The Complainants are IWI Ltd (the “First Complainant”), Canada, and Mediflow Inc, (the “Second Complainant”), Canada, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is The Trustee for Guillet Family Trust, 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 December 11, 2020. On the same day, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 17, 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” or the “auDRP”), 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 December 18, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2021. The Center received informal email communications from the Respondent on December 28 and 31, 2020, and January 7, 2021. The Center did not receive any request from the Complainant for a suspension of the proceeding to pursue settlement negotiations. Pursuant to paragraph 6 of the Rules, on January 8, 2021, the Center informed the Parties that it would proceed with panel appointment. The Center appointed Matthew Kennedy as the sole panelist in this matter on January 14, 2021. 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 First Complainant is the registered owner of Australian registered trademark number 1270348 for CHIROFLOW, registered with effect from November 3, 2008, in respect of pillows, including pillows for medical and chiropractic purposes in class 10. It is an affiliate of the Second Complainant, which designs and manufactures chiropractic pillows. The Second Complainant has also registered the domain name The Respondent is the trustee of a discretionary trading trust active since 2004. Its trading name has been “Natural Vibe Pty Ltd” since 2012. The Respondent’s contact person in the Registrar’s WhoIs database is Mr. Paulo Freitag. The disputed domain name was created on August 31, 2007. It resolves to a website that prominently displays the Chiroflow trademark and logo and offers for sale the “Chiroflow® Waterbase pillow” at discounted prices. Under “About Us”, the website introduces Mr. Paulo Freitag as a director of Natural Vibe Pty Ltd trading as Chiroflow and Chiroflow Pillows. The Complainants’ legal representative arranged a purchase of a pillow from the Respondent’s website in June 2020. The pillow was delivered in packaging bearing the Chiroflow trademark and logo. The Second Complainant determined that it had not manufactured the pillow because inspection of the waterbase pillow’s valve and cap indicated that the valve was likely to leak in normal use. On August 12, 2020, the Complainants sent a cease-and-desist letter to the Respondent. On August 25, 2020, the Respondent registered the Australian business name “chiroflow”. On the following day, the Respondent registered the Australian business name “Chiroflow Australia”. No reason was advanced for the twelve-year delay in filing a complaint under the auDRP. At the time of this proceeding, the website associated with the disputed domain name advises of a rebranding but continues to offer for sale what are described as Chiroflow pillows at discounted prices. 5. Parties’ Contentions A. Complainants The disputed domain name is identical to the CHIROFLOW trademark. The First Complainant is the owner of the Australian registered trademark CHIROFLOW. The Second Complainant is the exclusive licensee of the CHIROFLOW trademark. Waterbase pillows bearing the licensed CHIROFLOW trademark have been offered for sale, distributed, and sold in Australia and in many other countries for over 20 years. The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no relationship between the Complainants and the Respondent. The Complainants have never authorised, licensed or permitted the Respondent to use the CHIROFLOW trademark. The Respondent is selling counterfeit Chiroflow pillows from the website linked to the disputed domain name. This is not a use of the disputed domain name in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the auDRP. Nor is the Respondent commonly known by the disputed domain name. The disputed domain name was registered and is being used in bad faith. The disputed domain name has the effect of preventing the Complainants from reflecting their mark in a corresponding domain name. The registration of the disputed domain name by the Respondent has disrupted the business of the Complainants. The sale by the Respondent of counterfeit Chiroflow pillows from its website constitutes a clear use of the disputed domain name in bad faith. The Respondent has designed its website to replicate the Second Complainant’s website and used it to sell counterfeit products. There is a clear misrepresentation by the Respondent that it sells legitimate Chiroflow products, and that it is a legitimate reseller of such products. Further, the Respondent was not initially eligible to register the disputed domain name and his warranty as to eligibility was false as at no time prior to August 2020 was the disputed domain name an exact match, abbreviation or acronym of the Respondent’s name or otherwise closely and substantially connected to the Registrant. B. Respondent The Respondent informs the Center that it has no problems in turning over the disputed domain name and rebranding. It has been selling Chiroflow pillows for the past 16 years without a problem. During the past year, the Complainants stopped responding to his emails and requests for new orders, and stopped selling to the Respondent’s Australian distributors too. After many failed attempts to purchase, the Respondent was forced to buy direct from their claimed manufacture[r] and sell the pillows to fulfill demand. He had hoped to be able to start selling Chiroflow pillows again but instead received notice of the Complaint. It is heartbreaking and frustrating to be treated this way after years of loyal service to Chiroflow. Therefore, the Respondent will no longer be using the Chiroflow domain name or branding, or endorse the Chiroflow company in any way. The Complainants are welcome to the disputed domain name; the Respondent can transfer or deregister it if preferred. The Respondent is happy to commence negotiations. Later, the Respondent advised that it was in the process of transitioning the brand across to a new company name CHIRO Pillow. The Respondent made some changes to its website and will continue to complete the changes as soon as possible. Once the changes are completed, the Respondent can deregister the disputed domain name. 6. Discussion and Findings 6.1 Multiple Complainants The Complaint was filed by two complainants. The First Complainant owns a trademark registration for CHIROFLOW and is an affiliate of the Second Complainant. