WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Celmec International Pty Ltd. v. Bishni Subedi

Case No. D2006-0769

1. The Parties

The Complainant is Celmec International Pty Ltd., of Moorabbin, Victoria, Australia, represented by Moores Legal, Australia.

The Respondent is Bishni Subedi, of Kathmandu, Nepal.

2. The Domain Name and Registrar

The disputed domain name <heatray.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2006. On June 21, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On June 21, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on August 7, 2006. 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 has rights in the Trademark HEATRAY as follows:

Australian Registered Trademark number 731188 in respect of ‘gas fired infra-red and tube heating apparatus’ in Class 11.

Australian Trademark Application number 1112425 in respect of ‘heaters; heating apparatus; radiant heaters including electric powered and gas fired infra-red and tube heating apparatus; indoor and outdoor heating systems including heating systems integrated with umbrella(s); heat exchangers; heating panels; components, fittings and accessories for all the foregoing’ in Class 11.

USA Registered Trademark number 3088291 in respect of ‘heating systems, namely, heaters, heat exchangers, electric radiant heating panels used for outdoor heating, heating elements and accessories therefore, namely, umbrellas into which the system is integrated and brackets for use in affixing the heating system to a fixed object’ in Class 11.

Evidence of these Trademark Registrations and Application has been provided to the Panel.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The relevant part of the disputed domain name is ‘heatray’ which is identical to the registrations of the trademark HEATRAY held by the Complainant in Australia and in the USA.

In Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel held that the domain name <Telstra.org> was confusingly similar to the registered trademark TELSTRA. In Telstra Corporation Ltd. v. Barry Chen Kwok Chu, WIPO Case No. D2000-0423, the panel held that the domain name <Telstrashop.com> was identical to the trademark TELSTRA SHOP. In Telstra Corporation Ltd. v. United Media Group Ltd, WIPO Case No. D2001-1422, the panel held that the domain name <Telstrashop.net> was identical to the trademark TELSTRA SHOP.

The whole of the disputed domain name is either identical to, or confusingly similar to, the trademark registrations of the Complainant.

The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant has granted the Respondent neither a license or any other permission to use the trademark HEATRAY.

There is no evidence of the kind described in paragraph 4(c)(i), (ii) or (iii) of the Policy.

The sole use of the disputed domain name by the Respondent has been to redirect it to www.idesmail.com/blk/, which is a blank website. Printouts of this website, accessed by redirection from www.heatray.com, on April 21, 2004, May 23, 2006 and June 20, 2006, have been provided to the Panel.

In Air Austral v. WWW enterprise, Inc, WIPO Case No. D2004-0765, the panel held that the pointing of a domain name to a blank web page does not constitute: a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy; or a legitimate non-commercial or fair use under paragraph 4(c)(iii) of the Policy.

A finding to a similar effect was made by the panel in Deutsche Telekom AG v. Vision Computer SL, WIPO Case No. D2001-1240.

The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

It is a requirement of Paragraph 4(a)(iii) of the Policy that the domain name has been both:

- registered in bad faith; and

- used in bad faith.

This dual requirement was confirmed in Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In relation to registration, there are two relevant circumstances:

- original registration of the domain name; and

- acquisition of the domain name by the Respondent.

The disputed domain name was originally registered by Richard Tabaka. Mr. Tabaka originally worked as an independent contractor for the Complainant during 2001 and 2002. Mr. Tabaka assisted the Complainant in registering the domain name <Heatray.net>, building a website to be located at www.heatray.net, and running the Complainant’s computer network.

Between April 2002 and January 2003, Mr. Tabaka sought to become the Complainant’s distributor of ‘heatray’ products in Europe. On February 25, 2003, the Complainant refused to grant Mr. Tabaka this distributorship.

February 5, 2004, Mr. Tabaka registered the disputed domain name. According to the Whois database of NetworkSolutions, at “www.networksolutions.com/en_US-whois.asp” on April 2, 2004, the registrant was Richard Tabaka of New South Wales, Australia. A copy of the Whois search has been provided to the Panel.

Mr. Tabaka used the domain name to advertise products competing with the Complainant’s ‘heatray’ products. The www.heatray.com businesses purported to operate from an address at Unit 6, 4 – 6 Aquatic Drive, French’s Forest, New South Wales 2086, Australia. A printout of the www.heatray.com website has been provided to the Panel.

