Complainant is the exclusive licensee of those trade marks.
The Respondent disputes that the Complainants have provided enough evidence to support the claim that the First Complainant is an exclusive licensee.
Noting that these proceedings are proceedings on the papers and intended to provide an efficient and expeditious resolution of disputes about cybersquatting, it may be doubted that a party claiming to be a licensee of a trade mark should be required to put on evidence of the exercise of control over its operations of the kind that might be required by a Court conducting proceedings under the rules of evidence. It is unnecessary to decide this issue in the present case, however, in view of the fact that the Second Complainant is the registered owner of the trade marks in question and in light of the conclusions the Panel reaches below.
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 Complainants’ trade marks: see for example, auDA Overview of Panel Views on Selected auDRP Questions First Edition auDA auDRP Overview 1.0), 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.
While the device element of the two registered trade marks is a significant feature, it cannot be said to so dominate the textual elements of the marks that they are insignificant. As the device element cannot be represented in the domain name, therefore, the comparison is between the textual elements and the disputed domain name. See e.g. auDA auDRP Overview 1.0, section 1.11. In view of the similarities with the Uniform Domain Name Dispute Resolution Policy, it is also permissible and usual to adopt the approach under that policy of disregarding the second level domain, “.”, as a functional element of the domain name system.
The textual component of the first trade mark is identical to the disputed domain name save that the “s” is omitted. Similarly, the textual component of the second trade mark is identical to the disputed domain name (apart from the second level domain) save that the “s” is omitted. It is no doubt quite common for people to confuse the plural of a name for the singular and vice versa. This level of difference, therefore, does not escape a finding of confusing similarity. See also auDA auDRP Overview 1.0, section 1.10.
Accordingly, the majority of the Panel finds that the Complainants have 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 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 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, 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 Complainants. 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., auDA auDRP Overview 1.0, section 2.1.
Here, the Complainants confirm that they have not authorised the Respondent to use the Second Complainant’s trade marks and there is no association or other affiliation between the Respondent and either of the Complainants. They point out that use of a confusingly similar domain name for closely related services in such circumstances does not constitute a good faith offering of goods or services under the Policy.
The Complainants acknowledge that the term “make good” is a common expression in ordinary English meaning, in some contexts, to recompense or repair damage or injury. However, the Complainants reference auDA auDRP Overview 1.0, section 2.2 for the proposition that it is not sufficient to establish rights or a legitimate interest to the disputed domain name to show only that it consists of ordinary words used in common usage. The Complainants then contend it is “unfathomable” that the use of such a descriptive term in connection with construction services could be in good faith. The Complainants point out further that the market for their services is a specialist market and provide letters from two clients claiming to be confused or misled by the Respondent’s use of the disputed domain name.
The Panel considers that the starting point is the fact that the disputed domain name consists of an ordinary English expression. As the Complainants contend, that does not automatically confer an entitlement to the disputed domain name. In the present case, however, the term “make good” is directly descriptive of services which the Respondent provides and, so far as the record in this proceeding shows, has been providing for a long time before this dispute arose.
The Panel is unable to afford much, if any, weight to the testimonials of confusion provided by some of the Complainant’s clients. First, they are only a small number and do not and cannot purport to be a representative sample.
Secondly, the basis on which their statements were elicited has not been exposed.
Thirdly, it is important to note the nature of the Second Complainant’s registered trade marks. As already noted, they consist of a graphic device and a textual expression which is very close to an ordinary English expression which, as the Panel have already noted, is being used by the Respondent in connection with services which that expression aptly describes. In these circumstances, the warning given by Stephen J in Hornsby Building Information Centre Pty. Ltd. v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 is apposite:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42 , per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43 , the possibility of blunders by members of the public will always be present when names consist of descriptive words – "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
His Honour’s comments were about passing off and applied in the context of a case concerning misleading or deceptive conduct in commerce. The test for trade mark infringement is focused on the allegedly infringing term rather than an assessment in the context as a whole. In circumstances where the Second Complainant’s trade marks consist of a device or figurative element which could be represented in many different ways and a textual element which so closely corresponds to a term which is directly descriptive of the services in question, his Honour’s comments are nevertheless directly applicable here.
The Complainants also point to the offers to sell the disputed domain name made by Small Business Central. Small Business Central, however, is not the Respondent and there is no suggestion that the Respondent is in some way a cat’s paw for Small Business Central or associated with it in some way that undermines the fact that the Respondent is using the disputed domain name in connection with services the Respondent has been providing for a long time prior to this dispute and of which the disputed domain name is directly descriptive.
In these circumstances, the Complainants have failed to establish that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As the Complaint must fail, no useful purpose would be served by addressing this question. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
David Stone
Panelist
The Hon Neil Brown Q.C.
