The Complainant is Ulendo Roode, Curatura Pty Ltd, Australia, represented by Macpherson Kelley Pty Ltd, Australia.
The Respondent is Eco Care Services Pty Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 27, 2020, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On January 28, 2020, Web Address Registration 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 January 29, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2020. No Response was received by the due date and thus the Center notified the Respondent’s default on February 19, 2020. On February 20, 2020, the Center received a request from the Respondent’s counsel to extend the Response filing period for 21 days. Pursuant to paragraph 5(d) of the Rules, on February 20, 2020, the Center requested the Complainant’s comments on the Respondent’s extension request. On February 21, 2020, the Complainant responded to the Center objecting to the Respondent’s extension request for multiple reasons. On the same day, the Center informed the Parties that it would proceed to panel appointment and that any late filing by the Respondent would be left to the sole discretion of the Panel to decide whether to consider and whether to take any additional steps. After the appointment of the Panel, the Center received a letter from the Respondent’s counsel. The Respondent’s counsel stated that they were having difficulty obtaining instructions from their client. They stated that if the Center did not hear from them by March 6, 2020, the Center could presume that the Respondent’s counsel no longer has instructions to act in the matter. No further correspondence was received. The Center appointed John Swinson as the sole panelist in this matter on February 24, 2020. 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 Curatura Pty Ltd, a company incorporated in Australia. According to the Complaint, the Complainant is undertaking steps to develop its “Care to Care” business, including expending costs on marketing efforts (e.g. website designers) and marketing plans. The Complainant is the owner of Australian trade mark registration number 1982639 for CARE TO CARE, registered on September 12, 2019 (the “Trade Mark”). The Trade Mark is claimed in respect of numerous services, including cleaning services, housing construction, medical services, and veterinary services. The Respondent is Eco Care Services Pty Ltd, a company incorporated in Australia. The Disputed Domain Name was created on November 27, 2018. There is no information before the Panel as to the date that the Respondent registered or acquired the Disputed Domain Name, and therefore the Panel assumes (in the absence of any submissions by either party to the contrary) that the date of registration by the Respondent was also November 27, 2018. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant owns the Trade Mark. Rights or Legitimate Interests The Complainant registered the company name “Curatura Pty Ltd” on December 19, 2016. The website at the Disputed Domain Name has not been developed beyond a landing page on the home page saying a website is coming soon. The Disputed Domain Name’s status is “serverRenewProhibited”, which is uncommon and may be the result of an auDa compliance review. The Complainant conducted various searches to find out if the Respondent actually sells any goods or services or otherwise actively runs or promotes its business, and there were no relevant results. There is no prior history of use of the Disputed Domain Name. This demonstrates there has not been any bona fide use of, or demonstratable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services. This demonstrates the Respondent does not appear to be commonly known by the Disputed Domain Name. The Respondent’s company name and its contact email “GBSZ Cleaning” are dissimilar to the Disputed Domain Name. The Respondent does not own any registered trade marks. The Respondent does not have a registered business name for the Trade Mark. In the absence of a clear business presence, trade mark, business name, or use, the Respondent appears to have no legitimate commercial, noncommercial, or fair use interest in the Disputed Domain Name. Registered or Used in Bad Faith The Complainant is the owner of the Trade Mark. By virtue of section 20 of the Trade Marks Act 1995 (Cth), the Complainant is entitled to the exclusive right to use and authorise use of the Trade Mark in relation to the registered services, and obtain relief for trade mark infringement. The Respondent’s continued holding of the Disputed Domain Name, without any prior or current legitimate use or reputation, means the Disputed Domain Name is now being used in bad faith: - any use by the Respondent in relation to services or goods similar to the services set out in the Complainant’s Trade Mark is likely to constitute trade mark infringement or at least has the capacity to mislead consumers into believing the Disputed Domain Name refers to the Complainant or a business associated with the Complainant; and - any attempt to sell the Disputed Domain Name to a third party in excess of the Respondent’s out of pocket costs directly related to the domain, is an attempt to exploit the Disputed Domain Name for non-legitimate business reasons in breach of the Policy. 