WIPO Domain Name Decision: DAU2008-0002

Topfield Co. Ltd v. Jai Kemp and Digital Products Group Pty Ltd, t/a Topfield Australia, formerly Paige Communications Pty Ltd

The Complainant is Topfield Co. Ltd, of Seongnam, Republic of Korea, represented by Spruson & Ferguson Lawyers, Australia.

The Respondents are Jai Kemp and Digital Products Pty Ltd, t/a Topfield Australia, formerly Paige Communications Pty Ltd of Ingleburn, New South Wales, Australia, represented by Alvaro Edwards Solicitors, Australia.

The disputed domain names <topfield.net.au>, <topfield-australia.com.au>, <i-topfield.com.au> and <i-topfield.net.au>, are registered with Melbourne IT trading as Internet Names Worldwide.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2008. That day the Center transmitted by email to Melbourne IT and to Enetica a request for registrar verification in connection with the domain names at issue. On February 4, 2008, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent Jai Kemp is listed as the registrant of the domain names <topfield.net.au>, <topfield-australia.com.au>, and <i-topfield.net.au>; that Topfield Australia is the registrant of the domain name <i-topfield.com.au>; and providing the contact details.

Despite numerous reminders from the Center, Enetica failed to respond, thereby hampering the effective functioning of the .au Domain Name Dispute Resolution Policy (“the Policy”). The Center accordingly communicated to Enetica by email on February 25, 2008, with a copy to auDA, that it would commence the proceeding on the assumption that, among other things, the Respondent shown in the Whois database, Paige Communications Pty Ltd, is the registrant of the domain name <topfield.com.au>. Enetica was invited to let the Center know if any of the assumptions made were incorrect but, as before, did not reply.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for .au Domain Name 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 Respondents of the Complaint, and the proceedings commenced on February 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response on March 16, 2008. The Response was filed with the Center on March 13, 2008.

The Center appointed Alan L. Limbury, Warwick A. Rothnie and Philip N. Argy as panelists in this matter on April 7, 2008. The Panel finds that it was properly constituted. Each member of 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.

The Complainant is a manufacturer of multimedia home entertainment products including television set-top boxes and personal video recorders. It is the proprietor of numerous trademark registrations around the world for the mark TOPFIELD including Australian trademark registration No. 967471 in Class 9, registered on May 4, 2004. The Complainant also has common law rights in Australia in that mark. There is no dispute that the domain names are identical or confusingly similar to that mark.

Starting in or about 2000 or 2002 (the precise date being disputed) the Respondent Digital Products Group Pty Ltd (“DPG”) (then known as Paige Communications Pty Ltd) became an authorised distributor in Australia of the Complainant’s terrestrial products. There was no formal written distribution agreement. The Respondent Jai Kemp is the sole director of DPG. Topfield Australia is a registered business name owned by DPG since September 1, 2003 and which it has used since July 25, 2003.

The domain names <topfield-australia.com.au> and <topfield.com.au> were registered on July 9, 2003 and June 19, 2004 respectively. At the relevant date (see below) they led to active websites promoting the Complainant’s products.

The domain names <topfield.net.au>, <i-topfield.com.au> and <i-topfield.net.au> were registered on May 4, 2007. At the relevant date they were and remain inactive. The Respondents consent to their transfer to the Complainant.

The parties are in dispute over whether the distribution agreement has been terminated. Relations between the parties deteriorated following the imposition by the Federal Court of Australia, on December 13, 2006, of pecuniary penalties for resale price maintenance on both Respondents: see “http://www.austlii.edu.au/au/cases/cth/federal_ct/2006/1732.html”. In the months that followed, DPG began supplying competing products in addition to those of the Complainant and the Complainant made other distribution arrangements.

In August 2007 the Complainant announced that it was appointing another distributor in Australia and that it still considered DPG to be one of its distributors even though DPG was handling competing products. DPG questioned this course, claiming to be the Complainant’s sole distributor in Australia and pointing to a “Sole Distributor Certification” which the Complainant had issued to it in 2004 and which the Complainant says was applicable solely to trade with one particular customer.

In September and October 2007, the Complainant’s solicitors wrote two cease and desist letters to the Respondents’ solicitors. The first treated the distributorship as having already come to an end. The second purported expressly to terminate the distributorship insofar as it may not have been terminated earlier.

