The Complainant is KHN Solutions, Inc., United States of America (“United States”), represented by Venable, LLP, United States.
The Respondent is Suzanne Barrett, Australia, represented by Dundas Lawyers 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 October 29, 2020. On October 30, 2020, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On November 3, 2020, 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 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 November 3, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2020. On November 18, 2020, the Respondent requested a ten-day extension to the Response filing period under paragraph 5(d) of the Rules. Pursuant to paragraph 5(d) of the Rules, the Complainant was invited to submit its comments regarding the Respondent’s extension request. On November 19, 2020, the Complainant agreed to the Respondent’s extension request and on the same day, the Center informed the Parties that the Response filing period had been extended until December 3, 2020. The Response was filed with the Center on December 3, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 9, 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 supplies blood alcohol content testers or breathalyzers. It was established in the United States in 2001. In 2004, the Complainant secured approval from the Food & Drug Administration in the United States to manufacture and market a breathalyzer for consumer use. It did so under the trade mark BACTRACK, in which “track” is in lower case letters. According to the Complaint, the Complainant’s BACtrack products are sold in some 15,000 retail stores across the United States including in Best Buy, CVS Pharmacy, Walgreens, Rite Aid, and Auto Parts. The Complainant’s breathalyzers are also sold under the trade mark in Australia, Canada, China, the European Union, New Zealand, the Republic of Korea, and Switzerland. In addition to physical stores, the Complainant also sells its products online. Its main website is accessible through the domain name Over time, the Complainant’s BACtrack products have featured in a range of media. These have included Inc. magazine in 2008, on a Mythbusters program in 2008, on the Dr. Phil program in 2011, in the “best of What’s New” in Health in Popular Science in 2013, in articles in the New York Times, the Wall Street Journal, and Wired in 2014, and in Fast Company’s World Changing Ideas Awards in 2017. The Complainant has registered numerous trade marks for BACTRACK around the world. The earliest registrations are: - United States Trademark Registration No. 3,340,624 for BACTRACK in respect of apparatus for the detection of breath alcohol levels of individuals in International Class 10, which was registered on November 20, 2007; - United States Trademark Registration No. 3,860,572 for BACTRACK in respect of apparatus for the calculation of blood alcohol concentration of individuals in International Class 10, which was registered on October 12, 2010; and - United States Trademark Registration No. 4,377,622 for BACTRACK in respect of computer application software for mobile phones, namely, software for the estimation of blood alcohol content of individuals in International Class 9, which was registered on July 30, 2013. In Australia, the Complainant has two registered trade marks for BACTRACK: (a) Registered Trade Mark No. 1547426 which is registered in respect of computer application software for mobile phones, namely, software for the estimation of blood alcohol content of individuals in International Class 9 and apparatus for the detection of breath alcohol levels of individuals; apparatus for the calculation of blood alcohol concentration of individuals in International Class 10, the registration date of which is addressed in detail below; and (b) Registered Trade Mark No. 1777977 which is registered in respect of data-processing apparatus; calculating machines; measuring apparatus; electric monitoring apparatus; observation instruments; quantity indicators; diagnostic apparatus not for medical purposes; testing apparatus not for medical purposes; intercommunication apparatus; computer peripheral devices; computers; recorded computer software in International Class 9 and testing apparatus for medical purposes/apparatus for use in medical analysis in International Class 10, the registration date of which is addressed in detail below. Trade Mark No. 1547426 was entered on the Register of Trade Marks on July 19, 2013. However, it is effective in Australia from its filing date as an International Registration under the Madrid Protocol, International Registration No. 1151525, on January 11, 2013. (In view of a point raised in the Response, the Panel notes that the International Registration designating the extension of protection to Australia was notified on the Australian Register on March 21, 2013.) Trade Mark No. 1777977 was entered on the Register of Trade Marks on January 19, 2017, and is effective from June 20, 2016, its filing date. The Complaint also includes evidence of registered trade marks in Canada, China, the European Union, Republic of Korea, New Zealand, and