WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cobb International Limited v. Cobb Australia & New Zealand (Pty) Ltd.

Case No. DAU2013-0005

1. The Parties

The Complainant is Cobb International Limited of Sandton, South Africa, represented by DM Kisch Inc., South Africa.

The Respondent named in the Complaint is Cobb Australia & New Zealand Pty Ltd. Of Tullamarine, Victoria, Australia, represented internally.

2. The Domain Name and Registrar

The disputed domain name <cobb.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On March 4, 2013, NetRegistryPty Ltd. transmitted by email to the Center its verification response appearing to state that Mr. B. Sinclair was listed as the registrant and providing the contact details for the disputed domain name. Following clarification being requested by the Center, the Registrar confirmed that the Respondent is in fact the registrant.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Center received email communications from the Respondent on March 8, 21 and 24, 2013. The Response was filed with the Center on March 21, 2013.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 9, 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 South African company which manufactures and sells around the world barbecues or cookers under the brand name “Cobb”.

In Australia, it has two registered trademarks, Nos. 904340 and 1463222. Both are registered for goods in International Class 11 which include cookers. Trademark No. 904340 was registered in 2002 and is for the word “Cobb” with a figurative element of 2 flames. Trademark No. 1463222 was registered in December 2011 and is for COBB.

The Respondent was the Complainant’s distributor for a number of years. In June 2006, the Respondent was appointed the Complainant’s exclusive distributor in Australia pursuant to a written Distribution Agreement.

It appears that in 2010 the Respondent was wound up (it has now been deregistered) and the distributorship was carried on by another company incorporated by Messrs B. and P. Sinclair, apparently called Halcyon Concepts Pty Ltd (“Halcyon”). Halcyon registered the business name “Cobb Australia & NZ” for its operations as the Complainant’s distributor.

During the course of the distributorship, the Respondent registered 2 domain names, <cobbaustralia.com.au> and <cobb.com.au>. The disputed domain name was first registered on July 5, 2006.It is not clear if the Respondent became the registrant of <cobb.com.au> at that time or thereafter. The Wayback Machine at “www.archive.org” shows a website for an apparently wholly unrelated business unassociated with cookers in the mid-2000s. By 2009, however, the Wayback Machine records the domain name <cobbaustralia.com.au> redirecting to a website at the disputed domain name.

The distributorship has come to an end. The Complainant says the distributorship was terminated by mutual agreement in November 2012. Halcyon says that the distributorship terminated in June 2011 on the expiry of its 5 year term.

Halcyon says it has transferred the domain name <cobbaustralia.com.au> to the Complainant’s current distributor. It says it is using the disputed domain name for a website to sell genuine Cobb-branded stock on hand following the termination of the distributorship.

Neither party has submitted a print out of the website being operated by Halcyon since the distributorship came to an end. At the time this decision is being prepared, the disputed domain name does not resolve to a website.In its Response, Halcyon states that it has deactivated the website because it has now sold all remaining stock.

The Wayback Machine has “captured” the website as at January 19, 2013. It appears to be identical to the website as “captured” by the Wayback Machine in 2012 and for much the second half of 2011. The website “captured” by the Wayback Machine in February 2011 (i.e., before the termination of the distributorship (on Halcyon’s case)) was a little bit different to the January 2013 version. The main difference is that the trademark used in the headline banner is the figurative version of the Complainant’s trademark (with the 2 flames). In the January 2013 version (and the versions throughout 2012), the trademark is presented in white block capitals against a red background in a way very similar to how the Complainant (and for that matter, its current Australian distributor) uses the trademark now.

Halcyon says that it included on its website from February 2013 a prominent disclaimer making it clear that it is no longer associated with the Complainant, but is selling stock left over from its distributorship.

5.Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a to a name [Note 1], trademark or service mark in which the complainant has rights;; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name [Note 2]; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Notes [1] and [2] provide respectively:

[1] For the purposes of this policy, auDA has determined that a "name … in which the complainant has rights" refers to:

a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or

b) the complainant's personal name.

[2] For the purposes of this policy, auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Having been deregistered, the named Respondent could not have submitted the Response. Instead, the Response has been sent by Mr. P. Sinclair, one of the former directors of the Respondent and a director of Halcyon. In circumstances where the Complainant, Halcyon and the Sinclairs appear to have dealt with one another as if Halcyon was the successor to the Respondent, it is appropriate to treat the Response as the Response of Halcyon as the successor in title or interest to the Respondent.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the two registered trademarks referred to in section 4 above. Disregarding the “.com.au” component of the disputed domain name,¹ the disputed domain name consists of “cobb” and so is identical to Trademark No. 1463222 and confusingly similar to Trademark No. 904340. Accordingly, the Panel finds the first element of the Policy to be satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the subject matter of the dispute, your bona fideuse of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Complainant appears to accept that Halcyon carried on the distributorship in place of the Respondent. This is consistent with the course of dealing between the parties (including the Sinclairs and Halcyon as parties).

The Complainant says, however, that the sole reason for the registration of the disputed domain name was to carry out the distribution of the Complainant’s products pursuant to the Distribution Agreement and, having relinquished those rights, Halcyon (and presumably the Sinclairs) no longer have rights or any legitimate interests in the disputed domain name.

Halcyon points to its registered business name for Cobb Australia & NZ as the basis for its rights to continue holding the disputed domain name.

That satisfies the eligibility criteria for registration of the disputed domain name but, as Note 2 to the Policy makes clear, it does not of itself provide an entitlement in the face of the Complainant’s registered trademarks.

