The Complainant is Leah Kate Boulton t/a Ginger Productions, Australia, represented by KCL Law Lawyers, Australia.
The Respondent is Flea TV 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 10, 2021. On January 11, 2021, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 12, 2021, 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” or “.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 proceeding commenced on January 13, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 8, 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 A. Complainant The Complainant is an individual conducting her graphic design, brand strategy, and marketing consultancy business as a sole trader under the business name GINGER PRODUCTIONS since 1993, first registered as a business name in Victoria, Australia in 1998 (the “Business Name”). B. Respondent The Respondent is a company incorporated in the State of Victoria, Australia. C. The Disputed Domain Name The disputed domain name was most recently renewed by the Respondent on November 25, 2020. D. The Website at the Disputed Domain Name The disputed domain name resolves to a website promoting the Complainant’s GINGER PRODUCTIONS business under the Business Name. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered or subsequently used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Business Name, under paragraph 4(a) of the Policy, acquired through use and registration. The Panel notes that paragraph 4(a) of the auDRP includes any name in which a complainant has rights, including a complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority. The disputed domain name incorporates the entirety of the Business Name. Accordingly, the disputed domain name is identical to the Business Name. Accordingly, the Complainant has fulfilled the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; 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 trade mark or service mark rights; or (iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. According to the undisputed submissions and evidence filed by the Complainant: 1. The Complainant began a relationship with the sole director and shareholder of the Respondent, Mr Jason Webb, in 2005, and the Complainant and Mr Webb were married in 2012; 2. The Complainant and Mr Webb incorporated the Respondent together, initially to be used as an entity for a business of developing mobile phone applications, and subsequently (upon the advice of accountants) to be used also as the corporate vehicle for the Complainant’s GINGER PRODUCTIONS business; 3. Mr Webb’s role in the operation of the GINGER PRODUCTIONS business up until 2017 was on the “business side”. Since that date, Mr Webb has had no involvement in the GINGER PRODUCTIONS business and it has been operated by the Complainant, as a sole trader; 4. Mr Webb assisted with the initial registration and subsequent renewals of the disputed domain name (registered and renewed in the name of the Respondent) to be used in respect of the GINGER PRODUCTIONS business; 5. The Complainant and Mr Webb separated in July 2018 and were divorced in 2020; 6. The final order made on August 7, 2020, in the divorce proceeding in the Family Court of Australia between the Complainant and Mr Webb (the “Final Order”) provided that Mr Webb was to take over sole ownership and operation of the Respondent, but that the company would have no involvement whatsoever in the GINGER PRODUCTIONS business and Mr Webb was to relinquish any entitlement he may have or have had to the business operated by the Complainant, whose operations had been taken over by the Complainant solely; 7. The Website and the Complainant’s email account linked to the disputed domain name went down in November 2020, due to the Respondent’s failure to renew the registration for the disputed domain name; 8. When contacted by the Complainant on November 24, 2020, Mr Webb arranged for the registration of the disputed domain name in the name of the Respondent to be renewed on November 25, 2020; 9. Mr Webb has since refused to effect the transfer of the Respondent’s registration for the disputed domain name to the Complainant, instead asking for payment of a licensing fee, or alternatively offering “to release Flea TV’s (the Respondent’s) asset to you at the right price”. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Rather, the evidence provided shows that the Respondent is essentially holding for ransom the disputed domain name. In light of the above uncontested matters, the Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has fulfilled the second condition of paragraph 4(a) of the Policy. C. Registered or Used in Bad Faith Although the evidence demonstrates that the Respondent was initially authorised by the Complainant to register the disputed domain name, or alternatively the Respondent was at that time the legal entity through which the GINGER PRODUCTIONS business was operated, in light of the Final Order, any rights of the Respondent in and to the Business Name ceased from August 7, 2020, at the latest. The Panel therefore finds that, in all the circumstances, the renewal by the Respondent of the disputed domain name in November 25, 2020 (at which time, the Respondent was wholly owned and controlled by Mr Webb), and Mr Webb’s subsequent refusal to transfer the registration to the Complainant, together with his demands for a licensing fee and/or payment, constitute subsequent use in bad faith by the Respondent for the purposes of paragraph 4(a) of the Policy. Accordingly, the Complainant has fulfilled the third condition of paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Sebastian M.W. Hughes
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
Sole Panelist
Dated: February 26, 2021
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