Lawyers for the Complainant wrote to Mr. Tabaka on April 8, 2004, complaining of Mr. Tabaka’s conduct. Mr. Tabaka responded by an emailed letter on April 15, 2004. Lawyers for the Complainant wrote to Mr. Tabaka on April 26, 2004, requiring the transfer of the domain name to the Complainant. An unknown associate of Mr. Tabaka responded by email on May 4, 2004. Lawyers for the Complainant wrote to Mr. Tabaka on May 17, 2004, requiring a substantive response to their letter of April 26 2004. Mr. Tabaka responded by an email on May 28, 2004. Copies of this correspondence have been provided to the Panel.

The panel in Façonnable SAS v. Names4Sale, WIPO Case No. D2001-1365 held that “A finding of bad faith may be made where the Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name.” Similar findings were made by the panels in Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173 and Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524. In the present case, Mr. Tabaka was a former contractor of the Complainant who had set up the Complainant’s website “www.heatray.net” and therefore was aware of the Complainant’s HEATRAY trademark. Further, the registration of the disputed domain name, after having his bid for the Complainant’s European distributorship rejected, is a clear indication of registration in bad faith.

On February 10, 2005, Mr. Tabaka transferred the disputed domain name to the Respondent. This date has been confirmed by the registrar eNom, Inc as being the date on which the domain name’s registration details were changed. The circumstances of this transfer are not known to the Complainant. A copy of an email from the registrar to lawyers for the Complainant, confirming the transfer date, has been provided to the Panel.

On March 7, 2005, Stuart Tremain, acting on behalf of the Complainant, wrote to the Respondent enquiring whether the domain name was available for sale. No response was forthcoming. A copy of this correspondence has been provided to the Panel.

On February 25, 2006, Tim Robinson of New South Wales, Australia, acting on behalf of the Complainant, emailed the Respondent enquiring whether the domain name was available for sale. On February 25, 2006, the Respondent replied by email, enquiring as to the purchase offer. On February 27, 2006, Mr. Robinson emailed the Respondent, offering US$2,000.00. On March 1, 2006, the Respondent replied, offering to sell the domain name for US$20,000.00. On March 2, 2006, Mr. Robinson emailed the Respondent, rejecting this offer, and sent a further email, requesting the Respondent’s contact name, telephone and fax numbers, and any relevant company registration details. On March 7, 2006, Mr. Robinson followed up the request for company details, contact name, telephone and fax number by a further email. On March 7, 2006, the Respondent replied that the domain name was not held by a company, and that no telephone numbers or company details would be provided. On March 8, 2006, Mr. Robinson emailed the Respondent, restating the need for the Respondent’s details. On March 15, 2006, Mr. Robinson emailed the Respondent, following up on the unanswered email of March 8, 2006. On March 21, 2006, the Respondent emailed Mr. Robinson. A copy of this chain of correspondence has been provided to the Panel.

The Complainant submits that, in light of Mr. Tabaka’s awareness of the Complainant’s claim to the disputed domain name, the transfer to the Respondent was a deliberate ploy to take the domain name out of the jurisdiction of the Australian courts, where the Complainant had previously threatened to take action against Mr. Tabaka. The failure of the Respondent to make any use of the domain name in more than 12 months of holding the name, and the refusal of the Respondent to confirm its identity and supply contact details to Mr. Robinson, allows the inference to be drawn that the Respondent is either an associate of, or in some way connected to or related to, Mr. Tabaka.

Further, the Complainant contends that it allows the inference to be drawn that the Respondent holds the disputed domain name in order to:

- prevent the Complainant from reflecting the HEATRAY trademark in a corresponding domain name (being bad faith under Paragraph 4(b)(ii) of the Policy);

- disrupt the Complainant’s business, which is clearly a competitor given Mr. Tabaka’s previous offering of competing goods under the domain name (being bad faith under Paragraph 4(b)(iii) of the Policy); and

- seek to extract the maximum price for the domain name from the Complainant, this being a price (US$20,000) that far exceeds the out-of-pocket costs directly related to the domain name, and knowing that the Complainant wishes to secure the domain name (being bad faith under Paragraph 4(b)(i) of the Policy).

An analysis of the properties of the email sent by the Respondent to Mr. Robinson on March 21, 2005, shows that the X-Ipaddress, being the IP address of the computer from which the email originated, was 60.229.184.61. A geographic location search for this IP address using “www.ip2location.com” shows this IP address to be located in Sydney, New South Wales, Australia. This is evidence that the Respondent is in fact located in Sydney, New South Wales, Australia (in the same location as Mr. Tabaka), rather than in Kathmandu, Nepal; this allows the inference to be drawn that the Respondent is either an associate of, or in some way related to or connected with, Mr. Tabaka. A copy of the properties of the email of March 21, 2005, and of the IP2Location search has been provided to the Panel.

