The Complainant is Terra Plana International Ltd. of London, United Kingdom of Great Britain and Northern Ireland, represented by Bleyer Lawyers Pty Ltd, Australia.
The Respondent is The Summer House Australia Pty Ltd / Tanya Greenwood of New South Wales, Australia, represented by Omond & Co, Australia.
The disputed domain names <vivobarefoot.com.au> and <vivobarefootaustralia.com.au> (the “Disputed Domain Names”) are registered with VentralP Group (Australia) Pty Ltd dba Trading as VentralP Wholesale (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2012. On October 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 5, 2012, 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 .au Dispute Resolution Policy (the “Policy”), 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 October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. The Response was filed with the Center on October 29, 2012.
The Center appointed John Swinson as the sole panelist in this matter on November 8, 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.
On November 19, 2012, the Complainant filed a Reply with the Center.
The Complainant is Terra Plana International Ltd., a British company which is a manufacturer and wholesaler of, among other things, shoes carrying the brand name “VIVOBAREFOOT”.
The Complainant owns the following trade marks for “VIVOBAREFOOT”:
- Australian Registration No. 1214803 in class 25, registered December 12, 2007; and
- Australian Registration No. 1433836 (International Registration No. 1079767) on classes 18, 25 and 41, registered May 18, 2011.
(together, the “Trade Marks”).
The Respondent is The Summer House Australia Pty Ltd, an Australian proprietary company which carries out its business in New South Wales, Australia. The Respondent is owned by Tanya Greenwood.
According to the Respondent, the Respondent registered the Disputed Domain Names with the Registrar as follows (although the parties are not in agreement as to these dates):
- <vivobarefoot.com.au> (the “First Domain Name”) on January 24, 2010; and
- <vivobarefootaustralia.com.au> (the “Second Domain Name”) on November 4, 2011.
The Complainant makes the following submissions.
Chronology of Events
The Complainant outlines the following chronology:
- 2009: the Respondent began purchasing shoes from the Complainant for sale in Australia (in store and online).
- July/August 2011: the Complainant appointed Sole Distribution Pty Ltd (“Sole”) to be its exclusive distributor in Australia. The Complainant informed the Respondent of this arrangement and told her that future orders were to be placed directly with Sole.
- October 2011: the Respondent refused to enter a commercial relationship with Sole.
- November 2011: the Respondent registered the Disputed Domain Names.
- December 21, 2011: the Complainant requested the Respondent cease providing an online retail service with the name “VIVOBAREFOOT”, cease using the Disputed Domain Names and transfer the Disputed Domain Names to the Complainant. The Complainant offered to include a link on its website to the Respondent’s online store.
- Unknown dates: the Respondent created a new website and directed the Second Domain Name to that website. The Respondent ceased using the First Domain Name to be directed to a website.
- March 2 and August 6, 2012: the Complainant requested transfer of the Disputed Domain Names.
Identical or Confusingly Similar
The Disputed Domain Names are identical to the Trade Marks.
Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the Trade Marks. The only entity authorized to use the Trade Marks in Australia is Sole. The Respondent is not commonly known by the Disputed Domain Names.
The Respondent has never had a bona fide right to use the Disputed Domain Names. Alternatively, if the Respondent did have a bona fide right to use the Disputed Domain Names, any use ceased to be bona fide on:
- December 21, 2011: when the Complainant requested the Respondent cease providing an online retail service with the name “VIVOBAREFOOT”, cease using the Disputed Domain Names and transfer the Disputed Domain Names to the Complainant; or
- August 2011: when the Complainant told the Respondent that the Respondent no longer had a direct commercial relationship with the Complainant; or
- October 2011: when the Respondent refused to enter into a commercial relationship with Sole.
Registered or Subsequently Used in Bad Faith
The Respondent knew that the Complainant was the owner Trade Marks at the time it registered the Disputed Domain Names and never sought permission for that use of the Trade Marks. Alternatively, if the Disputed Domain Names were not registered in bad faith, their subsequent use became use in bad faith at the times outlined above in relation to bona fide use.
