The Complainant is FragranceX.com, Inc. of Hauppauge, New York, United States of America (“USA”), represented by UDRPro, LLC, USA.
The Respondent is Admin Manager, Gee Media Pty. Ltd of Ashgrove, Queensland, Australia.
The disputed domain name <fragrancex.com.au> is registered with Enetica.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2015. On February 11, 2015, the Center transmitted by email to Enetica a request for registrar verification in connection with the disputed domain name. On February 18, 2015, Enetica 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 February 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2015. The Center received an informal Response on March 4, 2015. The Complainant filed a supplemental filing on March 9, 2015.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 16, 2015. 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 Complainant is a global online retailer of perfumes, fragrances and other cosmetics. According to the Complaint, it has annual revenues in excess of USD 40 million and ships its sales to 240 different countries. The Complaint also states that the Complainant’s website, “www.fragrancex.com”, has over 600,000 unique visitors each month. It is not clear from the Complaint what period these figures relate to.
The Complainant does have, however, a trade mark registered in the USA, No. 3,365,121, registered on January 8, 2008. This trade mark is for FRAGRANCEX.COM in International Class 35 for the online retailing of fragrances and other cosmetics. It claims a first use in commerce in 2000. The Complaint also states that the Complainant’s website had over 500,000 unique visitors from Australia in 2014 alone.
The Respondent registered the disputed domain name on November 30, 2009. According to the Response, the Respondent bought the disputed domain name to create a website platform that would allow users of the site to exchange and sell fragrances in the Australian market.
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.
Before proceeding to the substance of the dispute, the Panel needs to rule on the admissibility of the Complainant’s supplemental filing.
Paragraph 12 of the Rules empowers the Panel of its own motion to request further statements or documents from the parties. The Policy does not otherwise contemplate further documents in the proceeding apart from the Complaint and the Response.
Paragraph 10 of the Rules, however, gives the Panel a wide discretion relating to procedural matters subject to an overriding requirement to ensure that parties are treated equally and given a fair opportunity to present their respective cases. Consistently with the objective of providing an efficient and effective online dispute resolution mechanism, paragraph 10(c) directs the Panel to ensure that the proceeding takes place with due expedition. Subject to the overriding obligations mentioned, paragraph 10(d) empowers the Panel to determine the admissibility, relevance materiality and weight of the evidence.
For the most part, the Complainant’s supplemental filing seeks to address matters raised in the Response which, arguably, could not reasonably have been anticipated. The Panel admits the supplemental filing in the record for this proceeding. The Panel further notes that the Respondent had a chance to reply to the supplemental filing within the Response due date, but chose not to do so. See auDRP Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview 1.0”), paragraph 4.2.
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 it owns the registered trade mark for FRAGRANCEX.COM referred to in section 4 above.
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 mark: see for example, GlobalCenter 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 is simply the Complainant’s trade mark with the country code Top-Level Domain appended. According to usual practice under the Policy, this difference can be disregarded. In any event, the disputed domain name is confusingly similar to the Complainant’s trade mark as the distinctive element of both the Complainant’s trade mark and the disputed domain name is the term “fragrancex”.
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 subject matter of the dispute, your bona fide use of, or demonstrable preparations 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 that you have acquired for the purpose of selling, renting or otherwise transferring); 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 non-commercial 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 proving 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.
It is plain from both the Complaint and the Response that the Respondent is not licensed or approved to use the disputed domain name by the Complainant. Nor is the Respondent otherwise associated with the Complainant. The Complainant contends that the use of the disputed domain name to redirect to the website of one of its direct competitors is not a good faith offer of goods or services under the Policy. In these circumstances, the Complainant has established the required prima facie case.
The Respondent says it registered the disputed domain name without any knowledge of the Complainant. In addition, it says it chose the combination “fragrance + x” where “x” is short for exchange. According to the Respondent, each of these elements could be registered separately. The Respondent points out that the Complainant does not have an Australian trade mark registration or even a pending application. According to the Respondent, the Complainant has been “US based” up until now and is now seeking to expand into the Australian market. The Respondent then invokes its successful registration of the disputed domain name in accordance with auDA’s policies as justification for its registration.
As the Complainant points out, it is not required to have a trade mark registered in Australia for it to have jurisdiction to bring the Complaint; the Complainant may rely on its trade mark registered in the USA. That is not a complete answer, however, as the question at this stage of the inquiry is what rights or legitimate interests, if any, that the Respondent has in the disputed domain name.
