The Complainant is Atlassian Pty Ltd. of Sydney, New South Wales, Australia, represented by IPLA, United States of America ("USA").
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
The disputed domain name <attlassian.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 5, 2016.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on April 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 27, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on May 6, 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.
The Complainant is a well-established Australian software development company that develops and markets a range of products to software developers, project managers and consumers. The Complainant has over 50,000 customers globally, including 78 of the Fortune 100 companies.
The Complainant registered its business name with the Australian Securities and Investments Commission in 2001 and its ATLASSIAN trade mark, in which it initially had only common law rights, has been in continuous use since that time. The Complainant's main website is resolved to through the domain name "www.atlassian.com" which it registered on March 19, 2001.
By 2002 the Complainant had generated international business. Its JIRA product was released in 2002 and its CONFLUENCE product was released in 2003. As at 2005, the Complainant's customers included technology companies such as Oracle, Cisco, SAP and Hewlett-Packard. By late 2005 the Complainant had established a second office, in San Francisco, California, USA, and was named in Deloitte's 2006 Technology Fast 50, Australia. By mid-June 2006, the Complainant had over 4,000 customers and 50 staff worldwide. By 2007 the Complainant had recorded annual revenues of USD 22.5 million.
The Complainant has secured registrations of its ATLASSIAN trade mark in many countries, including Australia, the United States and Europe the first of which was registered in March 2008. These marks include the following:
|
Country |
Mark |
Registration No. |
Classes |
Filing Date |
|
Australia |
ATLASSIAN |
1228364 |
9, 38 & 42 |
March 5, 2008 |
|
United States |
ATLASSIAN |
3667007 |
9, 38 & 42 |
August 12, 2008 |
|
European Union |
ATLASSIAN |
983132 |
9, 38 & 42 |
August 12, 2008 |
Further, the Complainant has registered trade marks in many countries in relation to its JIRA and CONFLUENCE software products. The relevant trade marks for Australia, the United States and the European Union were each registered in 2008.
The Respondent is a privacy shielding service. It has offices in Queensland, Australia and Kingstown, Saint Vincent and the Grenadines. The disputed domain name was registered by the Respondent on February 27, 2006. As at March 24, 2016 the disputed domain name resolved to a directory page which contained links to a number of software-related products, including links ostensibly relating to the Complainant's JIRA and CONFLUENCE products and to the Complainant. The Respondent's website has also intermittently redirected to a Yahoo! Search page containing search results for "software" or "software development".
The Respondent did not reply to cease and desist letters sent on behalf of the Complainant in February and March 2016.
The Complainant submits that the disputed domain name is identical or confusingly similar to its ATLASSIAN trade mark in which it claims rights, including common law rights, dating back to 2001. The Complainant asserts that, whilst filings for its registered trade marks did not take place until 2008, its common law rights to ATLASSIAN, JIRA and CONFLUENCE all pre-date the registration of the disputed domain name in 2006 by some years and that these trade marks were already well known in Australia by that time. Further the Complainant contends that, by 2006, its ATLASSIAN brand had already gained worldwide fame and recognition.
The Complainant asserts that the Respondent has registered the disputed domain name because of its similarity to the Complainant's ATLASSIAN trade mark. It says that the Respondent has simply taken the Complainant's distinctive trade mark and added an additional "t" so that the disputed domain name will capture website traffic from Internet users seeking the Complainant who have misspelled its name; in other words, the Respondent's registration and use of the disputed domain name amounts to "typosquatting". Moreover, the Complainant says that the website to which the disputed domain name has generally pointed as from January 2016 has featured links that ostensibly related to the Complainant and its JIRA and CONFLUENCE products.
The Complainant further submits that the Respondent has no rights or legitimate interests in relation to the disputed domain name on the basis that it has never used "Attlassian" as a trade mark and has no trade mark registrations for it. Moreover, the Complainant says that the Respondent's only known use of the disputed domain name has been to generate click-through revenue by using the Complainant's trade marks. It asserts that such use of the disputed domain name does not comprise a bona fide, legitimate or noncommercial use of the disputed domain name and that it misleadingly diverts the Complainant's customers and tarnishes the reputation which the Complainant enjoys in its trade marks.
Lastly, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. In support of its assertion of bad faith registration, the Complainant says that, whilst its ATLASSIAN, JIRA and CONFLUENCE trade marks were not registered as the date of registration of the disputed domain name, it nonetheless had a substantial reputation in those marks which "were already well-known in Australia and around the world". Accordingly, it says that it is highly probable that the Respondent was familiar with the Complainant's marks at the date of registration and that its purpose in doing so was to derive income from the resultant confusion caused to Internet users.
