WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Elders Limited v. Private Company

Case No. D2007-1099

1. The Parties

The Complainant is Elders Limited of Adelaide, Australia, represented by Kelly & Co. Lawyers of Adelaide, Australia.

The Respondent is Private Company of Bronte, Australia, represented by Graeme Anderson of Sydney, Australia.

2. The Domain Name and Registrar

The disputed domain name <elders.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2007. On July 27, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On July 27, 2007, Tucows 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 August 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2007. The Response was filed with the Center on August 21, 2007.

The Center appointed Alan L. Limbury as the sole panelist in this matter on August 30, 2007. 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 trading since 1839. “Elders” is the name of one of Australia’s best known trading houses. It provides a wide range of goods and services in the fields of agriculture, telecommunications and real estate. Amongst its numerous Australian registered trademarks, comprising a stylized form of the word ELDERS, is No. 677589, registered on November 7, 1995 in class 36 in respect of real estate services; management of real estate; real estate agents; real estate brokers; leasing of real estate and appraisal of real estate.

On November 10, 1995, a company called KR & G Andersons Estate Agency Pty Ltd, operated by Mr. Graeme Anderson, the Respondent’s representative in this administrative proceeding, became a real estate franchisee of the Complainant pursuant to a Franchise Agreement, under which the Franchisee was entitled to use the business name “Elders Real Estate Randwick” and certain insignia, trademarks, logograms, colour schemes and signs prescribed by the Complainant. The Franchisee was also licensed to use the Complainant’s intellectual property for the purpose of carrying out obligations under the Franchise Agreement.

By letter agreement of May 8, 2000, the Complainant gave written permission for KR & G Andersons Estate Agency Pty Ltd to use the business name “Elders Real Estate Net” instead of “Elders Real Estate Randwick”.

The disputed domain name was registered on May 3, 2001. The registrant is “Private Company” but the Anderson family appears responsible for it.

The Franchise Agreement was terminated by agreement with effect from April 28, 2005. A provision of that agreement that survived termination required the Respondent immediately to cease to use any intellectual property rights of the Complainant, including trademarks.

Between about April 2005 and July 16, 2007, the disputed domain name resolved to a website showing a picture of Mr. Graeme Anderson and displaying the following notice:

“Looking for Elders.Net? or Raine & Horne Clovelly/Coogee?

Visit them at their new website www.rhbjcc.com.au [hyperlink]

For the best in Real Estate Service in Sydney’s Eastern Suburbs, contact any of the ‘old’ team. Graeme Anderson [other names] on [phone No.]”

Raine & Horne Pty Ltd is well known as a real estate agent with numerous offices. It is a direct competitor of the Complainant.

Following a cease and desist letter from the Complainant dated July 12, 2007, the website was changed on or about July 16, 2007 so as simply to display the single word “Photography”.

5. Parties’ Contentions

A. Complainant

The Complainant seeks the transfer to it of the disputed domain name upon the following grounds:

(i) the disputed domain name is identical to its ELDERS trademarks. As a consequence of the termination of the Franchise Agreement and the obligation thereupon to cease use of the Complainant’s trademarks, the Respondent has no rights or legitimate interest in the disputed domain name;

(ii) the Complainant has not at any time expressly licensed to the Respondent the right to register the disputed domain name nor to use the Complainant’s trademarks to register a domain name;

(iii) the disputed domain name was registered and is being used in bad faith. The Respondent clearly had actual knowledge of the Complainant’s rights in the name “Elders”. It registered the disputed domain name:

(a) primarily for the purpose of disrupting the business of the Complainant by diverting Internet users to a website of a competitor;

(b) primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name;

(c) in order to prevent the Complainant from reflecting the ELDERS mark in a corresponding domain name - engaging in a pattern of such conduct by also registering and using the domain name <elders.net.au> to display the Raine & Horne website;

and that the Respondent has intentionally used the domain name to mislead Internet users to the Respondent’s website for commercial gain.

B. Respondent

The Respondent accepts that the disputed domain name is “similar” to the Complainant’s “Domain” but says there are many instances in which domain name similarity has no impact on the businesses of the registrants, such as the American broadcaster ABC and the Australian broadcaster ABC, both of whom advertise their domain names. The Respondent says the disputed domain name is not advertised but is used as an umbrella to host many sub pages.

The Respondent says the disputed domain name was acquired legally and with the very clear implied and actual consent of the Complainant, whose claim to be entitled to its return is disputed and should be considered by an Australian court.

The Respondent said in its reply to the Complainant’s cease and desist letter that the Complainant’s Sydney Head Office was told before the .net and .net.au domains were registered and raised no objection. Further, that all stationery had to be approved beforehand by the Complainant, which knew of the Respondent’s use of the disputed domain name and of the business name Elders.Net [sic].

The Respondent says that it sought and obtained permission from the Complainant’s Sydney office to direct the disputed domain name to the Raine & Horne website for a short period of time. The diversion lasted longer than originally intended because the Respondent forgot about it. Prior to the cease and desist letter, the Complainant had not expressed concern and as soon as the Respondent was “reminded” of it, the content was changed.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The top level domain “.net” is not to be taken into account when considering whether the domain name is identical or confusingly similar to the trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The disputed domain name is clearly identical to the Complainant’s registered ELDERS trademark. The Complainant has established this element of its case.

B. Rights or Legitimate Interests

Neither party has sought to distinguish between the Respondent, “Private Company”, and KR & G Andersons Estate Agency Pty Ltd. Neither will this Panel.

