The Complainant is Lytro, Inc., of Mountain View, California, United States of America (“US”), represented by Mariana Antcheva, US.
The Respondent is Drift Alliance Pty Ltd, of Semaphore Park, South Australia, Australia, internally represented.
The disputed domain name <lytro.com.au> (the “Disputed Domain Name”) is registered with Web Address Registration Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2014. On the same day, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Response was filed on July 14, 2014.
The Center appointed John Swinson as the sole panelist in this matter on July 22, 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.
The Complainant is Lytro, Inc., a US corporation. The Complainant develops, markets and sells consumer digital cameras under the brand name LYTRO. The Complainant’s cameras collect additional information about the scene being photographed and use algorithms to create 3D pictures.
The Complainant owns a number of trade mark registrations for LYTRO, including the following:
- Australia (Trade Mark Registration No. 1444202, registered August 23, 2011); and
- European Union (Community Trade Mark No. 010212264, registered January 10, 2012)
(collectively, the “Trade Mark”).
The Respondent is Drift Alliance Pty Ltd, an Australian corporation (Australian Business Number 78128539453). The Respondent manufactures lightweight products for competitive rowing, such as carbon fibre oars, foot stretchers, heel cups, number holders, fins, seats, tracks and seat supports.
The Respondent registered the Disputed Domain Name on September 4, 2012. The Disputed Domain Name currently resolves to a webpage that displays a logo featuring the word “LYTRO”, blurred, in the top left-hand corner. In the past, the logo was more clearly visible.
The Complainant makes the following submissions.
The Disputed Domain Name is identical to the Trade Mark. The Trade Mark is not a generic term and has no meaning in the English language. The Complainant has been using the Trade Mark in relation to its products since early 2011. The Trade Mark is strongly associated with the Complainant and its products.
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- there is no commercial or other relationship between the Complainant and the Respondent;
- the Complainant has not authorized the Respondent to use the Trade Mark or to register the Disputed Domain Name;
- the Respondent does not hold rights to the Trade Mark or any similar trade mark in Australia;
- the Respondent is not using the Disputed Domain Name to offer goods or services. Since the Disputed Domain Name was registered, its corresponding website has displayed a logo comprising the Trade Mark, and the additional words “lightweight carbon accessories” and “coming soon”. Currently, the logo is blurred and only the Trade Mark is distinguishable; and
- the Respondent is not commonly known by the name LYTRO and does not deal in LYTRO-branded goods or services.
The Respondent registered the Disputed Domain Name for the purpose of selling it to the Complainant for consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name. The Complainant outlines (and provides copies of) the following email correspondence:
- February 9, 2013: the Complainant inquires whether the Respondent intends to use the Disputed Domain Name.
- February 10, 2013: the Respondent states that it is “using the domain, however, our website is still currently under development”. The Respondent asks for further details about the nature of the Complainant’s interest in the Disputed Domain Name.
- February 12, 2013: the Complainant advises that it is called Lytro, Inc., that it sells a type of camera in several countries (including Australia), and that it is interested in obtaining country-code domain names for purposes of selling its products in various jurisdictions.
- February 12, 2013: the Respondent states that it is “using the domain”, that it is “approximately 6 months away from launch”, and that it has not heard of the Complainant’s product before. It states that it is “rather attached to the domain”, and that it has made a “significant investment in signage and labels”. The Respondent concludes: “However, if you were to make a motivating offer to acquire the domain we would possibly consider changing our name”.
- February 14, 2013: the Complainant advises that the Disputed Domain Name is unlikely to be of much value to the Respondent, given the Complainant’s reputation. The Complainant states that it does not think its marketing department wants to invest significant amounts in acquiring domains.
- February 17, 2013: the Complainant asks the Respondent to “put an offer to us before we invest too much further into our brand”.
The Complainant submits that the Respondent’s assertions that it was “using the domain” and was “approximately 6 months away from launch” were untrue. Sixteen months have passed and the Disputed Domain Name is still not being used.
