The Complainants are Smart Fee Pty Ltd and KJR Passover Pty Ltd of Brisbane, Queensland, Australia, represented by Idea Harvest, Australia.
The Respondent is Quickfee Pty Ltd of North Ryde, New South Wales, Australia.
The disputed domain name <smartfee.com.au> (the "Disputed Domain Name") is registered with IntaServe (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 31, 2015. On August 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2015, 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" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Center received an informal pre-commencement communication from the Respondent on September 8, 2015. 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 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2015.
The Center appointed John Swinson as the sole panelist in this matter on October 14, 2015. 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 Complainants are Smart Fee Pty Ltd and KJR Passover Pty Ltd (formerly Smart Fee Pty Ltd). The Complainants are two corporations that are part of a wider network of companies known as "SV Group". The SV Group companies have a common director.
The SV Group companies are specialized accounting, financial and business services providers in Australia, and have been providing these services since 2003. KJR Passover Pty Ltd provided professional fee funding services under the brand SMARTFEE at the Disputed Domain Name from 2003 until approximately 2011. At that time, KJR Passover Pty Ltd was renamed Smart Fee Pty Ltd. In 2011, the current Smart Fee Pty Ltd began performing these services in place of KJR Passover Pty Ltd, until 2012 when the registration of the Disputed Domain Name was inadvertently allowed to lapse.
The Complainants claim common law trade mark rights in the terms SMART FEE, SMARTFEE and <smartfee.com.au> (the "Trade Mark").
The Respondent is Quickfee Pty Ltd of Australia. The Respondent also provides professional fee funding services, and is a competitor of the Complainants.
The Respondent registered the Disputed Domain Name on July 26, 2012.
The website at the Disputed Domain Name currently resolves to an error page. However, at other times from the date of the Respondent's registration until at least early 2015, the Complainant states that the website at the Disputed Domain Name redirected to the Respondent's website at "www.quickfee.com.au".
The Complainants make the following submissions.
The Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights, including the company and trading name Smart Fee Pty Ltd and the Trade Mark, and including the Complainants' prior use of the Disputed Domain Name. The Respondent is using the exact domain name that the Complainants were previously using in their business.
The Complainants have rights in the Trade Mark dating back to 2003 in relation to the business and brand operated under the Trade Mark. The Trade Mark has brand equity and goodwill arising from national promotion (including by third parties such as accountants), and was used in relation to professional fee funding services in Australia for almost ten years. The Complainants and the Trade Mark are recognized as pioneers in the professional fee funding industry.
The Complainants used the Disputed Domain Name to promote the services provided under the Trade Mark from 2003 until 2012, when the Complainants inadvertently allowed the registration to lapse, and the Respondent registered the Disputed Domain Name. The Complainants have maintained the registration of the company Smart Fee Pty Ltd. As such, it retains ownership of its common law trade mark and associated goodwill.
Rights in a "name", for the purpose of the Policy, refer to the Complainants' company, business or other legal or trading name. The Complainants' rights in "Smart Fee Pty Ltd" include those dating from 2003, when that company name was registered. That company name is still registered to the Complainants, and was registered to the Complainants at the time the Respondent registered the Disputed Domain Name.
KRJ Passover Pty Ltd was originally registered in the name "Smart Fee Pty Ltd" in 2003, and provided professional fee funding services under the Trade Mark. It traded under that name until 2011. From 2011 until the present, a further company within the SV Group, being Debt Finance Pty Ltd, changed its name to "Smart Fee Pty Ltd". The change of name predates the registration of the Disputed Domain Name.
The Respondent is a competitor of the Complainants, and has no rights to or legitimate interests in the Disputed Domain Name.
The Complainants have never authorized the Respondent to use the Disputed Domain Name, and the Respondent has never been commonly known by the Disputed Domain Name. The Respondent does not have any registered or pending trade mark rights which are the same as or similar to the Disputed Domain Name.
There is no evidence of the Respondent's bona fide use of, or demonstrable preparations to use, the Disputed Domain Name in connection with an offering of goods or services, or legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers to the website at the Disputed Domain Name.
The Respondent has previously used the Disputed Domain Name to redirect Internet users to its own website "www.quickfee.com.au".
