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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sustainability Victoria v. Adrian Barbic

Case No. D2013-1899

1. The Parties

The Complainant is Sustainability Victoria of Melbourne, Australia, represented by Minter Ellison, Australia.

The Respondent is Adrian Barbic of Melbourne, Australia.

2. The Domain Names and Registrar

The disputed domain names <firstrate5.com> and <firstrate6.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2013.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 11, 2013. 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 is a statutory authority established under the Sustainability Victoria Act 2005 (Victoria) and located in Melbourne, Australia. The Complainant’s statutory objective is to facilitate and promote environmental sustainability in the use of resources. In accordance with its statutory objective, the Complainant has developed a number of tools and programmes to assist businesses to make energy and material savings. In 2007, the Complainant launched a software tool to verify that newly built houses comply with Builders Code of Australia energy efficiency standards and energy ratings. This software product is known as FirstRate5.

The Complainant is the owner of a trade mark consisting of the word “FirstRate5” (the “FIRSTRATE5 Mark”), for computer software and various scientific services in classes 9 and 42 in Australia, which it applied for on March 31, 2011 and registered on February 25, 2013. From October 2007, the Complainant has promoted and offered for sale the FirstRate5 software on its website at “www.sustainability.vic.gov.au”.

The Domain Name <firstrate5.com> was registered on May 20, 2010. The Domain Name <firstrate6.com> was registered on August 7, 2010. The Domain Name <firstrate6.com> currently resolves, and to the best of the information provided by the Complainant, always has resolved, to a holding page maintained by the Registrar. The Domain Name <firstrate5.com> resolves to a website (“Respondent’s Website”) that displays “FirstRate 5” in large type at the top of the screen, provides information about energy ratings and provides a series of links to energy rating companies (referred to as “FirstRate5 Energy Raters” including a company known as “BuildMark”). The Respondent’s Website does not presently make any reference to the Complainant however a previous version of the Respondent’s Website, captured by the Internet Archive Wayback Machine on February 3, 2011, made reference to the Complainant as follows:

“Who is FirstRate5 for?

Builders, designers, architects, building surveyors, planners and anyone with an interest in energy efficient house design can use the FirstRate software. Thermal Performance Assessment or Energy Rating using the Victorian Governments FirstRate5 software.”

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant’s FIRSTRATE5 Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

The Complainant is the owner of the FIRSTRATE5 Mark. The dominant component of the Domain Name <firstrate5.com> is identical to the FIRSTRATE5 Mark. The dominant component of the Domain Name <firstrate6.com> differs only from the FIRSTRATE5 Mark by the change of the number “5” to the number “6”. The Complainant submits that the registration of a common mistyping of the FIRSTRATE5 Mark by the Respondent was deliberate and constitutes the practice known as “typo-squatting”.

The Respondent has no rights or legitimate interests in the Domain Names. The Respondent is not related in any way to the Complainant’s business. The Complainant has not granted any licence or authorization to the Respondent to make any use of the FIRSTRATE5 Mark.

The Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. The Domain Name <firstrate5.com> resolves to the Respondent’s Website which advertises the services of certain energy efficiency assessors. Yet the Respondent’s Website contains the FIRSTRATE5 Mark at various locations and otherwise contains elements that are similar to the Complainant’s website, which suggests that the services offered by the Respondent are somehow connected to the Complainant. The use of the Complainant’s brand as the Domain Name for the Respondent's Website would initially lead potential customers of the Complainant to believe they were contacting the Complainant. As was held in Canon Kabushiki Kaisha v. Price- Less Inkjet Cartridge Company, WIPO Case No. D2000-0878, while the offering of services on the Respondent’s Website may be a lawful and legitimate business, the use of the Complainant’s brand as the domain name for that business, coupled with the content of the Respondent’s Website deprives that business of the character of being “bona fide” within the meaning of paragraph 4(c)(i) of the Policy.

The Domain Name <firstrate6.com> does not currently resolve to a website and instead resolves to a landing page maintained by the Registrar. Screen captures from the Wayback Machine suggest that <firstrate6.com> has never resolved to a website. Accordingly the Respondent does not appear to have used or made any demonstrable preparations to use <firstrate6.com> at all. Consequently, the Respondent cannot be using <firstrate6.com> in connection with a bona fide offering of goods or services, or be making legitimate noncommercial or fair use of <firstrate6.com>.

