The Complainant is Clipsal Australia Pty Ltd of Baulkham Hills, Australia represented by Banki Haddock Fiora, Australia.
The Respondent is DIGITCOM Technology, of Dubai, United Arab Emirates. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 30, 2011, 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 Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (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 December 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2012.
The Center appointed Andrew D S Lothian as the sole panelist in this matter on January 16, 2012. 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 is an Australian Proprietary Company incorporated in 1931 and is a leading manufacturer of industrial and domestic electrical accessories including electrical switches, heating, lighting and safety apparatus. The Complainant markets these products worldwide under the CLIPSAL trademark. In 1994 a business unit of the Complainant developed an electronic control and management system for buildings, which the Complainant has since marketed worldwide under its C-BUS trademark. The Complainant is the owner of a wide variety of registered trademarks in many different jurisdictions including Australian registered trademark no. 83171 for the word mark CLIPSAL registered on February 27, 1945 and Australian registered trademark no. 658014 for the word mark C-BUS registered on April 7, 1995.
The disputed domain name was registered on August 17, 2008 and currently resolves to “/new3/index.php”, which is a website that hosts an online store purporting to sell home furnishings and electrical goods.
The disputed domain name was registered on August 22, 2008 and currently resolves to “”, which is a website that hosts an online store selling a range of electrical, telecommunication and home entertainment products. At each of the websites associated with the disputed domain names are goods bearing the CLIPSAL trademark together with goods made by a variety of other manufacturers. At the website associated with the disputed domain name , also offered for sale are building automation controls made by manufacturers other than the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Complainant submits that the Respondent, despite apparently being a reseller of goods bearing the Complainant’s CLIPSAL trademark, is not using the disputed domain names in connection with a bona fide offering of goods and services and thus does not have rights or legitimate interests in the disputed domain names (citing Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903). The Complainant avers that it has never licensed or otherwise permitted the Respondent to use its CLIPSAL or C-BUS trademarks or to apply for or use any domain name incorporating either of these. The Complainant states that as far as it is aware, the Respondent has not carried on any business nor was commonly known by the name “Clipsal” or “Cbus” before the disputed domain names were registered.
The Complainant notes that a number of products bearing the Complainant’s CLIPSAL trademark are offered for sale at each of the websites to which the disputed domain names resolve, indicating that the Respondent is and was well aware that the CLIPSAL trademark has a significant reputation for electrical accessories within the electrical industry. The Complainant submits that this evidences the Respondent's awareness of CLIPSAL as a well-known trademark in Australia and worldwide, and of C-BUS as a well-known sub brand of CLIPSAL.
The Complainant asserts that there can be little question that the Respondent was aware of the reputation of the Complainant’s name and CLIPSAL and C-BUS trademarks as the Respondent is apparently involved in the same area of business as the Complainant and purports to offer the Complainant’s CLIPSAL products for sale. The Complainant states that the Respondent must have expected that any use of the disputed domain names would harm the Complainant. The Complainant further asserts that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's websites.
The Complainant submits that the Respondent offered to sell related domain names to the Complainant, namely , , , and during correspondence between the Parties. The Complainant notes that three of these domain names, , and became the subject of an earlier complaint under the Policy in which the appointed panel ordered that the said domain names be transferred to the Complainant (Clipsal Australia Pty Ltd v. DIGITCOM Technology,WIPO Case No. D2010-1800). Finally, the Complainant asserts that the Respondent has engaged in a pattern of behavior of registering domain names incorporating the trademarks of others, namely (NUVO), (DYNALITE), and (CRESTRON), all of which the Respondent uses in a similar manner to the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the registered trademarks CLIPSAL and C-BUS. Clearly the disputed domain name is identical to the Complainant's CLIPSAL trademark; it is well-established under the Policy to disregard the top level domain (in this case “.me”) on the grounds that this is required for technical reasons and is wholly generic. When comparing the disputed domain name with the Complainant's C-BUS trademark, the Panel notes that the only difference between these is the removal of the dash or hyphen in the disputed domain name and the Panel considers that the use (or in this case, the absence) of punctuation marks is insufficient to distinguish a disputed domain name from a trademark, nor is it capable of dispelling any potential confusion between the two.
