WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pindan Pty Ltd v. Kre8 Brand Pty Ltd and Different Pty Ltd

Case No. DAU2013-0039

1. The Parties

The Complainant is Pindan Pty Ltd of Belmont, Australia, represented by Hotchkin Hanly Lawyers, Australia.

The Respondents are Kre8 Brand Pty Ltd and Different Pty Ltd of North Perth, Australia, represented by Galic & Co Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <switchhomes.com.au> (the “Disputed Domain Name”) is registered with PlanetDomain Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 29, 2013, the Center transmitted by email to PlanetDomain Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On December 4, 2013, PlanetDomain Pty Ltd 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 December 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2013. On December 30, 2013, the Respondent requested an extension of the Response due date. On January 3, 2014, the center extended the Response due date to January 8, 2014. The Response was filed with the Center on January 8, 2014.

On January 14, 2014, the Complainant emailed the Center, seeking permission to reply to the Response. On January 15, 2014, the Center informed the parties that it would be in the sole discretion of the Panel, once appointed, to determine whether to consider and/or admit any supplemental filing in rendering its decision. The Complainant filed a supplementary statement on January 30, 2014.

The Center appointed John Swinson as the sole panelist in this matter on January 27, 2014. 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.

The Panel, via a procedural order, requested that the Respondent make any comments regarding the content of the Complainant’s supplementary statement by February 7, 2014. The Respondent filed a supplementary statement on February 7, 2014.

4. Factual Background

The Complainant is Pindan Pty Ltd, an Australian company. The Complainant provides residential construction services using various business names.

The first Respondent is Kre8 Brand Pty Ltd (ACN 129 379 826), an Australian branding and marketing company, trading under the name Telos Brand. The Respondent submits that all of its assets have been transferred to the second Respondent, Different Pty Ltd (ACN 164 622 986). For the purposes of this decision, both Respondents will be referred to collectively as the “Respondent”.

The Disputed Domain Name was transferred to the Respondent on August 9, 2013. The Disputed Domain Name currently resolves to a holding page that states “SITE OFF-LINE Site under suspension”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Background Information

The Complainant outlines the following chronology:

- March 2009: the Complainant invites branding agencies to tender marketing proposals for a new home project division. The Respondent recommends “Switch Homes for Living” as the name for the new division. It wins the tender and is engaged as the Complainant’s branding and marketing consultant (there were no written terms of engagement).

- March 20, 2009: the Respondent engages Clarity Software Pty Ltd (“Clarity”) to register the Disputed Domain Name. This domain name is registered in Clarity’s name, however, the Respondent verbally represents to the Complainant that it will be transferred to the Complainant “at some point”.

- 2009-2013: the Respondent provides branding and marketing services for the Complainant. The renewal fees for the Disputed Domain Name are invoiced to and paid by the Complainant.

- May 14, 2013: the Complainant discusses marketing services with another company. The Respondent emails Clarity, requesting that the Disputed Domain Name be transferred to the Respondent.

- June 21, 2013: the Respondent requests transfer of Disputed Domain Name again.

- June 2013: the Complainant invites various marketing companies, including the Respondent, to pitch for a rebranding.

- July 9, 2013: a representative of the Respondent advises the Complainant that the Respondent disagrees with the rebranding and will not be pitching.

- July 11, 2013: the Respondent registers the business name “Switch Modular”.

- July 31, 2013: the Respondent requests transfer of the Disputed Domain Name again (this time for it to be transferred to Different Pty Ltd).

- August 9, 2013: the Disputed Domain Name is transferred to Different Pty Ltd.

- October 22, 2013: following an earlier discussion, the Respondent demands $150,000 for the Complainant’s cessation of the Respondent’s services.

- October 29, 2013: the Complainant sends a letter, demanding the transfer of the Disputed Domain Name and another domain name.

- October 31, 2013: the Respondent requests $150,000 for the domain names.

Identical or Confusingly Similar

The Complainant registered the business name “Switch Homes for Living” on May 13, 2009. The Complainant widely promoted and advertised its services during this time, resulting in the words “Switch Homes” and “Switch” being recognized and associated with the Complainant. The Complainant has developed common law trade mark rights over “Switch” and “Switch Homes”.

The Disputed Domain Name is confusingly similar to the Complainant’s registered “Switch Homes for Living” business name and common law trade marks “Switch” and “Switch Homes”.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- it has not used or made preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services;

- it has never been commonly known by the Disputed Domain Name (it carries out its business activities under the name “Telos Brand”);

- it has no trade mark applications or registrations for or relating to the Disputed Domain Name; and

- the Complainant has not authorized the Respondent to use the “Switch Homes” trade mark or to register the Disputed Domain Name.