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. 6.2 Substantive Issues Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a name, trademark 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. The burden of proof of each element is borne by the Complainant. Failure to prove any one of these elements will result in the Complaint being denied. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the CHIROFLOW trademark. The disputed domain name wholly incorporates the CHIROFLOW trademark as its operative element. The disputed domain name also includes the Secondary Level Domain (“2LD”) suffix “.com.au”. A 2LD suffix is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001. Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP. B. Rights or Legitimate Interests Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP: (i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable 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 (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] 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 trademark or service mark at issue. As regards the first circumstance in paragraph 4(c)(i), the evidence presented by the Complainant shows that the Respondent is using the disputed domain name in connection with an offering of goods for sale. The operative element of the disputed domain name is identical to the Complainant’s CHIROFLOW trademark. The Complainant submits that it has never authorised, licensed or permitted the Respondent to use the CHIROFLOW trademark. The website associated with the disputed domain name prominently displays the CHIROFLOW trademark and logo. The Complainant provides evidence that the Respondent currently sells non-Chiroflow pillows. Further, the website does not accurately and prominently disclose the Respondent’s lack of relationship with the Complainant as the trademark holder. On the contrary, the website gives the false impression that it is endorsed by, or affiliated with, the Complainant. Accordingly, the Panel finds that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods within the terms of paragraph 4(c)(i) of the auDRP. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Aastra Telecom Inc. v. Spring Mountain Enterprises Pty Ltd.,WIPO Case No. DAU2008-0003. As regards the second circumstance in paragraph 4(c)(ii) of the auDRP, the Respondent’s name is “The Trustee for Guillet Family Trust”, and its trading name is “Natural Vibe Pty Ltd”. The Respondent’s website claims that Natural Vibe Pty Ltd is trading as “Chiroflow” and “Chiroflow Pillows”. However, the Respondent only registered the Australian business names “chiroflow” and “Chiroflow Australia” in August 2020, shortly after receiving the Complainant’s cease-and-desist letter. There is no evidence that any third parties know the Respondent as “Chiroflow”, “Chiroflow Pillows” or “Chiroflow Australia”. Consequently, the Panel is unable to conclude that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP. As regards the third circumstance in paragraph 4(c)(iii) of the auDRP, the Complaint shows that the Respondent is using the disputed domain name in connection with an offering of goods for sale. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Turning to the Respondent’s arguments, it claims to be a former distributor of the Complainant’s pillows. While this may be true, given the long period during which it has actively used the disputed domain name, it fails to provide any evidence indicating the origin of its goods. Rather, it appears to confirm that it currently sells non-Chiroflow pillows bought directly from the Complainant’s “claimed manufacture”. In any case, the evidence on record shows that the website associated with the disputed domain name gives the false impression that it is endorsed by, or affiliated with, the Complainant. Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the auDRP. C. Registered or Subsequently Used in Bad Faith The Panel notes that the third element of the auDRP uses the word “or” which means that it is sufficient for the Complainant to demonstrate either that the disputed domain name has been registered in bad faith, or that it has been subsequently used in bad faith, but the Complainant is not required to demonstrate both. Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows: (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location. The Panel notes that the disputed domain name was created in 2007, before the date from which the Complainant’s Australian registered trademark rights accrue in 2008. However, it is unnecessary for the Panel to consider the registration of the disputed domain name any further due to its findings below regarding use of the disputed domain name. The disputed domain name, which wholly incorporates the Complainant’s CHIROFLOW trademark, is used in connection with a website that prominently displays the CHIROFLOW trademark and logo and purports to offer for sale CHIROFLOW products. The evidence shows that the Respondent currently sells non-CHIROFLOW pillows. The website operates by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website and the products on that website. Given these findings and those in section 6.2B above, the Panel finds that the circumstances fall within the terms of paragraph 4(b)(iv) of the auDRP. Therefore, the Panel finds that the disputed domain name has been used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP. D. Eligibility As the holder of an Australian registered trademark, the First Complainant appears to be eligible for a domain name in the .com.au 2LD. See the Eligibility and Allocation Rules for .com.au, paragraph 1(e). 7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the auDRP and 15 of the Rules, the Panel orders that the domain name Matthew Kennedy
Sole Panelist
Date: January 19, 2021
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