WIPO Domain Name Decision: DAU2006-0005

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Melway Publishing Pty Ltd. v. Fopoco Pty Ltd. trading as Melways Advertising

Case No. DAU2006-0005

1. The Parties

The Complainant is Melway Publishing Pty Ltd., Mt Waverly, Victoria, Australia represented by Guy & Hinton, Solicitors, Australia.

The Respondent is Fopoco Pty Ltd., trading as Melways Advertising, Niddrie, Victoria, Australia.

2. The Domain Name and Registrar

The Disputed Domain Name, <melways.com.au>, is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2006. On May 9, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for a registrar verification in connection with the Disputed Domain Name at issue. On May 10, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the .au Name 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 May 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2006. The Response was filed with the Center on May 26, 2006.

The Center appointed Alistair Payne as the sole panelist in this matter on June 8, 2006. 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.

4. Factual Background

The Complainant has been a successful producer, manufacturer and distributor of street directories, predominantly in Melbourne since 1966. The Complainant has submitted evidence that its street directory is officially used by all Victorian Emergency Services and the majority of taxi, courier, delivery and transportation services. In addition, it is frequently used by Real Estate Agents to describe property locations and its grid references are widely used by companies in radio, television and press advertising to locate their premises. It submits that its directory is also used by the public and is commonly referred to as “the Melways”. The Complainant has extensively published and promoted its name and mark via the World Wide Web. The Complainant is the owner of the MELWAY trade mark and variations thereof and the domain name <melway.com.au>.

The Respondent holds the registered business name Melways Advertising and has been operating a website using the Disputed Domain Name since 2000. The website advertises automotive spare parts.

On May 7, 2001, the Complainant’s representative sent a letter to the Respondent stating that the Complainant owned the MELWAY trade mark and that the Respondent’s registration of the Disputed Domain Name, therefore, was in breach of the terms and conditions of the Policy and the registration agreement entered into between the Respondent and the Registrar, and an infringement of the Complainant’s trade mark rights, amounted to passing off or threatened passing off and was misleading and deceptive to the public. The Respondent’s representative replied by denying all of the allegations. The Complainant did not take the matter any further at that time.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

The Complainant contends that it has established legal rights in the word MELWAY on the basis of its ownership of numerous registered trade marks incorporating the word. It further contends that it has common law rights in the name and service mark MELWAY on the basis that (a) it has used the name MELWAY since 1966, to identify its products and services; and (b) the name MELWAY and variations thereof, including the plural MELWAYS, are commonly used throughout Melbourne and Victoria to refer to its products.

The Complainant contends that the Disputed Domain Name is identical or, alternatively, confusingly similar to the name or mark MELWAY in which it has registered and common law rights.

(ii) Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant cites the following reasons for this contention:-

- It has never been associated with the Respondent or in any other way licensed, granted or otherwise endorsed the use of any of its rights by the Respondent.

- On becoming aware of the Respondent’s registration of the Disputed Domain Name in late 2000, the Complainant took all reasonable steps to retrieve the Disputed Domain Name and informed the Respondent of its existing rights in the Disputed Domain Name. The reason for the delay in making this complaint is that the Complainant only recently became aware of its rights as trade mark holder under the Policy and this domain name dispute procedure.

- The Respondent’s registration of “Melways Advertising” as a Victorian Registered Business Name is a device to manipulate the Policy by attempting to legitimise an interest in the Disputed Domain Name that the Respondent is not entitled to and has no right to possess.

- The Complainant contends that this is evidenced by the fact that the business name “Melways Advertising” was registered on July 6, 2000, with the Disputed Domain Name being created only seven days later on July 13, 2000. The Complainant also contends that the Respondent has engaged in a pattern of such behaviour as it registered the business name “Freeparking” and registered the domain <freeparking.com.au> on the same day. This domain is also currently the subject of a domain name dispute resolution complaint to WIPO.

- Registering a business name on the Victorian Business Names Register does not give legal rights and does not protect the business name. In addition, under the Policy “rights or legitimate interests in respect of the Domain Name” are not established merely by a Registrar’s determination that the Respondent satisfied the relevant eligibility criteria for the domain name at the time of registration. Therefore, the Complainant contends that in spite of the registered business name, the Respondent has no legitimate interest in the Disputed Domain Name.

- The Respondent has not previously been known by the name “Melway” or “Melways Advertising” or any variations thereof. Furthermore, the Respondent has not since the registration of the business name and Disputed Domain Name become commonly known by the name “Melway” or “Melways Advertising” and cannot be said to have gained legitimate interests or rights in the intervening period.

- Finally, the Complainant contends that due to the Complainant’s market presence and good name, the Respondent could not at the time of registration have been unaware of the Complainant’s pre-existing rights in the MELWAY name or mark.

(iii) Registered or Used in Bad Faith

The Complainant contends that the Respondent registered and/or used the Disputed Domain Name in bad faith.

The Complainant contends that the Respondent registered the Disputed Domain Name for commercial gain by creating a likelihood of confusion with the Complainant’s name. As evidence of bad faith, the Complainant cites the following:-

- The Complainant refers to a letter submitted by the Respondent to Consumer Affairs Victoria in response to the Complainant’s initial attempts in 2000 to have the business name de-registered. The Complainant contends that the contents of the letter demonstrate that the Respondent made commercial gains from advertising on the site and additional profits from banner advertising on hits on the site.

