Complainant is Nicole Haliday, of Prahran, Victoria, Australia, represented by Minter Ellison Lawyers, Australia.
Respondent is Stevans Allan & Co, of Newington Green, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <publicnoticeonline.net> is registered with Register.IT SpA.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2008. On October 17, 2008, the Center transmitted by email to Register.IT SPA a request for registrar verification in connection with the disputed domain name. On October 20, 2008, Register.IT SpA transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2008. Respondent did not submit any response. Accordingly the Center notified Respondent's default on November 26, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 5, 2008. The Panel finds that it was properly constituted and has jurisdiction1 over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant, an Australian citizen, provides services for publishing customized notices online. Her principal website for these services is “www.publicnoticeonline.com”, which was first used for these services in 2005. As described on this website, an individual can post a customized notification of a particular event, such as a birthday, birth of a child, acquiring a new pet, or a death. Complainant provides some of these services for free, charges for others, and sells advertising on the website.
Complainant registered the name “publicnoticeonline” as a trading name on the Australian business register in August 2003, and similarly registered it is as business name in her home state of Victoria in February 2006. The phrase “publicnoticeonline” is the principal header on Complainant's website.
Respondent registered the disputed domain name in June 2008. At this website Respondent maintains a business offering entitled “The Legal & Public Notices”, which it describes as “an advertising agency specializing in legal and public notices”. At this website Respondent appears to offer services similar to those offered by Complainant, and in addition the placement of advertisements in various publications. This later category appears to focus upon matters that involve notices required by law, such as the Trustee Act 1925, Insolvency Act, and Licensing Act. The website includes standard charges for some of Respondent's services.
Complainant contends as follows:
Complainant has established “a reputation and common law trademark rights” in the phrase “publicnoticeonline” by virtue of her continuous use since 2003 of this phrase for her business and company name. The disputed domain name is identical to Complainant's mark, as the top-level domain .net is irrelevant in determining identity or confusing similarity under paragraph 4(a) (i) of the Policy.
Complainant has never licensed Respondent to use her mark. Respondent has not been commonly known by the disputed domain name independently of the website maintained there. Respondent's use of the disputed domain name is commercial, and not bona fide under the Policy. Respondent competes with Complainant and has copied material portions of Complainant's website almost verbatim to offer these competing services.
The content of Respondent's website indicates that it registered the disputed domain name with full knowledge of Complainant, Complainant's trademark rights, and Complainant's business. In support of these charges, Complainant identifies four areas of text from Respondent's website that are identical except for differentiating Complainant from Respondent, and all of which are used to offer similar services. With such knowledge, Respondent's registration and use of the disputed domain name have been undertaken in bad faith for the purposes of the Policy.
Respondent did not reply to Complainant's contentions.
As the disputed domain name is identical to the phrase in which Complainant asserts rights, the only issue for the Panel under paragraph 4(a)(i) of the Policy is whether Complainant has established sufficient rights in that phrase to invoke the Policy. Complainant's evidence on this matter sustains her contention that she has common law rights in that phrase. Respondent has used the phrase for an ongoing business, registered nationally and in her home state as her business name, and has used and currently uses the phrase prominently on her website. Her use has been to identify a source of services, rather than merely as an email address for passive ownership of a name or business name, thus satisfying paragraph 4(a)(i). Compare Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706. Furthermore, as will be evident from the Panel's discussion in the following section, Respondent clearly was aware of this use, providing further support for this conclusion. Accordingly, the Panel is satisfied that Complainant has established common law trademark rights in this phrase, under which it trades, that are sufficient to invoke the Policy.
Complainant has made a prima facie case that Respondent lacks rights or a legitimate interest in the disputed domain name by showing that Complainant has not licensed Respondent to use its mark given that, except for ownership of the disputed domain name and maintaining a website at that address, has not commonly been known by the disputed domain name. Even though Respondent appears to conduct an active business at the disputed domain name rather than simply maintaining a parking site or collection of hyperlinks, six months of this imitative use, standing alone, is not sufficient to create identification of Respondent with that name under paragraph 4(c)(ii) of the Policy. Given the near identity of Respondent's business to Complainants and the verbatim copying of text from Complainant's site, Respondent's use is not bona fide. Accordingly the Panel finds for Complainant for purposes of 4(a)(ii) of the Policy.
Content of a respondent's website often determines whether registration and use of a disputed domain name was in bad faith. Common examples of this include sites at which a respondent includes a link to a complainant,2 uses links to competitors of the complainant,3 or simply offers a service directly competitive to those offered by the complainant.4 In these examples, the site's content permits a panel to infer that the respondent knew of the complainant's marks and business and intentionally sought to benefit from the good name and good will attaching to the complainant's mark.
In this proceeding that knowledge is glaringly obvious from Respondent's verbatim copying of text from Complainant's own website, copying that is verbatim down to the level of grammatical conventions (e.g., 3:00am with no space between the hour and the lower case “am;” “24 hour” without a hyphen). Two examples will suffice; the others included in the Complaint are equally compelling.
|
Service |
COMPLAINANT “publicnoticeonline.com” |
RESPONDENT “publicnoticeonline.net” |
|
Announce-ment of birth of a baby |
“Everyone is waiting on the news, so when your baby is born at 3:00am you can post your notice straight away, with all the details (weight, name, length), show photographs or a video. Let all your friends and family celebrate the birth of your baby no matter where in the world they are or you are.” |
“Everyone is waiting on the news, so when your baby is born at 3:00am you can post your notice straight away, with all the details (weight, name, length), show photographs or a video. Let all your friends and family celebrate the birth of your baby no matter where in the world they are or you are.” |
|
Announce-ment of a death |
“PublicNoticeOnline.com allows you to document the life of your loved one with drawings from children, photographs, and videos. You do not have to feel restricted by the amount of words and you can show everyone involved the notice before it is published. We understand that in times of grief text mistakes can happen so we give you a 24 hour text edit period.” |
“<publicnoticeonline.net> allows you to document the life of your loved one with drawings from children, photographs, and videos. You do not have to feel restricted by the amount of words and you can show everyone involved the notice before it is published. We understand that in times of grief text mistakes can happen so we give you a 24 hour text edit period.” |
This copying demonstrates that Respondent “by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondent's] web site or location”. Policy, paragraph 4(b)(iv).
The Panel of course does not address whether this copying is actionable as copyright infringement, unfair competition, or other cause of action. For purposes of the Policy what is important is that it clearly betrays Respondent's actual knowledge of Complainant and its marks. With that knowledge Respondent's registration and use of a domain name identical to Complainant's mark were undertaken in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <publicnoticeonline.net> be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: December 19, 2008
1 Following its ordinary practice the Center notified Respondent by email to the addresses set out in the registration information and by courier service to Respondent's address as shown in the Complaint and registrar confirmation. The couriered parcel was delivered and none of the Center's emails was returned. As Respondent has been notified of the proceedings the Panel has jurisdiction to decide the matter by reason of Respondent's agreement in its registration agreement to submit to Policy proceedings.
2 E.g., Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014.
3 E.g., Institut National de la Propriété Industrielle (INPI) v. BWI Domains, WIPO Case No. D2008-1536.
4 E.g., Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097.