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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TSM Pacific International Pty Ltd. v. Private Ranger Limited, Mustafa Filizkok, Blackwood Foodstuff Trading LLC, Dominic Sum, Cascadale Holdings Limited

Case No. D2017-2279

1. The Parties

Complainant is TSM Pacific International Pty Ltd. of Pemulwuy, Australia, represented by Daudpota International, United Arab Emirates.

Respondents are Private Ranger Limited of Auckland, New Zealand, Mustafa Filizkok, Blackwood Foodstuff Trading LLC of Dubai, United Arab Emirates, and Dominic Sum, Cascadale Holdings Limited of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <firebrandgcc.com> is registered with Instra Corporation Pty Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2017. On November 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2017, 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 Complainant on November 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 30, 2017.

The Center verified that the Complaint together with the amended 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 December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 26, 2017.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 12, 2018. 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

Complainant, TSM Pacific International PTY Ltd., is a manufacturer of natural environmentally friendly charcoal products including a line of sawdust briquette charcoals under the name and mark FIREBRAND BBQ Briquette Charcoal.

Complainant is the owner of registrations for the mark FIREBRAND in connection with its briquette products in (i) Australia (Registration No. 1179186, which issued to registration on May 31, 2007), (ii) Benelux (Registration No. 0920817, which issued to registration on August 10, 2012), and (iii) Thailand (Registration No. TM329299, which issued to registration on November 6, 2009). Complainant also owns a number of trademark registrations for combinations of either the words FIREBRAND BBQ CHARCOAL or FIREBRAND with a design element in several jurisdictions around the world, including in the United Arab Emirates (Registration No. 140014, which issued to registration on September 20, 2011).

On February 16, 2010, Complainant and Respondent Mustafa Filizkok, Blackwood Foodstuff Trading LLC (hereinafter referred to as "Respondent Blackwood") entered into a distribution agreement whereby Respondent Blackwood, which is based in the United Arab Emirates, became the exclusive distributor of various charcoal products under the FIREBRAND mark in several countries in the Middle East and Africa. Pursuant to that relationship, Respondent Blackwood was instructed by Complainant to register the disputed domain name and given the right by Complainant to use such for business development purposes. Respondent Blackwood registered the disputed domain name on January 28, 2010 using a privacy service offered by Respondent Private Ranger Limited. Respondent Blackwood became the listed registrant for the disputed domain name in or about 2014.

In or about August 2016, the distribution arrangement between Complainant and Respondent Blackwood terminated. Thereafter, Complainant requested that Respondent Blackwood cease use of the disputed domain name and transfer such to Complainant. Respondent Blackwood refused to do so. The parties had subsequent communications, copies of which are annexed as exhibits to the Complaint, regarding the disputed domain name. Respondent Blackwood continued to refuse to cease use of or transfer the disputed domain name to Complainant. The disputed domain name remained in the name of Respondent Blackwood up until at least July 18, 2017. On or about July 27, 2017, the registration for the disputed domain name changed and Respondent Private Ranger Limited became the listed registrant for the disputed domain name.

On November 16, 2017, Complainant filed its Complaint in this proceeding naming both Respondent Private Ranger Limited and Respondent Blackwood. Subsequently, the Center advised that the registrant of the disputed domain name as disclosed by the Registrar is Respondent Dominic Sum, Cascadale Holdings Limited, with an address in Hong Kong.

The disputed domain name currently does not resolve to an active website.

5. Parties' Contentions

A. Complainant

Complainant asserts that it owns rights in the FIREBRAND mark in numerous countries around the world based on its trademark registrations for the FIREBRAND mark and its combination marks that consist of either FIREBRAND or FIREBRAND BBQ CHARCOAL with a design element.

Complainant maintains that the disputed domain name was originally registered by Respondent Blackwood pursuant to a distributor relationship between Complainant and Respondent Blackwood, and that after the distributor relationship terminated in August 2016, Respondent Blackwood refused to cease use of the disputed domain name for a personal email address and refused to transfer to Complainant the disputed domain name despite multiple demands to do so. Complainant asserts that Respondent Blackwood moved the disputed domain name on July 27, 2017 to a new registrar and placed it under the name of Respondent Privacy Ranger Limited, a privacy service. Complainant further asserts that while the disputed domain name records now show Respondent Dominic Sum, Cascadale Holdings Limited as the registrant of the disputed domain name, Respondent Blackwood still uses the disputed domain name for email purposes and thus controls the disputed domain name. Complainant contends that all three Respondents are collectively engaged in retaining the registration of the disputed domain name by Respondent Blackwood after the distributor relationship between Complainant and Respondent Blackwood terminated. Complainant thereafter refers to all three Respondents collectively as Respondent or Respondent(s).

