The Complainants are Goodreads LLC of San Francisco, California, United States of America ("United States") and Amazon Technologies, Inc of Seattle, Washington, United States, represented by King & Wood Mallesons, Australia.
The Respondent is BDB Soti Pty Ltd of Mosman, New South Wales, Australia, internally represented.
The disputed domain name <goodreads.com.au> is registered with Web Address Registration Pty Ltd (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2016, 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 March 9, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2016. The Response was filed with the Center on March 29, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 1, 2016. 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.
According to the Complaint, the First Complainant is the registrant of the domain name <goodreads.com> and has operated a website under the name and banner GOODREADS from that domain name since 2007. The Second Complainant is a related company of the First Complainant and the owner of Australian Registered Trade Mark No. 1523287 for GOODREADS, registered from March 29, 2012, in classes 35 and 42. Both Complainants are members of the Amazon group of companies; the parent of the group, Amazon.com Inc., having acquired the First Complainant in 2013. The Second Complainant licenses the use of Trade Mark No. 1523287 to the First Complainant.
According to the Complaint, the website operated by the First Complainant is a "social cataloguing website" which aims to help people find and share books. Amongst other things, it provides book clubs and forums for the discussion of books, author interviews and other ways by which authors and publishers can promote their works. The co-founder of the website states that the idea was that the best way to find interesting books was by recommendation from friends and the Internet provided a means to find those recommendations without having to visit all one's friends' bookshelves. The Complaint says that some 167,000 authors use the website to promote their works. By December 2007, the website had some 650,000 members globally with some 10 million books being promoted online. By the end of 2013, the website claimed 25 million members around the world. It now claims 40 million members with some 1.3 billion books being promoted and 47 million book reviews. One of the website's services is the Readers Choice Awards which have been running since 2009. These awards allow users to vote for their favourite book in a range of categories including Best Book, Best Fiction, Best Mystery & Thriller and so on.
The Goodreads website has been available to access by readers from Australia since it launched. According to the Complaint, between August 2012 and December 2013 there were over one million unique visitors to the website from Australia and New Zealand each month. The website also includes a number of groups or forums specifically for readers in Australia. These include the Aussie Readers group which claims 4,500 members and the Australian Women Writers Challenge group with 700 members. Annex 8 to the Complaint includes printouts from the archives showing posts in the Aussie Readers group from September 25, 2007, January 3, 2008, April 3, 2008, October 14, 2010 and March 13, 2011. There are also advertisements or announcements for various book "events" dating from 2008 such as a promotion for the Children's Book Council of Australia Book of the Year awards dating from August 15, 2008 and an author appearance by Peter Carey "in conversation with Edmund White and Claire Messud" on April 20, 2010. There are many other such notices. Annex 11 includes a number of press reports in Australian newspapers in the years 2008, 2009 and 2010 discussing the Complainants' Goodreads website.
In addition to the Australian Registered Trade Mark No. 1523287, the Second Complainant is also the owner of three registered trade marks in the United States: Trade Mark Nos. 3952282, 3870156 and 3870157 for GOODREADS in, respectively, International Classes 35, 41 and 42. All three were filed on March 26, 2010; the class 41 and 42 marks were registered on November 2, 2010, and the class 35 mark was registered on April 26, 2011.
The disputed domain name was registered on March 13, 2011. Between at least October 2014 and October 2015, the disputed domain name redirected to the website at "www.thereadingroom.com" ("The Reading Room website"). The nature of that website is discussed in more detail below. In October 2015, however, the redirection of the disputed domain name to The Reading Room website was suspended by the Respondent following receipt of a letter of demand from the Complainants' solicitors.
A print out from the WayBack machine at "www.web.archive.org" shows that, on March 13, 2011, copyright in the website appearing on The Reading Room website was claimed by the Respondent. Currently, copyright in The Reading Room website is claimed by Reading Room Inc. Reading Room Inc. also owns the shares in the Respondent.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants 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 Complainants have 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 first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants' name, trade mark or service mark.
There are two parts to this inquiry: the Complainants must demonstrate rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Second Complainant has proven that it owns the registered trade marks for GOODREADS in both Australia and the United States referred to in section 4 above.
The Panel notes that the trade mark registered in Australia was registered after the disputed domain name was registered. That does not matter for several reasons.
First, the date, or the place where, the rights were acquired is not relevant at this stage of the inquiry which is concerned only with whether the Complainants have relevant rights and whether the disputed domain name is identical or confusingly similar to those rights. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001; Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007. The question of when rights were acquired may become relevant under subsequent stages of the inquiry, especially whether the Respondent has rights or legitimate interests in the disputed domain name. Other questions such as where the rights subsist and what goods or services they cover may also become relevant at later stages.
