WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

My Brilliance Pty Ltd. v. Amazon Corporate Services Pty Ltd.

Case No. DAU2014-0018

1. The Parties

The Complainant is My Brilliance Pty Ltd. of Perth, Western Australia, Australia represented by IP Strategies International, Australia.

The Respondent is Amazon Corporate Services Pty Ltd. of Sydney, New South Wales, Australia, represented by King & Wood Mallesons, Australia.

2. The Domain Name and Registrar

The disputed domain name <brilliancepublishing.com.au> is registered with MarkMonitor Inc. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2014. On June 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2014, 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 .au Dispute Resolution Policy (the “Policy” or “auDRP”), 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 June 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2014. The Response was filed with the Center on July 3, 2014.

The Center appointed Keith Gymer, Alan L. Limbury and Ross Wilson as Panelists in this matter on August 6, 2014. 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, an Australian registered company incorporated in 2007, produces, publishes and distributes books, audio books and ebooks in the genres of “faith based non-fiction and fiction” and “self help and personal growth”. The Complainant owns numerous trade marks based on the word elements BRILLIANCE and MY BRILLIANCE. Both of these trade marks were first registered in various classes in 2007.

The Respondent, an Australian registered company established in 1998, is a wholly owned subsidiary of Amazon, Inc. and as part of the Amazon Group’s Amazon Web Services business, offers a broad set of global computer, storage, analytics, application and deployment services that help organisations move faster, lower IT costs and scale applications. As an Australian subsidiary of the Amazon Group the Respondent has been registering “.com.au” domain names for other business groups and subsidiaries of the Group.

According to the WhoIs record, the disputed domain name <brilliancepublishing.com.au> was created by the Registrar on April 2, 2012, and has been held by the Respondent since at least December 13, 2012.

The disputed domain name was derived from the name of a related Amazon Group entity, Brilliance Publishing Inc., a publisher of audiobooks. In 1984 Brilliance Corporation, a predecessor of Brilliance Publishing Inc., was established and subsequently changed its name to Brilliance Audio Inc. In 2007, Amazon.com Inc. acquired Brilliance Audio Inc. and subsequently in January 2013 Brilliance Audio Inc.’s name was changed to Brilliance Publishing Inc.

In May 2011, Brilliance Audio Inc. obtained the United States (US) registered trademark BRILLIANCE AUDIO with a priority date of 2006. In July 2013, Brilliance Publishing Inc. filed an “intention to use” trade mark application for BRILLIANCE PUBLISHING with the United States Patent and Trademark Office (USPTO). Examination of the application has been suspended until the USPTO receives a copy of a foreign trade mark registration. The company’s Australian trade mark application for BRILLIANCE AUDIO has been accepted by IP Australia, but is currently being opposed by the Complainant.

In August 2012, Brilliance Audio, Inc.’s representative requested the Complainant’s consent to registration of the BRILLIANCE AUDIO mark. Subsequently, the Complainant registered the domain names <brillianceaudio.com.au> and <brillianceaudiocollections.com.au>. In March 2013, Brilliance Publishing, Inc. filed a complaint under the Policy against the Complainant in relation to these two domain names. The complaint was upheld and the domain names were transferred to the Respondent’s associated company Brilliance Publishing, Inc. (See Brilliance Publishing, Inc. v. My Brilliance Pty Ltd / Ceinwen Schneider, WIPO Case No. DAU2013-0007).

In April 2013 Brilliance Publishing Inc. lodged an Australian application for the trade mark BRILLIANCE PUBLISHING. The first examination report cites the Complainant’s BRILLIANCE trade mark as a barrier. Brilliance Publishing Inc. has subsequently filed a request to defer examination.

5. Parties’ Contentions

A. Complainant

The factual and legal contentions made by the Complainant are summarised as follows:

- The Complainant has rights in the name and trade mark BRILLIANCE.

- The Complainant is active in publishing literature and sound recordings and therefore has rights to a domain name that contains its trade mark and the additional element “publishing”.

- By incorporating the Complainant’s trade mark in its entirety (i.e., with an additional element), the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

- The Respondent is not known by the name “Brilliance Publishing”, nor by the disputed domain name, nor has acquired any rights in it.

- The Complainant has not licensed or otherwise authorised the Respondent or any associated person to use its trade mark.

There is no evidence that the Respondent itself has published any material in Australia, has used “Brilliance Publishing” in relation to any goods or services (or has made any preparations to do so) or has supplied any goods or publishing services.

Through past contact with the Complainant, the Respondent’s associated company, “Brilliance Publishing, Inc.” (a competitor of the Complainant) is aware of the Complainant and its prior rights in the BRILLIANCE trade mark.