The Complainant says that, although DPG was a former authorised distributor, upon termination of the distributorship the Respondents ceased to have any rights or legitimate interests in the domain names and in the business name that they may have had. The Complainant says this was no later than the date of the second cease and desist letter, October 17, 2007, which it says constituted notice to the Respondents of the subject matter of this dispute and is therefore the relevant date for the purposes of paragraph 4(c)(i) of the Policy.

In the alternative, the Complainant argues that even if the Panel were to find that the distributorship continues, the Respondents’ conduct at the relevant date did not meet the criteria for legitimate use as set out in OKI Data Americas, Inc. v. Asd, Inc., WIPO Case No. D2001-0903, since the domain names were then being used to bait and switch customers. While acknowledging that the Respondents’ active websites primarily refer to the Complainant’s products, the Complainant points to a “users forum” on those websites containing information on competing Beyonwiz products and notes that DPG operates the website at “www.beyonwiz.com.au” and has registered the business name Beyonwiz Australia. Further, the contact number appearing on both the “www.beyonwiz.com.au” and the “www.topfield-australia.com.au” websites is the same.

The Complainant says the active websites falsely suggest that the respective registrant is the trademark owner or that the website is the official website of the trademark owner.

The Complainant says that whether or not any of the domain names were registered in good faith (which is not admitted), their continued use after October 17, 2007 is use in bad faith, amounting to trademark infringement, contravention of the consumer protection provisions of the Trade Practices Act (and, in the case of Mr. Kemp, its New South Wales counterpart) and passing off. Further, the Complainant says the domain names were registered for the purpose of disrupting the business of the Complainant or its new licensees or distributors in Australia, preventing the Complainant from reflecting its mark in a corresponding domain name. DPG’s registration of another domain name, <topfielddigital.com> demonstrates a pattern of conduct intended to disrupt the Complainant’s business activities.

While consenting to the transfer of three domain names, the Respondents oppose transfer of <topfield.com.au> and <topfield-australia.com.au>.

The Respondents say DPG was solely responsible for all sales and bore the bulk of the advertising costs of the Complainant’s terrestrial products in Australia from about 2000 until about July 2007, when the Complainant began to supply its products to an Australian retailer and shortly thereafter appointed another Australian distributor.

The Respondents dispute that the Complainant has terminated the distribution agreement, saying DPG continues to market and sell the Complainant’s branded products via its Topfield website and to provide after sales service and warranty support for them. DPG currently has over 2,000 units of the Complainant’s products on hand, worth $A1.4 million, purchased from the Complainant under the distribution agreement.

The Respondents point to a letter written by the Complainant to DPG after October 17, 2007 which began: “I would like to take this opportunity to introduce a new manager who will be supporting the business relationship with your company from today on” as support for their position.

Alternatively, the Respondents say that even if the Panel were to find that the distributorship has been terminated, there is an implied term that use of the domain names may continue until existing stocks have been sold and the statutory warranty periods have elapsed.

The Respondents say they have rights and legitimate interests in the domain names <topfield.com.au> and <topfield-australia.com.au>, which DPG used since before notice of this dispute and is still using in a bona fide way to market and sell the Complainant’s products. When DPG began to sell competing products in May 2007, it set up a separate website and domain name for them and began trading under its corporate name instead of its business name Topfield Australia.

The Respondents deny registration or use in bad faith, saying the Complainant’s allegations of trademark infringement, misleading and deceptive conduct and passing off go beyond the scope of this Administrative Proceeding and are matters to be litigated. Further, they say no complaint has ever been made about <topfielddigital.com>, which was registered on July 22, 2003 and has not been used since; and that the Complainant has not been prevented from using its mark in a corresponding domain name since it currently has <itopfield.com.au>.

Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

(i) the domain names are identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the domain names (Note 2); and

For the purposes of this policy, auDA has determined that a “name […] in which the complainant has rights” refers to:

(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

Since the Respondent consents to the transfer to the Complainant of the domain names <topfield.net.au>, <i-topfield.com.au> and <i-topfield.net.au>, the Panel may forego the above analysis in respect of those domain names and may order their transfer. See Tex. Med. Ctr. v. Spinder, FA 886496 (Nat. Arb. Forum Feb. 19, 2007) and the cases there cited.