So far as bad faith use is concerned, the Complainant asserts that the Respondent has capitalized on the goodwill and success of the Complainant's brand and its trade marks for software-related services by its use of the disputed domain name and by using the Complainant's trade marks in content on the website to which the disputed domain name periodically resolves. In particular, the Complainant says 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 marks as to the source, sponsorship affiliation and endorsement of the Respondent's domain name and website content. In this respect, the Complainant points out that neither ATLASSIAN nor JIRA are common words and that it is highly unlikely that the Respondent's registration of the disputed domain name and its use of the Complainant's trade marks for these words has been purely coincidental. Moreover, it says that content on the website to which the disputed domain name sometimes points includes references and links to "project tracking software" and "project management software" which are the same types of products offered by the Complainant in connection with its ATLASSIAN, JIRA and CONFLUENCE marks.
The Complainant says that the confusion which has been caused by the Respondent's use of the disputed domain name has been compounded by the Respondent's failure to provide a response to the cease and desist letters sent on behalf of the Complainant.
The Respondent did not reply to the Complainant's contentions.
Dealing, first, with the Respondent's failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The first issue which requires consideration is the Complainant's rights in the trade mark relied on, that is ATLASSIAN. As indicated above, the Complainant has established that, among others, it has registered trade marks for ATLASSIAN in many countries. It clearly has rights in this trade mark for the purpose of this element of the Policy.
The next issue is whether the disputed domain name is identical or confusingly similar to the ATLASSIAN trade marks. When assessing the degree of similarity between a disputed domain name and a complainant's trade mark it is established practice to disregard the generic Top-Level Domain suffix ".com". Having this in mind, the disputed domain name is identical to the Complainant's trade mark save for the addition of an additional "t" next to the existing "t". A minor variation of this type does not serve to prevent the disputed domain name from being confusingly similar to the Complainant's ATLASSIAN trade mark. First, the Complainant's mark has a high degree of distinctiveness, having no meaning in the English language. Second, the addition of a single letter does not render the disputed domain name from being aurally, visually or phonetically dissimilar to the Complainant's trade mark. Third, the ATLASSIAN mark is evidently well known and a minor alteration is unlikely to prevent confusion being caused to at least some Internet users who know of the Complainant when seeing the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that (as an individual, business, or other organisation) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these grounds would appear to be remotely applicable to the current facts. Moreover, the Respondent has failed to respond either to this Complaint or to cease and desist letters sent on behalf of the Complainant in February and March 2016, prior to the filing of this Complaint. It has thereby declined to take the opportunities available to it to provide evidence which might suggest that it has a right or legitimate interest in the disputed domain name whether on the specific grounds set out above or on any other basis.
In particular, such use as the Complainant has made of the disputed domain name is not in connection with a bona fide offering of goods and services. The use of the disputed domain name has been to point to either a Yahoo! search result or a parking page comprising sponsored links relating to the Complainant. It follows from the above the Respondent is unable to demonstrate that it has made a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant's ATLASSIAN trade mark.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
Dealing first with bad faith registration, it is material to have regard to the fact that the Complainant's ATLASSIAN trade marks were not registered until after the registration of the disputed domain name in February 2006. Accordingly, it is necessary to consider the extent of the Complainant's rights as at the date of registration of the disputed domain name for the purpose of attempting to assess the Respondent's likely motivation.
The Complainant was established in 2001 and appears to have grown steadily. As of February 2006, it had, at least, a profile in Australia and there is some evidence to suggest that it was known outside Australia, albeit it may not have achieved "worldwide fame and recognition" as the Complainant has asserted. One of the documents submitted by the Complainant includes a claim by the Complainant's marketing director that, in 2005, the Complainant was "Australia's fastest growing software company". Other independent evidence indicates that, as at 2005, the Complainant was recognised as the third fastest growing company in Australia.
In the absence of any evidence from the Respondent it is necessary for the Panel to draw appropriate inferences from the known facts. In this regard, the Panel has regard to the fact that there is no evidence that the disputed domain name has ever been put to bona fide use, that the distinctive character of the Complainant's trade mark renders it unlikely that the Respondent had registered the disputed domain name in ignorance of the Complainant's business and trading style and that the Respondent has chosen not to attempt to rebut any of the Complainant's assertions. Taking into account each of these factors, coupled with the fact that the Complainant was clearly well-known as at early 2006, the Panel considers that it is likely that the Respondent registered the disputed domain name when aware of the Complainant's business and ATLASSIAN and other brands and in order unfairly to seek to take advantage of it.
The exact use to which the disputed domain name has been put between the date of registration and January 2016 is not known. However, having regard to the known uses to which the disputed domain name has been put since early 2016 there is no basis for supposing that any use of the disputed domain name during that period may have been in good faith. In the absence of any evidence or response from the Respondent, it would be inappropriate for the Panel to make any presumption in favour of the Respondent in that respect.
The use of the disputed domain name in 2016 to point to a parking page containing links which apparently take the Internet user to sites relating to the Complainant or to its JIRA and CONFLUENCE products, or to other similar websites, falls within one of the non-exhaustive grounds of bad faith set out at paragraph 4(b) of the Policy. Specifically, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith by the Respondent.
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 <attlassian.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: May 19, 2016