WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The State of Queensland acting through the Department of Agriculture and Fisheries v. Mars Fila, Business Marketing International

Case No. DAU2018-0010

1. The Parties

The Complainant is The State of Queensland acting through the Department of Agriculture and Fisheries of Dutton Park, Queensland, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is Mars Fila, Business Marketing International of Bundal, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <queengarnetplum.com.au> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, and April 23, 2018, the Registrar transmitted by email to the Center its verification response:

(a) confirming it is the Registrar for the disputed domain name;

(b) indicating the registration agreement is in English; and

(c) 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 the Complainant on April 24, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 26, 2018.

The Center verified that the Complaint together with the amended 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 April 30, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2018.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 30, 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

The Complainant is the grantee of Plant Breeder’s Rights (“PBR”) under the Plant Breeder’s Rights Act 1994 for a variety of plum registered as the Queen Garnet plum, Application No. 2006/172. The application was filed on June 30, 2006. It was accepted on July 21, 2006, and granted on April 15, 2013. The registration is still in force.

The Complainant has granted a licence over its PBR to Nutrafruit Pty Ltd. Nutrafruit Pty Ltd markets the Queen Garnet plum and related products from, amongst other things, a website at “www.nutrafruit.com.au”.

The Registrar has confirmed that the disputed domain name was registered to the Respondent on February 17, 2015. That is, almost two years after the registration of the Complainant’s PBR.

For a period from at least October 2, 2015 to about March 14, 2016, the disputed domain name resolved to a website of “Passion Health company”. During this period, the website featured a photograph of plums and links to a number of products including “Super food”, “Juices & dried concentrate mixtures”, “Herbal Teas”, “Weight Loss & Protein powder Formula’s”, “Juice of the month club” and a link inviting Internet users to “See our line of organic teas”.

The photograph of plums included on the website appears to have been the same photograph displayed on Nutrafruit Pty Ltd.’s website for Queen Garnet plums.

The Complainant’s representatives sent two letters of demand to the Respondent on October 27, 2015 and November 18, 2015.

On or about March 14, 2016, the Respondent’s website was deactivated.

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.

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 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.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s name, trade mark or service mark.

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

Under the Policy, a complainant may invoke protection on the basis of a name. According to paragraph 4(a)(i), the name must be one in which the Complainant has rights.

The footnote to paragraph 4(a)(i) relevantly states:

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.

Section 53(1)(c) of the Plant Breeder’s Rights Act 1994 provides that PBR¹ in a plant variety are infringed by a person who uses the name of a variety that is entered in the Register of Plant Varieties in relation to any other plant variety of the same plant class. Thus, it appears that the Plant Breeder’s Rights Act 1994 accords a grantee of PBR (in a variety) rights over the variety’s registered name similar to those which a trade mark owner is accorded in a registered trade mark.

As mentioned above, “Queen Garnet” has been registered with the Registrar of Plant Breeder’s Rights under the >Plant Breeder’s Rights Act 1994 as the name of the Complainant’s variety of plum.

Accordingly, the Panel finds that the Complainant has proven rights in the name “Queen Garnet” for the purposes of paragraph 4(a) of the Policy.

The Panel notes that those rights are limited under the Plant Breeder’s Rights Act 1994 to use in respect of (in broad terms) other plant varieties of the same class as plums. However, on the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proven name, trade mark or service mark: see, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Disregarding the “.com.au” component of the disputed domain name as a functional feature of the domain name system, therefore, the disputed domain name is identical to the Complainant’s name.

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 may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your bona fide use 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; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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. Previous auDRP panels have recognised the difficulties inherent in proving 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., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.

Under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the proof of a relevant trade mark and that the respondent is not associated with or licensed by the complainant may, depending on the circumstances, be sufficient to raise the required prima facie case. The same approach applies under the Policy: auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 2.1.

The Complainant says that the Respondent is not licensed by it or affiliated with it in any way. On the contrary, it says that in mid-2014, the Respondent approached Nutrafruit Pty Ltd for appointment as a distributor or licensee and was refused. Further, following that refusal, the Respondent approached BJP Laboratories Pty Ltd and convinced that business that the Respondent held all rights in “Garnet Plum” powder based products and entered into an exclusive dealing agreement with that company for the supply of those products by reference to “Queen Garnet”. According to the Complainant, BJP Laboratories Pty Ltd terminated that agreement upon becoming aware that the Respondent did not have the rights it claimed. The way the Respondent was using the disputed domain name to promote the Respondent’s own product until March 2016, therefore, would not qualify as a good faith offering of goods or services under the Policy. It was use of the name “Queen Garnet” to promote the Respondent’s own plum and other products not, apparently, Queen Garnet plums or products made from Queen Garnet plums.

Since March 2016, there does not appear to have been any use of the disputed domain name. So there can be no suggestion of use or demonstrable preparations to use the disputed domain name in connection with a good faith offering from that time: see auDA auDRP Overview 1.0, section 2.1A.

The disputed domain name is not derived from the Respondent’s name. Nor was the disputed domain name being used in a way which could be described as a legitimate noncommercial or fair use.

In these circumstances, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.

The Respondent’s dealings with the Complainant’s licensee Nutrafruit Pty Ltd and contract manufacturer BJP Laboratories Pty Ltd (discussed above) establish that the Respondent was clearly aware of the Complainant’s name when the Respondent registered the disputed domain name. It would seem likely that the Respondent registered the disputed domain name to use it in the way it did. So, for the reasons discussed in section 5B above, that use was not use in connection with a good faith offering of goods or services, it follows that the Respondent registered the disputed domain name in bad faith.

In addition, the Respondent’s use of the disputed domain name to promote the offering of its own products which, according to the Complainant, are not sourced from it or its licensee in circumstances where the Respondent does not have rights or a legitimate interest in the disputed domain name is use in bad faith under the Policy. The subsequent “passive” holding of the disputed domain name also qualifies as bad faith use under the Policy in the circumstances of this case: Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003.²

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

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 <queengarnetplum.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: June 13, 2018

¹ Plant Breeder’s Rights Act 1994 section 3 defines “PBR” for this purpose as the right specified in section 11 of the Act. Those rights are the exclusive right to do, or to license another person to do, various acts in relation to propagating material of the variety including to produce or reproduce the material and offer the material for sale.

² The Panel finds it appropriate to cite this decision in light of the substantive and procedural similarities between the Policy and UDRP on the issue of passive holding.