The Complainant is GM Holden Ltd, of Australia, represented by Piper Alderman, Australia.
The Respondent is Blogger Pty Ltd of Australia.
The Disputed Domain Name <holdenastra.com.au> is registered with IntaServe.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2008. On September 16, 2008, the Center transmitted by email to IntaServe a request for registrar verification in connection with the domain name at issue. On September 29, 2008, IntaServe 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 Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the .au Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO auDRP Supplemental Rules for the .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 September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2008. The Response was filed with the Center on October 13, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on October 17, 2008. 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 is GM Holden Limited, an Australia proprietary company. The Complainant's ultimate holding company is General Motors Corporation, a Delaware Corporation (United States of America). The Complainant manufactures and distributes Holden motor vehicles, engines, components and parts within Australia. The Complainant is the proprietor of the domain name <holden.com.au>.
The Respondent is Blogger Pty Ltd.
The Complainant asserts that it is the exclusive authorised user of the Australian registered trade marks HOLDEN and ASTRA. The Complainant contends that the Disputed Domain Name <holdenastra.com.au> is an amalgamation of the Complainant's HOLDEN and ASTRA marks, to which the Respondent has no rights.
The Complainant argues that use of these marks by the Respondent is likely to mislead members of the public into thinking that the Respondent has an association with the Complainant which is not correct. The Complainant asserts that the Respondent is attempting to trade on the reputation and goodwill built up by the Complainant and it's affiliates since at least 1948 in respect of the HOLDEN brand and 1987 in respect of the ASTRA brand. The Complainant contends that the Respondent has no trade mark rights or business names which incorporate any of the words “holden” or “astra” and therefore has no rights to the domain name <holdenastra.com.au>. The Complainant has not entered into any commercial arrangement or understanding to permit the use by the Respondent of any of the rights of the Complainant.
The Complainant contends that the Respondent is using the Disputed Domain Name in bad faith by intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion, such that an innocent Internet user would think that the Respondent's website is associated with the Complainant. The Complainant asserts that the Respondent is preventing the Complainant, who has a legitimate interest in the domain name, from obtaining the domain name by registration.
The Respondent asserts that it has used the domain name in accordance with the principles laid down in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 and therefore has a legitimate interest in the Disputed Domain Name.
The Respondent contends that it is not trying to mislead innocent Internet users into believing that the site is an official site or endorsed by Holden as the website contains two clear disclaimers. The Respondent argues that the Complaint has been brought in bad faith and was instigated for commercial gain by the legal representative of the Complainant.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) your domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered or subsequently used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
The Complainant asserts that it is the exclusive licensee of the registered trademarks HOLDEN and ASTRA. Although the Complainant failed to admit in evidence a copy of the exclusive license agreement, the Panel is prepared to accept the Complainant's submission.
The Disputed Domain Name is identical to the name of one of Complainant's products, the Holden Astra automobile, and is confusingly similar to Complainant's marks HOLDEN and ASTRA. It is well established that a general or country code top-level domain (gTLD or ccTLD) such as “.com.au” is without legal significance: BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The Respondent does not dispute the fact that the Disputed Domain Name is confusingly similar to the Complainant's marks.
Therefore, in the Panel's view, the Disputed Domain Name is confusingly similar to the Complainant's marks for the purposes of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a Disputed Domain Name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue.
It is the Complainant's burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Because it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
It is generally regarded as sufficient prima facie proof, for a complainant to show that the Disputed Domain Name is identical or confusingly similar to its mark, that the respondent is not commonly known by the Disputed Domain Name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the Disputed Domain Name or otherwise. Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857. In this case, the Panel has found that the Disputed Domain Name is confusingly similar to the marks in which the Complainant has rights. As already stated the Panel is prepared to accept the Complainant's assertions that it is the exclusive licensee for the marks HOLDEN and ASTRA. The Panel also accepts the Complainant's assertion that the Complainant has never licensed or otherwise permitted the Respondent to use the HOLDEN or ASTRA trade marks. Furthermore there is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by the Domain Name.
In the Panel's opinion the Complainant in this proceeding has demonstrated a prima facie case. The question for the Panel to now determine is whether the Respondent can demonstrate rights or legitimate interests in the Disputed Domain Name.
The Respondent contends that it has used the domain name in accordance with the principles laid down in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903. That case dealt with the issue of whether an authorized sales or service agent of trade marked goods could use the trade mark at issue in its domain name. Previous panels have questioned whether the criteria laid down in that case are necessarily applicable to a situation, as in this proceeding, where the Respondent has no relationship whatsoever with the trade mark owner: Gerd Petrik v. Johnny Carpela WIPO Case No. D2004-1043; Dr. Ing. h.c. F. Porsche AG v. Ron Anderson WIPO Case No. D2004-0312. In this case it is clear that the Respondent is not an authorized agent of the Complainant. Even in applying that test in this case, there are elements which the Respondent has not met. The Oki Data Americas test requires that the Respondent must be actually offering the goods at issue. The print outs of the Respondent's webpage provided by the Complainant clearly show that the goods are not being offered on the website itself, rather there is a link to a website <privatefleet.com.au> which sells the goods in question along with competing goods.
The panel in SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734 held that mere maintenance of a link alone does not constitute use “in connection with a bona fide offering of goods or services” for the purposes of the Policy. To find otherwise would mean that rights or legitimate interests could be acquired merely by creating a link for a Disputed Domain Name to a third party who does offer bona fide goods or services. In any event the linked website is selling competing products and not just the trade marked goods as is required under the Oki Data criteria.
Further it does not matter that an Internet user, on visiting the Respondent's website, might become aware that the website is not that of the Complainant's as a result of the use of a disclaimer. The confusion arises by a simple comparison between the Complainant's trade marks and the Disputed Domain Name: Aastra Telecom Inc. v. Spring Mountain Enterprise Pty Ltd, WIPO Case No. DAU2008-0003. The panel in Tridos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 noted that:
“the fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done”.
Therefore, based on the above discussion, the Complainant has, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(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 another person 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 a name, trade mark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
In view of the Complainant's numerous trade mark rights for HOLDEN and ASTRA, and its wide reputation, it is highly likely that a significant number of Internet users would believe that the Disputed Domain Name would lead to the Complainant's website. It is also highly likely that the Respondent was aware of the Complainant's marks when it obtained registration of the Disputed Domain Name. By using the Disputed Domain Name, the evidence suggests that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's well-known marks as to the source of that website or location. The disclaimer on the website does nothing to alleviate the initial interest confusion generated by the domain names themselves: Telstra Corporation Limited v. The Directors/Blogger Pty Ltd, WIPO Case No. DAU2008-0005.
The Respondent is using the goodwill and reputation of the Complainant's marks to profit from the obvious association with the Disputed Domain Name by attracting Internet users to the Respondent's website in order to generate hits on the link to <privatefleet.com.au>, a website connected with the Respondent, where various brands of new and used cars are sold. The Complainant has therefore satisfied the requirements of paragraph 4(b)(iv) of the Policy.
Also the fact that the Respondent maintained a link to the <privatefleet.com.au> website permits an inference that the real purpose of registration was more likely to be for the purpose of diverting traffic from the Complainant to <privatefleet.com.au>. Therefore in the Panel's view the Complainant has satisfied the requirement of paragraph 4(b)(iii); that the domain name was registered primarily for the purpose of disrupting the business or activities of another person.
For the reasons stated above and also in view of the various examples of the Respondent's previous conduct, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied.
In view of the above bad faith findings, the Panel finds untenable the Respondent's claim that the Complainant be found to have brought this Complaint in bad faith.
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 <holdenastra.com.au> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: October 31, 2008