Assuming that the Respondent acquired a legitimate interest in the disputed domain name at the time of registration based on the relationship of Franchisor and Franchisee during the course of which the domain name was registered, the termination of the Franchise Agreement would have deprived the Respondent of any such legitimate interest. The relevant time for the assessment of whether a respondent has rights or legitimate interests in a domain name is the date of the Complaint: Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 and the cases cited therein.

The Respondent offers no basis other than the Complainant’s consent (disputed by the Complainant) by which to support its claim to have rights or legitimate interests in the disputed domain name. By the time the Complaint was filed, any permission the Respondent had to use the disputed domain name had been well and truly withdrawn.

The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The circumstances of bad faith are not limited to the above. The Complainant must prove both bad faith registration and bad faith use. See, Yoomedia Dating Ltd., infra.

As one of the Complainant’s franchisees, the Respondent was clearly aware of the Complainant and its ELDERS trademark when it registered the disputed domain name. What was the Respondent’s motivation in doing so?

In Tomatis Developpement SA v. Jan Gerritson, WIPO Case No. D2006-0708 the Panel addressed this issue in the following terms:

For the purposes of this head of complaint under the Policy, the motives of the registrant at time of registration are of crucial importance. The Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trademarks of others and with the intention of causing damage or disruption to the trademark owners and/or unfairly exploiting the trademarks to their own advantage.

Paragraph 4(b) of the Policy contains a non-exhaustive list of what shall constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The first three examples expressly refer to the registrant’s intentions at time of registration. The fourth does not, but the preponderance of panelists nonetheless construe it as calling for a bad faith intent at time of registration. To do otherwise would open up the Policy to a far wider category of cases than it was ever intended to cover.

Accordingly, as in the case of Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871, the question for the panel is: “is it more likely than not that the Respondent registered the Domain Name […] with a view at some time in the future to disadvantaging the Complainant or with a view to unfairly exploiting the situation in some other way to his own advantage?”

In the Blemain case, the scale tipped in favour of the complainant because there was no Response. Here there is a Response denying bad faith and claiming permission by the Complainant to register and use the disputed domain name. The Panel comes to no conclusion as to whether or not the Respondent was given permission by the Complainant.

The Complainant’s own evidence shows that, at the time of registration, the Respondent had been for more than 5 years a franchisee of the Complainant, entitled to use certain of the Complainant’s intellectual property, including trademarks, and had the previous year been expressly authorized to use in its business the name “Elders Real Estate Net”. The franchise was to last another 4 years. The only evidence of bad faith use comes after termination of the franchise. There is no evidence to support the Complainant’s assertions that the disputed domain name was registered for any of the purposes it suggests.

These circumstances indicate that, in registering the disputed domain name, the Respondent may well have been intending to do no more than to complement the very business name it had been expressly permitted to use in the franchise. In the absence of any other evidence of the motivation of the Respondent at the time of registration, this would support a conclusion that the disputed domain name was likely registered in good faith even if no permission had been granted by the Complainant.

Subject to the Respondent’s claim to have been permitted to link the disputed domain name to the Raine & Horne hyperlink (presumably after the termination of the franchise), there could hardly be a clearer case of bad faith use within paragraph 4(b)(iv) of the Policy. Assuming, without deciding, that the Respondent had no such permission, would that bad faith use justify a finding of bad faith registration in this case?

Use of the kind described in paragraph 4(b)(iv) of the Policy is to be taken as evidence of bad faith registration as well as evidence of bad faith use. But there may be circumstances, such as in the present case, where this evidence is not necessarily conclusive. Furthermore, the Panel may determine the weight to evidence of constructive bad faith registration furnished by paragraph 4(b)(iv), and the panel may have regard to other evidence in determining whether the requirements of paragraph 4(a)(iii) have been proved.

This approach accords with the Policy by enabling, in differing circumstances, a finding of bad faith registration to be made where bad faith use within paragraph 4(b)(iv) is the only evidence tending to show the purpose for which the domain name was registered. Where, however, there is other relevant evidence, such as evidence that the domain name was registered for a permissible purpose, it must be weighed against any evidence of bad faith registration constituted by evidence of bad faith use within paragraph 4(b)(iv). Previous panels have commented that it is difficult to imagine circumstances in which, under this approach, subsequent bad faith use within paragraph 4(b)(iv) would suffice to prove that a domain name was originally registered in bad faith. See, Passion Group Inc. v. Usearch, Inc., eResolution Case No.AF-0250, followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.

In UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No. D2001-0373, in the context of a distributorship, it was held that “[good faith] registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which [the registrant] was authorized [by the trademark owner] to register it.” See also, to like effect, Exel Oyj v.KH Trading, Inc, WIPO Case No. D2004-0433. This Panel does not consider that distributorships or franchises fall into any special category and prefers the reasoning in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085, in which the Panel said:

“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that ‘If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith’. In Teradyne Inc. Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026, the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would ‘extend the Policy to cover cases clearly intended to be outside its scope.’ Similarly, in Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005, the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.”

The Panel is aware that the Complainant was recently successful in obtaining a transfer of the domain name <elders.com> in the case Elders Limited v. Australia Online, WIPO Case No. D2007-1027. However, the circumstances of that case differ from those in the present proceedings, in which, among other things, the Respondent has elected to file a supported Response, and which takes place in an entirely different context.

The Panel further notes that particularly given the history between the parties, as well as their specific location, it is of course open to them to pursue the matter further in an appropriate court should they wish to do so.

Weighing the evidence of bad faith use against the evidence indicating good faith registration, this Panel is not prepared to make a finding of bad faith registration and use in the circumstances of this case.

Accordingly, the Complainant has failed to establish this element of its case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury
Sole Panelist

Dated: September 10, 2007