Switzerland. According to a letter from auDA, the Respondent registered the disputed domain name on July 2, 2013. It is not in dispute this was done with the knowledge and consent of the Complainant. Subsequently, on October 23, 2013, the Complainant and the Respondent entered into a Distribution Agreement by which the Respondent was appointed the Australian and New Zealand distributor of the Complainant’s products. On June 25, 2016, the Complainant terminated the Respondent’s appointment as its Australian and New Zealand distributor. According to the Respondent, it was permitted under the terms of the Distribution Agreement to sell out stock on hand on termination of the agreement. The last such sale occurred on January 3, 2018. At the time this decision is being prepared, the disputed domain name resolves to a website which appears to offer for sale products identified as AlcoLimit® BACtrack Smartphone Mobile Breathalyser for iphone and android. Adjacent to an image of the device and an iphone, the text “Was $249 ON SALE NOW $115” appears. Beside this text is a “badge” in a bright orange background “SOLD OUT”. Immediately under this text and the “badge” the web page sets out a link “See www.alcolimit.com.au for our FULL RANGE of Brathalysers” and another link “Return to Home Page”. This latter link, however, just refreshes the page and the same text is displayed. Lower down the page is a link to “What the Media is saying about Alcolimit Bactrack!” This links to a page with extracts from American publications such as TUAW, Gadget Review, Gizmodo, TrendHunter Lifestyle, Food&Beverage Magazine, TopKit, Yahoo! News, Popular Science, Blomberg. The extracts are dated in October, November, or December 2013 and appear to be about the Complainant’s products. The footer of the page states: “Manufactured and distributed by: “For all sales and servicing enquiries contact: and then sets out the Respondent contacts including the website “www.alcolimit.com.au”. The website to which the domain name 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 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 the registered trade marks for BACTRACK referred to in section 4 above. These registered trade marks include Australian Registered Trade Mark No. 1547426, which was registered on July 19, 2013, and has effect from January 11, 2013. 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 trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the (likelihood of confusion) question under trade mark law which, amongst other things, 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. In undertaking the comparison, the top-level suffix (here “.com.au”) is typically disregarded. See auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 1.2. Applying those tests, the disputed domain name is identical to the Complainant’s trade mark (as the Response admits). The Respondent does contend that the term “bactrack” is a “generic descriptor meaning ‘Blood Alcohol Content Track’”. For such an argument to succeed under Australian law, it would be necessary for the Respondent to show that the term is directly descriptive of the relevant goods rather than merely allusive or suggestive. In applying that test, the Courts have warned against a too ready search for meaning. See for example, Mark Foy’s Limited v Davies Coop and Company Limited [1956] HCA 41; 95 CLR 190 (“Tub Happy” did not refer to a quality of the clothing), Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; 254 CLR 337. Ordinarily, the Panel would expect the differently spelled term “backtrack” or “back track” to refer to going back over one’s path or return to some starting point. While the term “bactrack” in the context of breathalysers is suggestive of function, it is arguably no more so than an expression such as “Tub Happy”. Accordingly, and especially in light of the above-noted granted national registrations, the Panel does not consider it so directly descriptive of the products as to be obviously unregisterable in the absence of proven secondary meaning that the Panel can disregard the fact that the trade mark has been examined and found registrable in Australia as well as a number of other jurisdictions. In such circumstances, the Panel considers it is not appropriate to disregard the fact of registration in these proceedings. Accordingly, the Complainant has 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. The Complainant accepts that the Respondent was entitled to use the disputed domain name in connection with the Distribution Agreement. The Complainant contends, however, that the Respondent’s rights to use the Complainant’s trade mark and the disputed domain name terminated with the termination of the Distribution Agreement. The Complainant further contends that the use of the disputed domain name in connection with the Respondent’s website at One argument made by the Respondent is the contention that the term “bactrack” is merely descriptive and not distinctive. The Panel has already addressed and rejected this argument in section 5A above. In addition, the Respondent appears to be using the term “BACtrack” on the