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 is on the Complainant, even though the Respondent failed to submit a Response. A. Procedural Issues Extension of time to file Response On February 20, 2020, the Center received a request from the Respondent’s counsel to extend the Response filing period for 21 days. On February 20, 2020, the Center requested the Complainant’s comments on the Respondent’s extension request. On February 21, 2020, the Complainant responded to the Center objecting to the Respondent’s extension request for multiple reasons. On the same day, the Center informed the Parties that it would proceed to panel appointment and that any late filing by the Respondent would be left to the sole discretion of the Panel to decide whether to consider and whether to take any additional steps. Under paragraph 5.3 of the Policy, if no Response is received, the Panel is required to decide the dispute based on the Complaint, except in exceptional circumstances. According to the Respondent’s solicitors, they were not instructed until after the Response was due, because Mr George Zakher of the Respondent formed a view that he was receiving spam emails and took it upon himself to not respond. The Panel is not satisfied that these are “exceptional circumstances” and therefore the Panel refuses to the grant the extension. Correct Respondent The Panel notes that the Complaint names Mr George Zakher of Eco Care Services Pty Ltd as the Respondent. Eco Care Services Pty Ltd is listed as the registrant on WhoIs, and Mr George Zakher is listed as the contact for the registrant. The Panel considers that Eco Care Service Pty Ltd is the correct Respondent (and not Mr George Zakher as an individual) and the Panel proceeds on this basis. 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 incorporates the entirety of the Trade Mark, with no additional elements. The second-level Top-Level Domain “.com” and the country code Top-Level Domain “.au” are disregarded under the first element of the Policy (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview 1.0”)). 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 considers the Complainant has made out a prima facie case. This finding is based on the following: - the Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name resolves to a parking page indicating that the website is under construction, and coming soon; - it appears that the Complainant has not authorised, licensed or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name; - there is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name; and - the Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the name or Trade Mark. The website at the Disputed Domain Name resolves to a parking page indicating that the website is under construction, and coming soon. The Panel notes that the Respondent’s company name includes the word “care”. It is possible there may be a connection between the Respondent’s intended business and the descriptive meaning of the Disputed Domain Name (see section 2.1A of auDA auDRP Overview 1.0), but there is no evidence before the Panel of the Respondent actually carrying on a business. 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 registered or used the Disputed Domain Name in bad faith. The Complainant makes no submissions on registration in bad faith, presumably because the Disputed Domain Name appears to have been registered before the Trade Mark. The Complainant has not proven registration in bad faith. The Complainant’s case on use in bad faith is curious. The Complainant’s case is effectively that because the Complainant has a trade mark, the Respondent’s use of the Disputed Domain Name must be use in bad faith. The Panel is not persuaded by this argument. The Respondent is not using the Disputed Domain Name. The Respondent could use the Disputed Domain Name in a way that does not infringe the Complainant’s Trade Mark registration, for example to provide business consulting services. The Panel acknowledges that the Respondent’s passive holding of the Disputed Domain Name (i.e. the lack of active use and no attempt to sell or to contact the Complainant about the Disputed Domain Name) does not, as such, prevent a finding of bad faith (see section 3.2 of auDA auDRP Overview 1.0). The Panel is required to have regard to all of the surrounding circumstances. In this case, the Complainant is not well known – the Complainant has provided no evidence that it has a reputation in Australia, only that the Complainant has commenced preparations to start a business under the name “Care to Care” and has filed trade mark registrations and developed marketing plans. Google searches of “Care to Care” do not reveal any results relating to the Complainant. There is no evidence that the Respondent requested or intends to use the Disputed Domain Name because of the Complainant or to trade off the Complainant’s nascent reputation. While the Respondent did not file a Response, the Respondent has provided some explanation for this failure, and there has been no concealment of the Respondent’s identity. The Panel also notes that the Respondent’s company name includes the word “care”, so it is not implausible that the Disputed Domain Name could be used in good faith under the Policy. Based on these circumstances and the fact that the Disputed Domain Name was registered before the Trade Mark, the Panel finds that the Complainant has not proved any of the circumstances in paragraph 4(b) of the Policy, or any other circumstances that would justify a finding of bad faith under the Policy. The Complainant does not succeed on the third element of the Policy. 7. Decision For all the foregoing reasons, the Complaint is denied. John Swinson
Sole Panelist
Date: March 9, 2020
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