WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Geek Group Pty Ltd v. SG Corporate Services Pty Ltd

Case No. DAU2019-0009

1. The Parties

The Complainant is Geek Group Pty Ltd of Fitzgibbon, Australia, represented by Alder IP – Patent Attorneys and Solicitors, Australia.

The Respondent is SG Corporate Services Pty Ltd of Brisbane, Australia, represented by Mills Oakley, Australia.

2. The Domain Name and Registrar

The disputed domain name <supergeek.com.au> (the “Disputed Domain Name”) is registered with Web Address Registration Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2019, 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”), 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 1, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2019. After the Respondent’s request for extension, the due date for Response was updated to April 25, 2019. The Response was filed with the Center on April 18, 2019.

The Center appointed John Swinson as the sole panelist in this matter on May 1, 2019. 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 Geek Group Pty Ltd, an Australian registered company providing computer repair services on the Internet. The Complainant owns Australian registered trade mark number 1017762 for the following device mark, registered on August 27, 2004, as well as Australian registered trade mark number 1313346 for SUPERGEEK, registered on August 5, 2009:

(the “Trade Mark”). The Complainant acquired the Trade Mark from Davey SG Pty Ltd (in liquidation) on March 6, 2019.

The Respondent is SG Corporate Solutions Pty Ltd, a company which provides IT and other corporate and administrative support services to customers.

According to the Response, and as confirmed by the Registrar, the Disputed Domain Name was registered in November 2003. The Disputed Domain Name currently redirects Internet users to the website at <superitsolutions.com.au>, which is a business operated by a company under common control with that of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Name is identical to the Trade Mark. The Complainant purchased the Trade Mark from Davey SG Pty Ltd on March 6, 2019.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name redirects Internet users to a website at <superitsolutions.com.au>. This domain name is registered to a company which is controlled by the same individuals as those who control the Respondent.

The Disputed Domain Name has been owned by various entities since it was registered, all of which were or are under common control. One such entity is currently in liquidation. The Trade Mark has also been owned by one or more of these entities until purchased by the Complainant on March 6, 2019.

Registered or Used in Bad Faith

In March 2019, the Complainant and Supergeek Pty Ltd, a company under common control with the Respondent, exchanged correspondence regarding Supergeek Pty Ltd’s continued use of the Trade Mark following purchase of the Trade Mark by the Complainant. As a result of this correspondence, Supergeek Pty Ltd rebranded its business and redirected the Disputed Domain Name to a website at <superitsolutions.com.au>. However, it continued to use the Trade Mark in a number of ways.

The Respondent continues to use the Disputed Domain Name in bad faith. The Respondent is redirecting the Disputed Domain Name to <superitsolutions.com.au> for commercial gain for the Respondent’s new business which operates via that website.

The Respondent does not own the Trade Mark and has no right to use the Disputed Domain Name. By redirecting Internet users to <superitsolutions.com.au>, the Respondent is misleading consumers into believing that the Disputed Domain Name is related to the Respondent’s business.

B. Respondent

Factual background

Mr. Michael Davey and his business partner have operated a business trading as “Super Geek” at all times since approximately December 16, 2003. The Disputed Domain Name was registered by an individual associated with the Super Geek business in or around November 2003. The business’s initial operating entity, Supergeek.com.au Pty Ltd, owned the Trade Mark.

In 2014, Supergeek.com.au Pty Ltd assigned the Super Geek business, along with the Trade Mark and the Disputed Domain Name, to Davey SG Pty Ltd. The Respondent was incorporated in 2015 to provide corporate and administrative support to customers of the Super Geek business. The Respondent has traded under the Australian registered business name “Supergeek Corporate Solutions” since May 14, 2016.

Davey SG Pty Ltd went into liquidation in 2015. As a result of this, in March 2016, the Super Geek business and the Disputed Domain Name (but not the Trade Mark) were assigned to the Respondent. At that time, the Respondent began operating the Super Geek business (as opposed to providing support services for the Super Geek business). In November 2018, the Respondent appointed Supergeek Pty Ltd to operate the Super Geek business. The Respondent continued to operate the website at the Disputed Domain Name and provide services to the Super Geek business.

Identical or Confusingly Similar

The Respondent concedes that the Disputed Domain Name is identical to the Trade Mark.