As the Respondent no longer uses the First Domain Name and directs traffic from the Second Domain Name to its new website, its retention of the Disputed Domain Names appears intended to prevent the Complainant and its exclusive distributors from using the Disputed Domain Names and to disrupt their business in Australia. In respect of the Second Domain Name, it is being used for commercial gain, to attract Internet users to the Respondent’s website by creating the impression that the Trade Marks are associated with the Respondent's online retail service.
The Respondent makes the following submissions.
Chronology of Events
The Respondent outlines the following chronology:
- 2009: the Respondent began selling two brands of the Complainant’s shoes, “VIVOBAREFOOT” and “Terra Plana”. The Complainant never objected to the Respondent’s use of the “TERRAPLANA” trade mark.
- January 24, 2010: the Respondent registered the First Domain Name (the Complainant incorrectly stated that both of the Disputed Domain Names were registered in November 2011).
- June 2011: the Complainant requested that the Respondent separate the two brands. The Respondent established separate websites for the two brands.
- November 2011: the Complainant indicated that it was discontinuing the production of “Terra Plana” products, the Respondent informed the Complainant of what it had done to promote the brand and the Complainant advised of the new arrangement involving Sole (the Complainant incorrectly stated that the arrangement with Sole began in July 2011).
- December 2011: the Respondent continued to place orders with, and receive marketing material from, the Complainant. Sole represented that it would continue dealing with the Respondent.
The Complainant made a variety of demands regarding the First Domain Name. The Respondent was prepared to assign the name, provided its interests were protected.
The Complainant advised the Respondent that it should register an alternative domain name containing “barefoot”. As a result, the Respondent registered the Second Domain Name on November 4, 2011.
The Respondent asked its web developer to redirect the First Domain Name to the Complainant’s website at <vivobarefoot.com>. However, the Complainant failed to do what it had promised (for example, it did not state the details of the Respondent as a retailer of its goods), so the Respondent removed the redirection and took the First Domain Name offline.
The Respondent redesigned and rebranded its business due to the Complainant’s ongoing legal threats.
It registered the domain name <106alexander.com.au>, made the First Domain Name unreachable and created a manual redirect for the Second Domain Name. This rebranding came at a substantial cost to the Respondent.
Identical or Confusingly Similar
The Respondent agrees that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Rights or Legitimate Interests
Before the Respondent received any notice of the dispute, there is evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. This evidence is as follows:
- the Respondent was actually offering the “VIVOBAREFOOT” products at issue;
- the Respondent used the websites at the Disputed Domain Names to sell only “VIVOBAREFOOT” branded products, it was not using the Trade Marks to mislead Internet users, or to sell competing products;
- the Respondent’s website accurately disclosed the Respondent’s relationship with Complainant;
- the Respondent has not attempted to “corner the market in all domain names”. It only registered the Second Domain Name because it proposed assigning the First Domain Name to the Complainant, and because the Complainant suggested that it register a different domain name.
Registered or Subsequently Used in Bad Faith
The Respondent refutes the allegations that it has either registered or used the Disputed Domain Names in bad faith. None of the indicators of bad faith under paragraph 4(b) of the Policy are present.
The Respondent’s prior knowledge of the Complainant’s ownership of the Trade Marks does not constitute registration in bad faith. The alleged termination of the business relationship between the parties does not mean the Respondent’s subsequent use of the Disputed Domain Names has been in bad faith.
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 name, trademark 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 Names; and
(iii) the Disputed Domain Names have been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. Therefore, the Panel finds it appropriate to refer to UDRP precedent when deciding this case.
The Policy contemplates a “speedier” resolution of domain name disputes. Accordingly, the Policy and the Rules only contemplate the filing of a complaint and a response, with strict time limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a Panel. Paragraph 10(b) of the Rules gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, Panels will only accept supplementary filings in exceptional circumstances.