The Respondent's registration of the Disputed Domain Name which comprises the Trade Mark, and then use of the Disputed Domain Name to redirect Internet users to the Respondent's business, is evidence of registration in bad faith, and subsequent bad faith use.
The Respondent registered the Disputed Domain Name to prevent the Complainants from reflecting the Trade Mark in the corresponding domain name, and disrupting the business and activities of the Complainants. The Respondent would have been aware that the Disputed Domain Name was integral to the business of the Complainants, as the Complainants had been using that domain name for almost ten years. The timing of the Respondent's registration seems opportunistic, as the Respondent registered the Disputed Domain Name after the Complainants had inadvertently allowed the registration to lapse during a period in which its director was terminally ill.
The Respondent has previously used the Disputed Domain Name to divert Internet users to its own business at the domain name <quickfee.com.au>. The Respondent is taking unfair advantage of the Complainants' rights and reputation in the Trade Mark. The Respondent has used the Disputed Domain Name to misleadingly attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark.
The Respondent did not reply to the Complainants' contentions. The Respondent's brief email of September 8, 2015 was non-substantive in nature.
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 have subsequently been used in bad faith.
The onus of proving these elements remains on the Complainants even though the Respondent has not filed a Response.
The Complaint was filed in the name of "SV Group, being the corporate group including the companies…". The Complainant "SV Group" then listed six Australian corporations. SV Group does not appear to be a legal person or legal entity. SV Group has no standing to bring the Complaint. The identity of the Complainants is somewhat uncertain, as it includes a non-inclusive list of corporations. For many of the corporations listed, it is unclear why they have been included as Complainants and what association they have with the name or trade mark "Smart Fee".
In Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638, the panel concluded that a complaint may be submitted by multiple related parties where there are common interests in a single domain name. In that case, the joint complainants failed to present their claim adequately as they obscured the trade mark ownership interests among each of the parties, requested an ambiguous remedy by not stating to which of the Complainants the contested domain name should be transferred to, and avoided the identification of each party's stake in the remedy. That is very close to the situation here, and the Complaint almost fails for this reason.
Previous panels have permitted a single complaint where the complainants have a "common grievance" against the respondent, as long as it is equitable and procedurally efficient to do so (National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021; Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-0891; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).1
Based on the evidence before the Panel, the Panel does not accept that all of the companies in the SV Group have common legal interests in respect of "Smart Fee". While multiple complainant companies may be considered to have rights to a trade mark where those companies form part of a larger corporate group (National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra), the SV Group is not a separate legal entity and so this reasoning does not apply.
However, the Panel considers that the two named Complainants, being Smart Fee Pty Ltd and KJR Passover Pty Ltd, both have necessary rights to be considered as proper complainants, as both have previously operated a professional fee funding business under the name "Smart Fee". Further, Smart Fee Pty Ltd has current rights as its company name incorporates "Smart Fee". As such, the Panel permits these two companies to be joined as Complainants in this dispute.
For the purposes of this decision, a reference to "Complainants" is a reference to Smart Fee Pty Ltd and KJR Passover Pty Ltd.
The Complainants filed seven statutory declarations, along with a signed complainant. Some of the statutory declarations included exhibits. The Panel considers the materials filed by the Complainant to be excessive, repetitive and in parts unnecessary. Because the complainant includes a certification (see Rules, paragraph 3(b)(xiv)), there is often no need for additional sworn testimony. Including seven statutory declarations along with the Complainant was, in this Panel's view, wasteful.
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainants (see e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default.
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights.
As the panel noted in Marshmallow Skins, Inc. v. Piipiinoo Australia Pty Limited, WIPO Case No. DAU2013-0015:
"The relevant section of the Policy states that 'your domain name is identical or confusingly similar to a name [Note 1], trademark or service mark in which the complainant has rights'. Note 1 being '[1] For the purposes of this policy, auDA has determined that a 'name […] in which the complainant has rights' refers to: a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant's personal name.'
The Policy as written does not restrict the Complainants' rights to a trade mark registered with an Australian government authority."
The Complainants do not claim to have ownership of a registered trade mark for SMART FEE or similar.
