The Complainant is Link Engine Management Limited, New Zealand, represented by Norton Rose Fulbright LLP, Australia.
The Respondent is Diff Labb, a/k/a Link ECU Australia, Australia, internally-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020. On September 21, 2020, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On September 22, 2020, GoDaddy.com, LLC 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 September 23, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2020. On October 12, 2020, the Respondent contacted the Center requesting an extension to the Response filing period. Pursuant to paragraph 5(d) of the Rules, the Center invited the Complainant to provide any comments relating to the Respondent’s request by October 13, 2020. On October 13, 2020, the Respondent contacted the Center specifying its request for an extension to a period of one week. On October 14, 2020, the Center informed the Parties that pursuant to paragraph 5(d) of the Rules, the Response filing period would be extended until October 21, 2020. The Response was filed with the Center on October 21, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 23, 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 a New Zealand company founded in 1991. It manufactures and supplies aftermarket motorsport electronics and in particular engine control units or ECUs. According to the Complaint, it sells these products in many countries throughout the world, including Australia where its products have been on the market since about 2000. It appears that much of the Complainant’s marketing and sales are conducted through a website to which the domain name The Complainant also has the domain names At least in Australia, the Complainant has not had a physical presence for much of this time. Instead, its products have been imported through dealers or retailers who have bought them online through the Complainant’s website. One such party has been the Respondent. The Complainant’s Australian subsidiary was incorporated in May 2020 under the name Link Energy Management Pty Ltd. This subsidiary registered the business name LINK ECU on July 24, 2020. On August 14, 2020, the Complainant’s Australian subsidiary commenced filing a number of applications to register LINKECU as a trade mark around the world. These included Australian Trade Mark Application No. 2111957, which forms the basis for an application for an International Registration. So far as the Complaint discloses, none of the trade mark applications has proceeded to registration. The Respondent was an approved dealer of the Complainant’s products from September 2018 until May 2020. Although there is a dispute between the parties whether the Respondent was merely a “buyer” or “approved customer” or a “distributor”, the email from the Complainant to the Respondent dated September 24, 2018, set the Respondent up with a “trade dealer account” which provided the Respondent with access to “our dealer store”. The email foreshadowed that a “ Link Engine Management Dealer Agreement” would be sent to the Respondent for signature after 90 days. Neither party has submitted a copy of the Link Engine Management Dealer Agreement if one was signed. The Complainant has submitted, however, the Terms and Conditions for Website Use and its Terms and Conditions of Sale which, it says, governed the Respondent’s use of the Complainant’s website and the purchase of the Complainant’s products. On December 24, 2019, the Respondent registered in Australia the business name, Link ECU Australia. On January 7, 2020, the Respondent registered in Australia the business name, Link Engine Management Australia. The Respondent also registered the disputed domain name on that day. The disputed domain name resolves to the home page of a website “Diff Lab”, which is the Respondent’s trading name and which offers for sale a wide range of parts for cars including the Complainant’s products, engine components, other drivetrain parts, axles, oils, and lubricants. In addition to listing the Complainant’s products for sale on its website, the Respondent has engaged in promotional activities including displaying the Complainant’s “logo” on a racing car which the Respondent sponsored. The parties are in disagreement about why the Respondent’s status as an approved dealer was terminated in May 2020. According to the Complainant, it terminated the appointment upon discovery of the Respondent’s registration of the “link” business names and the disputed domain name and following the Respondent’s refusal to cancel those registrations. According to the Respondent, its appointment was terminated because it refused to comply with what the Respondent alleges is the Complainant’s unlawful price fixing scheme. The Respondent says it has filed a detailed complaint with the competition regulator, the Australian Competition and Consumer Commission, about this conduct. It has not, however, burdened this proceeding with evidence supporting that claim. Before the Respondent’s appointment as an approved dealer was terminated, the page on the Respondent’s “Diff Lab” website promoting the Complainant’s products (which was not the home page) was headed “Link Engine Management” and prominently featured the Complainant’s Link Engine Management “logo” (set out further below) with the word “AUSTRALIA” in block capitals larger than the words “ENGINE MANAGEMENT”, also in block capitals. Amongst other things, the text