Secondly, at least two of the trade marks registered in the United States were registered before the disputed domain name was registered. In addition, all were filed well before the disputed domain name was registered.
Thirdly, the Complainants also claim common law rights in the trade mark in Australia dating from 2007 and, for the reasons discussed in section 5B below, the Panel finds that claim has been established.
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 Complainants' trade marks.
The disputed domain name differs from the Complainants' trade marks only by the addition of the ".com.au" second-level domain. In accordance with usual practice, that element can be disregarded as a functional element of the domain name system. See, e.g., 1SaleADay L.L.C. and Benyamin Federman v. LivinWireless, Simon Mochkin and Eli Feiglin, WIPO Case No. DAU2010-0016.
Therefore, the Panel finds that the disputed domain name is identical to the Complainants' trade mark.
The second requirement the Complainants 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 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, supra.
In the present case, the Complainants state that they have not authorised the Respondent to use their trade mark and the Respondent is not in any way associated with them. The Respondent does not hold a registered trade mark for the disputed domain name. In addition, the disputed domain name is not derived from the Respondent's name or the name of either its shareholder or any of its directors. At least during the period when it was being redirected to The Reading Room website, the disputed domain name was being used for commercial purposes as, apart from anything else, that site featured obvious "pay-per-click" advertising and offered a range of goods and services for sale including books. In these circumstances, the Panel considers the Complainants have established a clear prima facie case.
The Respondent defends its registration and use of the disputed domain name on a number of grounds.
First, it says that the term "good reads" is a purely descriptive English expression which it is perfectly entitled to use. In an extension of its argument based on the descriptive nature of the expression "good reads", the Respondent says its business strategy includes registering descriptive terms and redirecting them to The Reading Room website. It gives as other examples of these registrations expressions such as <greatreads.com>, <bestbooks2014.com>, <goodbookchoices.com>, <shelftalk.com.au>, <discoverreads.com> and <yourplaceforbooks.com>.
The Panel accepts that the expression "good reads" may be regarded as descriptive in respect of books or written materials themselves. However, in light of the circumstances of the case and as discussed below, it appears that the Respondent is or has been using the term in the disputed domain name to target the Complainants' mark and services rather than for its descriptive value. Such use is not a bona fide offering of goods or services under the Policy.
The Complainants have registered the expression in both Australia and the United States as a trade mark. Although the registration in Australia was obtained after the disputed domain name was registered, the First Complainant (subject to the issues raised by the Respondent below) was already using the trade mark in Australia before the disputed domain name was registered. Moreover, the materials included in the Complaint make it clear that The Reading Room website, which the disputed domain name redirected to when it was in use, was accessible from both Australia and the United States. If the Respondent wishes to contest the validity of those registrations, its proper recourse is to the procedures set up under the relevant jurisdiction's trade mark laws. See, e.g., Telstra Corporation Limited v. Mikhail Doubinski and Yury Sharafutdinov trading as AAA Marketing World, WIPO Case No. DAU2006-0008.
The Respondent next contends that the Complainants do not conduct business in Australia or cannot legally conduct business in Australia as they are not registered in Australia under the Corporations Act 2001 or the relevant business names legislation. This contention appears to be directed partly to the Respondent's argument that the Complainants do not have a reputation in Australia to support a claim to common law rights.
The first step in this argument is that, not being registered under the relevant legislation, the Complainants are not entitled to carry on business in Australia. From this, the Respondent may be arguing that it is therefore legitimate for the Respondent to use the disputed domain name in Australia. The Respondent further contends that the Complainants have not provided any evidence in support of their claims either that the First Complainant's website was being accessed by people from Australia from 2007 or that there have been a substantial and growing number of visitors to the Goodreads website from Australia.
These arguments do not avail the Respondent. First, the argument does not address the facts that the Complainants have registered trade marks in both the United States and Australia and, as noted above, The Reading Room website which the disputed domain name redirected to was itself directed to users in the United States as well as Australia.
Secondly, the courts in Australia have recognised that a foreign based business may have sufficient reputation in Australia to prevent others using its trade mark even if they do not carry on business in Australia. See, e.g., Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181.
Thirdly, the Complaint does in fact include evidence of what on its face appear to be Australian users using the First Complainant's site over a number of years from 2008, well before the Respondent registered the disputed domain name. There is also evidence of newspaper articles directed to Australian readers about the First Complainant's Goodreads website and acceptance of at least the global usage figures claimed by the Complainants in an article published in the journal The Atlantic. The Panel also notes that Australian courts have been willing to protect businesses which have only announced their intention to start trading from opportunistic behaviour. See, e.g., Fletcher Challenge Ltd v Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; [1982] FSR 1.