The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names in bad faith because when the Respondent registered the Domain Names:

(i) the Respondent had no rights or legitimate interests in the Domain Names;

(ii) the Respondent was aware of the Complainant’s common law rights in “FirstRate5” in Australia because of his connection with BuildMark, a company that performs thermal performance energy assessments using the Firstrate5 Software. The Respondent developed BuildMark’s website and shares a surname with the owner of BuildMark; and

(iii) the Respondent engaged in a pattern of conduct intended to prevent the Complainant from reflecting “FirstRate5” in a corresponding domain name, in the manner described in paragraph 4(b)(ii) of the Policy.

The Respondent has used the Domain Names to intentionally attract, for commercial gain, Internet users to the Respondent’s Website by creating a likelihood of confusion with the Complainant’s “FirstRate5” brand and as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the FIRSTRATE5 Mark, having a registration for FIRSTRATE5 as a trade mark in Australia.

It is well established that the generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) (such as “.com”) may be disregarded when evaluating whether a domain name is identical or confusingly similar to a complainant’s trade mark, see eBay Inc.v Akram Mehmood, WIPO Case No. DAE2007-0001; Magnum Piering, Inc.v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 and Rollerblade, Inc.v.Chris McCrady, WIPO Case No. D2000-0429. Therefore the Domain Name <firstrate5.com> is identical to the FIRSTRATE5 Mark.

The Domain Name <firstrate6.com> consists of the FIRSTRATE5 Mark with the replacement of “5” by “6”. Such a minor change does not prevent a finding of confusing similarity between the FIRSTRATE5 Mark and the Domain Name <firstrate6.com>.

The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s FIRSTRATE5 Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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 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)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain names incorporating the FIRSTRATE5 Mark or a mark similar to the FIRSTRATE5 Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.

The Domain Names are either inactive or resolve to a website that utilizes the name “FirstRate5” and purports to offer energy efficiency assessment services. The Complainant has put on evidence that the Respondent at all times has been aware of the Complainant’s energy assessment software and its reputation through creating a website for BuildMark, a company that performs thermal performance energy assessments using the Firstrate5 Software, and because the Respondent’s brother is the owner of BuildMark. Finally the Respondent’s Website, at least in an earlier itineration, contained a reference to the Complainant’s Software.

The Respondent, with knowledge of the Complainant has registered Domain Names to operate a website that appears to pass itself of as being connected to or associated with the Complainant without the Complainant’s permission. In the circumstances an inference can be drawn that the Respondent is not using the FIRSTRATE5 Mark or the Domain Names for a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Domain Names in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the Respondent 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that the Respondent at the time of registration of the Domain Names knew of the existence of the Complainant. The Respondent’s Website has in the past made reference to the Complainant’s FirstRate5 software product. Furthermore the Respondent has in the past created a website for BuildMark, a company that provides thermal performance energy assessments using the Firstrate5 Software. Finally, it is possible, but not certain, that the Respondent is the brother of the owner of BuildMark, which further reinforces the awareness the Respondent had of the Complainant at the time of the registration of the Domain Names. The registration of the Domain Names in awareness of Complainant, and its reputation and common-law rights in the FIRSTRATE5 Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.

The Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website and use of “FIRSTRATE5” appears to have been designed in order to confuse Internet users into thinking that the Respondent is somehow connected to the Complainant. It is therefore likely that the Respondent receives revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the FIRSTRATE5 Mark. While the Domain Name <firstrate6.com> is not currently active, the Panel is prepared to infer that the passive holding of the <firstrate6.com> Domain Name is use in bad faith. It reaches that conclusion because the Domain Name was registered with knowledge of the Complainant, was part of a pattern of the Respondent registering Domain Names that reflected the Complainant’s FIRSTRATE5 Mark, and there has been no use, or any evidence of plans to use the <firstrate6.com> Domain Name for any legitimate purpose.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a) (iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <firstrate5.com> and <firstrate6.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: December 18, 2013

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