on the page included “Diff Lab is an authorised importer and distributor of Link Engine Management Standalone and plugin ECUs, made in New Zealand” and under the heading “Why buy from Diff Lab?” included “Diff Lab is Link Engine Management Australia”. After termination of the appointment, the page now reads (under the Diff Lab “logo” and catch phrase “Diff Lab will not be beaten on price! Contact us to beat a price on a stocked item.”): “Link Engine Management “Standalone and plugin engine management, made in New Zealand by Link Engine Management. …. These products are genuine, and are supplied by an authorised importer of Link Engine Management products. Diff Lab has no official agreement with Link Engine Management New Zealand and does not import and distribute these products directly.” After the Complainant’s legal representatives sent a cease and desist letter to the Respondent, the Respondent offered to transfer the disputed domain name to the Complainant on payment of AUD 5,000 and to cancel the business name registrations. 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. 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 name or trade mark and, if so, the disputed domain name must be identical or confusingly similar to the name or trade mark. As under the Uniform Domain Name Dispute Resolution Policy (UDRP), panels have generally not accepted a pending trade mark application as sufficient to qualify as a trade mark in which the Complainant has rights. See auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview”), section 1.1C. Footnote 1 to the Policy, however, states that “auDA has determined that a “name … in which the complainant has rights” refers to: “a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or “b) the complainant’s personal name.” The Complainant’s name is Link Engine Management Limited. As noted above, its Australian subsidiary is named Link Engine Management Pty Ltd. That subsidiary has also registered the business name in Australia, “Link ECU”. The rights in these names may be asserted by the Complainant as the parent of the Australian subsidiary. See auDRP Overview, section 1.8. Further, in the Complaint, the Complainant contends it has been using the “LinkECU” trade mark in Australia for at least 20 years. The print outs of its website appended to the Complaint and the materials submitted by the Respondent clearly show use on the Complainant’s website and its products of a trade mark “Link Engine Management” in a device or logo form as shown below: There are also a few references to Link ECU in the title of some blog posts or articles such as “Link ECU Build of the week #17: Travis Reeder’s 240sx”. However, one has to look very carefully to discern these uses. The dominant form of trade mark usage appears to be in the “logo” form described above. In addition, Australian case law has held that use of a domain name to point to a website is use of the domain name as a trade mark. See e.g., Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 at e.g., [197] – [198], [255], [304], [328] and [341]. On the question of identity or confusing similarity, what is required is a comparison and assessment of the disputed domain name itself to the Complainant’s name or trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trade mark law of likelihood of confusion 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 second-level Top-Level Domain, “.com.au”, therefore, the Panel finds that the disputed domain name is identical to the Complainant’s subsidiary’s registered business name. It is also confusingly similar to the Complainant’s subsidiary’s corporate name and the “logo” form of trade mark. As the Respondent contends, “ECU” in this context is likely to be descriptive as a reference to engine control units. Generally, descriptive elements can be disregarded for the purposes of the Policy. See auDA Overview, section 1.9. Similarly, the device element does not so dominate the verbal element of the “logo” form that the usual rule that the comparison is made on the basis of the textual elements only does not apply. See auDRP Overview, section 1.11. In light of these considerations, the relevant source identifier in the case of the Complainant’s names and trade mark and the disputed domain name is essentially the word “link”, especially having regard to the similarity of concept conveyed by the presence of “engine management” in the trade mark / logo and “ECU” as an abbreviation for engine control unit in the disputed domain name. Accordingly, the Panel finds that the Complainant has established the first element 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. The Complainant contends that it has not authorised the Respondent to register or use the disputed domain name and, its status as an approved dealer1 having been terminated in May 2020, the Respondent is not associated with it. The Complainant further contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Specifically, the Complainant contends that the Respondent registered the disputed domain name without the Complainant’s knowledge and in breach of the Website Terms and Conditions and the Terms and Conditions of Sale (Buyer). On the other hand, the Respondent contends the Complainant is just a company in New Zealand which has no rights in Australia. The Respondent has developed the use and reputation of LINK ECU in Australia through its marketing and sales of the Complainant’s