The Respondent seeks to shut out the Complainant from having a domain name reflecting its business for the purposes of selling it to the Complainant or, with the intent of commercial gain, to misleadingly divert consumers from the Complainant’s business to a website of the Respondent or one associated with or operated by an associated entity of the Respondent.

- The Respondent deliberately hid the fact of its registration of the disputed domain name by using a registrar that offers privacy services.

The disputed domain name has been registered in bad faith because the Respondent does not use the word combination BRILLIANCE PUBLISHING as a trade mark, is not commonly known by the disputed domain name, has no licence or authorisation the use the BRILLIANCE PUBLISHING mark, is not making legitimate use of the disputed domain name, and could only have sought to register the disputed domain name with a view to profiting from its disposal for consideration to the Complainant or to an associated entity.

The Respondent was not eligible to validly register the disputed domain name because it does not hold the key word elements in its company or trading name, does not offer publishing services in Australia and does not hold an Australian trade mark application or registration with the word elements of “brilliance” or ” “publishing”.

The disputed domain name was acquired for use in redirecting the Complainant’s customers or customers in general who enter the address “www.brilliancepublishing.com.au” in Australia to the actual Brilliance Publishing, Inc, trading website where directly competing goods are offered.

The Respondent is “using internet-facilitated ambush tactics to drive…customers to its own websites”.

The Respondent’s related companies are using search engines to redirect Customers who key in the word “brilliance” to Brilliance Publishing, Inc. imprints at “www.brilliancepublishing.com”.

The Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant’s business by preventing the Complainant from obtaining the same registration as a publisher under its own BRILLIANCE mark.

B. Respondent

The factual and legal contentions made by the Respondent are summarised as follows:

The name “Brilliance Publishing” is not identical or confusingly similar to any name in which the Complainant has rights as the Complainant has not, and never has been, known by the name “Brilliance Publishing” and has never used the name as a trade mark or otherwise.

The Complainant owns numerous domain names incorporating its actual name MY BRILLIANCE .

The Respondent registered the disputed domain name at the direction of its parent company, Amazon.com, and with the authority of Brilliance Publishing, Inc., an associated company within the Amazon Group.

Brilliance Publishing, Inc.’s predecessor first used the name “Brilliance” as part of its “Brilliance Audio” products.

Brilliance Publishing, Inc., has used the BRILLIANCE AUDIO mark extensively in Australia in relation to the sale of audio products since at least 2001.

Brilliance Publishing, Inc, has rights in the name “Brilliance Publishing” being its trading name and has rights in the name “Brilliance Audio” which pre-dates the Complainant’s claimed rights in the name ”My Brilliance” or other names containing the word “brilliance”.

The Respondent, in its position as a subsidiary of Amazon.com, Inc. and a related company of Brilliance Publishing, Inc. and in the circumstances where it is authorized by Amazon.com, Inc. and Brilliance Publishing, Inc. to register the disputed domain name, has a legitimate interest in the disputed domain name.

The Respondent denies that the disputed domain name was registered in bad faith or is being used in bad faith and notes that the disputed domain name has not yet been used by the Respondent in connection with any website.

The Respondent accepts that the Amazon Group was aware of the Complainant’s business at the time at which the disputed domain name was registered but denies that this signifies bad faith or that it or the Amazon Group were motivated by any intent to mislead as to a connection to the Complainant.

The disputed domain name reflects the name of the Respondent’s related entity, Brilliance Publishing, Inc. and the Respondent was acting in good faith when it registered the disputed domain name.

The Respondent denies the allegation that the disputed domain name was registered with the intention of linking potential customers of the Complainant to the Respondent’s website and/or taking advantage of the Complainant’s reputation.

The Complainant is not known to the Respondent to have any reputation in Australia that rises above a de minimis level and certainly no reputation in the name “Brilliance Publishing”.

The suggestion that the Respondent registered the disputed domain name in order to misleadingly divert consumers from the Complainant’s business to a website of the Respondent or the Amazon Group, or to gain financial benefit from customers who key the disputed domain name into a search engine or URL fields is not supported by the evidence.

At no time has the Respondent diverted traffic from the disputed domain name to another website.

The Respondent finds it difficult to see how or why any Internet user would key “Brilliance Publishing” into a search engine expecting to reach the Complainant’s website, given the Complainant has not used “Brilliance Publishing” and is not known by that name.

The Complainant has not been shut out from having a domain name reflecting its business and the Respondent has never expressed any desire to sell the disputed domain name to the Complainant or to otherwise negotiate over its ownership (as it has no such desire).

The Respondent is eligible to hold a “.com.au” domain name as it is an Australian registered company and that it has been properly allocated as the disputed domain name is “an exact match, abbreviation or acronym of the registrant’s name or trademark”.

