The Complainant is Bathox Australia Pty Ltd (ACN 001 287 467) Chipping Norton, New South Wales Australia, represented by Deutsch Miller, Australia.
The Respondent is Newimage Cosmetics Pty Ltd (ACN 079 153 049) Sydney, New South Wales Australia.
The disputed domain name <bathox.com.au> is registered with NetRegistryPty Ltd.
This is an administrative proceeding pursuant to the .au Dispute Resolution Policy (“auDRP”) adopted by auDA on 13 August 2001, which commenced operation on 1 August 2002; the auDA Rules for .au Dispute Resolution Policy (“Rules”) and the WIPO Supplemental Rules for “.au” Domain Name Dispute Resolution Policy (“Supplemental Rules”) in effect as of August 13, 2010.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 9, 2011, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On December 13, 2011 NetRegistryPty Ltd transmitted by email to the Center its verification response(s) confirming that the Respondent is listed as the registrant and providing the contact details disclosing registrant and contact information for the disputed domain name. On December 19, 2011 NetRegistryPty Ltd sent a further email to the Center stating that: “It appears that we had incorrectly answered question 4 as the respondent details do not match then details of the current registrant”. The Center sent an email communication to the Complainant on December 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 22, 2011 noting: “Despite the conflicting information provided in the Whois searches, the Complainant adopts the advice of the WIPO Arbitration and Mediation Centre that the Respondent in this administrative proceeding is Haresh Bhojwani.”
The Center verified that the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.
The Center appointed Derek M. Minus as the sole panelist in this matter on February 6, 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.
After its appointment, the Panel wrote to the Center on February 7, 2012 requesting the Center to:
1. Confirm that the material in the Case File is correct.
2. Confirm the identity of the Registrant
3. Confirm that the Registrant is the Respondent in this matter.
4. Confirm that the Respondent has been served and has not provided a response.
On February 8, 2012 the Center replied that:
1. Confirm that the material in the Case File is correct: Attached please find the correct Complaint for the domain name <bathox.com.au>.
2. Confirm the identity of the Registrant / that the Registrant is the Respondent in this matter: In its original verification response of December 13, 2011, NetRegistryPty Ltd identified the Respondent as:
Name Haresh Bhojwani
Organisation Haresh Bhojwani
Street POBox Q578
City Sydney
State/Province NSW
Post Code 1230
Country Australia (au)
Email Address haresh@harbourbay.com.au
Telephone Number +61.292902500
In NetRegistryPty Ltd’s email response of January 19, 2012, to the Center, providing clarification to questions (4) and (5); the Registry’s response was as follows:
“It appears we had incorrectly answered question 4 as the respondent details do not match the details of the current registrant.”
On February 15, 2012, NetRegistry wrote again to the Center to confirm:
Registrant: NEWIMAGE COSMETICS PTY LTD
Eligibility Type: Company
Eligibility ID: ACN 079153049
3. Confirm that the Respondent has been served and has not provided a response. The Center responded:
It appears that the Respondent received the Notification of Complaint sent to the email address: haresh@baywater.com.au <mailto: haresh@baywater.com.au>. No bounced back messages have been received from this email address. Further this is the same email Respondent used for its email to the Center of February 7, 2012.
Written Notice was successful to the fax number 61292514800 (Office FAX).
For the mail addresses for written Notice; it seem UPS attempted to deliver the courier with the phone number 61 416 255 325 (as it is a PO Box).
The Panel therefore determines that the correct Respondent in this matter is Newimage Cosmetics Pty Ltd. However, as the contact email address for Haresh Bhojwani, being <haresh@baywater.com.au> is the same as one of the email addresses provided for the Respondent to which notification was sent by the Center, the Panel finds that the Respondent has been properly notified of this administrative procedure.
Although required by the auDA Clarification of Registrar Obligations Policy no. 2003-01 clause 2.2, no request that NetRegistry place a server lock on the domain was made as the site is identified by NetRegistry as a “parked domain” where “the owner of this domain has yet to point it to a website or online content”.
The Complainant is a private Australian company which (with its predecessors in title) have been providing personal care and hygiene products in Australia under the BATHOX trade mark for over 40 years. Different corporate entities have been engaged in conducting the Bathox business but they have been owned and directed by members of the one family since the 1960s.
The Bathox business is a second-generation, family-owned concern. The current Chief Executive Officer of the Complainant is the daughter of the founder of the Bathox business, and her husband is the sole director of the Complainant.