products (although it appears to accept there were other dealers as well). The Respondent also points out that it registered its business names before the Complainant incorporated its subsidiary in Australia and that subsidiary registered its business name. The Respondent further points out that it is not an infringement of a registered trade mark to import and sell genuine branded goods (i.e., parallel imports) under section 122A of the Trade Marks Act 1995. Accordingly, the Respondent contends it does not need any approval or authorisation from the Complainant to sell the Respondent’s products or use the disputed domain name in Australia. The Panel considers that the Respondent cannot rely on paragraph 4(c)(ii) of the Policy in the circumstances of this case. First, it is true that the Complainant incorporated its Australian subsidiary, and that subsidiary registered the business name Link ECU in Australia, after the Respondent registered the disputed domain name. However, it does not appear to be in dispute between the parties that the Complainant’s corporate name and the “logo” form of the Complainant’s trade mark and the Complainant’s domain name, In these circumstances, the Complainant would usually be considered the owner of its name, the “logo” trade mark and, insofar as it has been used as a trade mark, the domain name Secondly, except in unusual circumstances, the manufacturer of goods would usually be considered the owner of the associated trade mark rather than an importer, distributor, or dealer. See e.g.,Davison and Horak, Shanahan’s Australian Law of Trade Marks and Passing Off, (Lawbook Co. 6th edn, 2016) [10.3005] – [10.3045] and, in the case of unregistered rights through passing off, Imperial Tobacco Company of India Ltd v Bonnan (1924) 41 RPC 441 (JC). Thirdly, so far as the record in this proceeding shows, the Respondent adopted the names “Link ECU” and “Link Energy Management Australia”, and the disputed domain name, with notice of the Complainant’s rights and in violation of the terms and conditions applicable to its use of the Complainant’s website. Clause 10 of the Terms and Conditions of Sale is headed “Patents/Trademarks”, but deals only with claims of infringement arising from use or sale of the Complainant’s products. The Terms and Conditions for Website Use include a number of provisions relating to “user generated content” posted on, or transmitted through, the Complainant’s website. There is also a clause headed “Copyright and Trademarks” which, insofar as trade marks are concerned states: “All trademarks, service marks, logos and trade names which appear on products of LEML, product packaging and/or on the Site, whether registered or not (including but not limited to: the word mark ‘LEML’, ‘the G4+ logo’, ‘the G4x logo’, ‘the speed lines’ (the Trade Marks) remain the exclusive property of LEML or its affiliated companies or LEML’s licensors (as appropriate) and are protected by applicable trade mark laws and treaties. You may not use, copy, reproduce, republish, upload, post, transmit, distribute, or modify any of the Trade Marks in any way, including in advertising or publicity pertaining to distribution of materials on the Site, without LEML’s prior written consent. The use of any of the Trade Marks on any other website or network computer environment, for example the storage or reproduction of (a part of) the Site in any external internet site or the creation of links, hypertext, links or deeplinks between the Site and any other internet site, is prohibited without the express written consent of LEML.” It can be seen that this clause expressly prohibits the use of any of the Complainant’s trade marks (whether registered or not) on other websites or network computer environments without the Complainant’s express written consent. The Respondent contends that the terms and conditions of website use are not binding. The terms do state that by accessing and using the Complainant’s website the user agrees to be bound by the terms and conditions. It may be questionable whether such clauses would be binding on someone who merely browses the website. Whether or not that is the case, however, is not in issue here. Insofar as the record in this proceeding shows, the Respondent placed its orders through the Complainant’s website and was given access to parts of the website for that purpose while it was an approved dealer. Moreover, as an approved dealer placing orders through the Complainant’s website, the Respondent qualified for discounted pricing. In these circumstances, it is not apparent to the Panel why the terms and conditions of website use, including the prohibition on use of the Complainant’s trade marks, were not binding on the Respondent, particularly bearing in mind the Complainant’s prior entitlement in Australia to its name and trade mark. Fourthly, the Respondent has not submitted evidence showing it is actually carrying on business as “Link ECU” or “Link Energy Management Australia”. It has registered those names as business names. Insofar as the evidence of the website shows, however, the Respondent was trading as “Diff Lab”. The Panel also finds that paragraph 4(c)(i) does not apply in this case. First, the Panel accepts parallel importing is a legitimate activity in circumstances where the conditions set out in section 122A of the Trade Marks Act 1995 (Cth) apply. Secondly, however, the Respondent registered the disputed domain name