WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AW Faber-Castell (Aust) Pty Ltd. v. Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust

Case No. DAU2013-0018

1. The Parties

The Complainant is AW Faber-Castell (Aust) Pty Ltd. of New South Wales, Australia, represented by HWL Ebsworth Lawyers, Australia.

The Respondent is Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust of Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <fabercastell.com.au> is registered with MYOB Australia E1 Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2013. On June 12, 2013, the Center transmitted by email to MYOB Australia E1 Pty Ltd. a request for registrar verification in connection with the disputed domain name. On June 14, 2013, MYOB Australia E1 Pty Ltd. transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;

(d) the language of the registration agreement is English;

(e) the disputed domain name was registered subject to the .au Dispute Resolution Policy (the “Policy”) (the “Policy” or “auDRP”), and the auDRP applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of 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 June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2013.

The Center appointed Warwick A. Rothnie, John Swinson and Staniforth Ricketson as panelists in this matter on August 1, 2013. 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.

4. Factual Background

The Complainant is a subsidiary of Faber-Castell Aktiengesellschaft. The latter company controls the business of manufacturing and selling pens, pencils and other office supplies under the Faber-Castell name. The business has been in the Faber family since 1761, becoming Faber-Castell in 1900 when a member of the Faber family married a cadet of the Counts of Castell.

The business operates 14 factories and 20 sales units in various parts of the world, employing approximately 7,000 staff and selling Faber-Castell branded products in more than 100 countries.

Faber-Castell Aktiengesellschaft owns at least seven registered trade marks in Australia based on Faber-Castell. These include Trade Mark No. 450598 for FABER-CASTELL which has been registered since August 20, 1986 for a range of stationery products in International Class 16 including pens and pencils.

In addition to being a subsidiary of Faber-Castell Aktiengesellschaft, the Complainant has been the exclusive distributor in Australia of Faber-Castell products since 1965. It estimates it has an annual turnover in Australia of some AUD 22 million with an annual advertising expenditure between AUD 500,000 – 750,000.

The disputed domain name was registered on September 2 2011.

The Respondent operates a retail outlet in Melbourne where it sells pens and other stationery items including genuine Faber-Castell branded products.

It appears that the disputed domain name has never resolved to a website. At the time the Complaint was filed, the disputed domain name resolved to a generic page advertising the services of a domain name host.

5. Discussion and Findings

No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar, MYOB Australia E1 Pty Ltd). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

When a respondent has defaulted and in the absence of exceptional circumstances, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.

The Complainant has proven that its parent, Faber-Castell Aktiengesellschaft, owns the registered trade marks for, or based on, FABER-CASTELL referred to in section 4 above including Trade Mark No. 450598.

The Complainant is not itself the owner of those trade marks. However, it has provided a written statement from Faber-Castell Aktiengesellschaft confirming that the Complainant is an authorized user of the trade marks in Australia. Amongst other things, an authorized user of a registered trade mark has the ability to bring proceedings for infringement of that registered trade mark.¹ In these circumstances, therefore, the Panel finds that the Complainant has rights in the registered trade marks for FABER-CASTELL in Australia.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, Pty Ltd v. Global Domain Hosting Pty Ltd WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

The disputed domain name differs from Trade Mark No. 450598 only by the omission of the hyphen and the addition of the second level domain, “.com.au”.

The presence of the second level domain, “.com.au”, may be disregarded as a functional requirement of the domain name system: GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd WIPO Case No. DAU2002-0001.

The omission of the hyphen between “faber” and “castell” is, in this context at least, very minor. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trade marks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.

In the present case, the Complainant states that neither it nor its parent have authorized the Respondent to register or use the disputed domain name or any domain name containing the FABER-CASTELL trade marks. Apart from the Respondent’s sale of genuine Faber-Castell products from the Respondent’s store and website at “www.pencity.com.au”, there is no association between the Faber-Castell group and the Respondent. In addition, the disputed domain name is not the Respondent’s name nor derived from any name by which the Respondent appears to be known.

While the Complainant does admit that the Respondent sells genuine Faber-Castell products, so far as the Complainant has been able to ascertain, the Respondent has not used the disputed domain name in connection with the sale or offering for sale of those products. In correspondence with the Complainant’s lawyers before the proceeding commenced, the Respondent did claim that it had been using the disputed domain name in connection with the sale of Faber-Castell products for six or seven years. That period appears to be longer than the disputed domain name has itself been registered. Moreover, as noted above, the disputed domain name does not appear to have resolved to a website, other than a parking page for the domain name host, since its registration.

In these circumstances, the Panel finds that the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. In particular, bearing in mind that the Respondent does offer a wide range of pens and stationery products (not just Faber-Castell products) from its website at “www.pencity.com.au”, the Respondent has not sought to substantiate its claim that it has been using the disputed domain name in connection with Faber-Castell products (or any products) for six or seven years. Nor has the Respondent sought to argue (let alone satisfied the Panel) that it has encountered any special difficulties or delays in using the disputed domain name in connection with the bona fide use of the disputed domain name in connection with an offering of goods or services.

Accordingly, the Panel finds that the Complainant has established the Respondent has no rights or legitimate interests in the disputed domain name under this limb of the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the Uniform Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.

The Complainant advances a number of bases on which the Panel should find in its favour under this limb. The issue, however, can be dealt with quite succinctly.

Before the Complaint was filed, representatives of the Complainant contacted the Respondent on several occasions to request that it transfer the disputed domain name to it. The Respondent refused. In the course of one telephone conversation with the Complainant’s Premium and Corporate Business Manager (verified by a statutory declaration made by the employee in question), the Respondent’s principal asserted that it had been using the disputed domain name to promote the sale of Faber-Castell products for seven years and, in response to a request to transfer the disputed domain name to the Complainant, stated the Respondent would do so in return for a payment of AUD 45,000.

As already noted, however, it appears that the disputed domain name has been registered for just under two years contrary to the Respondent’s assertion and it does not appear to have been used in connection with any offering of goods or services by the Respondent.

An offer to transfer a domain name in return for payment greater, even much greater, than the out of pocket expenses in registering would not usually lead to a finding of bad faith under the Policy where the holder of the domain name had rights or legitimate interests in the domain name under the Policy. That, however, is not the present case. As noted above, the Panel has found on the record in this case that the Complainant has established that the Respondent does not have a right or legitimate interest in the disputed domain name. The offer for sale for a sum far in excess of the costs of registering the disputed domain name combined with the unexplained failure to use the disputed domain name for almost two years satisfies the requirements specified in paragraph 4(b)(i). That paragraph provides:

“b. Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

Alternatively, the Panel finds that the offer to sell the disputed domain name in the circumstances of this proceeding constitutes use in bad faith under the Policy.

Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy.

6. Decision

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 name <fabercastell.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Presiding Panelist

John Swinson
Panelist

Staniforth Ricketson
Panelist

Date: August 15, 2013

¹ Trade Marks Act 1990 (Cth) s 26(1).