The Complainant is Datasite LLC, United States of America (“United States”), internally represented.
The Respondent is Preet Singh, AUD Stock Pty Ltd, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On August 27, 2021, Synergy Wholesale 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”), 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 August 27, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2021. The Response was filed with the Center on September 16, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 3, 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 BackgroundThe Complainant provides virtual data rooms, data processing, hosting, and related services to customers around the world. According to the Complaint, the Complainant provides its services primarily to investment bankers, private equity firms, and law firms in over 170 different countries.
Prior to March 2020, the Complainant was known as Merrill Corporation.
In or about November 2019, the Complainant acquired from Binding Site Group Limited a number of registered trade marks for DATASITE. These include:
(a) United States Registered Trade Mark No. 4,746,540, DATASITE, which has been registered since June 2015 in respect of goods and services in International Class 9 and 42;
European Union Trade Mark No. 013467089, DATASITE, which was registered on October 9, 2015 in respect of Medical analysers and parts and fittings therefor in International Class 10; and
United Kingdom Registered Trade Mark No. UK00003057244, DATASITE, which has been registered since May 22, 2014 in respect of a range of goods and services in International Classes 9, 10, and 42;
There is also an International Registration, No. 1259624 designating a number of countries.
In March 2020, the Complainant changed its name from Merrill Corporation to its current name, Datasite LLC. It has been using that name and promoting its services by reference to “Datasite” since then and, presumably, the acquisition of the trade marks.
The Complainant is based in the United States although, as noted above, it provides its services to clients all around the world. As a result, it has opened branch offices or incorporated subsidiaries in various countries. Since the change of the Complainant’s name to its current name, the subsidiaries have also operated under names based on “Datasite”. It gives examples of Datasite UK and Datasite Germany GmbH.
On March 20, 2018, the Complainant opened its first branch office in Australia according to the Complaint.
On December 22, 2020, the Complainant incorporated a subsidiary in Australia under the name Datasite Australia Pty Ltd. In May 2021, the Complainant opened a permanent office in Sydney, New South Wales in Australia.
On December 15, 2020, the Complainant applied to register DATASITE as a trade mark in Australia. That application has been successful and, following its entry on the Register, the Complainant’s Trade Mark No. 2,146,330 has been registered since that date, in respect of:
“Computer software for analysers; computer software for workflow management, sample tracking, quality control reporting, control and management of analysers; middleware and interface software for workflow management, sample tracking, quality control reporting, control and management of analysers; interactive computer software for workflow management, sample tracking, quality control reporting, control and management of analysers; computer interface software for workflow management, sample tracking, quality control reporting, control and management of analysers; computer operating system software for workflow management, sample tracking, quality control reporting, control and management of analysers; computer software applications (downloadable) for workflow management, sample tracking, quality control reporting, control and management of analysers; computer software for processing information from analysers; analysers and parts and fittings thereof” in International Class 9
and
“Software development and customisation; installation of computer software; configuration of computer software; computer software maintenance; upgrading of computer software; updating of computer software; computer software technical support services” in International Class 42.
Amongst other things, the Complainant promotes its services and provides them from a website to which the domain name
The Respondent is the director of AUD Stock Pty Ltd.
Through this company, the disputed domain name was registered on July 11 or 12 (different records reflect different dates possibly due to time zones), 2020.
The disputed domain name has not resolved to an active website since that date. Rather, it resolves to a Wordpress site headed “Datasite. Decipher” which displays a number of stock images and instructions such as “Create your website with blocks”. The images and instructions are not active links.
According to the Respondent, the disputed domain name was registered in connection with a new business the Respondent is preparing. The Respondent also states that it is using the disputed domain name in connection with emails for that proposed, or contemplated, business.
Earlier this year, the Complainant made several attempts to acquire the disputed domain name from the Respondent. The Respondent did not reply to the first two attempts. In due course, the Respondent did reply to the third approach but rejected the offer.
5. Discussion and FindingsParagraph 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 SimilarThe 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, trade mark or service mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the name, trade mark or service mark.
The Complainant has proven ownership of at least the registered trade marks for DATASITE identified in section 4 above. These include the trade mark registered in Australia. While the Complainant applied to register and registered that trade mark after the Respondent registered the disputed domain name, that consideration is not typically relevant at this stage but may be relevant under the second and third elements. In addition, the Complainant also owns the other registrations in other countries which were registered before the Respondent registered the disputed domain name.
On the question of identity or confusing similarity, what is required is simply a visual or aural 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 test is narrower than and thus different to the question of “likelihood of confusion” under trade mark law 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 however, may fall for consideration under the other elements of the Policy.
Typically and as is appropriate in this case, it is permissible to disregard the “.com.au” component of the disputed domain name as a functional component of the domain naming system. See for example auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.2.
Disregarding the “.com.au” ccTLD, the disputed domain name consists of the Complainant’s registered trade mark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trade mark and the requirement under the first limb of the Policy is satisfied.