Registered or Subsequently Used in Bad Faith

The Disputed Domain Name was registered for the purpose of selling, renting or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. This is supported by:

- the Respondent’s request for $150,000 in exchange for the transfer of the Disputed Domain Name and another domain name;

- the Respondent’s knowledge of the Complainant’s reputation, including the brand name “Switch Homes”; and

- the Respondent’s passive holding of the Disputed Domain Name.

B. Respondent

The Respondent makes the following submissions.

Background Information

The Respondent outlines the following chronology:

- January 2009: the Complainant approaches the Respondent to build a brand for its new residential homes division. The Respondent created a brand name including the name “Switch Homes For Living” and a full design supporting the complete look. There was no contract for the work and all copyright for the work remains with the Respondent.

- May 13, 2009: the Respondent registers the business name “Switch Homes For Living”.

- June 1, 2009: the Respondent transferred the above business name to the Complainant.

- May 2009: the Respondent instructs Clarity to register the Disputed Domain Name on behalf of the Respondent.

- June 2009: the Complainant proposes that the Respondent work exclusively for the Complainant for $25,000 a month (payment would be built into the future budget). A Partnership Agreement and Understanding was formed (the Respondent’s services were 25% of the annual advertising budget). The Respondent created, produced and coordinated all brand material for the “Switch Homes for Living” brand (including the website).

- March 2013: a representative of the Complainant promotes his views regarding changing the Switch branding and promoting the company as a high-end builder. The Respondent advised him against this.

- May 2013-June 2013: the Respondent is instructed to, and does, redesign the branding. The Respondent presents the redesign to a representative of the Complainant.

- June 4, 2013: the Complainant advises that it has appointed another company as its in-house marketing department.

- June 2013: the Respondent confronts the Complainant regarding the redesign brief. The Respondent receives a copy of the brief on June 27, 2013.

- July 9, 2013: the Respondent declines to submit to the brief.

- July 11, 2013: the Respondent registers Switch Modular as a business name.

- July 2013: the Respondent transfers its assets to Different Pty Ltd.

- August 9, 2013: Clarity transfers the Disputed Domain Name to Different Pty Ltd.

Identical or Confusingly Similar

The Complainant did not formally trade as “Switch Homes” or “Switch Homes for Living” until October 18, 2013. The ABN belongs to the Chamois Unit Trust.

Rights or Legitimate Interests

The Respondent submits that the three circumstances outlined in paragraph 4(c) of the Policy apply to demonstrate its rights or legitimate interests in the Disputed Domain Name.

Registered or Subsequently Used in Bad Faith

The Respondent submits that none of the indicators of bad faith outlined at paragraph 4(b) of the Policy are present.

6. Discussion and Findings

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 Name is 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 Name; and

(iii) the Disputed Domain Name has 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 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in certain instances when deciding this case.

A. Procedural Matters

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(d) 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 Complainant’s supplementary statement identified that the Kre8 Brand Pty Ltd and Different Pty Ltd were separate legal entities. This was contrary to the Respondent’s submissions, which stated that Kre8 Brand Pty Ltd had changed its name to Different Pty Ltd. In its supplementary statement, the Respondent clarified that there had not been a name change, but rather a transfer of assets.

The Panel accepts the parties’ supplementary statements to the extent that they clarify the proper Respondent to the proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.

The Panel is satisfied that the Complainant is the holder of the “Switch Homes for Living” and “Switch Homes” business names. (The Complainant states that the Complainant is the Trustee for Chamois Unit Trust. There is no reason not to believe the Complainant on this point, and the documents provided by the Complainant are consistent with this.)¹

Second level domains, such as “.com.au”, may be disregarded for the purposes of determining identity or confusing similarity under the Policy. The Panel finds that the Disputed Domain Name is identical to the Complainant’s “Switch Homes” business name and confusingly similar to the Complainant’s “Switch Homes for Living” business name.

Accordingly, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

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 Name.

Paragraph 4(c) of the Policy lists (non-exhaustively) three circumstances that can demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to the Respondent of the subject matter of the dispute, the Respondent’s bona fide use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.

The chronologies provided by both parties, whilst somewhat inconsistent, demonstrate that there was a business relationship between the parties. The Respondent was providing the Complainant with branding and marketing services. Both chronologies reveal that the Respondent advised the Complainant that it would not be pitching for the rebrand on July 9, 2013. It is appears that this was the date that the business relationship between the parties ended.