The Respondent denies that any goods are offered from Brilliance Publishing, Inc.’s website “www.brilliancepublishing.com” that infringe any trade mark rights of the Complainant in Australia.

The Respondent disputes that the Complainant has any “right” to obtain registration of the disputed domain name in circumstances where the Complainant does not use the name “Brilliance Publishing” and it not known by the name “Brilliance Publishing”. Even if the Complainant did have such a right, the Respondent also has the right to obtain registration as domain names are available on a “first come, first served” basis.

The Respondent notes that subsequent to a cease-and-desist letter from the Complainant’s representatives, the Complainant registered the domain names <brillianceaudio.com.au> and <briallianceaudiocollections.com.au>. The Respondent further notes, following the cease-and-desist letter, that the Complainant altered its website at <mybrillaince.com.au> to change references to its name from “My Brilliance” to “Brilliance” and to change the name of its online store from “Our Store” to “Brilliance Store”.

6. Preliminary Matter

The Complainant filed an unsolicited supplemental filing on July 15, 2014. Generally, acceptance of unsolicited filings is at the discretion of the Panel as per paragraph 10 and 12 of the Rules. The Panel has reviewed the filing to determine whether it presented any exceptional circumstances. As no additional facts or any exceptional circumstances were raised, the Panel has not taken the supplemental filing into its deliberations.

7. Discussion and Findings

Under paragraph 4(a) of the auDRP the Complainant has the burden of proving the following three elements:

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

(ii) The Respondent has no rights or legitimate interests in respect to the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant owns various Australian registered trade marks containing the word “Brilliance” (see for example TM 1179855 for BRILLIANCE with the Australian Trademark Office) and therefore satisfies the requirement of paragraph 4(a)(i) to have rights in a trade or service mark.

The disputed domain name consists of the words “brilliance” and “publishing” as well as the country-code Top-Level Domain (ccTLD) suffixes “.com.au”. The suffixes are not distinctive and may be disregarded in order to determine whether the Complainant’s trade mark is identical or confusingly similar to the disputed domain name. The disputed domain name is not identical to the Complainant’s trade mark because of the addition of the generic word “publishing”. However, the disputed domain name is confusingly similar to the Complainant’s trademark as it reproduces the Complainant’s trade mark in its entirety, with an additional generic word, which does not diminish that confusing similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered BRILLIANCE trade mark and the requirements of paragraph 4(a)(i) are satisfied.

B. Rights or Legitimate Interests

Under the second requirement of paragraph 4(a) the Complainant must prove that the Respondent has no rights or legitimate interests in respect to the disputed domain name.

The auDRP Overview of Panel Views on Selected auDA Questions First Edition (“auDA auDRP Overview 1.0”) states the general position that “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests [...]. Once such a prima facie case is made the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy”.

The facts set out by the Complainant support a prima facie case that the Respondent lacks rights or legitimate interests as it is not known by the name “Brilliance Publishing”; it or any associated entity was not licensed or otherwise authorised by the Complainant to use variations of its BRILLIANCE trade mark; the Respondent was aware of the Complainant and its prior rights in the BRILLIANCE trade mark (as confirmed by the Response); it does not publish any item in Australia; and it does not use BRILLIANCE PUBLISHING in relation to any goods or services, nor has it made any preparations to do so.

The Respondent’s rebuttal is based not on its own operations, activities and rights but entirely on those of Brilliance Publishing, Inc., an associated company in the Amazon Group, and a competitor of the Complainant. The Respondent provided evidence that the predecessors of the associated company, Brilliance Corporation and Brilliance Audio. Inc., have been using the name “Brilliance” since 1984 and that Brilliance Audio Inc. had changed its name to Brilliance Publishing, Inc. in January 2013. Also, evidence was provided as to the publishing presence of the associated company and its predecessor in Australia.

The Panel notes that this proceeding is part of a larger trade mark and domain name dispute between the Complainant and Brilliance Publishing, Inc., but the Respondent is not Brilliance Publishing Inc., and the Panel must proceed with its analysis in light of the fact that Amazon Corporate Services Pty Ltd. is the Respondent. In the Panel’s view, the rights and legitimate interests of the associated company are not in question. Unlike the Uniform Domain Name Dispute Resolution Policy (UDRP) for generic TLDs such as “.com”, in this case under the auDRP policy it is the rights and legitimate interests in the disputed domain name of the Respondent itself (as distinct from an associated company) that must be proven, and, in the Panel’s view, under the .auDRP the determination regarding this turns on whether or not under the auDRP policy the Respondent’s action on behalf of an associated company complies with the two elements related to eligibility and allocation in Schedule C of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDS... As an Australian registered company, the Respondent meets the first element. The second element mandates that the domain name be an exact match, abbreviation or acronym of the registrant’s name or trade mark, or otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for Open 2LDs.