It is clear that this business name was registered in conjunction with the conduct of the distributorship. It further appears that the Response is wrong in its contention that the Distribution Agreement ceased on the expiry of its 5 year term as clause 4.2 provides that the agreement will continue after the initial 5 year term unless terminated by either party on not less than 1 month’s notice.

Clause 12 of the Distribution Agreement obliged the distributor to establish a website to market the Complainant’s products. The Distribution Agreement does not in terms appear to deal with what was to happen with that website on termination. Clause 13 authorised the distributor to use the Complainant’s trademarks in advertising and promotional material for the Complainant’s products provided the Complainant had approved the use. It also prohibited the use of the trademarks except as provided in the Distribution Agreement and, in particular, in relation to any other business or goods without the Complainant’s prior consent. Clause 13 also provided that the distributor would not acquire any ownership in the trademarks and would not do anything which would jeopardise the continued validity of the trademarks. On termination, clause 18 appears to require the distributor to cease selling the products and use of the trademarks save for rights to sell out stock on hand not re-purchased by the Complainant.

It is not in dispute between the parties that any authorisation from the Complainant to use its trademarks has ceased. The Response also states that the website to which the disputed domain name resolved has been deactivated as Halcyon has sold off all remaining stock on hand.

Given the termination of the rights to use the Complainant’s trademarks and the acknowledgement in the Distribution Agreement that the distributor did not obtain any rights of ownership in the trademarks, it is difficult to see on what basis Halcyon can continue to use the Complainant’s trademarks or the business name, Cobb Australia & NZ, in connection with its business of distributing cookers without infringing the Complainant’s registered trademarks. It would appear to be obliged by the terms of the Distribution Agreement to cease using the Complainant’s trademarks and, in addition, the registered business name, Cobb Australia & NZ. One consequence of that is that Halcyon (or the Sinclairs) would not appear to be able to satisfy the domain name eligibility requirements under auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs, Schedule A paragraph 5 and Schedule C paragraphs 1 and 2.

While Halcyon would appear to have been using the disputed domain name legitimately when the Distribution Agreement was on foot, it now says it has sold off all remaining stock on hand so, at present, it would not appear to have any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been registered or is being used in bad faith by the Respondent.

It is plain that the disputed domain name was registered and was being used in connection with the Distribution Agreement with the Complainant’s knowledge and consent. The registration of the disputed domain name, therefore, was not in bad faith.

The Complainant contends its new distributor is being deprived of the opportunity to conduct its business effectively by Halcyon’s refusal to transfer the disputed domain name to it. There appears to be some force in that contention as the Respondent or Halcyon redirected the domain name <cobbaustralia.com.au> to the disputed domain name once the latter was registered and the Response admits the website was generating between 2,500 to 4,000 hits a month after the termination of the distributorship.

The website to which the disputed domain name resolved after the termination of the distributorship did not make it clear that Halcyon was no longer the authorized distributor until the disclaimer was adopted in February 2013. Assuming that disclaimer was put in place as claimed, however, it seems likely that the website was otherwise essentially unchanged.

Halcyon claims it is no longer using the disputed domain name in connection with the sale of stock on hand following the termination of the Distribution Agreement. It does not claim it intends to use the disputed domain name in connection with any other business. Rather, the Response points to the very substantial investment made over the years by the Respondent and Halcyon in developing the Complainant’s brand in Australia and argues that it is unjust for the Complainant simply to demand transfer of the disputed domain name without compensation.

Essentially, therefore, the Panel finds Halcyon wishes to retain the disputed domain name to negotiate a resolution of its claims following the termination of the distributorship (which it, or its principals, initiated).

It is not at all clear to the Panel what provision for compensation, if any, is made by the Distribution Agreement on termination of the distributorship. Even if Halcyon were entitled to compensation under the terms of the Distribution Agreement, however, that would be a matter of the contract’s terms and the dispute resolution provisions provided for in the Distribution Agreement.

The Panel considers that this passive retention of the disputed domain name to assist in negotiating a resolution of the commercial dispute between the parties qualifies in the totality of the circumstances as use in bad faith under the Policy.

Accordingly, the Panel finds that the third requirement under the Policy has been established.

D. Remedy

The Complainant has requested that, if successful, the disputed domain name should be transferred to it or cancelled.

Under paragraph 4(i) of the Policy, the remedy of transfer is available only where the Complainant is otherwise eligible to hold the domain name.

Schedule A, paragraph 2 of auDA’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs requires a registrant to be an Australian “as defined under the eligibility and allocation rules for each 2LD.”

Paragraph 1 of Schedule C of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDsspecifies that for a “.com.au” domain name, the registrant must be:

a) an Australian registered company; or

b) trading under a registered business name in any Australian State or Territory; or

c) an Australian partnership or sole trader; or

d) a foreign company licensed to trade in Australia; or

e) an owner of an Australian Registered Trade Mark; or

f) an applicant for an Australian Registered Trade Mark; or

g) an association incorporated in any Australian State or Territory; or

h) an Australian commercial statutory body.

In the present case, as already noted, the Complainant is the owner of two Australian registered trademarks. Accordingly, it qualifies as “Australian” for the relevant purposes.

6.Decision

For all 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 <cobb.com.au> be transferred to the Complainant.

Warwick A. Rothnie
ole Panelist
Date: April 23, 2013

¹ BT Financial Group Ltd v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.