WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Michael Patrick Lynch v. Steve Nicol (Stephen Joel Nicol)

Case No. D2015-0933

1. The Parties

The Complainant is Michael Patrick Lynch, Managing Director and Owner of Milir Waste Enterprises t/a Porta Treat of Highfields, Queensland, Australia, represented internally.

The Respondent is Steve Nicol (Stephen Joel Nicol), Director of Scarab Technologies of Bela Bela, Limpopo, South Africa.

2. The Domain Name and Registrar

The disputed domain name <portatreat.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2015. On June 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 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 June 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2015. The Center received an informal response on June 30, 2015.

The Center appointed William R. Towns as the sole panelist in this matter on July 3, 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.

4. Factual Background

The Complainant is the managing director and an owner of Milir Waste Enterprises (Pty) Limited¹ , an Australian based company that provides waste water treatment systems under the trading name Porta Treat. The Complainant and Milir Waste Enterprises are the owners of an Australian trademark registration for PORTA TREAT, entered on January 8, 2013, and effective from the filing date of May 21, 2012. The Complainant registered² and uses the domain name <portatreat.com.au> with the Porta Treat website.

The Respondent is the director of Scarab Technologies, a South African based company that provides waste water treatment systems under the Scarab brand. At one time the Complainant and Respondent were partners in Scarab Australia (Pty) Limited, which offers Scarab treatment systems in Australia, but have since had a parting of the ways and are now direct competitors.

The Respondent registered the disputed domain name <portatreat.com> on October 13, 2014. The disputed domain name resolves to a website that on first impression bears a strong resemblance to the Complainant's Porta Treat website. The Respondent, however, has added the Scarab logo next to the Porta Treat logo on the landing page, and has changed some of the original website content so as to represent that the Complainant's business is derived solely from Scarab's know-how, technology, goodwill, and reputation.

The Complainant commenced judicial proceedings seeking to enjoin the Respondent, but the preliminary relief sought by the Complainant has been denied by the court. The lawsuit remains pending.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant's PORTA TREAT mark. According to the Complainant, the Respondent is using the disputed domain name with a "pirate site" ("www.portatreat.com") – a duplicate of the Complainant's website – that is being used to defame the Complainant and the PORTA TREAT mark and business.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent is not commonly known by the disputed domain name, and is using the disputed domain name to publish misleading information under the pretext of being Porta Treat, and diverting inquiries from his duplicated site to his own email address in order to acquire the Complainant's contacts and obtain new business.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the disputed domain name is being used to discredit the Complainant and disrupt the Complainant's business by tarnishing the Porta Treat brand, and to attract for commercial gain Internet users to the Respondent's website by intentionally creating a likelihood of confusion with the Complainant's mark as to source, affiliation or sponsorship.

B. Respondent

The Respondent did not reply directly to the Complainant's contentions. The Respondent's email to the Center on June 30, 2015, following notification of the Respondent's default, refers the Center to the "www.portatreat.com" website, notes the denial of judicial relief sought by the Complainant, and "recommends" that the Complaint be dismissed.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <portatreat.com> is identical to the Complainant's PORTA TREAT mark, in which the Complainant has established rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.

Applying this standard, the disputed domain name is identical to the Complainant's mark for purposes of the Policy. Although the generic Top-Level Domain ("gTLD") may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent is a direct competitor of the Complainant, and without the Complainant's authorization or consent registered a domain name identical to the Complainant's mark. The Respondent has used the disputed domain name to divert Internet traffic to a website on which the Respondent promotes its own products and services.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Panel after consideration of the totality of facts and circumstances in the record finds nothing that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy. The Respondent without question was aware of the Complainant and the Complainant's PORTA TREAT mark when registering the disputed domain name. The record does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). To the contrary, the Respondent – a direct competitor of the Complainant – intentionally registered and has used a domain name appropriating the Complainant's mark to create Internet user confusion, ultimately to disrupt the Complainant's business and to promote the Respondent's own goods and services. Because of this, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii), notwithstanding any criticism of the Complainant on the website, whether true or untrue.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent registered the disputed domain primarily to disrupt the business of a competitor, and that the Respondent is intentionally using the disputed domain name to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name <portatreat.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: July 20, 2015

¹ Milir Waste Enterprises is owned by the Complainant and his wife.

² The WhoIs domain name registrant is Milir Waste Enterprises.

³ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.