The Complainant is Tom Stoddart Pty Ltd. of Sunnybank, Australia, represented by Corrs Chambers Westgarth, Australia.
The Respondent is Roband Australia Pty Ltd (formerly known as Woodson (Australia) Pty Limited), of Dee Why, Australia.
The disputed domain name <woodson.com.au> (the “Disputed Domain Name”) is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2015. On March 27, 2015, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the Disputed Domain Name. On March 30, 2015, Melbourne IT 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” 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 April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2015.
The Center appointed William P. Knight as the sole panelist in this matter on May 8, 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 manufactures kitchen products and fittings for distribution in Australia. The Complainant enjoys a substantial reputation in the word “Woodson” in respect of worktop food service equipment in the Australian marketplace. In addition, the Complainant owns three Australian trade mark registrations comprising the word “WOODSON”. The registrations claim goods in classes 7 or 11, namely “electrical toasters, pressure grillers, hot plates, waffle cookers, milkshake mixers, juice extractors, Bain Marie pie warmers and deep fryers”. The earliest priority date is September 15, 1954. The registrations are being used, and have been extensively used, in respect of professional food service equipment in Australia. The Complainant was assigned the Registrations and the goodwill associated with the WOODSON business by the Wood family in 2002.
The Respondent manufactures worktop food service equipment for distribution in Australia. The Respondent, formerly known as Woodson (Australia) Pty Limited but changing its name to its current name in 1999, is the registrant of the Disputed Domain Name <woodson.com.au>, and has been the registrant since at least September 3, 2004 (according to the WhoIs historical record). The Respondent is also the registrant of the domain name <roband.com.au>. The website at “www.roband.com.au” promotes the Respondent’s products under the trade mark ROBAND. The Disputed Domain Name was redirected to the website at “www.roband.com.au” until the Complainant notified the Respondent of the domain name dispute in December 2014. The ROBAND business is effectively owned and operated by the Carson family.
The Complainant has certified that the information contained in the Complaint is complete to the best of its knowledge. However, the information contained in paragraph 63 of the Complaint, namely that “there is no agreement, association or relationship between the Complainant and the Respondent”, appears to be incomplete. In an unreported decision of Santow J in the Supreme Court of New South Wales (Equity Division) in 1996, his Honour observed that “the Carson and Wood families have had a long and evolving business association from 1955, manufacturing and selling a range of industrial kitchen appliances and equipment” (Woodson (Sales) Pty Ltd v Woodson (Australia) Pty Ltd (1996) 7 BPR 14,685).
The Complainant relies upon its trade mark registrations and its substantial trading reputation in the word “Woodson” to assert rights in the trade mark WOODSON. The Complainant submits the Disputed Domain Name is identical to this trade mark.
The Complainant certifies that the Respondent is not authorized to use the trade marks of the Complainant, including the Disputed Domain Name, and is in fact a trade competitor. The Complainant submits that the Respondent is unable to claim any use or registration of the word “Woodson” or similar which could give the Respondent a right or legitimate interest in the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name has been used in bad faith to redirect consumers or potential consumers of WOODSON products to the competing ROBAND products promoted on the website at “www.roband.com.au”, and continues to be used in bad faith to prevent the Complainant from using the Disputed Domain Name to promote WOODSON products.
Based on the foregoing, the transfer of the Disputed Domain Name to the Complainant is requested.
The Respondent has failed to respond to the Complaint. Prior to the commencement of this proceeding, the Respondent stated in communications with the Complainant that it had ceased using the Disputed Domain Name but did not agree to its transfer. The Respondent also alleged in these communications that it was in the process of using the Disputed Domain Name for its property portfolio website, and that it had rights to the Disputed Domain Name arising from its ownership of companies whose names include the word “Woodson”.
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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel accepts the Complainant’s submissions in respect of the first auDRP element. The Complainant owns registered WOODSON trademarks and the Disputed Domain Name is identical to this mark. Therefore satisfied that the first auDRP element is established.
The Respondent has alleged in correspondence with the Complainant prior to the commencement of the current proceeding that, since the Respondent owns company names containing the word “Woodson”, namely Woodson Pty Ltd and Woodson (Australia) Pty Ltd, the second auDRP element is not established.
The company Woodson Pty Ltd was registered in 1948, and its name has not changed since at least January 21, 1991. The company Woodson (Australia) Pty Ltd was registered in 1986, however the company name changed to Roband Australia Pty Limited on June 22, 1999. This company is the Respondent. The Carson family is also involved in the Respondent.
The Complainant’s response to this allegation is that the Respondent’s name is not “Woodson” and that the Respondent does not, in fact, own company names including the name “Woodson”. The Complainant supports this response with evidence that the shareholders of Woodson Pty Ltd and Woodson (Australia) Pty Limited are Laurie Florence Carson and the Carson Family Trust No. 2. The Complainant’s argument is that, since the Respondent, Roband Australia Pty Limited, is not a shareholder of these companies, it does not own the company names.
In the Panel’s view, this argument depends on an overly narrow view of company ownership. There is no doubt that the Carson family is involved in the Respondent, Woodson Pty Ltd and Woodson (Australia) Pty Limited. It is therefore reasonable to assume that any right or legitimate interest arising from the registration of Woodson Pty Ltd and Woodson (Australia) Pty Limited enures to the benefit of the Respondent.
Notwithstanding, the Respondent has failed to submit any form of Response to the Complaint whereby it may have established a right or legitimate interest arising from these company registrations in the use of the Disputed Domain Name. In particular, there is no evidence before the Panel that the Respondent is actively trading under these company names or using the name “Woodson” in any way whatsoever. Indeed, to do so in respect of the goods that are the subject of the Complainant’s registered trade marks, which appears to be the continuing business of the Respondent, would be an infringement of the Complainant’s exclusive rights under the Trade Marks Act 1995 (Cth) in the Complainants marks registered under that Act.
There is no evidence of any other use or registration of the word “Woodson” by the Respondent. In particular, there is no evidence that the Disputed Domain Name has been used other than to redirect Internet traffic to the Complainant’s competitor’s website and to prevent use of the Disputed Domain Name by the Complainant. Accordingly, the Panel is satisfied that the Complainant has established the second auDRP element.
It is unclear if the Disputed Domain Name was registered or transferred to the Respondent in bad faith. It is entirely possible that, at the registration or transfer date, the Carson family continued to be legitimately involved in the Woodson business.
However, the subsequent use of the Disputed Domain Name to redirect Internet traffic to competing products, however, is clearly in bad faith (see Insure & Go Insurance Services Limited v CoverDirect Pty Ltd, WIPO Case No. DAU2008-0019, and the cases cited therein). In correspondence with the Complainant prior to the commencement of the current proceeding, the Respondent has alleged that it was “in the process of using the [Disputed Domain Name] for its property portfolio website”. The Respondent, which is legally represented, has failed to make use of the opportunity afforded to it to submit evidence of bona fide preparations for such an intended use.
The Panel is therefore satisfied that the Respondent is using the Disputed Domain Name in bad faith, and therefore that the third auDRP element is established.
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 <woodson.com.au> be transferred to the Complainant.
William P. Knight
Sole Panelist
Date: May 12, 2015