website in a trade mark sense to indicate origin and not as a descriptive term. See e.g., Aldi Stores Ltd Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874; 190 ALR 185 (“Cheezy Twists” used as a trade mark). The Respondent also argues that it registered the disputed domain name before it had notice of the Complainant’s trade mark. It points out that the Complainant’s evidence of use is directed to use in the United States and does not demonstrate use or reputation in Australia before the Respondent became its distributor. In addition, the Respondent points to the short period of time from when the Complainant’s trade mark was made publicly available on the searchable database published by IP Australia as a pending application, March 21, 2013, and the registration of the disputed domain name on July 2, 2013. This does not assist the Respondent for a number of reasons. One reason is that the Complainant’s rights run from January 11, 2013, when the International Registration designating Australia was filed. The continued use of the disputed domain name would infringe that registration in the absence of consent or some other defence. Lack of knowledge of a trade mark registration may provide a basis for an infringer to be relieved from liability to an account of profits but not, it seems, to damages or an injunction against continuing conduct. See Trade Marks Act 1995 (Cth) ss 126 and 127 and Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25. There are possibilities for defences based on entitlement to registration arising from prior or honest concurrent user. However, the Respondent has not suggested it used the trade mark in Australia before the filing date in January 2013 or its priority date. Moreover, as the Respondent acknowledges, the Respondent registered the disputed domain name with the knowledge and consent of the Complainant. It would appear therefore that the Respondent was well aware of the Complainant’s adoption and use of the trade mark even if it was unaware of the fact of registration. As it registered the disputed domain name before the Distribution Agreement was entered into, the Respondent disputes that its rights over the disputed domain name terminated when the Distribution Agreement terminated. Given the close proximity in timing between the registration of the disputed domain name and execution of the Distribution Agreement, there might well be further matters requiring investigation before the Panel could accept that proposition. It is unnecessary, however, to explore that further in the circumstances of this proceeding. For the reasons already discussed, the Respondent’s use of the disputed domain name in respect of breathalysers in the face of the Complainant’s registered trade mark would likely infringe the trade mark in the absence of consent or some other defence. The Respondent’s primary argument in rebuttal is that it has a continuing right to use the disputed domain name in connection with the provision of spare parts and maintenance and repair services in respect of the products it sold under the distributorship. This argument is based, first, on section 58 of the Australian Consumer Law (which is Schedule 2 to the Competition and Consumer Act 2010 (Cth) which imposes on manufacturers of goods a guarantee that they must take reasonable action to ensure that facilities for the repair of the goods, and parts for those goods, are reasonably available for a reasonable period after the goods are supplied. According to the Respondent a reasonable period in this case is five years and “perhaps beyond”. In support of this claim the Respondent says: “The Respondent posed such a reasonable calculation of typical use to a representative of SAI Global Assurance (the body which administers the certification under which the goods are certified), who agreed that it would not be uncommon for an end-user to utilise the goods in many cases for at least five (5) years.” As the last sale by the Respondent was in January 2018, therefore, the Respondent says it has a right to continue using the disputed domain name until January 2023. Secondly, the Respondent also states that it secured certification of the AlcoLimit BACtrack Smartphone Breathalyser by SAI Global Assurance as compliant with Australian Standard 3547-1997 – Breath alcohol testing devices for personal use. Clause 3.2.2 of that Australian Standard provides that a device of the relevant kind (a Type 2 device, the Panel infers) must have a minimum calibration period of 30 days and must also be capable of being recalibrated. The clause does not specify how long the obligation to make recalibration available must run. The Respondent says that it must continue to make recalibration services available so long it seeks to maintain the compliance certification, otherwise it will be in breach of its contractual obligations under the certification. The Panel accepts that a manufacturer of products has an obligation under Australian law to provide repair services and replacement parts for the products it sells. The Panel is unaware whether that obligation continues for at least five years after