Complainant contends that the disputed domain name is confusingly similar to Complainant's FIREBRAND mark because it contains the FIREBRAND mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the suffix "GCC," which Complainant identifies as standing for "gulf cooperation countries," does not distinguish the disputed domain name, because consumers will perceive the disputed domain name, which incorporates Complainant's FIREBRAND mark in its entirety, as relating to Complainant.

Complainant argues that Respondent does not have any bona fide rights or legitimate interests in the disputed domain name because Respondent was obligated to cease use of and return the disputed domain name to Complainant upon termination of the distribution agreement between the parties. Complainant further asserts that Respondent's lack of a legitimate interest is confirmed by the fact that the disputed domain name is only being used for a personal email address and is not being used in relation to any goods or services.

Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was clearly aware of Complainant's FIREBRAND mark given the prior distributor relationship between the parties and Respondent's failure to transfer the disputed domain name to Complainant after the distributor relationship terminated. Complaint further asserts that given Respondent's awareness of Complainant's rights in FIREBRAND, Respondent acted in bad faith when Respondent re-registered the disputed domain name with another registrar and then proceeded to passively hold the disputed domain name.

B. Respondents

Respondents did not reply to Complainant's contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(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.

Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant's claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent's default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Preliminary Issue Regarding Multiple Respondents

Complainant has named three Respondents in this proceeding. In assessing whether to allow consolidation of a complaint that is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview 3.0 at section 4.11.2.

Here, Complainant argues that all three Respondents are engaged in the efforts by Respondent Blackwood to retain the disputed domain name after Complainant's distributor relationship and agreement terminated with Respondent Blackwood. The underlying factual underpinnings of Complainant's entire Complaint revolve around Respondent Blackwood and the acts of Respondent Blackwood to retain the disputed domain name after the distributor relationship with Complainant terminated. Respondent Privacy Ranger limited is a privacy service that Complainant asserts was used by Respondent Blackwood when the disputed domain name was originally registered in January 2010, and when Respondent Blackwood moved the disputed domain name to a new registrar in July 2017. As for Respondent Dominic Sum, Cascadale Holdings Limited, the name of the registrant that was provided by the Registrar after the Complaint was filed, Complainant simply argues that Respondent Blackwood still uses the disputed domain name for a personal email address (thus presumably controlling the disputed domain name) and that Respondent Dominic Sum, Cascadale Holdings Limited is merely the party listed as holding the disputed domain name. While Complainant is silent as to what the relationship between Respondent Blackwood and Respondent Dominic Sum, Cascadale Holdings Limited might actually be, all of the contentions made by Complainant in the matter are directed at actions by Respondent Blackwood and its orchestration of efforts to retain the disputed domain name following termination of the distributor agreement. Thus, it appears that Complainant is arguing that Respondent Dominic Sum, Cascadale Holdings Limited is a party controlled by Respondent Blackwood in furtherance of its efforts to retain the disputed domain name.

Given the commonality of the claims regarding Respondents' actions as they concern the disputed domain name, the Panel concludes that consolidation is proper in this matter. The three Respondents are hereinafter collectively referred to as "Respondent."

B. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns trademark registrations for the FIREBRAND mark in connection with its charcoal products.

With Complainant's rights in the FIREBRAND mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant's FIREBRAND mark as it incorporates the FIREBRAND mark in its entirety at the head of the disputed domain name. For purposes of this first element, the addition of the suffix "gcc," which is an acronym that is used to refer to the "Gulf Cooperation Council" and the countries that are part of such, does not distinguish the disputed domain name from Complainant's mark, as the dominant component of the disputed domain name is FIREBRAND. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant's FIREBAND mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

C. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

At the time Respondent registered the disputed domain name, Respondent Blackwood was an authorized distributor for Complainant and its FIREBRAND charcoal products. Indeed, Complainant admits that it instructed Respondent Blackwood to register the disputed domain name for purposes of business development. Consequently, at the time that Respondent Blackwood registered the disputed domain name, it was doing so legitimately and with the consent of Complainant.