The transfer of a domain name amounts to a new registration (see paragraph 3.7 of the WIPO Overview 2.0). The Disputed Domain Name was acquired by the second Respondent on August 9, 2013, as stated above in Section 4. Therefore, the Disputed Domain Name was registered to the Respondent after the business relationship between the parties had ended.

The Panel finds that the Complainant has made out a prima facie case for the following reasons:

- there is no indication in the record that the Respondent has been commonly known by the Disputed Domain Name. Although it provided branding and marketing services for the Complainant, it has never been known by “Switch” or “Switch Homes” itself; and

- the Disputed Domain Name is not in use (it is simply a holding page). This is not a legitimate noncommercial or fair use of the Disputed Domain Name, nor does it constitute a bona fide offering of goods or services.

The Respondent submitted that all three circumstances under the Policy (outlined above) apply to demonstrate its rights or legitimate interests in the Disputed Domain Name. However, it provided no evidence to support this submission (or to rebut the Complainant’s prime facie case). Merely repeating the words of the Policy in a Response is not sufficient to overcome the Complainant’s prime facie case on the second element of the Policy.

In light of the above, the Respondent has failed to demonstrate rights or legitimate interests in the Disputed Domain Name.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.

As stated above, the transfer of a domain name amounts to a new registration. Accordingly, the relevant registration date is August 9, 2013.

The Disputed Domain Name is not being actively used. It resolves to a holding page which states that the site is under suspension. Passive holding does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, affirmed in subsequent cases such as Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 and Atlas Copco Aktiebolag v. MKC Supply Inc, WIPO Case No. D2011-1844). In order to determine whether the Respondent’s passive holding of the Disputed Domain Name can be considered registration or use in bad faith, all the circumstances of the present case must be taken into account.

In light of the parties’ prior business dealings, the Respondent clearly knew of the Complainant when it registered the Disputed Domain Name. There is email correspondence included in the case file from Clarity Software Pty Ltd to the Complainant that states that the Disputed Domain Name was registered on behalf of the Complainant. The Complainant provided copies of the invoices it received from Clarity for the registration and renewal fees associated with the Disputed Domain Name. The Complainant also provided a copy of a statutory declaration from the director of Clarity, which outlines his understanding that Clarity was holding the Disputed Domain Name on behalf of the Complainant.

As discussed above, it is hard to determine exactly when the business relationship between the parties came to an end. It appears that it was around July 9, 2013 (when the Respondent declined to pitch for the rebrand). When the business relationship ended, the Respondent was no longer affiliated with the Complainant and its brand. It had no legitimate reason to register a domain name substantially similar to the Complainant’s “Switch Homes for Living” business name. (It is noted that the Complainant had not yet registered “Switch Homes” as a business name on the date the Disputed Domain Name was registered.)

The Panel infers from the parties’ submissions that the Respondent will not be providing the Complainant with branding and marketing services in the future. As such, it appears to the Panel that the Respondent registered the Disputed Domain Name to either prevent the Complainant from reflecting its business name “Switch Homes for Living” in a corresponding domain name and/or to disrupt the Complainant’s business activities.

Furthermore, the Panel refers to the Complainant’s submission that the Respondent requested $150,000 for the transfer of the Disputed Domain Name and another domain name, and that this is evidence of bad faith. The Panel has reviewed the relevant correspondence and is of the view that the Respondent’s request is linked to fees that it believes that it is owed.

However, as was observed in Bank of Alabama v. Sumith Rodrigo & Co., WIPO Case No. D2004-0912 (December 16, 2004), “a registrant cannot use a domain name to ‘leverage’ a settlement of a dispute he has with the owner of marks to which the domain name is confusingly similar.” See also Red Frog Events, LLC v. Maximum Adventure Pty Ltd., WIPO Case No. DAU2012-0002. One may draw the conclusion that the Respondent was using the Disputed Domain Name as leverage to obtain the $150,000 payment from the Complainant. This is bad faith use of the Disputed Domain Name by the Respondent.

Accordingly, the Panel finds that the third element of the Policy is made out.

7. 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, <switchhomes.com.au>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: February 17, 2014

¹ As stated in the Decision DAU2013-0038, the Panel undertook independent research and found that the place for service and the principal place of business of the Trustee for Chamois Unit Trust (the “Trustee”) and the Complainant are the same. Therefore, the Panel infers that the Trustee and the Complainant are one and the same, and the Complainant owns the business name for “Switch Homes”.