B. Registered or Subsequently Used in Bad FaithIn 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.
Generally speaking, a finding that a domain name has been registered or is being used in bad faith requires an inference to be drawn that the respondent in question has registered or is using the disputed domain name to take advantage of its significance as a trade mark owned by (usually) the complainant.
The Complainant points out that the disputed domain name resolves to an inactive website parked at Wordpress.com which does not provide for the purchase of goods or services. Although it has been able to identify the registrant of the disputed domain name accurately through a WhoIs search, the Complainant says that failure to include address and contact details on the website “conceals” the identity of the Registrant.
Then, the Complainant contends that this is a case of bad faith registration and use by “passive holding”, citing Telstra Corporation Limited v. Nuclear MarshmallowsWIPO Case No. D2000-0003.
The Panel notes that, in the Nuclear Marshmallows case, Telstra was one of the largest, if not the largest, corporations in Australia at the time providing a wide range of goods and services to a large proportion of the public and with a very extensive registered trade mark portfolio. As a result, the learned panelist in that case was able to hold that there was no conceivable use to which the respondent could put the domain name in issue (
In the present case, the Complainant acquired rights to the registered trade marks for DATASITE in a number of countries around the world (but not Australia) before the registration of the disputed domain name. Further, the Complainant changed its name to Datasite LLC from Merrill Corporation in March 2020 and has been using that name and the DATASITE trade mark to promote and provide its services around the world since then.
The Complainant did not acquire registered trade mark rights in Australia until July 2021 with effect from December 2020. It claims to have been using the trade mark in Australia before then. The extent and manner of that use, however, has not been the subject of evidence in any detail. Moreover, the Complainant appears to operate in a specialized field – the provision of virtual data rooms and associated services.
The Respondent denies knowledge of the Complainant or its trade mark before registering the disputed domain name.
The Respondent says the disputed domain name is just a combination of two ordinary English words, registered for its apt descriptiveness like other names the Respondent says he registered around the same time including “homesite”, “stocksite”, and “marketsite”.
A WhoIs search of these domain names (in the “.com.au” domain) does in fact show that the Respondent is the registrant of both
The Respondent also says it registered the disputed domain name in connection with a planned business offering for property investors and real estate businesses. The Respondent, however, has offered only very limited evidence to support that claim – a single email using the disputed domain name in February 2021 in response to the third approach by a representative of the Complainant seeking a transfer of the disputed domain name. This is very slight evidence only. Accordingly, the Panel does not place much weight on this claim. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.2 (which, in view of the derivation of the Policy from the UDRP, the Panel considers appropriate to apply in this case).
Bearing in mind:
(a) the limited distinctiveness of the expression “datasite” in at least some contexts;
(b) the evidence that the Respondent has registered other domain names based on a similar naming pattern;
(c) the specialized nature of the Complainant’s services;
(d) the very limited evidence of use by the Complainant of the DATASITE trade mark in Australia on the record in this case; and
(e) the absence of any evidence that the Respondent has targeted the Complainant’s trade mark or otherwise opportunistically sought to take advantage of it,
the Panel does not think it is appropriate here to go behind the Respondent’s otherwise plausible denial of knowledge of the Complainant’s trade mark when registering the disputed domain name.
As a result, the Complainant has not established that the Respondent registered the disputed domain name in bad faith.
Accordingly, the Complaint must fail.
In light of that conclusion, no good purpose would be served by considering the other element under the Policy.
C. Reverse Domain Name HijackingThe Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that a Complaint has failed is not in itself sufficient to warrant a finding of reverse domain name hijacking.
According to the Respondent, the fact that the Complainant approached the Respondent several times in an attempt to purchase the disputed domain name and did not disclose those approaches in the Complaint shows that this is a so-called “Plan B” case where, having failed to buy the disputed domain name, the Complainant brought a complaint under the Policy “despite a clear inability to make the required showings”.
The Panel does not consider this is an appropriate case for a finding of reverse domain name hijacking.
First, there is nothing inherently wrong with a trade mark owner seeking to negotiate a resolution of a potential dispute privately. That is a normal and often more efficient and cheaper commercial approach. Indeed, many if not most legal systems encourage parties to endeavour to resolve their differences without resort to the courts or other dispute resolution mechanisms.
Secondly, the Panel does not consider it was obvious from the outset that the Complaint must fail. While the Complainant did not have registered rights in Australia before the Respondent registered the disputed domain name, it did have registered rights outside Australia, and an application for the same and apparent related use in Australia. It appears to have some, albeit not particularized, use in Australia. Also, even on the limited evidence provided in support of the Complaint, the Complainant is a significant player in its field. A significant factor in the Respondent’s success has been its evidence of other similar domain name registrations which by all appearances was known only to the Respondent prior to the pleadings being submitted in this case.
Accordingly, the Panel declines to make a finding of reverse domain name hijacking.
6. DecisionFor all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: December 17, 2021