while the Respondent was an approved dealer and, it appears, without the Complainant’s knowledge or approval. Thirdly, in cases involving resellers panels generally apply under the Policy the principles developed under the UDRP in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903: (i) the respondent must actually be offering goods or services related to the trade mark in respect of which the domain name is confusingly similar; (ii) the respondent must offer only those goods or services in connection with the disputed domain name; (iii) the respondent must have disclosed its true relationship with the owner of the trade mark to which the domain name is identical or confusingly similar, prior to notice of the dispute; and (iv) the respondent must not have attempted to “corner the market” in domain names that reflect that trade mark. In the present case, the disputed domain name resolves to the Respondent’s home page which advertises a wide range of products, not just the page for Complainant’s products. Accordingly, the Respondent does not appear to satisfy these requirements. The Respondent submits that the other products available on its website are not competitive with the Complainant’s products. The products are complementary or for different aftermarket purposes. That is, someone seeking the Complainant’s engine control units will not be switched or diverted instead to buying, for example, a cam shaft or some other automotive product available through the Respondent’s website. The Respondent also says the level of sales of the Complainant’s products is small compared to other products and Google Analytics data shows that the Complainant’s Link Engine Management products do not show up in the top results for traffic to the Respondent’s website. There is considerable force in the Respondent’s point based on the other products which are offered for sale not being substitutes for, or competitive with, the Complainant’s products as an important concern with the Oki Data requirement to avoid diversion of customers. However, that is not the only concern. Moreover, while the Respondent does include a notice making it clear it is not a direct importer from the Complainant, that notice appears only on the page for the Complainant’s products, not the landing page to which the disputed domain name redirects. The Respondent does indicate it intends setting up a separate website for the Complainant’s products only. However, several months later it has not done so. Nor has it explained any particular difficulties in doing so. Moreover, by directing browsers to the Respondent’s Diff Lab homepage, rather than the page specifically offering for sale the Complainant’s products, the Respondent appears to be using the disputed domain name in connection with its general business, not solely in connection with the goods for which the Complainant’s trade mark application would be registered if it proceeds to grant. Fourthly, while section 122A of the Trade Marks Act does provide a defence to trade mark infringement, it does not exclude the operation of the prohibitions against conduct which is misleading or deceptive or likely to mislead or deceive contrary to, for example, section 18 of the Australian Consumer Law. In this context, it is noteworthy that the Courts have found that a shop trading as “The Thomas Shop”, which sold only products associated with Thomas the Tank Engine and which was decked out in “Thomas blue” had engaged in misleading and deceptive conduct by suggesting a sponsorship, endorsement or other association with the owner of the reputation and trade marks associated with Thomas the Tank Engine. See Miller v Britt Allcroft (Thomas) LLC [2000] FCA 1724. In that case, a disclaimer of association displayed inside the shop did not assist the shop owner in part because it was not displayed on the exterior of the shop and “it is only when at the point of sale in the shop and for those already attracted into the shop that the disclaimer becomes apparent.” These reasons also lead to the Panel concluding that a justification of nominative fair use arising under paragraph 4(c)(iii) does not apply. Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith In contrast to the 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. On the basis that the Respondent registered the disputed domain name while an approved dealer and apparently without the Complainant’s consent in the face of the Complainant’s prior rights as discussed above, the Panel finds the Respondent registered the disputed domain name in bad faith under the Policy. The reasons for concluding that the Respondent does not satisfy the Oki Data principles discussed in section 5B above also lead to a finding that the disputed domain name has been used in bad faith under the Policy. The offer to sell the disputed domain name for AUD 5,000, which is far more than the standard registration fee for a domain name in the “.com.au” domain space, also constitutes use in bad faith. Accordingly, the Complainant has established all three requirements 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, Warwick A. Rothnie 1 There is a dispute between the parties whether the Respondent was a distributor or a mere “buyer”. As noted above, so far as the contemporaneous record shows, the Complainant did accept the Respondent as a “trade dealer”.
Sole Panelist
Date: November 9, 2020
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