Complainant is JB Hi-Fi Limited of Chadstone, Victoria, Australia, represented by Crowell & Moring LLP, Belgium.
Respondent is Ngan Lau of Hong Kong, China, self-represented.
The disputed domain name <jbhifi.online> is registered with Gandi SAS (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2016, the Registrar 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” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Response was filed with the Center on July 27, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 3, 2016. 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.
Complainant is the owner of registration of the word service mark J.B. HI-FI on the register of IP Australia, registration number 786727, registration entered on register July 3, 2001, in international class 35, covering “Retailing services being the retailing of recorded music, audio, video, communications and computer related products and equipment and products, parts and accessories used in relation to those products and equipment”.
Complainant markets and sells consumer electronic products in Australia and in other countries. Complainant operates commercial websites at “www.jbhifi.com” and www.jbhifi.com.au”. Complainant is headquartered in Melbourne, Australia, and its shares are traded on the Australian Securities Exchange under the symbol JBH. Complainant had total revenues in fiscal year 2016 approximating AUD 4 billion.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the record of registration for the disputed domain name is August 27, 2015. It appears that Respondent was the creation registrant.
The disputed domain name is not directed to an active website, and there is no indication on the record of this proceeding that it has ever been used in connection with an active website.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the trademark JB HI-FI1 as evidenced by registration in Australia and by use in commerce in Australia and elsewhere.
Complainant argues that the disputed domain name is identical or at least confusingly similar to its trademark because the disputed domain name incorporates its trademark in its entirety, and (1) the gTLD “.online” should be disregarded for purposes of comparison and (2) the gTLD under the circumstances adds to potential Internet user confusion.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not submitted any evidence to show that it is commonly known by the disputed domain name; (2) Respondent has not acquired trademark or service mark rights and its use and registration of the disputed domain name was not authorized by Complainant, and; (3) the disputed domain name does not resolve to any content, and passive use does not constitute a legitimate or fair use under the Policy.
Complainant alleges that the disputed domain name was registered and is being used in bad faith because: (1) Complainant must prove on the balance of probabilities that the disputed domain name was registered and is being used in bad faith; (2) the disputed domain name is well known all over the world and has no generic or descriptive meaning; (3) a simple trademark search at the time of registration would have revealed Complainant’s trademark registrations, and a simple Internet search would have revealed Complainant’s online presence and trademark; (3) Respondent could not reasonably have been unaware of the fame of Complainant’s trademark, and knowledge of a trademark at the time of registration suggests bad faith; (4) by registering the disputed domain name, Respondent prevents Complainant from reflecting its mark in a corresponding domain name; (5) Respondent registered at least one other domain name that prevented a trademark owner from reflecting its mark in a corresponding domain name, citing Telstra Corporation Limited v. Ngan Lau, WIPO Case No. D2015-2218, which establishes a pattern of preventing others; (6) “[t]he passive holding of a domain name amounts to bad faith when it is difficult to imagine any plausible future active use of the domain name by the Respondent that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation”, and in this case it is impossible to imagine Respondent’s plausible legitimate use of the disputed domain name in view of the well-known character of Complainant’s mark; (7) it cannot be excluded that Respondent will use the disputed domain name for fraudulent activity because of the possibilities for Internet user confusion, and; (8) use of a privacy service supports an inference of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent’s response is quoted below in its entirety:
“Dear Sir,
I am shocked to receive the complaint and dispute of my registered domain <jbhifi.online>.
Below is my responses to the case
1. I registered the above domain for use on our music band’s website – Online John and Paul’s Hi-Fi in
Hong Kong.
2. The above domain was registered on 27 August 2015, on which the new TLD was available for general
public. The complaint is made almost 1 year after the domain became available for public, it is unfair to
current domain owner.
3. We have invested significant resources and time in developing the website and have set a launch date in
early 2017.
4. There was no requirements to own a new TLD domain, anyone is eligible to register a ONLINE domain.
5. According to the ICANN, ONLINE domain is served at a first-in-first-serve base once it become available to the general public.
6. The above domain has never been used in the public at all, there has no intention to replicate anything that associates to JB Hifi Australia.
7. JB Hifi is an Australian company which currently hold trademarks in Australia only, not Hong Kong, or
anywhere else.
8. JB Hifi, as a trademark holder, has been given priority to acquire the above domain prior the general public, it is the company’s responsibility to protect its trademark by taking advantage of Sunrise Period of new TLD. This is the purpose of the Sunrise Period.
I feel annoyed to hear that a large company has filed a dispute case for overseas small individuals, try to win back the domain that they carelessly missed out, yet the company was given higher priority at the first place. I hope WIPO will judge accordingly to this case and favour the decision to my current ownership.
Regards,
Ngan Lau”
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center formally notified the Complaint to Respondent at the email, fax and physical addresses provided in its record of registration. Delivery to Respondent was confirmed, and Respondent filed a timely Response. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of ownership of rights in the service mark JB HI-FI, including through registration at IP Australia and through use in commerce in Australia. Respondent has admitted Complainant’s trademark registration in Australia, and it has not challenged Complainant’s service mark rights in that jurisdiction. The Panel determines that Complainant has rights in the service mark JB HI-FI.
