The Complainant is Top Connect OU of Tallinn, Estonia, represented by Bennett & Philp Lawyers, Australia.
The Respondent is Karl Gye, Lawsearch Australia Pty Ltd of Uki, New South Wales, Australia.
The disputed domain name <travelsim.com.au> (the “Disputed Domain Name”) is registered with PlanetDomain Pty Ltd (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2016. On November 2, 2016, the Center transmitted by email to PlanetDomain Pty Ltd. a request for registrar verification in connection with the Disputed Domain Name. On November 3, 2016, PlanetDomain Pty Ltd. 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 November 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2016.
The Center appointed John Swinson as the sole panelist in this matter on December 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 Top Connect OU of Estonia.
The Complainant owns Australian registered trade mark number 1304310 for TRAVELSIM, registered on June 16, 2009 (the “Trade Mark”).
The Respondent is Karl Gye, Lawsearch Australia Pty Ltd. The Respondent did not provide a response. However, according to the Complaint, the Complainant engaged the Respondent in 2009 to register the Trade Mark on its behalf. Not long after this, CSC Telekom, a company related to the Complainant, engaged the Respondent to acquire the Disputed Domain Name from the previous registrant and arrange its transfer to the Complainant.
The Disputed Domain Name was acquired by the Respondent in early 2010.
The website at the Disputed Domain Name currently redirects to the website at “www.travelsim.net.au”, which is owned by a third party.
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant owns the Trade Mark, which was registered on June 16, 2009. The Disputed Domain Name is identical to the Complainant’s registered Trade Mark.
Rights or Legitimate Interests
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name is not an exact match or abbreviation of its name, or of a trade mark in its name.
The Respondent does not have any right to monetize the Disputed Domain Name as it is a service provider in the intellectual property sector. It was engaged as an agent to transfer the Disputed Domain Name to the Complainant but instead registered the Disputed Domain Name in its own name.
Registered or Used in Bad Faith
The Complainant engaged the Respondent to provide advice and services in relation to intellectual property.
In 2009, a company related to the Complainant engaged the Respondent to acquire the Disputed Domain Name from a third party and transfer it to the Complainant. However, the Respondent registered the Disputed Domain Name in its own name, rather than that of the Complainant. The Respondent has provided no explanation for this.
As such, the Disputed Domain Name was registered in bad faith.
The Disputed Domain Name redirects Internet users to a website at “www.travelsim.net.au”. This website and domain name is owned by a third-party competitor of the Complainant. The Complainant has withdrawn its authority for the Disputed Domain Name to redirect to this website.
The Complainant’s legal representatives have written to the Respondent requesting that it transfer registration of the Disputed Domain Name to the Complainant. The Respondent stated that it would transfer the Disputed Domain Name, but that a third party was preventing it from doing so.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 have subsequently been used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response.
Multiple Complainants
The Complaint was filed in the name of Top Connect OU and CSC Telekom. According to the Complaint, these entities have a common shareholding, and CSC Telekom acted as agent of Top Connect OU in relation to the acquisition of the Disputed Domain Name.
Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021; Bettina Liano and Bettina Liano Pty Limited v. Khanh Kim Huynh, WIPO Case No. D2000-08911 ; NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128).
Based on the evidence before the Panel, the Panel does not accept that Top Connect OU and CSC Telekom have common legal interests in respect of the Trade Mark. While multiple complainant companies may be considered to have rights to a trade mark where those companies form part of a larger corporate group (National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra), in these circumstances, there is no evidence in the Complaint to show that both entities use the Trade Mark such that they would both be considered to have a grievance against the Respondent.
The proper Complainant in this proceeding is Top Connect OU, the entity which owns the Trade Mark and the entity to which the Disputed Domain Name was intended to be transferred on its acquisition in 2010. Accordingly, the reference to “Complainant” in this decision is a reference to Top Connect OU.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. It incorporates the Trade Mark in its entirety and no further words are added.
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 respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- The Complainant has not authorised or licensed the Respondent to use the Disputed Domain Name in the manner it is being used. The website at the Disputed Domain Name redirects Internet users to a third-party website at “www.travelsim.net.au”, which offers services which compete with those offered by the Complainant. There was previously a relationship between the Complainant and this third party, but this appears to be no longer the case. As such, this use is no longer authorised by the Complainant, and is not bona fide.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The website to which the Disputed Domain Name redirects is a commercial website. As such, the use of the Disputed Domain Name is for commercial purposes, whether or not the Respondent itself is deriving any financial benefit.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. Further, based on the correspondent provided in the Complaint, the Respondent does not appear to assert any rights to own or use the Disputed Domain Name, as it stated that it would transfer the Disputed Domain Name, but that a third party was preventing it from doing so.
As such, the prima facie case established by the Complainant has not been rebutted and 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 Respondent registered or used the Disputed Domain Name in bad faith.
The Respondent acquired the Disputed Domain Name from its previous registrant in early 2010 on behalf of the Complainant, and paid a significant amount for this acquisition. The Respondent was engaged to negotiate and facilitate the transfer of the Disputed Domain Name to the Complainant, and was paid for performing this service.
However, after acquiring the Dispute Domain Name, the Respondent registered the Disputed Domain Name in his own name. Based on the information provided, and in light of the Respondent’s failure to file a Response, it is unclear whether the Respondent registered the Disputed Domain Name in its own name in bad faith, whether this was simply an oversight, or whether there is some other explanation for this.
In any case, the Panel does not need to decide whether the Disputed Domain Name was registered in bad faith, as the Panel finds that the Respondent’s current use of the Disputed Domain Name is in bad faith.
According to the Complaint, when the Respondent first acquired the Disputed Domain Name on behalf of the Complainant, the Respondent arranged for the Disputed Domain Name to redirect Internet users to a website at “www.travelsim.net.au”, which is operated by a third party. The Complainant has not provided any details about its relationship with this third party, but based on the correspondence annexed to the Complaint, the Panel has ascertained that it was the Complainant’s Australian distributor until 2015.
Apparently, that relationship has now ended. That party is now a competitor of the Complainant, and the Complainant has withdrawn its authority for the Disputed Domain Name to be redirected to this website (see, e.g., ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014). The Complainant has also made a number of requests of the Respondent to transfer the Disputed Domain Name to the Complainant.
As such, the continued redirection to a competitor’s website, particularly following a number of requests to cancel such redirection and transfer the Disputed Domain Name back to the Complainant, is evidence of use in bad faith.
A finding of bad faith use is sufficient to satisfy the third element of the Policy.
The Complainant succeeds on the third element of the Policy.
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, <travelsim.com.au>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 16, 2016
1 The Panel notes that the Policy is largely based on the Uniform Domain Name Disputed Resolution Policy and finds it appropriate to refer to its jurisprudence where instructive.