Rights or Legitimate Interests

The Super Geek business has been continually promoted via the website at the Disputed Domain Name since November 2003, despite changes in ownership of the Disputed Domain Name and the business during that time. Entities associated with the Respondent have had rights to and legitimate interests in the Disputed Domain Name since 2003. The Respondent has had rights to and legitimate interests in the Disputed Domain Name since May 2015.

Despite protest by the Respondent, the liquidator of Davey SG Pty Ltd assigned the Trade Mark and a telephone number used by the Super Geek business to the Complainant in early 2019. Neither the Super Geek business nor any other assets used by the business were assigned to the Complainant. The Complainant has since set up business in competition with the Super Geek business, which at the relevant time was still operated by Supergeek Pty Ltd. The Complainant was aware of this.

To alleviate consumer confusion due to the Complainant’s use of the Trade Mark, in March 2019, the Respondent rebranded the Super Geek business to “Super I.T. Solutions”. However, the Respondent has not changed its registered business name (“Supergeek Corporate Solutions”), the business name of Supergeek Pty Ltd (“Super Geek”), or the corporate names of either the Respondent or Supergeek Pty Ltd.

The Respondent continues to operate the website of the Super Geek business which is accessible via the Disputed Domain Name. Internet users entering the Disputed Domain Name into a browser are directed to the website of the rebranded Super Geek business. The Respondent also continues to use the Disputed Domain Name in connection with email addresses and various other accounts and services used by the Super Geek business.

Since its inception in 2003, the Super Geek business has generated significant goodwill and reputation. Customers of the business have always been able to access the website of the business via the Disputed Domain Name, which remains the corporate name and business name of the operator of the business and the distinctive part of the business name of the Respondent.

The Respondent’s rights and legitimate interests in the Disputed Domain Name are not rendered illegitimate simply by the Complainant’s sudden acquisition of the Trade Mark which was previously owned by a business associated with the Respondent. Use of the Disputed Domain Name by the Respondent or the operator of the Super Geek business does not breach any rights the Complainant has in the Trade Mark.

The current and historical use of the Disputed Domain Name by the Respondent and its predecessors clearly demonstrate that the Disputed Domain Name was not registered in bad faith.

The Respondent is not using the Disputed Domain Name in bad faith for the following reasons:

- The Super Geek business owned by the Respondent (and operated by an entity under common control) has since 2003 been identified by reference to the Disputed Domain Name (and, until March 2019, the Trade Mark).
- The Respondent’s customers (and particularly long-term customers) enter the Disputed Domain Name directly into the browser when seeking the Respondent’s website, so it is reasonable to expect that the Respondent preserves the Disputed Domain Name for continuity.
- Ownership of the Trade Mark is not necessary (and was not relied on) for eligibility to register the Disputed Domain Name.
- The Complainant was not a competitor of the Respondent during the first 16 years of the Respondent’s ownership and use of the Disputed Domain Name. The Disputed Domain Name was not registered or used for the purpose of infringing any rights of the Complainant. The Complainant has only existed since February 8, 2019.
- The Respondent’s use of the Disputed Domain Name does not infringe the Complainant’s rights in the Trade Mark.
- The customers of the Super Geek business have never been customers of the Complainant and will not be looking for the Complainant by reference to the Disputed Domain Name. The Disputed Domain Name has always been associated with the Super Geek business.

Reverse Domain Name Hijacking

The Respondent requests that the Panel makes a finding of reverse domain name hijacking against the Complainant on the basis that:

- the Respondent’s use of the Disputed Domain Name could not constitute bad faith;
- a reasonable investigation would have revealed the weaknesses in the Complainant’s Complaint under the Policy; and
- the Complainant was or ought to have been aware that it could not establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the Complainant was or ought to have been aware of the Respondent’s (or its associated entities’) longstanding legitimate operation of the Super Geek business and the website at the Disputed Domain Name.

6. Discussion and Findings

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 has subsequently been used in bad faith.

The onus of proving these elements is on the Complainant.