The Respondent makes the following submissions.
The Respondent performed a trade mark search for LYTRO on September 1, 2012 and located the Trade Mark. The Respondent determined that its products were in a different class, and therefore did not conflict with the Trade Mark.
The Respondent submits that term “lytro” is a play on the words “light” (“lyt”) and “row” (“ro”).
The Trade Mark covers photographic equipment and associated software and educational materials. The Respondent is manufacturing carbon fibre equipment for competitive rowing. The Respondent intends to obtain an Australian trade mark registration in the relevant class.
The Respondent has invested significant time and money in its brand. Manufacturing delays have pushed back the launch of the website at the Disputed Domain Name.
The email correspondence between the parties does not evidence that the Respondent registered the Disputed Domain Name for the purpose of selling it. Any suggestion of sale was made in good faith. The Respondent did not ask for more than its out-of-pocket expenses (any suggestion that asking for a “motivating offer” implies otherwise is incorrect). As stated above, the Respondent has invested significant time and money in its brand, and rebranding would be costly.
The Respondent is not a competitor of the Complainant and does not intend to disrupt its business or activities.
Further to the email correspondence outlined in the Complainant’s submissions:
- On May 22, 2014, the Complainant’s exclusive Australian dealer emailed the Respondent, stating: “We are the distributor for Lytro in Australia, interested in the website you registered. Guessing by the logo you have parked it, how much to get it back?”
- On May 24, 2014, the Complainant made an offer of “documented out-of-pocket costs for acquiring and maintaining the domain name”.
The Respondent did not respond to these emails, as it is not interested in selling the Disputed Domain Name.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. Therefore, the Panel finds it appropriate to refer to UDRP precedent in certain instances when deciding this case.
Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
The Panel is satisfied that the Complainant is the holder of the Trade Mark.
Second level domains, such as “.com.au”, may be disregarded for the purposes of determining identity or confusing similarity under the Policy (see, e.g., Pindan Pty Ltd v. Kre8 Brand Pty Ltd and Different Pty Ltd, WIPO Case No. DAU2013-0039).
The Panel finds that the Disputed Domain Name is identical to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- there is no indication in the record that the Respondent has been commonly known by the Disputed Domain Name; and
- the Disputed Domain Name has always been a dormant website, featuring a logo incorporating the Trade Mark. The logo was previously clear, but is now blurry (however, the Trade Mark is still distinguishable). This may be analogous to passive holding, which is not a legitimate noncommercial or fair use of the Disputed Domain Name, nor does it constitute a bona fide offering of goods or services.
The Respondent acknowledges that it was aware of the Trade Mark, but intended to use the Disputed Domain Name in relation to a different class of (rowing) goods. The Respondent submitted that it has invested significant time and money in its brand, and that the website’s dormancy is due to manufacturing delays. However, the Respondent did not provide any evidence to substantiate its stated intentions (i.e. it failed to provide evidence to show “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”). As such, the Respondent has failed to rebut the Complainant’s prime facie case.
In light of the above, the Respondent has failed to demonstrate rights or legitimate interests in the Disputed Domain Name. The Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.
The Complainant only relies of paragraph 4(b)(i) of the Policy.
Paragraph 4(b)(i) provides that the following shall be evidence of bad faith: “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Complainant provides email correspondence, summarized above, that sets out negotiations between the Complainant and the Respondent regarding the possible sale of the Disputed Domain Name by the Respondent.
The Respondent admits knowledge of the Complainant’s Trade Mark at the time the Respondent decided to register the Disputed Domain Name.
The Respondent is not a competitor of the Complainant.
The logo featured on the website at the Disputed Domain Name (which incorporates the Trade Mark) is distinct from the Complainant’s logo (as featured on the Complainant’s website at “www.lytro.com”).