The basis on which the Respondent complied with auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs is not clear to the Panel from the Response. Plainly, the disputed domain name is not derived from the Respondent’s own name. In any event, a successful registration of a domain name is not a guarantee of title. If it were, there would be no role for the Policy. Rather, when registering the disputed domain name, the Respondent warranted that it had rights to the disputed domain name and its use would not infringe the rights of others. Thus, the registration of the disputed domain name is subject to the accuracy of that warranty and it is precisely that issue which is in question in a proceeding under the Policy.
As paragraph 2.2 of the auDA auDRP Overview 1.0 illustrates, the question whether or not a registrant has rights or legitimate interests in a domain name consisting of one or more generic or descriptive terms involves a rather more sophisticated and nuanced inquiry than a simple finding that the domain name consists of such elements.
In the present case, the Panel has more than a degree of skepticism about the Respondent’s claim that the disputed domain name was registered for its descriptive meaning. First, accepting that each element, “fragrance” and “x”, individually is not in itself distinctive, it does not automatically follow that the combination is also descriptive. It is possible that “x” might be thought of as some sort of shorthand for “exchange”, but the Panel is very doubtful that a significant proportion of Internet users would make that connection, even less so at the time when the disputed domain name was registered in 2009.
The Complainant points out that the disputed domain name was registered over one year after the Complainant’s trade mark was registered in the USA. One might wonder why it necessarily follows that someone in Australia, where the Respondent is based, would know this. The scale of the revenues and website “visits” noted above are certainly impressive and could provide an inference, even a very strong, inference, that the Respondent would have been aware of the Complainant and its trade mark when the Respondent registered the disputed domain name. As noted above, however, the Complainant has not provided any information about the time period these figures relate to (other than the very impressive number of website visits from Australia in 2014 – some five years after the disputed domain name was registered) and, in particular, the Complaint does not identify what it’s brand reputation was in 2009.
In its supplemental filing, the Complainant states that it has been selling goods to customers in Australia since 2006. That could be a sufficient basis to defeat the Respondent’s claim. For example, Australian courts have held that the owner of a trade mark in Australia is the first person in time to apply to register the trade mark or to use it as a trade mark for the relevant goods or services, whichever comes earlier. The fact that someone uses or has registered a trade mark overseas is not in itself disentitling, however, historically Courts have “frowned on such borrowings.” See e.g. Malibu Boats West Inc v. Catanese (2000) 51 IPR 134.1 Accordingly, such use could preclude the Respondent’s claim to an entitlement to use the disputed domain name in Australia. Just as auDRP panels do not accept bare assertions of rights or entitlement from respondents, so complainants also must provide some objective evidence to substantiate their claims. In the present case, neither the Complaint nor the supplemental filing provides any material corroborating the claimed use in Australia.
In the end, however, the Panel concludes that is not fatal to the Complaint in this case. In this case, Annex 10 to the Complaint is a print out of the website to which the disputed domain name resolved just before the Complaint was filed. This is to the website of “www.strawberrynet.com”. The printout of this website proclaims that it offers free worldwide shipping. A banner at the top of the printout shows that prices are given in “$ USD” and identifies the relevant location as the USA although there appears to be a drop down menu to change country.
At the time of preparing this decision, the disputed domain name does not appear to resolve to an active website any more. When the Panel entered <strawberrynet.com> in a web browser, the corresponding banner stated “$ AUD” and “Australia” although an option to change country was provided. The banner also repeated the statement offering Free Worldwide Shipping.
In these circumstances, it is plain that the homepage shown to the browser likely depends on the country the browser may be located in. For present purposes, however, it is plain that the website is not targeted specifically to Australians, but is seeking customers from essentially anywhere in the world. In these circumstances, the disputed domain name is being used to redirect potential customers of the Complainant to the website of one of its competitors and that would appear to infringe the Complainant’s trade mark in the USA at least whenever the Internet browser is located in the USA. It has long been established that such use of the Complainant’s trade mark in the disputed domain name does not constitute use in good faith under the Policy: see e.g. Ticketmaster Corporation vs. DiscoverNet, Inc., WIPO Case No. D2001-0252. While that case was decided under the UDRP, the principle is equally applicable under the Policy. See e.g. Adultshop.com Pty Ltd v. Josh Marsden, Importa Pty Ltd, WIPO Case No. DAU2015-0002.
Accordingly, the Respondent has not rebutted the prima facie case established by the Complainant and the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
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 Panel has found in section 5B above that the Respondent has been using the disputed domain name in bad faith under the Policy. Accordingly, the second of the two alternatives has been 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 name <fragrancex.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: March 30, 2015
1 That position may be affected by the introduction into the Trade Marks Act 1995 of s 62A, which provides a ground of opposition (and hence revocation) where an application has been made in bad faith.