the product has been sold. Nor is it necessary for the Panel to make a ruling on that particular point for the purposes of this proceeding. That is because under the Policy, as under the Uniform Domain Name Dispute Resolution Policy (UDRP), panels generally test claims of rights or legitimate interests by distributors or resellers by reference to the (i) the respondent must actually be offering goods or services related to the trademark 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 trademark 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 trademark. The Panel notes that the panelist in Google Inc. v. Q Interactive Pty Ltd / Mr. Victor Quinteros,WIPO Case No. DAU2012-0026, proposed an alternative approach of “descriptive fair use” in cases where the respondent was providing services which were interoperable with the trade mark owner’s products and services. This approach sought to examine whether the domain name, or the trade mark part of the domain name, was being used in a descriptive sense and then asked whether that manner of use was “fair” in all the circumstances. Turning to the Oki-data factors, the Complainant has not contested the Respondent’s claim that the Respondent is providing repair services or spare parts for “BACtrack” model breathalysers. So the Panel proceeds on the basis that the first factor is satisfied. Next, the Panel notes that website to which the disputed domain name resolves is not limited to the sale of spare or replacement parts and the provision of repair and maintenance services. The website to which the disputed domain name resolves appears to offer for sale the Alcolimit® BACtrack mobile breathalyser. The website states this product is manufactured by the Respondent. That appears to have been done with the Complainant’s permission under the Distribution Agreement and the Complainant appears to accept that those devices were “its” products. However, the website states the products are “sold out”. It also has links to the Respondent’s competing products on its main website. If one clicks on the “Buy It Now” tab, the page simply refreshes. The active link under the text “Was $249 ON SALE NOW $115” is the link with the following text “See www.alcolimit.com.au for servicing and our FULL RANGE of Breathalysers”. One might very well expect someone trying to buy a breathalyser on the website to which the disputed domain name resolves, therefore, would be likely to click on that link, if not the other redirection. Clicking on that link takes one to the Respondent’s website at “www.alcolimit.com.au” where it offers for sale a range of breathalysers that compete with the Complainant’s product. Contrary to the Respondent’s argument, therefore, the Panel does not consider that the Respondent ‘s website satisfies the second Oki-data factor. That usage has the potential to divert people who are looking for a BACtrack breathalyser to the competing products which the Respondent now offers for sale. The small amount of traffic to the website does not eliminate that potential. Accordingly, the second requirement is not satisfied. Further, the website does not clearly disclose the nature of the Respondent’s relationship to the Complainant. Accordingly, the third requirement is not satisfied. Finally, the Panel notes that many UDRP panelists would find that domain name which consists wholly and only of the complainant’s trade mark fails the fourth requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8.2 and section 2.5.1. Accordingly, the Respondent’s use of the disputed domain name would not qualify as a right or legitimate interest under the Oki-data factors. Alternatively, the Panel considers the way the disputed domain name is used does not qualify as descriptive fair use as the website is not limited to sale of spare or replacement parts and the provision of repair or maintenance services only (see again WIPO Overview 3.0 section 2.5.1). Nor does it properly explain the relationship between the Complainant and the Respondent. The Panel finds therefore that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, 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. That is significant in the present case because it is not in dispute between the parties that the Respondent registered the disputed domain name with the knowledge and consent of the Complainant. The issue under this requirement of the Policy, therefore, is whether or not the Respondent is using the disputed domain name in bad faith. The reasons which led to the finding that the Respondent does not have rights or a legitimate interest in the disputed domain name also lead to the conclusion that the Respondent is using the disputed domain name in bad faith under the Policy. Accordingly, the Complainant has made out 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
“Alcolimit® Digital Breathalysers
“Alcolimit Breathalysers Pty Ltd”
so-called Oki-data factors. See auDRP Overview, section 2.3 referencing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Oki-data factors require that:
Sole Panelist
Date: December 17, 2020
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