The Complainants claim common law rights in SMART FEE. In order to successfully assert common law or unregistered trade mark rights the Complainants must show that SMART FEE has become a distinctive identifier associated with the Complainants or their goods or services (i.e., that those terms have acquired a secondary meaning) (see e.g., Play Club by Cipriani, S.L. / Giuseppe Cipriani v. Identity Protection Service / Amir Zeb / Eyhab Jumean, WIPO Case No. D2013-1883). Here, the Panel considers that the Complainants have not provided sufficient evidence to demonstrate common law or unregistered trade mark rights.
However, as noted in Marshmallow Skins, a complainant's company name that is identical or confusingly similar to the disputed domain name is sufficient to find for the complainant on the first element of the Policy. Here, the company name "Smart Fee Pty Ltd" is substantially identical to the Disputed Domain Name. KJR Passover Pty Ltd had previously also traded under that company name.
Accordingly, the Complainants succeed on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainants have made out a prima facie case for the following reasons:
- The Respondent is a competitor of the Complainants. The website at the Disputed Domain Name currently resolves to an error page, but according to the Complainants has previously redirected Internet users to the Respondent's website at "www.quickfee.com.au". Such use is not bona fide.
- The Complainants have not authorised the Respondent to use the Disputed Domain Name.
- The Respondent has not been commonly known by the Disputed Domain Name. The Complainants have searched a number of public registers and have confirmed that the Respondent does not have any independent rights to SMART FEE.
- The Respondent has not made a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. In fact, the Respondent has seemingly used the Disputed Domain Name for the very purpose of diverting consumers to its own website.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainants has not been rebutted and the Complainants succeed on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
As mentioned above, the Complainants had been operating and promoting their professional fee funding business via a website at the Disputed Domain Name from 2003 to 2012. The Respondent registered the Disputed Domain Name on July 26, 2012, only after the Complainants had inadvertently allowed their domain name registration to lapse. The Complainants held the registered company name "Smart Fee Pty Ltd" at the time the Respondent registered the Disputed Domain Name.
Given that the Respondent is a competitor of the Complainants, and that, as submitted by the Complainants, professional fee funding is a niche market with few players, the Panel considers it unlikely that the Respondent was not aware of the Complainants at the time it registered the Disputed Domain Name. The Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
A finding of registration in bad faith is sufficient for a finding of bad faith under the Policy. However, for completeness, the Panel will also consider whether the Respondent has used the Disputed Domain Name in bad faith.
The Panel considers it likely that the Respondent registered the Disputed Domain Name in order to prevent the Complainants from doing so. Previous panels have found that when a disputed domain name consists solely of a trade mark, then this has the effect of preventing the relevant complainant from reflecting its mark in the corresponding domain name, which is an indicator of bad faith under paragraph 4(b)(ii) of the Policy (see e.g., Statoil ASA v. Creative Domain Pty Ltd. / Christine K. Hoyer, WIPO Case No. DAU2013-0012). There is no additional requirement that the respondent is engaging in a "pattern of conduct" (unlike under the UDRP).
The Panel further considers that the Respondent registered the Disputed Domain Name for the primary purpose of disrupting the business activities of the Complainants, being a competitor of the Respondent (see paragraph 4(b)(iii) of the Policy). In using the Disputed Domain Name to redirect to the Respondent's own website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source of the website (see paragraph 4(b)(iv) of the Policy). The current passive holding of the Disputed Domain Name is not a bar to finding bad faith use in the circumstances of this case.
In light of the above, the Panel concludes that the Respondent registered, and subsequently used the Disputed Domain Name 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 Disputed Domain Name <smartfee.com.au> be transferred to Smart Fee Pty Ltd.2
John Swinson
Sole Panelist
Date: October 27, 2015
1 While the Complaint was brought under the Policy and not the Uniform Domain Name Dispute Resolution Policy (UDRP), given the textual similarities between the Policy and the UDRP, the Panel finds cases brought under the UDRP relevant precedent to the current proceeding, and will refer to them throughout.
2 The Complainant requested that the Disputed Domain Name "be transferred to the Complainant (and, in particular, its company Hall Funding Pty Ltd.)" No evidence was presented as to why Hall Funding has rights under the first element of the Policy. It is inappropriate to transfer the Disputed Domain Name to Hall Funding Pty Ltd.