However, when the distributor relationship between Respondent Blackwood and Complainant terminated in August 2016, Respondent Blackwood no longer had a legitimate basis for using the disputed domain name -- as Respondent Blackwood was no longer an authorized distributor for Complainant, and apparently per the distribution agreement between the parties was obligated to cease use of and return the disputed domain name to Complainant. Respondent Blackwood has apparently refused to do so and, despite multiple requests from Complainant, has retained the disputed domain name for use with a personal email address. By the same token, Respondent Dominic Sum, Cascadale Holdings Limited lacks a legitimate interest in the disputed domain name as regardless of its relationship with Respondent Blackwood as either a fictional or actual entity, Respondent Dominic Sum, Cascadale Holdings Limited is essentially part of the alleged scheme orchestrated by Respondent Blackwood to retain the disputed domain name after the termination of the distributor relationship.

As the relevant time for the assessment of whether a respondent has rights and legitimate interests is a disputed domain name is the date of the Complaint (WIPO Overview 3.0 at section 2.11), Respondent's actions in retaining the disputed domain name after the termination of the distributor relationship and use of such for a personal email address do not amount to a bona fide use and do not provide Respondent with a legitimate interest in the disputed domain name.

Given that Complainant has established with sufficient evidence that it owns rights in the FIREBRAND mark, and given Respondent's above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

D. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used the disputed domain name in bad faith. However, unlike the assessment of a respondent's legitimate rights or interests in a disputed domain name, which have to be assessed at the time of the complaint, the question of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name.

Here, Complainant admits that it instructed Respondent Blackwood to register the disputed domain name in January 2010 as part of the Parties' distributor relationship. Consequently, Respondent Blackwood could not have been acting in bad faith when it registered the disputed domain name in January 2010 with the knowledge and consent of Complainant.

The question that remains before the Panel is whether the change of registrar in July 2017 amounted to a new registration, which would move consideration of Respondent's actions in registering the disputed domain name to July 2017. Complainant argues that Respondent Blackwood re-registered the disputed domain name on July 27, 2017. However, merely moving the disputed domain name to a different registrar is not a new registration if the same registrant owns or controls the disputed domain name. Here, Complainant contends that Respondent Blackwood re-registered and moved the disputed domain name to a new registrar in July 2017 and did so using the privacy service of Respondent Private Ranger Limited. Complainant also asserts that Respondent Blackwood still uses or holds the disputed domain name for use as a personal email address, and that Respondent Dominic Sum, Cascadale Holdings Limited is merely the name of the party that holds the disputed domain name. Put another way, Complaint basically contends that Respondent Blackwood controls and uses the disputed domain name and that Respondent Dominic Sum, Cascadale Holdings Limited is simply a name that has been used by Respondent Blackwood to retain the disputed domain name. Complainant has provided no evidence that shows or suggests that Respondent Dominic Sum, Cascadale Holdings Limited is a new or unrelated party that acquired the disputed domain name from Respondent Blackwood in July 2017, and Complainant does not make any argument or claim in this regard.

Additionally, a review of the relevant WhoIs records submitted by Complainant with its Complaint further suggests that Respondent Blackwood likely still controls the disputed domain name. The WhoIs records show that the domain name servers used for the disputed domain name after the registrar change remained the same as those supporting the disputed domain name prior to the change of registrar. Complainant does not argue otherwise and in fact contends that Respondent Blackwood moved the disputed domain name to a new registrar and used a privacy service to mask the registration – the very same privacy service that Respondent Blackwood had used in 2010 to originally register the disputed domain name.

In sum, what Complainant has presented is that the disputed domain name is more likely than not being used and controlled by Respondent Blackwood. The Panel agrees with Complainant that Respondent's current use of the disputed domain name is in bad faith given that Respondent Blackwood has (i) refused to transfer the disputed domain name following the termination of the parties' distributor arrangement, (ii) held the disputed domain name to use for a personal address, and (iii) taken affirmative steps to make matters more difficult for Complainant in pursuing the matter, such as by masking the registration of the disputed domain name with a privacy service and/or by using a new registrant name (Respondent Dominic Sum, Cascadale Holdings Limited) that may simply be a sham name. However, while such actions do support bad faith use they do not establish that Respondent registered the disputed domain name in bad faith. The disputed domain name was originally registered in good faith by Respondent Blackwood in January 2010. The fact that the disputed domain name was registered in good faith and subsequently used in bad faith does not, as numerous UDRP panels have noted, change the original registration into a bad faith registration. See, e.g., Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085; Fuji Heavy Industries Ltd. (Fuji Jukogyo Kabushiki Kaisha) v. Radacini Autotrading SRL, WIPO Case No. DRO2007-0009. Consequently, based on the evidence submitted to the Panel, Complainant has failed to show the conjunctive requirement of bad faith registration and use by Respondent.

7. Decision

For the foregoing reasons, the Complaint is denied.

Georges Nahitchevansky
Sole Panelist
Date: January 29, 2018

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