The company’s current website is located at <www.bathoxaustralia.com>. Under the “company” tab, the following information is provided:
We have being operating our business since the early 1960’s. Our products range from Bathox Bath & Shower Gels to Mouthwashes, Hygiene Disinfectants, Dog Shampoo & Conditioner, Handwashes, and Artificial Sweeteners. All of our products are manufactured in line with international standards and are greatly appreciated by customers throughout Australia, Singapore, Philippines and New Zealand. … We have been manufacturing our Sugarless Range of Sweeteners since 1995. We supply all Major Supply Chain Stores throughout Australia. We are the major Supplier of all Government Contracts through Hospitals, Goals (sic) and Pharmacies, also all major Airports and Cruise Ships throughout Australia.
The Complainant is the registered proprietor of the following Australian registered trade marks:
Registration number: | Trade mark: | Priority date: | Goods: |
|
2315 I 9 |
BATHOX |
12 August 1969 |
Class 3: Bath salts |
|
231520 |
BATHOX |
12 August 1969 |
Class 5: Bath salts (medicated) |
|
1151180 |
BATHOX |
6 December 2006 |
Class 3: Soaps including antiperspirant etc. Class 5: Pharmaceutical and veterinary preparations etc. |
The Respondent is Newimage Cosmetics Pty Ltd, a private company incorporated under the laws of Australia. The Australian Securities and Investments Commission (ASIC) historical extract provided by the Claimant shows that the company was first registered as an Australian Proprietary Company on July 1st, 1997 and has been in continuous operation since that time.
The following information has been summarised from the Complainant’s submissions:
The Complainant asserts that as a result of over 40 years of sales and promotion of products under the BATHOX mark in Australia, the Complainant has developed a substantial reputation in the trade mark and generations of Australians have grown up with Bathox products and the BATHOX mark has become a household name.
Because of the high recognition for the Complainant’s BATHOX trade mark in Australia, the Respondent would derive a commercial advantage from any confusion created with respect to the products advertised by the Respondent. According to the Complainant, the public will be misled into thinking that the Complainant is the source of the products advertised or that there is some sort of association, affiliation or endorsement of these products by the Complainant.
The Complainant argues that the creation of such confusion was and continues to be the intention of the Respondent when registering the domain name. The Complainant primarily manufactures and distributes personal care and hygiene products. The deodorant sprays, body sprays and hair gels promoted by the Respondent are also personal care and hygiene products of the type distributed by the Respondent. They are generally sold through the same trade channels as, and in close proximity to, the types of products manufactured and distributed by the Complainant.
The Complainant considers it most likely that it was the intention of the Respondent when registering the domain name, and continues to be the intention of the Respondent in maintaining the registration of the domain name is the encouragement of confusion with the BATHOX trade mark.
The Complainant claims that the Respondent has failed to demonstrate any use of, or registration of the domain name in good faith and in the circumstances of this case, where a Complainant has a strong reputation in the name, this can and should lead to a finding of bad faith. The Complainant considers that if there were any use by the Respondent it would be designed only to take advantage of the Complainant's reputation in the BATHOX trade mark. Such use would therefore be in bad faith and not a bona fide use of the disputed domain name.
The Complainant has not found through any of the searches it has undertaken, any person or entity ever having a business name or company name registered in Australia that incorporates the word BATHOX, except for those related to the Complainant. The Complainant has also not identified any use of BATHOX mark by the Respondent in relation to its business or products.
Many of the Complainant’s submissions in this case, no. DAU2011-0040 were carried over by the Complainant from another application made by it, being, Bathox Australia Pty Ltd v. Bhojwani, Haresh WIPO Case No. D2011-2167. These submissions, complaining of the Respondent’s active use of the domain name to “intentionally attract, for commercial gain, Internet users to the website hosted at the disputed domain name, by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products displayed on the website, in circumstances where no such association or affiliation exists” or “endorsement of that website and the products promoted and offered for sale” are irrelevant as the Registrar, NetRegistry has confirmed that the disputed domain name is a “parked domain” as “the owner of this domain has yet to point it to a website or online content”.
The Respondent did not file any substantive response in relation to this complaint.