To the extent that the Respondent contends that the failure to register its name under the business names legislation renders the whole of the First Complainant's operations illegal and so not to be countenanced under the Policy, the Panel considers that the illegality, if any, is not such as to disentitle the Complainants from enforcing their rights. See, e.g., Venus Adult Shops Pty Ltd v Fraserside Holdings Ltd [2006] FCAFC 188 at [77] – [84], in the context of copyright.
Finally on this part of the case, the Panel notes that paragraph 4(c)(i) of the Policy requires the use of the disputed domain name to be in good faith. Use of another's trade mark to generate sales of one's own goods and services usually does not qualify as good faith use under the Policy. For the reasons discussed in section 5C below, the Panel is unable to find on the record in this case that the Respondent's use qualifies as a bona fide commercial use under the Policy.
Therefore, the Panel finds that the Complainants have established this requirement under the 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 finds that both requirements have been satisfied in this case.
First, the Panel considers the clear inference on the record in this case is that the Respondent was well aware of the Goodreads website and the Complainants' trade mark when it registered the disputed domain name.
The Respondent itself is closely linked with The Reading Room website. As noted above, it claimed copyright in the content on that website on the very same day the disputed domain name was registered. The owner of the shares in the Respondent is named "Reading Room Inc." which appears to be the current operator of The Reading Room website, or at least claims to own the copyright in that site. In addition, according to the "Who we are" page on The Reading Room website, it was founded in 2010 by Kim Anderson, who is also one of the directors of the Respondent and the registrant contact for the disputed domain name. From the information included in the Complaint, it appears that Kim Anderson has had a long history in publishing, predating the launch of both the First Complainant's website and The Reading Room website.
The Reading Room website is plainly in direct competition with the First Complainant's website. The headline banner on The Reading Room website announces "The Reading Room", "Connecting Books & People", "Recommend Books to a Friend". The "Who We Are" page of The Reading Room website describes it as follows:
"The Reading Room connects books with people. We make discovering books entertaining, informative and socially engaging. And, most importantly believe that the best recommendations come from people you know and trust. […]"
The Reading Room website also provides functionality to "Import your 'GoodReads' bookshelf" into your The Reading Room account.
While the Respondent does deny the Complainants' allegations that it registered the disputed domain name in bad faith, the Respondent does not deny knowledge of the First Complainant or its website.
In the circumstances outlined above, the Panel infers that the Respondent, through its director, well knew of the First Complainant and its website including its use of the trade mark GOODREADS.
Secondly, the Respondent's strategy of registering descriptive terms to redirect to The Reading Room website has been mentioned above. The Complainants point out, however, that both the Respondent and an associated company, Kim Anderson Pty Limited, have registered numerous domain names which are the same as or closely related to the names or trade marks of other book-related or reading-related websites. A list of these is included in Annexure 20 to the Complaint. They include (without in any way attempting to be comprehensive) <readcloud.mobi>, <oysterbooks.mobi>, <bookclubsinabox.com>, <bkstr.com.au>, <bookq.com.au>, <discvrbooks.mobi> and <booktopia.mobi>. It appears from these registrations that the Respondent and those associated with it are well aware of the names and trade marks being used in its field and quite willing to take advantage of those names and trade marks to further their own business.
Given the knowledge of the First Complainant's website and trade mark and the use made of the disputed domain name to redirect to The Reading Room website in competition with the First Complainant, the Panel infers that the Respondent registered the disputed domain name for the purpose which it put the disputed domain name: that is, to redirect people looking for the First Complainant's website to The Reading Room website. That qualifies as registration in bad faith under the Policy as it appears the disputed domain name was registered to take advantage of its significance as the Complainants' trade mark.
Even if that were not the case, the redirection of the disputed domain name to The Reading Room website, particularly with knowledge of the First Complainant's website and the Complainants' trade mark is use in bad faith under the Policy.
In light of that conclusion, it is not necessary for the Panel to rule on the Complainants' allegations that the Respondent's bad faith is further evidenced by engaging in a pattern to register abusive domain names and demanding payment for the disputed domain name far in excess of the Respondent's out of pocket costs for registering the disputed domain name.
In the circumstances, the Respondent's objection to the Complainants' conduct as amounting in effect to reverse domain name hijacking cannot be sustained.
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 <goodreads.com.au> be transferred to the Second Complainant, Amazon Technologies Inc.
Warwick A. Rothnie
Sole Panelist
Date: April 15, 2016