The disputed domain name, <jbhifi.online>, directly incorporates Complainant’s service mark, omitting the hypen and spacing. The omission of a hyphen does not materially change the appearance, sound or meaning of the service mark in the disputed domain name, and from that standpoint the second level domain name (i.e., before the dot) is essentially identical to Complainant’s service mark. Complainant maintains a substantial online presence. Internet users viewing Complainant’s service mark in connection with a word referring to an active Internet presence (i.e., “online”) would likely assume that Complainant is associated with the disputed domain name.
The Panel determines that Complainant owns rights in the service mark JB HI-FI, and that the disputed domain name is confusingly similar to that service mark.
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue.”
(Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has made several claims intended to establish its rights or legitimate interests in the disputed domain name. The first is that Complainant “registered the above domain for use on our music band’s website – Online John and Paul’s Hi-Fi in Hong Kong”. The second is that “We have invested significant resources and time in developing the website and have set a launch date in early 2017.” In principle the first of these allegations, if supported, might go towards supporting a claim that Respondent had been commonly known by the disputed domain name. Whether the second allegation in principlemightgo toward establishing demonstrable preparations to use in connection with a bona fide offering of services, before notice of the dispute, need not be decided. Respondent has provided no evidence whatsoever of the existence of a music band in Hong Kong, China. Likewise, Respondent has provided no evidence whatsoever of expenditure on preparations for the launch of a website, other than registration of the disputed domain name. It is well-established under the Policy that mere unsupported allegations of preparations to use, or of being commonly known by a disputed domain name, are not sufficient to establish rights or legitimate interests. If such unsupported allegations were sufficient to establish rights or legitimate interests, every respondent could simply assert such unsupported “facts”, and successful pursuit of a complaint under the Policy would be highly problematic, at best. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000.
Respondent’s mere registration of the disputed domain name does not establish rights or legitimate interests, particularly in circumstances where, as here, the disputed domain name does not reflect a generic term.2 Complainant’s service mark incorporated in the disputed domain name is distinctive. Registration of a domain name containing the distinctive service mark of a third party does not standing alone (as here) establish rights or legitimate interests.
The fact that Complainant did not register the disputed domain name, even though it might have done so, does not affect Complainant’s right to bring a complaint under the Policy.
Respondent has not provided any evidence to rebut Complainant’s prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel determines that Respondent lacks rights or legitimate interests in the disputed domain name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (i) that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Policy, paragraph 4(b)(i)); (ii) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct” (Policy, paragraph 4(b)(ii)), and (iii) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location of a product or service on [its] website or location” (Policy, paragraph 4(b)(iv)). The enumerated list of potential bad faith elements is illustrative, not exhaustive.
Respondent has not actively used the disputed domain name in connection with an operational website. This does not preclude a finding of registration and use in bad faith depending upon the circumstances of the case.
Although Complainant has not provided evidence of trademark or service mark registrations outside Australia,1 it has provided evidence of Complainant’s significant online presence, which presence extends to Respondent in Hong Kong, China. A Google or other search of the second-level domain name “jbhifi” would have revealed Complainant’s substantial commercial Internet operations under its service mark which extend beyond Australia, and would have made Respondent aware of the disputed domain name’s potential for conflict with an existing trademark. Respondent is not in a position to successfully assert ignorance of Complainant or its service mark rights.
Further, the panel notes that Respondent previously registered the well-known trademark of a third party in a domain name and was found by a UDRP panel to have used that domain name in bad faith. See Telstra Corporation Limited v. Ngan Lau, WIPO Case No. D2015-2218. This reflects a pattern of conduct on the part of Respondent in respect to registering third-party trademarks to prevent registration by the trademark owners of their trademarks in corresponding domain names.
Respondent’s asserted intended use of the disputed domain name stretches credulity. Respondent’s name is Ngan Lau, and he refers to his band’s prospective (but unsubstantiated) website as “Online John and Paul’s Hi-Fi in Hong Kong”. Putting aside for the moment that Respondent does not appear to be named “John” or “Paul”, with due consideration for the possibility that Respondent also uses an alternative English-language first name, Respondent does not explain why “John and Paul” would be abbreviated as “JB” (instead of “JP”). The somewhat incredible prospective use asserted by Respondent helps to establish that Respondent has no plausible approach to making legitimate good faith use of the disputed domain name.
When the facts of Respondent’s previous registration of a domain name containing a third-party trademark are combined with an explanation for registration in the present case that on its face strains credulity, and with the circumstance that Respondent presumably was aware of Complainant’s service mark when it registered the disputed domain name, the Panel is satisfied that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith.
For 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 <jbhifi.online> be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: August 15, 2016
1 The Panel notes that the record of registration of the relevant service mark shows each of the initials “J” and “B” followed by a period (“.”), such that the registration shows J.B. HI-FI. The evidence of use on the Internet furnished by Complainant does not include the periods. This matter has not been addressed in the Complaint. The Panel assumes that there is no material legal difference between the service mark as registered and the service mark as used by Complainant, and will hereafter in this decision refer to Complainant’s service mark as “JB HI-FI”.
2 For discussion of whether registration of a generic term may automatically establish rights or legitimate interests, seeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2, “Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?” Per the “consensus view” discussion, additional elements need to be established.
3 Complainant has asserted ownership of trademark registrations in countries other than Australia, but does not provide evidence of such registrations. Respondent has asserted that Complainant holds trademarks in Australia only, not in Hong Kong or anywhere else. Respondent has not provided evidence to support its assertion in the form of search results from trademark databases outside Australia. In light of the conflicting allegations of the Parties, and in the absence of direct evidence, the Panel makes no determination regarding whether Complainant owns service mark rights outside Australia.