The supplementary submissions that have been provided by the Complainant offer rebuttal arguments on several issues, but do not address the key elements of the Policy that need to be satisfied, or offer evidence that was previously unavailable. Accordingly, the Panel declines to accept the supplementary submissions as part of the record in this proceeding.
The Disputed Domain Names are identical or confusingly similar to the Trade Marks in which the Complainant has rights.
The Respondent does not contest this point.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The question here is whether before any notice to the Respondent of the subject matter of the dispute, it was making bona fide use of, or demonstrable preparations to use, the Disputed Domain Names in connection with an offering of goods or services (paragraph 4(c)(i)) of the Policy).
The test for bone fide in this context was outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The “minimum” requirements are:
“- Respondent must actually be offering the goods or services at issue. E.g. World Wrestling Federation Entertainment, Inc. v.Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- 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. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- 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. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- 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. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”
Applying these “minimum” requirements here:
- There is no dispute that the Respondent was an authorized retailer of the Complainant’s “VIVOBAREFOOT” products. It began selling those products in 2009. The Panel has been provided with comprehensive correspondence regarding the breakdown of the parties’ distribution arrangements. While the exact date is difficult to determine, the Panel is of the view that there is no longer a business relationship between the parties. As the Respondent has refused to sign Sole’s required terms and conditions, and Sole is the Complainant’s only Australian distributor, it is fair to assume that the Respondent will not be selling the Complainant’s products in the future, and will not have rights or interests in the Disputed Domain Names (see, for example, Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877; and SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, WIPO Case No. D2009-0308). However, as the Respondent currently still has some of the Complainant’s products in stock, technically, it is “actually offering the goods or services at issue”.
- The Respondent does not use the websites to “sell only the trademarked goods”. The website at the First Domain Name is not used at all. It is being “passively held”, as such is not being used in connection with any bona fide offering of goods or services. The Second Domain Name redirects to a website which sells the Complainant’s products, but also advertises “handcut” clothing products.
- As far as the Panel can determine, the Respondent does not disclose its relationship with the Complainant anywhere on either of the websites associated with the Dispute Domain Names. In fact, the website that the Second Domain Name manually redirects to appears to be the Complainant’s official site. For example, the “About Us” section of the website does not describe the Respondent at all, it describes the Complainant and its “VIVOBAREFOOT” products.
- The Respondent has not attempted to “corner the market”. The Panel accepts the Respondent’s submission that it only registered the Second Domain Name at the instruction of the Complainant.
In light of the above, the Panel concludes that the Respondent has not made out the Oki Data factors, and so the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Names have been registered or subsequently used in bad faith.
The Panel finds that the registrations of the Disputed Domain Names were not in bad faith. While the facts are unclear, it appears that the Respondent acted upon the inferred consent of the Complainant in registering the First Domain Name and the instructions of the Complainant in registering the Second Domain Name.
Therefore, the question is whether the Respondent’s subsequent use of the Disputed Domain Names has been in bad faith.
As stated above, it is difficult to determine the exact date that the business arrangement between the parties was terminated. Possibly, it ended on June 12, 2012, when the Respondent refused to sign Sole’s terms and conditions. When the arrangement with the Complainant ended, the Respondent should have been well aware that it had no lawful entitlement or license to use the Complainant’s Trade Marks (in a domain name or otherwise). The Respondent’s continued use of the Dispute Domain Names after the termination of the business arrangement of the parties has therefore been in bad faith (see, for example, SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, WIPO Case No. D2009-0308).
As both parties’ submissions indicate that the Respondent will not be selling the Complainant’s goods in the future (once its current stock is exhausted), it appears that the Respondent’s is retaining the Disputed Domain Names to prevent the Complainant from using them in Australia and to disrupt the Complainant’s (and Sole’s) business activities (see, for example, US Bank National Association as trustees for the First Alert Trust v. Master Distributors Unit Trust, Bradley Green, WIPO Case No. DAU2011-0031).
Accordingly, the Panel finds that the third element of the Policy is made out.
For all 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, <vivobarefoot.com.au> and <vivobarefootaustralia.com.au>, be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: November 22, 2012