- Furthermore, the Complainant contends that nearly 6000 hits on the Disputed Domain Name between July 2000 and November 2, 2000, could only have arisen as a consequence of confusion by internet users with the Complainant’s trade mark and name, as the site was under construction during that time.

- The Complainant says that the Respondent’s registration of the Disputed Domain Name has had the effect of preventing the Complainant, as owner of the trade mark, from reflecting its name or trade mark in a corresponding domain name.

- The Complainant asserts that evidence of bad faith can be derived from the fact that the business name “Melways Advertising” was registered only seven days before the Disputed Domain Name was created and from the fact that the Respondent has engaged in a pattern of such behaviour, as discussed above. Furthermore, the registration of the business name does not legitimise the Respondent’s conduct.

- Finally, the Complainant refers to a statement from the website www.onlymelbourne.com.au – “The domain name is best known as Melbourne’s Street Directory, but this website is a dictionary of good links to:”. The Complainant contends that this is evidence of the Respondent’s intention to make a commercial gain by misleadingly diverting consumers, and consequently tarnishing the name and trade mark of the Complainant.

B. Respondent

The principal of the Respondent has furnished an e-mail response and submits as follows:

- that the Respondent does not advertise anywhere other than on the website to which the Disputed Domain Name resolves and does not advertise anything remotely connected with the type of business conducted by the Complainant;

- that the name MELWAY is commonplace and is used by numerous third parties and is not solely associated with the Complainant;

- that the Respondent has never tried to sell the Disputed Domain Name and has never contacted the Complainant.

The Respondent has not otherwise replied to the Complainant’s contentions and has provided no other evidence of its rights.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding, the Complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has provided substantial evidence that it owns various registered trade marks incorporating the trade mark MELWAY dating from as early as 1966 and has more recently made application for a word mark. It submits that it has also made substantial common law use of the MELWAY name and mark since 1966, and has provided a limited amount of evidence of this usage, but not limited to its ownership of the domain name <melway.com.au>. The Disputed Domain Name only differs from the Complainant’s name and mark MELWAY by the addition of an “s” and in the Panel’s view the Disputed Domain Name is confusingly similar to the Complainant’s trade mark.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to demonstrate that it has rights or legitimate interests in the Disputed Domain Name.

The Complainant contends that the Respondent’s registration of the business name “Melways Advertising” as a Victorian Registered Business Name does not give the Respondent any legal rights per se in the Disputed Domain Name and that registration was merely a device to enable the Respondent to register the Disputed Domain Name and subsequently to trade off the renown of the Complainant’s name and mark. The Complainant says that in view of the substantial renown of the MELWAY name and mark the Respondent must have been aware of the Complainant’s pre-existing rights.

The Respondent has offered no evidence to rebut these contentions except to assert that it is entitled to use the “Melways” name in the field of advertising in a manner which is unrelated to the Complainant’s business activities and that numerous other entities trade in Victoria and elsewhere under the “Melway” name. It appears that the Respondent has used the Disputed Domain Name in relation to its website for almost 6 years prior to the notice of the dispute in May, 2006. There is evidence that it carries on a business on this website selling personalised vehicle number plates and providing sponsored links to other websites, however no supporting detail has been provided of the history or scope of these businesses, nor of the Respondent’s reason for choosing its business name and subsequently registering the Disputed Domain Name.

Based on the very significant degree of renown of the Complainant and the Respondent’s failure to explain the circumstances in which its business name was chosen, or to demonstrate legitimate use prior to that date or of the development of a separate business after that date, the Panel infers that the Respondent knowingly sought registration of the Disputed Domain Name and has used the Disputed Domain Name with a view to attracting web traffic searching for the Complainant’s website, as further described below. Further none of the other circumstances of paragraph 4(c) of the Policy have been made out.

The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration or subsequent use of the Disputed Domain Name in bad faith. For the reasons set out below the Panel considers that the Complainant has made out the circumstance in paragraph 4(b)(iv) of the Policy.

The Complainant’s name and mark has considerable renown attaching to it in Victoria and was long established prior to the registration by the Respondent of the Disputed Domain Name. The Panel is of the view that, at the time of establishing its website, the Respondent must have been well aware of the Complainant’s MELWAY name and mark. It was open to the Respondent to choose any business name or domain name as there is no evidence to suggest that it had been previously trading under the “Melways Advertising” name. Accordingly, the Panel accepts the Complainant’s contention that the business name registration was more than likely a device to enable the Respondent to register the Disputed Domain Name seven days later.

The Complainant’s evidence suggests that the Respondent has made commercial gains from advertising on the site and additional profits from banner advertising on hits on the site. Even while under construction, the Disputed Domain Name received nearly 6000 hits over a three month period. It seems more than likely to the Panel that this volume of traffic could only have occurred through internet users’ confusion with the Complainant’s name or trade mark.

The Respondent has offered no evidence to rebut the inference that the Respondent’s motivation for choosing and subsequently using the Disputed Domain Name was primarily with a view to taking advantage of public confusion with the Complainant’s name or mark for its own gain in order to achieve additional website traffic.

For these reasons, the Panel finds that the Respondent has registered and subsequently used the Disputed Domain Name in bad faith and the Complainant also succeeds under this element of the Policy.

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 be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: June 26, 2006