As mentioned, there is no dispute between the parties that the domain names are identical or confusingly similar to the Complainant’s TOPFIELD mark. The Panel agrees.

The parties are in agreement that DPG has been a distributor of the Complainant’s products. The Panel proceeds on that basis. However, the domain name issues here are part of a wider dispute between the parties beyond the scope of this Administrative Proceeding.

As in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004, the Complainant failed at the outset to regulate its relationship with DPG by means of a formal, written document. It is not for this Panel to determine whether and if so, when the distributorship has been terminated nor whether there has been trademark infringement, passing off or misleading or deceptive conduct on the part of the Respondents. These are issues for a court to determine: “[…]the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. The Thread.com, LLC v. Poploff, Case No. D2000-1470, (WIPO Jan. 5, 2001). If trademark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trademark infringement or dilution litigations. In the absence, however, of some element of illegitimacy, they should not use the Policy to prevent uses that ICANN deemed to be legitimate, including the use of domain names in connection with the bona fide offering of goods and services”: Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Accordingly, the Panel proceeds on the basis that it has not been established that the distributorship has been terminated.

Paragraph 4(c) of the Policy sets out a number of circumstances which, if found by the Panel to be proved, demonstrate a Respondent’s rights or legitimate interests. One of those circumstances in paragraph 4(c)(i) is: “before any notice to you [the Respondent] of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name[…]in connection with an offering of goods or services.”

The Panel accepts the Complainant’s submission that its second letter of demand dated October 17, 2007 constituted notice of this dispute for the purpose of that paragraph. See the final report of the auDA Dispute Resolution Working Group, June 2001, Note 12: “a letter of demand or similar communication from the complainant is sufficient to constitute notice to the respondent of the subject matter of the dispute”, cited in Overture Services, Inc. v. Overture Search, WIPO Case No. DAU2004-0002.

Prior to October 17, 2007, DPG was using the domain name <i-topfield.com.au> in connection with its business of distributing the Complainant’s products. Mr. Kemp, as sole director of DPG, was using the domain name <topfield-australia.com.au> for the same purpose.

As was observed in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, there are different views as regards the question of the conditions under which resellers or distributors have a legitimate interest in using the manufacturer’s trademark as a domain name.

The prevailing view under the UDRP was expressed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903: such use by an authorised dealer or reseller is to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP (which is in slightly different terms from the corresponding paragraph of the Policy) only if the following conditions are satisfied:

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

This Panel is not convinced that the Oki Data criteria should be accepted verbatim as authoritative under the Policy, especially the requirement that there be disclosure of the registrant’s relationship with the trademark owner. Here the active websites to which the domain names led did not falsely suggest that the registrant is the trademark owner nor that the website is the official website of the trademark owner. This Panel does not consider that, under these circumstances, any such disclosure is required in order to establish legitimacy.

The active websites were consistent with the legitimate operations of a distributor of the Complainant’s products. The references to competitors’ products in the Forums do not appear to amount to bait and switch, rather they comprise comments contributed predominantly by third parties, such as customers, discussing the features of a range of products. Registration of the three domain names which the Respondents consent to transfer to the Complainant took place long after the registration of the two active domain names and the circumstances of their registration, at a time when the relationship was already strained, cannot cast a cloud over the earlier registered domain names.

For these reasons, the Panel finds that, before notice to the Respondents of the subject matter of this dispute, they used the domain names <i-topfield.com.au> and <topfield-australia.com.au> bona fide in connection with an offering of goods and services. Further, DPG is and has been known by its business name Topfield Australia since July 2003. Accordingly, the Panel finds that DPG has rights and legitimate interests in the domain name <i-topfield.com.au> pursuant to the Policy, paragraphs 4(c)(i) and (ii) and Mr. Kemp has rights and legitimate interests in the domain name <topfield-australia.com.au> pursuant to paragraph 4(c)(i).

Having regard to the Panel’s findings in relation to the previous element, it is unnecessary to address this issue.

For all the foregoing reasons, the Complaint is denied in relation to the domain names <i-topfield.com.au> and <topfield-australia.com.au> and, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <topfield.net.au>, <i-topfield.com.au> and <i-topfield.net.au> be transferred to the Complainant.

Alan L. Limbury Presiding Panelist
Warwick A. Rothnie Panelist	Philip N. Argy Panelist