Accordingly, the Panel finds that the disputed domain name is identical to the Complainant's CLIPSAL trademark and that the disputed domain name is confusingly similar to the Complainant's C-BUS trademark, and thus that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant asserts that it has never licensed or otherwise permitted the Respondent to use its CLIPSAL or C-BUS trademarks or to apply for or use any domain name incorporating either of these. The Complainant also submits that as far as it is aware, the Respondent has neither carried on any business nor was commonly known by the name “Clipsal” or “Cbus” before the disputed domain names were registered. In the Panel's opinion, these assertions are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The burden of production thus falls upon the Respondent to bring forward evidence of its rights or legitimate interests, if any, in the disputed domain names.
While the Respondent has not responded to the Complaint, it is clear both from its response to the complaint in Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra and from the evidence produced by the Complainant in the present case that the Respondent is or appears to be a reseller of the Complainant's goods. Accordingly, it falls to the Panel to consider whether, assuming the Respondent to be such a reseller, this might confer rights or legitimate interests upon the Respondent. This issue is examined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“the WIPO Overview”) at paragraph 2.3 which is provides as follows:
“Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., ).”
The Panel in the present case subscribes to both the consensus view and the additional comment that it is generally difficult for a respondent who has used a domain name identical to the complainant's trademark to establish rights or legitimate interests therein. In the Panel's view, this applies to both of the disputed domain names as is identical to the Complainant's CLIPSAL trademark and is confusingly similar to the Complainant's C-BUS trademark, missing only the dash or hyphen as noted above, as to be almost identical thereto. While this would be sufficient for a finding that the Respondent has no rights or legitimate interests in the disputed domain names, the Panel will consider the Oki Data elements as outlined above for the sake of completeness. In the present case, it is apparent that the Respondent is offering certain CLIPSAL goods for sale at the website to which the disputed domain name resolves. The Respondent does not however appear to be offering any C-BUS goods for sale at either website to which the disputed domain names resolve. The Respondent offers the goods of third-parties, some of whom appear to be in competition with the Complainant, at the websites for each of the disputed domain names. Neither website at the disputed domain names discloses the Respondent's relationship with the Complainant. Furthermore, taking the disputed domain names together with the domain names involved in the case of Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra, it would be difficult for the Respondent to argue that it has not attempted to “corner the market” in domain names reflecting the Complainant's CLIPSAL trademark. Clearly, in light of the above analysis, the Respondent would be unable to meet the Oki Data criteria in the present case.
In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the Respondent] has registered or [the Respondent] has 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, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on your web site or location”.
On this topic, the Complainant’s submissions focus principally on paragraph 4(b)(iv) of the Policy together with mention of the Respondent's offer to sell domain names containing the Complainant's trademarks to the Complainant. On the subject of the preliminary submission, the Panel has no hesitation in finding that by using both of the disputed domain names the Respondent has attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's websites. In the Panel's opinion, such confusion would inevitably result from the absence of any disclaimer or clarifying statement as to the Parties' relationship on the Respondent's websites to which the disputed domain names resolve and would be compounded by the fact that the Respondent offers a wholly undifferentiated mixture of the Complainant's and third-party goods for sale therein.
It is equally clear to the Panel that the Respondent has prevented the Complainant from reflecting its trademarks in corresponding domain names (in this case in the “.me” country code top level domain) and that, taking into consideration the generic top level domain names noted in Clipsal Australia Pty Ltd v. DIGITCOM Technology, supra, the Respondent has engaged in a pattern of such conduct. Furthermore, the Complainant has demonstrated that in correspondence with the Complainant, the Respondent proposed that the disputed domain names be sold to the Complainant (together with others incorporating the Complainant's trademarks described as “our full basket”) at a price to be fixed afterwards which the Respondent insisted should be “generous and Fair” [sic] and evidently was not to be based upon the Respondent's genuine out of pocket costs.
While the above circumstances might engage paragraphs 4(b)(i) or (ii) of the Policy respectively, the former requires sale of the domain names to be the Respondent's primary purpose in making the registrations. The Panel is unable to determine the Respondent's actual primary motivation with any degree of certainty. However, in the Panel's view the Respondent either intended to add to its pattern of domain name registrations, which blocked the Complainant from reflecting its trademarks in corresponding domain names, or to sell the disputed domain names to the Complainant at a greater price than the cost of registration, or indeed simply to increase the traffic to the Respondent's websites to which the disputed domain names resolve by using the good will of the Complainant's trademarks and taking advantage of the resulting consumer confusion. In any event, the Panel is satisfied that the Respondent was primarily motivated by at least one of these factors or possibly a combination thereof. Each factor is, in itself, an indicator that the disputed domain names were registered and used in bad faith.
In light of all of the above circumstances, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and accordingly, that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 names, and , be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: January 27, 2012
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