Panelist (Dissenting)
Date: March 25, 2019 OPINION CONCURRING IN PART AND DISSENTING ON IDENTICAL OR CONFUSINGLY SIMILAR, BAD FAITH AND REVERSE DOMAIN NAME HIJACKING
In my opinion, the Complainants have not made out a case that the domain name is identical or confusingly similar to the trademark and it therefore fails to prove the first element. Clearly the domain name is not identical, as the trademark MAKEGOODS carries an extra letter than the domain name, which is . On the other hand, the domain name is similar to the trademark as there are very few changes from the trademark. But it must surely be doubtful whether it is confusingly similar. It is true that the trademark has lost only one letter from its name before being used in the domain name. But, as has been said on many occasions in such cases, these small differences can have a large effect on the assessment of the domain name. That is what has happened here. The trademark invoked goods that have been made or goods that have been used in a process that is referred to as making good. Virtually any meaning given to the word “makegoods” carries with it the notion of particularity, that there are specific goods in mind. That cannot be said of the use of the word “makegood” in the domain name, as it is a generic word being used to describe a generic process or notion and has no suggestion of specific goods or participants that might be encompassed by the word “makegoods’. Very few, if any, people familiar with the internet and making the usual assumptions about the accuracy of internet addresses would assume that “makegood” was the same as or confusingly similar to “makegoods” when it is clearly not and is referring to something different such as the process of making good that is engaged in by the Respondent in its business. Why, one might rhetorically ask, would anyone using the internet think that such a general reference to a concept was invoking the Complainants or their trademarked goods? If anything, they are more likely to think that the change from specific to generic had been done deliberately because something different from the trademark was being described. This is no doubt why the domain name fits so easily into the use that has been made of it by the Respondent, namely to resolve to a website that deals with construction fit-outs.
The Complaint therefore fails for not establishing that the domain name is identical or confusingly similar to the trademark. REGISTRATION OR USE IN BAD FAITH
The majority does not rule on this issue, but it has been debated by the parties and they are entitled to a decision. Moreover, the Respondent has asked for a finding of Reverse Domain Name Hijacking and a decision on bad faith is clearly relevant and probably essential to a proper determination of that issue.
It is clear that there is no evidence whatsoever that the Respondent has engaged in bad faith in the registration or in the use of the domain name and there are no facts from which any such inference can be drawn.
Like the Complainants’ case as a whole, the argument is based on no evidence, but solely on inferences that are drawn from the fact that the Respondent has registered a domain name that the Complainants want. One should add that it is usually overlooked by panels that an allegation of bad faith is a very serious one and, like an allegation of fraud, should not be made unless there is a reasonable ground for doing so and a reasonable case to support it. Neither element was present in this case. Arguments that the Respondent was “disrupting” the Complainants’ business, when it is plain the Respondent did nothing of the sort, that it was “coercing users into enquiring about the goods and services of the respondent” and that there would be widespread miss-typing of the domain name, are fanciful. Moreover, there was no targeting, passing off, misleading conduct or anything else that could be described as inappropriate conduct on the part of the Respondent who seems to have done nothing but buy a domain name that is a description of the work that it actually does, which is not a ground for losing a domain name, or at least not yet.
The decision should therefore make a positive finding that the Respondent has not engaged in bad faith registration or use of the domain name. REVERSE DOMAIN NAME HIJACKING
Findings of Reverse Domain Name Hijacking (“RDNH”) should be made rarely, so as to hold them in reserve for serious cases where a complainant has overstepped the mark. A finding of RDNH will therefore not be made, or at least should not be made, simply because the Complainant has brought a weak case or even that it was over-optimistic about its prospects of winning. But the present case goes beyond that.
I would make a finding of RDNH in the present case for two reasons. First, the case comes within that category of cases where the complainant must have known that it could not prove the essential elements of the claim, but nevertheless went on to file the complaint. Not only did the Complainants do this, but they extrapolated a case from the bare minimum that the Respondent was astute enough to buy a domain name that the Complainants want and to build on that bare fact a series of unsupported allegations.
Secondly, it appears that there is more to the story than the Complainants have revealed. The bare fact emerges that one or the other of the Complainants once owned this domain name or at least that it was owned by a Director of both companies who has submitted a Statutory Declaration that “I held…” the domain name from June 2010 until November 2018. The domain name then “dropped from the registry.” The Statutory Declaration and the Complaint are strangely silent on how that calamity came about, but it is fairly obvious that at least one explanation is that the registration of the domain name was not renewed. The full circumstances should have been revealed as they must shed some light, one way or the other, on whether the Complainants no longer wanted the domain name and, if so, why. This information must be within the sole knowledge of the Complainants and it should have been, but was not, revealed. That it was not, leaves open the possibility that the Complaint has been brought to harass the Respondent. That allegation was made by the Respondent in its Response, but the Complainants have not replied to it or, so far as this panellist can see, made any attempt to rebut that claim which they should have done, especially in the light of the comments made in Private Care Pty Ltd v Webguide Solutions t/a GD Net, on behalf of Daughterly Care Pty Ltd .auDRP_17_06, and WOW Audio Visual Superstores Pty Ltd v. Comonoz Pty Ltd,WIPO Case No. DAU2007-0003. The Complainants have thus left the Panel in the position that it knows the domain name was lost, but not why it was lost, and where the party who knows the answers to these questions will not provide the answers. In those circumstances a finding of RDNH is more than justified.
The Hon Neil Brown Q.C.
Panelist (Dissenting)
Date: March 25, 2019
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