The Complainant is Wrays Pty Ltd of Western Australia, Australia, represented internally.
The Respondent is Laszlo Till / Centac of Western Australia, Australia, represented by Spruson & Ferguson Lawyers, Australia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2011. On September 9, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On the same date, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 20, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Response was filed with the Center on October 13, 2011.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 24, 2011. 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 operates a law firm and associated patent and trade marks attorney practice based in Perth, Western Australia. The Complainant holds two registrations in Australia for the WRAYS trade mark and a variation of it in international class 45 which it uses to designate “patent and trade mark attorney services, including searching services relating to patents, trade marks and designs and renewal services relating to patents, trade marks and designs; intellectual property consultancy; services relating to licensing of intellectual property and patent exploitation.” Both Australian registrations have been in effect since March 18, 2008.
The Complainant conducts business on the Internet using the .au ccTLD domain name with its intellectual property practice website resolving from this domain name.
The Disputed Domain Name was registered on May 5, 2011. The Respondent uses the Disputed Domain Name for a click-through or pay-per-click (“PPC”) landing page hosted by GoD, Inc. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name is typed in, it redirects traffic to a PPC landing page containing advertisements and links for various goods and services. 5. Parties’ Contentions A. Complainant
The Complainant cites its registrations in Australia of the trade mark WRAYS and of another trade mark featuring that word as prima facie evidence of ownership.
The Complainant submits that it also has common law rights in the mark WRAYS. The Complainant submits that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trade mark, because the Disputed Domain Name incorporates in its entirety the WRAYS trade mark and that the similarity is not removed by the addition of the ccTLD “.co” (citing Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trade marks (citing Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 and San Giorgio Coffee, Inc., v Marc DeCaria,WIPO Case No. D2010-0567). The Complainant contends that because the Respondent is not commonly known by the name “wrays”, the Respondent may not claim any rights established by common usage either (presumably referring to Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, Incorporated,WIPO Case No. D2001-0826).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3), as by using the Complainant’s WRAYS mark in the Disputed Domain Name, “to misleadingly attract, for commercial gain, Internet users to the Respondent’s website (citing: General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen /Provo Towne Center Online,WIPO Case No. D2003-0845). B. Respondent
The Respondent filed its Response by letter from its legal representative dated October 13, 2011. Although that letter is marked “Confidential”, this Panel finds that the confidentiality in the letter of October 13, 2011 has been waived by a subsequent communication on October 19, 2011 from the same legal representative that states: “We assume that our Response dated October 13, 2011 will be brought to the attention of the panel member. Please confirm. As indicated in that letter, the Respondent had no intention of negotiating with the Complainant but merely has indicated without any admission that he consents to a determination to transfer the domain name to the Complainant. The Respondent also reiterates that he finds the Complaint lodged and the proceeding, insisted upon by the Complainant as completely unnecessary and unwarranted and that the transfer of the domain name could have been effected by a simple request, which was never made prior to the Complaint”. Notwithstanding the finding, this Panel will not go into the detail of the letter dated October 13, 2011 beyond those parts repeated in the email dated October 19, 2011 as none of those further details assist the Respondent in any event. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) the Disputed Domain Name is identical or confusingly similar to a 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 and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trade mark rights in the mark WRAYS. The Panel finds that the Complainant has rights in the mark WRAYS in the Respondent’s jurisdiction Australia pursuant to Australian Registered Trade Mark No 1230423 registered from March 18, 2008 in international class 45 for “Patent and trade mark attorney services, including searching services relating to patents, trade marks and designs and renewal services relating to patents, trade marks and designs; intellectual property consultancy; services relating to licensing of intellectual property and patent exploitation.” In any event, the propriety of a domain name registration may be questioned under the Policy by comparing it to a trade mark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark WRAYS.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the WRAYS trade mark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trade mark (b) followed by the country code top level domain suffix “.co”.
It is also well established that the top level designation used as part of a domain name may be disregarded (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). There are numerous decisions applying this principle to the “.co” ccTLD. The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “wrays”.
In addition, this Panel concurs with the view of more than one panel in previous decisions that the use of the “.co” ccTLD “does nothing to dispel confusing similarity with complainant's trademark(s) because: “(a) Colombian authorities opened the “.co” domain for use by registrants regardless of geographic location; (b) Colombian authorities did so in part because ".co" abbreviates "company" and "corporation" in English (and Spanish) and is attractive to domain name registrants operating businesses; and (c) ".com" and “.co” are substantially similar in appearance” (see: Vanguard Trademark Holdings USA, LLC v. True Energy Ventures, LLC,WIPO Case No. DCO2011-0040; and Flatworld Solutions Private Limited v. Invensis Technologies Private Limited,WIPO Case No. DCO2011-0049).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the [w]ebsite, they have already been confused by the similarity between the domain name and the [c]omplainant’s mark into thinking they are on their way to the [c]omplainant’s [w]ebsite”. The Disputed Domain Name is therefore confusingly similar to the WRAYS trade mark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a PPC landing webpage advertising or offering for sale various products and thereby illegitimately “using the [Disputed] Domain Name to misleadingly attract to the Respondent’s website Internet users who are searching for the Complainant. The Respondent uses the [Disputed] Domain Name in this manner to increase the profits generated by the Respondent’s website”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trade mark or to represent that the Respondent is affiliated with the Complainant.
The Response does not appear to allege the existence of any rights or legitimate interests within the meaning of paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Respondent does not contend that it has used the Disputed Domain Name in connection with a bona fide offering of goods and services before notice of the dispute. It is well recognized in numerous previous UDRP decisions that, with certain provisos, domain names consisting of dictionary or common words or phrases that support posted PPC links genuinely related to the generic meaning of the domain name at issue, may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP (see WIPO Overview 2.0, paragraph 2.6). However, on any objective view, none of the usual provisos apply: the term “wrays” is not a dictionary or common word; the Respondent is not, for example, a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001 0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is not making a legitimate noncommercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [(relevantly)]:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the respondent to make the appropriate enquiries when registering a domain name. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trade marks, such as by conducting trade marks searches or search engine searches, supports a finding of bad faith in this case (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Complainant produced evidence that “the Respondent is a former client of the Complainant” and its associated law firm of the same name. Further evidence was provided to support the Complainant’s contention that the Respondent is the director of a company that was also a client of the Complainant and its associated law firm of the same name. Indeed, the Complainant acted for the Respondent in another domain name case General Television Pty Limited v Laszlo Till, AUDRP 0809 concerning the domain names and which featured the name of a long running Australian television program in which the complainant in that matter owned several registered trade marks.
This Panel finds that the trade mark WRAYS is known to the Respondent. It is inconceivable that the Respondent might have registered a domain name incorporating the name “wrays” without considering the Complainant’s trade mark rights. This Panel finds the Respondent’s conduct in circumstances where the evidence makes it plain it was well aware of the Complainant’s rights in the mark WRAYS, an egregious example of bad faith registration and use.
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently for domain name monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s services. Exploitation of the reputation of a trade mark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Lilly ICOS LLC v. The Counsel Group, LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623).
This Panel finds that the Respondent has taken the Complainant’s trade mark WRAYS and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trade mark by diverting Internet users to a PPC parking webpage hosted by GoD, Inc., for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 domain name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: November 7, 2011
Full & Egal Universal Law Academy