The disputed domain name is not an exact match, abbreviation or acronym of the registrant’s name or trade mark as claimed in the first instance by the Respondent, who relies, in the alternative, on complying with the auDA’s “close and substantial connection” rule. According to the auDA Guidelines on the Interpretation of Policy Rules for Open 2LDS the close and substantial connection rule operates where the requested domain name is connected to the registrant in accordance with the listed categories for each 2LD. The purpose of the close and substantial rule is to allow some flexibility for registrants who do not want to register a domain name that is directly related to their name. Importantly, the Guidelines note that the rule is not intended to be a “free for all” and the degree of flexibility is limited for the “.com.au” 2LD by the categories outlined in paragraph 10.5. The categories of close or substantial connection are: a product or service that the Respondent provides, an event, activity or venue that it organises, facilitates or operates or a profession that its employees practise.

In the Panel’s view, each of these categories relate to the Respondent, not to its affiliate company. It follows that the disputed domain name does not fall within any of the categories listed in paragraph 10.5. and, therefore, cannot be considered closely or substantially connected to the Respondent. As a consequence, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds the Respondent has not rebutted the prima facie case of the Complainant, and the Complainant has proven the second element of paragraph 4(a).

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) requires the Complainant to show that the Respondent has registered or used the disputed domain name in bad faith.

The Complainant’s case for bad faith registration is based on the Respondent not using the word combination “Brilliance Publishing” as a trade mark, not being commonly known by the disputed domain name, having no licence or other authorisation to use the Complainant’s mark, not making legitimate noncommercial or fair use of the disputed domain name, and only having sought to register the disputed domain name with a view to profit from its disposal for consideration in excess of its costs, either to the Complainant or an associated company. In addition, the Complainant sets out why the Respondent was not eligible to validly register the disputed domain name, because it does not hold the key word elements “brilliance” or “publishing” in its company name or trading name, it does not offer publishing services in Australia and it does not hold an Australian trade mark application or registration with the element “brilliance” or “publishing” in it.

The Complainant points out that the Respondent’s associated company’s prior knowledge of the Complainant’s business and trade marks rights is at the heart of the Respondent’s bad faith actions. The Complainant provided evidence that there had been periodic monitoring of the Complainant’s website since 2010 by representatives of the law firm that represents Brilliance Publishing, Inc. and Amazon.com in Australia.

The Respondent acknowledges that its parent the Amazon Group was aware of the Complainant’s business and website at the time the disputed domain name was registered but denies this signifies bad faith. However, it can be inferred that the Respondent, having a common legal representative with Brilliance Publishing, Inc., also knew of the Complainant’s trade mark and publishing reputation in Australia at the time it registered the disputed domain name.

In October 2010, the trade mark application by the Respondent’s affiliated company for the mark BRILLIANCE AUDIO in Australia was subject to objection by the Registrar of Trade Marks as it was “identical to or closely resembles” the Complainant’s BRILLIANCE trade mark and it was “for similar goods or services”. Despite the invitation to provide evidence of prior use or honest concurrent use the application was subsequently allowed to lapse, before being revived in August 2012, when the Respondent’s lawyers (acting then for the affiliated company) sought the Complainant’s consent which was refused, the application then being formally opposed in December 2013.

The Panel notes that the registration of the Complainant’s word mark BRILLIANCE as of 2007, including specifically for publishing services in Class 41, indicates that rights in BRILLIANCE in relation to publishing had been established well before registration of the disputed domain name, and accordingly the Panel considers that the Respondent, through its affiliates and legal representatives was aware of those rights. Despite this prior knowledge, the Respondent still registered the disputed domain name. In these circumstances, unlike the constraints raised under the second element, there are none preventing the bad faith actions of the associated company being imputed to the Respondent.

Whilst the Complainant has asserted that when “www.brilliancepublishing.com.au” was typed into the browser URL bar, the search engine offered links to “www.brilliancepublishing.com” and related competing imprints, this appears to be due to the automated action of the search engine. The evidence provided by the Complainant does not support its assertion. It follows that the Respondent’s statement that the domain name itself did not resolve to any website is not contradicted.

Nonetheless, having regard to the evidence overall, the Panel concludes that, on balance, the Complainant has made out its case under paragraph 4(a)(iii) of the Policy, and finds that the disputed domain name was registered in bad faith.

8. 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 domain name <brilliancepublishing.com.au> be transferred to the Complainant.

Ross Wilson
Presiding Panelist

Keith Gymer
Panelist

Alan L. Limbury
Panelist

Date: August 20, 2014