The issue to be determined in this Complaint is whether the registration of the disputed domain name by the Respondent constitutes a breach of the auDRP such that the domain name should be transferred to the Complainant. Clause 15(a) of the Rules requires the Panel to:
decide a complaint on the basis of the statements and documents submitted in accordance with the [auDRP and Rules], and any rules and principles of law that it deems applicable.
The purpose of an administrative process conducted under the auDRP is stated in clause 1.2 of the Policy:
The purpose of the auDRP is to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name.
The auDRP is contained in Schedule A, clause 4(a) of which requires a complainant to prove, on the balance of probability, each of the following matters:
(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.
It is important to note, as set out in clause 1.4 of the auDRP:
Some parts of the auDRP are substantively different from the UDRP. Prospective complainants should not assume that principles derived from UDRP decisions will be applicable to auDRP disputes.
In fact, some of the requirements that need to be proven under the auDRP do provide a different basis for deciding a matter that can be advantageous to the Complainant. In an administrative proceeding, the Complainant bears the onus of proof.
For the purposes of this Policy, auDA has determined that a “name … in which the complainant has rights” refers to:
1. the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
2. the complainant's personal name.
The disputed domain name was registered by the Respondent on March 3, 2008.
The disputed domain name is identical (except for the addition of the Internet identifiers “.com” and “.au”) to the Complainant’s company name as registered with the Australian Securities and Investments Commission and also to its trade mark BATHOX which was first registered by the Complainant in 1969.
The addition of “.com.au” at the end of the name offers no substantive, meaningful or material change to the use of the name which could differentiate it from the trade mark owned by the Complainant.
Therefore the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainant’s registered trade mark and company name.
The second element that a complainant under the Policy must show is that, on the balance of probability, the respondent has no rights or legitimate interests in the disputed domain name. If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus reverts to the respondent to displace that presumption.
Paragraph 4(c) of the Policy states that, in responding to a complaint, rights to and legitimate interest in a domain name may be demonstrated by a Respondent evidencing one of the following, non-exhaustive, situations:
(iv) before any notice of the subject matter of the dispute, bona fide use, or demonstrable preparations were made to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring); or
(v) it as an individual, business, or other organisation) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(vi) it 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 name, trademark or service mark at issue.
The auDA Domain Name Eligibility and Allocation Rules For Open 2LDs Policy (2008-05) explains the rights to the use of a domain name licence and sets out the policy rules that govern the granting of domain name licences in the open second level domains (2LDs) in the .au domain.
2.1 There are no proprietary rights in the domain name system (DNS). A registrant does not “own” a domain name. Instead, the registrant holds a licence to use a domain name, for a specified period of time and under certain terms and conditions.
2.3 There is no hierarchy of rights in the DNS. For example, a registered trade mark does not confer any better entitlement to a domain name than a registered business name. Domain name licences are allocated on a ‘first come, first served’ basis. Provided the relevant eligibility rules are satisfied, the first registrant to apply for a particular domain name will be permitted to license it.
The current auDA Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (Policy No. 2008-06) provides guidance on the process by which domain name licenses are granted. Clause 2.1 of these Guidelines provides that the Policy Rules for the open 2LDs are divided into two types of criteria:
a) Eligibility - is the registrant eligible to license a domain name in the requested 2LD?; and
b) Allocation - can the requested domain name be allocated to the registrant?
The eligibility and allocation criteria apply for all of the open 2LDs. The Eligibility rule requires the registrant to provide relevant identification details for the 2LD in which they want to license their domain name. The Allocation rule requires the registrant to give a reason why the requested domain name can be allocated to them. The reasons available in each 2LD are where the domain name is:
a) an exact match of the registrant's name; or
b) an abbreviation or acronym of registrant's name; or
c) indicative of a close and substantial connection to the registrant.
According to the Complainant, it has conducted searches of the public register of Australian company and business names, the public register of trade marks maintained by the United States Patent and Trademark Office and Internet searches using the Google search engine and it has not found any connection between the BATHOX mark and the Respondent, other than its registration of the disputed domain name.
Clause 10.5 of Policy No. 2008-06, gives examples of categories of “close and substantial connection” for the “.com.au” space, which include: a product that the registrant manufactures or sells; a service that the registrant provides; an event that the registrant organizes or sponsors; an activity that the registrant facilitates, teaches or trains; a venue that the registrant operates; or a profession that the registrant's employees practise.