In relation to use, the only use to which the Respondent is putting the disputed domain name is to redirect it to “www.idsemail.com/blk/”, which is a blank website. Printouts of this website, accessed by redirection from “www.heatray.com”, on April 21, 2004, May 23, 2006 and June 20, 2006 have been provided to the Panel.

It is submitted that redirecting the domain name to another URL does constitute the domain name ‘being used’, and that such use is in bad faith. The panel in Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123 stated that “use of the domain name to resolve to a blank website is not a bona fide use.” The panel in Dorotheum GmbH & Co KG v. Norbert Gartner, WIPO Case No. D2005-0408 stated that “an inactive holding of a domain name with a blank webpage also demonstrates bad faith use of a domain name under the Policy.”

In the leading case of Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel stated that the use of domain name in a way that contains no evidence whatsoever of any actual or contemplated good faith use was one of the considerations in establishing use in bad faith.

The Respondent may seek to argue that mere redirection does not constitute the domain name ‘being used’. However, the panel in Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003 held that “being used in bad faith is not limited to positive action; inaction is within the concept.” The Complainant submits that in this case, the redirection of the domain name to the blank website at www.idsemail.com/blk/ contains no evidence whatsoever of any actual or contemplated good faith use by the Respondent of the domain name.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall 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.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark HEATRAY, which is owned and has been commercially used by the Complainant exclusively in and for the purposes of its business for several years during which time it has acquired a certain reputation and goodwill.

Also, the addition of the suffix ‘.org’, which is required for registration purposes only, is irrelevant, for trademark purposes, as it does not serve to distinguish the disputed domain name from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. And Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”.

The Respondent’s disputed domain name, incorporates in its entirety the Complainant’s trademark HEATRAY.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is identical to the trademark HEATRAY, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and also commercial use and promotion around the world, including the USA, for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- whether 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;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the registrations and application for registration of the Complainant’s trademark HEATRAY, as mentioned above, and also the particular circumstances in which the disputed domain name was registered and then transferred to the Respondent as explained in some detail above, the Respondent must or should have known that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests. Also, there is no evidence that the Respondent has been authorized or licensed by the Complainant to use the disputed domain name. Had the Respondent been granted such rights, the Respondent would have asserted them in the present proceedings. As was stated by the panel in Air Austral v. WWW enterprise, Inc, WIPO Case No. D2004-0765: “In the absence of any answer to the Complainant’s contentions from the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests in the disputed domain name.”

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name for a website that directs Internet users not to the Complainant but to a blank website as mentioned above. This can hardly be characterized as a bona fide offering of goods or services (see Air Austral v. WWW enterprise, Inc, WIPO Case No. D2004-0765). Moreover, the Respondent does not appear to be known by or as the disputed domain name.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark HEATRAY inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, to a blank website (see further on this point below) which is misleading with the consequential tarnishing of the Complainant’s trademark. Thus, the Respondent cannot claim that he is making a legitimate non commercial or fair use of the domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(i),(ii) and (iv) of the Policy are particularly relevant to the present case and provide that there is evidence of bad faith in the following circumstances:

“(i) 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 your documented out-of-pocket costs directly related to the domain name;

(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;

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.”

Based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by offering to sell the disputed domain name to the Complainant at a price of US$20,000, which is far in excess of its out-of-pocket expenses incurred in acquiring and registering the domain name, constitutes bad faith on the part of the Respondent contrary to the Policy.

Likewise, the Panel also agrees with the Complainant’s contention and for the reasons mentioned that the Respondent’s registration and particular use of the disputed domain name is intended to prevent the Complainant from reflecting its trademark HEATRAY in a corresponding domain name and this behavior also constitutes bad faith within the meaning of the Policy. In this connection, the Panel also agrees with the Complainant’s contentions that the Respondent’s use of the disputed domain name to link to a blank website constitutes a non- bona fide use in line with the panel decisions in the previous UDRP cases of Microsoft Corporation v. Mike Rushton and Dorotheum GmbH & Co KG v. Norbert Gartner cited above. Furthermore, as stated by the panel in Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173: “….the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder.” This is further evidence of bad faith on the part of the Respondent in the present case.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, HEATRAY, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the Case File is, in fact, the situation. Such misleading conduct, in the view of the Panel, is also evidence of bad faith on the part of the Respondent.

Finally, the failure of the Respondent to respond to the Complainant’s e-mail requests for identity and contact information as described above and also the Respondent’s failure to answer this Complaint or take any part in the present proceedings, also suggests bad faith on the part of the Respondent.

Thus, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <heatray.com> be transferred to the Complainant

Ian Blackshaw
Sole Panelist

Dated: August 8, 2006