The Complainants are CAF Nominees Limited (the “first Complainant”), United Kingdom (“UK”) and The Charities Aid Foundation (the “second Complainant”), UK, represented by Davies Collison Cave Pty Ltd, Australia.
The Respondent is Adrian Conti, Australian Multi Cultural Charity, 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 June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2021, the Registrar 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 proceedings commenced on June 25, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2021. The Center received an email communication from the Respondent on June 29, 2021. The Center notified the commencement of Panel appointment process on July 20, 2021. The Center appointed John Swinson as the sole panelist in this matter on July 24, 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, CAF Nominees Limited, is a UK company. The first Complainant owns Australian Trademark Registration No. 1656726 for CAF, having a filing date of July 14, 2014, and Australian Trademark Registration No. 1656727 for CHARITIES AID FOUNDATION, also having a filing date of July 14, 2014. The first Complainant owns other Australian registered trademarks as well as registered trademarks in other jurisdictions. The second Complainant, The Charities Aid Foundation, is a UK registered charity. The second Complainant is said to be the beneficial owner of the trademarks owned by the first Complainant. The two Complainants are related entities. The Complainants and their predecessors have used trademarks containing CAF and CHARITIES AID FOUNDATION for almost 100 years, and have used these trademarks in Australia for about 22 years. The Complainants own many domain names, including The Complainants’ Australian affiliate, CAF Australia, owned the disputed domain name, but let it lapse by mistake since December 2018. CAF Australia was renamed GOOD2GIVE in 2016, and the disputed domain name was used to redirect to The Respondent registered the disputed domain name on March 13, 2019. Little is known about the Respondent. There is an Australian registered charity with this name, and according the Panel’s search, there seems to be a website that may be for this charity. See “www.auscharity.techinsolution.com/about-us/”. It is unclear how Adrian Conti is associated with this charity, if at all. The website at the disputed domain name is titled “CAF Australia” and appears to be partially under construction. Some of the website includes placeholder images and nonsense text, such as “This is a very powerful theme that can be used for any type of business. The layout is clean and elegant.” and “Lorem ipsum dolor sit amet, consectetur adipisicing elit. Consec tetur adipisicing elit dignissim dapib tumst.” The “About Us” section of the website at the disputed domain name appears to copy text from the Complainant’s Good2Give website and contains information about the Complainant. 5. Parties’ Contentions A. Complainants The Complainants made the following submissions: The Complainants and their predecessors have used trademarks comprising CAF in connection with philanthropic services for about 96 years, including in Australia for about 22 years. The Complainants’ Australian affiliate owned and used the disputed domain name in connection with the Complainants’ services for at least 10 years. The Complainants inadvertently allowed the disputed domain name to lapse. The Respondent then registered the disputed domain name and started using the disputed domain name in connection with a website offering charitable fundraising services. The website at the disputed domain name stated that these services are provided by or have the approval of the Complainants. This website reproduces content that the Complainants’ Australian affiliate previously posted on the website at the disputed domain name. The Respondent’s conduct is an infringement of the Complainants’ intellectual property rights and causes consumer confusion. The Online Database Abuse IPDB suggests that the disputed domain name is associated with malicious activities. The website at the disputed domain name features the CAF AUSTRALIA trademark. In March 2020, the Complainants’ representative spoke with a person named Khan who said he was CEO of the Respondent but that he did not register the disputed domain name and that he did not know the registrant contact Adrian Conti. Khan said he would help transfer the disputed domain name to the first Complainant. However, that did not occur. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not have any connection with the Complainants. The Respondent is not commonly known by the disputed domain name, and does not own any business names or trademarks for CAF AUSTRALIA. The Respondent has not made a bona fide use of the disputed domain name. The Respondent must have known of the Complainants’ rights and reputation when registering the disputed domain name. The Respondent is masquerading as CAF. The website at the disputed domain name largely replicates the Complainants’ website. The Respondent is using the disputed domain name for improper purposes. The Complainants are concerned that the Respondent has registered the disputed domain name for malicious purposes, such as spam, phishing and to impersonate the Complainants to obtain donations. The Complainants request that the disputed domain name be cancelled. B. Respondent The Respondent did not submit a formal response. A person named Khan, with a Yahoo email address, emailed the following to the Center in response to an email from the Center enclosing the Complaint: “We do not have any dispute about the domain I can recall couple of year some lawyer contacted us from Melbourne we advise Australian Multicultural charity based in Sydney is not for profit organization therefore we are not using any Domain for commercial purpose.” 