The Respondent does not show that it complies with these allocation criteria in any way. The disputed domain name is not an exact match of the Respondent’s name nor is it an abbreviation or acronym of its name. The Respondent not having provided a Response, there is no evidence that the Respondent has any right to the disputed domain name due to a close and substantial connection to it, nor that the Respondent company is in any way connected with the disputed domain name.
In fact, in a letter to the Complainant, the Respondent specifically denied any connection, saying that it does not sell any products in Australia that are branded with the “Bathox” name. On March 1, 2008 Haresh Bhojwani, the managing director of the Respondent, wrote to Watermark, the patent and trademark attorneys then acting on behalf of the Complainant to advise that:
We deny that we are selling any products labelled "Bathox" in Australia, in fact, we do not sell any products labelled ‘Bathox’ in any part of the world, as such we cannot understand why you would think that we are misleading or passing of as “Bathox”.
There is also no evidence that the Respondent was making preparations for the bona fide use of the domain name in connection with any offering of goods or services. The disputed domain Name was registered by the Respondent in March 2008 and apparently in the four years since then, the Respondent has made no use of the disputed domain name. The records from NetRegistry indicate that the disputed domain name is a “parked domain” that has yet to be pointed to a website or online content.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(a)(iii) of the UDRP Policy requires the Complainant to establish that the Respondent both registered and used the disputed domain name in bad faith (the "conjunctive requirement"). For example, if the evidence showed that a disputed domain name had been registered in good faith, but later put to a bad faith use, the requirements of paragraph 4(a)(iii) of the UDRP Policy would not have been met, and the complaint would fail.
However, unlike the UDRP on which it is based, the auDRP does not require a complainant to prove both that the disputed domain name has been registered and used in bad faith. Proof of either limb is enough to satisfy the requirements of Schedule A, paragraph 4(a)(iii).
Any of the circumstances described at paragraph 4(b) of the Policy, if proved, will be evidence of bad faith registration and use. Paragraph 4(b) of Schedule A deems the following, non-exhaustively, to be evidence of registration or use in bad faith:
(vii) circumstances indicating that the domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, or
(viii) the domain name has been registered in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name, or
(ix) the domain name has been registered primarily for the purpose of disrupting the business or activities of another person; or
(x) the domain name has been used to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
As identified above, the disputed domain name is not currently being “used” in conjunction with a service offering as it is “parked”. However, the Complainant has raised a number of issues about “bad faith” registration of the disputed domain name by the Respondent.
The Complainant says that it wrote to the Respondent on February 28, 2008 in relation to the Respondent’s registration of the domain name <bathox.com> and clearly put it on notice of the Complainant’s rights with respect to its registered BATHOX trade mark. However, within days of receiving the Complainant’s letter regarding the registration of <bathox.com>, the Respondent proceeded to register the disputed domain name <bathox.com.au> for itself.
Further, according to the Complainant, the Respondent in return for providing the disputed domain name to the Complainant, has demanded a payment that would be in excess of the Respondent’s out-of-pocket expenses directly related to registering the disputed domain name. Writing to the Complainant’s solicitors in a letter of August 30, 2011 the Respondent solicited an offer from the Complainant to sell the disputed domain name. It wrote that: “if they were willing to make a 5 digit offer we would then consider on a commercial basis the sale of the domain name’s (sic)”. The Complainant took the reference to a “5 digit offer” to mean that the Respondent wanted a payment of tens of thousands of Australian dollars for the transfer of the domain names. The Panel is of the same view.
The Respondent’s registration of the disputed domain name shortly after it received notice of the Complainant’s claim, the Respondent’s lack of rights or legitimate interests to the domain name in connection with any business it carried on and its written solicitation to the Complainant for a significant payment in return for selling the name, leads inevitably to the conclusion that the Respondent’s registration of the Domain Name has been primarily to prevent the owner of the BATHOX trade mark from reflecting that name in the 2LD “.com.au” domain name space.
The Respondent’s bad faith is specifically targeted at both the Complainant and its BATHOX mark (see, Dreamstar Cash S.L. v Brad Klarkson, WIPO Case No. D2007-1943, citing The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743, and Christian Dior Couture v Paul Farley, WIPO Case No. D2008-0008).
Accordingly, the Panel finds that the Domain Name was registered in bad faith.
The Panel having found that the Complainant has made out each of the three elements required in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, it is the decision of the Panel that the disputed domain name <bathox.com.au> be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Dated: February 20, 2012