At no time has the Complainant alleged that the Respondent infringes the Complainant’s Trade Mark. This is understandable, because the Respondent does not appear to have commenced selling its product at the present time, and even if it had, it is unlikely that the Respondent’s product would fall within the description of goods and services set out in the Complainant’s Trade Mark registration.
The Disputed Domain Name is not being used in any substantial way. It resolves to a parking page featuring the Respondent’s logo (which is currently blurred). It is unclear from this website what the Respondent sells or the nature of its business.
The Respondent submits that it is “rather attached to” and does not wish to sell the Disputed Domain Name.
The Panel has carefully reviewed the correspondence between the parties and concludes that the evidence does not support a conclusion that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant. The Panel notes the following that support this conclusion:
- the Respondent did not initiate contact with the Complainant regarding the Disputed Domain Name;
- at no stage did the Respondent propose a price for the Disputed Domain Name or ask for a sum in excess of the Respondent’s out-of-pocket costs (in fact, no figure has been proposed by either party);
- negotiations were brief, and the Respondent did not actively push the negotiations;
- the website at the Disputed Domain Name does not advertise the Disputed Domain Name as available for purchase; and
- there is no evidence to show that the Respondent is in the business of selling domain names for profit.
Merely because a domain name owner has negotiations with a trade mark owner regarding a possible sale of a domain name is not, of itself, conclusive evidence of bad faith.
Registration of the Disputed Domain Name with primary intent to sell cannot be inferred from the mere fact that the Respondent stated that it might be persuaded by a “motivating offer”, absent any other suspicious circumstances. Further, the Panel accepts the Respondent’s submission that it stopped replying to the Complainant’s emails because it has no interest in selling the Disputed Domain Name.
Further, knowledge of the Complainant’s trade mark alone may not amount to bad faith registration or use if the primary intent is to use the domain name for goods and services different to those of the trade mark owner, provided use of the domain name is non-confusing, non-competitive and without intent to divert Internet users who are seeking out the Complainant. The Respondent intends to operate a website for rowing equipment, far off from the Complainant’s field of digital cameras. The Respondent has not yet launched its website. Nevertheless, the present record before the Panel fails to suggest any bad faith intent to trade on the goodwill of the Complainant, who operates in a completely unrelated field.
A registered trade mark does not provide a monopoly that prevents all uses of a domain name that is similar to the registered trade mark.
As recently stated in Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2014] FCAFC 87 (21 July 2014):
“The www.thredbo.com domain name might, if viewed in isolation, suggest a connection with the appellants’ business that the respondents do not have. But on the Google search result screen shot for ‘Thredbo reservations’ the material associated with that domain name appears to offer only accommodation principally at Woodridge, a discrete area in Thredbo Village, which a consumer who clicked on the link would immediately appreciate when taken to the webpage. That appreciation would be reinforced by either disclaimer (depending on which was shown). Such a consumer would appreciate that he or she could not purchase ski lift tickets or ski lessons from the operator of that website.
We are not satisfied that a consumer who went to any of the respondents’ websites would reasonably have associated the operator of the website with the appellants. The respondents’ domain name ‘www.thredbo.com’ was very similar to that of KT, namely ‘www.thredbo.com.au’. A consumer might easily be led to the former website thinking it was that of the appellants when doing an internet search. But in today’s society the ordinary or reasonable consumer seeking accommodation, or other goods or services, on the internet will frequently click on a result in a web search thinking it is a link to a particular site, only to find when his or her browser is directed to the selected site that it is not the site of the supplier or business that the consumer wanted. The ordinary, reasonable consumer who came upon the home page of ‘www.thredbo.com’ would have seen, depending on when he or she accessed it, the first or second disclaimer in the middle of the page. Each disclaimer appeared under a recognisable, distinctive heading ‘About Thredbo.com’. It did not have the appearance, as asserted by the appellants, of being ‘buried in the text’.”
Accordingly, the Panel finds that the Complainant has not established the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: July 29, 2014