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, 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 has subsequently been used in bad faith. The onus of proving these elements is on the complainant, regardless of whether or not the respondent files a response. 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, the Rules and any rules and principles of law that it deems applicable. A. 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, trademark or service mark in which the complainant has rights. Generally, the test for identity or confusing similarity involves a comparison of the domain name and the trademark to assess whether the trademark is recognisable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)). The Complainants have proven ownership of registered trademarks for CAF and CHARITIES AID FOUNDATION. See section 4 above. The Complainants’ CAF trademark is recognisable within the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the first Complainant’s registered trademark for CAF. The fact that the Respondent is targeting the Complainants’ trademark (as discussed below) also supports the Complainants’ assertion that its trademark has achieved significance as a source identifier for the purposes of the Policy. The Complainants succeed on the first element of the Policy in relation to the disputed domain name. 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 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 recognised 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. The ultimate burden of proof, however, remains with the complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. The Complainants state: - The Respondent is not affiliated with the Complainants. As such, a prima facie case has been established by the Complainants and has not been rebutted by the Respondent who failed to file a Response. It appears from the evidence in the Complaint that the disputed domain name may have been registered in the name of the Respondent, and without the Respondent’s knowledge. This is further evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not dispute this. The Complainants succeed on the second element of the Policy in relation to the disputed domain name. C. 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 subsequently used the disputed domain name in bad faith. In contrast to the Uniform Domain Name Dispute Resolution Policy (“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. The two elements are disjunctive; it is sufficient to establish only one or the other. The disputed domain name was once owned by an Australian affiliate of the Complainants, who let it lapse by accident. The website at the disputed domain name now includes text copied from a website operated by the Complainants’ Australian affiliate, and refers to a trademark owned by the Complainants. The disputed domain name is identical to the Complainants’ domain name The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainants and their trademark. By registering the disputed domain name and then by using the disputed domain name to, in effect, impersonate the Complainants, demonstrates that the Respondent specifically knew of and targeted the Complainants. The use of the Complainants’ trademarks in the masthead and text of the Respondent’s website, in respect of similar services to those offered by the Complainants, is misleading. The Respondent’s website is likely to be confused for a website belonging to or connected with the Complainants and their services. Compare Solstice Marketing Corporation v. Solsticesunglasses-Discount-Shop-Sale.com,WIPO Case No. D2017-1919. It appears likely that the Respondent registered the disputed domain name to improperly solicit charitable donations from people who believe that they are making donations to the Complainants. Fondation Bettencourt Schueller v. WhoisGuard Protected, WhoisGuard, Inc. / Web designer Web designer, WIPO Case No. D2018-2750. The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773. The Panel finds that the Respondent has both registered and used the disputed domain name in bad faith. The Panel concludes that the Respondent registered the disputed domain name in order to prevent the Complainants from reflecting its trademark in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy. Further, the Respondent opportunistically registered the disputed domain name when it had expired due to an inadvertent non-renewal by the Complainants’ Australian affiliate. In the circumstances, this also may constitute bad faith. Tigerturf Australia Pty Ltd. v. Mason Merion, Tiggerturf (Unregistered),WIPO Case No. DAU2018-0021. The Complainants succeed on the third element of the Policy in relation to the disputed domain name. 7. 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 disputed domain name John Swinson
(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 trademark or service mark at issue.
- The Respondent has not been authorised by the Complainants to register or use the disputed domain name or to seek the registration of any domain name incorporating the Complainants’ trademarks.
- There is no evidence available to the Complainants to suggest that the Respondent is commonly known by the disputed domain name or any similar name.
- There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use. In fact, the use made by the Respondent, a website partially under construction, which includes placeholder images and nonsense text, and copy text from the Complainant’s website, is malicious and fraudulent.
Sole Panelist
Date: August 6, 2021
Full & Egal Universal Law Academy