The factual situation in this dispute is complex. Both the Complaint and the Response contain statements as to the facts or the law that do not appear to be correct. The Complaint omits key facts. This makes the task of the Panel somewhat difficult. In similar prior cases, some panellists have decided against the Complainant on the basis that it is not appropriate to use the Policy in a complex ownership dispute. Although complex, this dispute can be decided based on a set of facts that are simple, clear and appear to be common ground between the parties.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy 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.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDA auDRP Overview”)). In this case the Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional words have been added.

The Respondent does not contest the first element.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

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 Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as the Disputed Domain Name redirects Internet users to a website at <superitsolutions.com.au>. This domain name is registered to a company controlled by the same individuals as those who control the Respondent. It appears to be promoting a business in competition with the Complainant.

The Respondent provides additional information (which the Complainant failed to provide) as to how the Disputed Domain Name came to be redirected to a competing business. In summary, the Respondent or its associated entities had operated a business known as “Super Geek” since 2003. When one of these entities (Davey SG Pty Ltd) went into liquidation, the appointed liquidator sold the Trade Mark to the Complainant. However, prior to this, the business operated by Davey SG Pty Ltd, and the Disputed Domain Name which was then owned by Davey SG Pty Ltd, were transferred to the Respondent. How this came about, and why ownership of the Disputed Domain Name and the Trade Mark were transferred to separate and unrelated entities several years apart, is not explained.

In March 2019, following a series of cease and desist letters sent by both parties, the Respondent (or the entity operating the Super Geek business at that time) rebranded the Super Geek business in response to a trade mark infringement claim by the Complainant. However, the Respondent continued to use the Disputed Domain Name. The Respondent submits that the Disputed Domain Name is well-known to its customers as being associated with the Respondent’s business, and thus it is permissible for the Respondent to use the Disputed Domain Name to direct those customers to its rebranded business.

The Respondent submits that it retains rights or legitimate interests in the Disputed Domain Name because, before notice of the dispute, the Respondent was using the Disputed Domain Name in connection with a bona fide offering of goods or services, and because it is commonly known by the Disputed Domain Name.

While it is true that at one time the Respondent was using the Disputed Domain Name in connection with a bona fide offering of goods or services, and was commonly known by the Disputed Domain Name, the Panel considers that this is no longer the case.

According to the Response, the Respondent transferred operation of the Super Geek business to another entity (Supergeek Pty Ltd) in 2018. There is some possible business arrangement between Supergeek Pty Ltd and the Respondent, but that arrangement is not fully explained or documented in the Response. The Respondent has provided evidence of the common control of various entities, but has not provided evidence of inter-company arrangements in relation to the operation of the business and use of the Disputed Domain Name. For example, there is no agreement referred to or provided in the Response that gives Supergeek Pty Ltd any rights to use the Disputed Domain Name or that requires the Respondent to use the Disputed Domain Name to promote the business operated by Supergeek Pty Ltd. There is no evidence of any payments between Supergeek Pty Ltd and the Respondent.

There is also no evidence to show that the Respondent is commonly known as SUPER GEEK. The Respondent does not own and has never owned (and as far as the evidence shows, has never had the right to use) the Trade Mark.

Further, in March 2019, the entity responsible for operating the business (i.e., Supergeek Pty Ltd) abandoned use of the “Super Geek” brand and trading name. The fact it was forced to do so by circumstances outside its control (namely a risk of trade mark infringement given its assignment of the Trade Mark to the Complainant) is irrelevant here.

In short:

- the Respondent does not currently operate a business branded as SUPER GEEK or similar;
- there is no evidence that the Respondent is required (for example, by contract) to use the Disputed Domain Name to promote the business operated by Super Geek Pty Ltd;
- Super Geek Pty Ltd does not assert that it has rights to use the Disputed Domain Name;
- Super Geek Pty Ltd has abandoned use of SUPER GEEK as its trading brand;
- the Disputed Domain Name is being used to divert Internet traffic to a website that does not use SUPER GEEK as a brand, trade mark or business name on the website.

In these circumstances, the Respondent’s use of the Disputed Domain Name to redirect users to a website that does not use SUPER GEEK and is branded as “Super I.T. Solutions” does not constitute a bona fide offering of goods or services using the Disputed Domain Name.

Similarly, the Respondent’s continued use or ownership of a business name which incorporates “Super Geek” does not mean the Respondent is commonly known by this name where the Respondent is not primarily responsible for operating the business, and there is no evidence that the business now operates under that name.

The prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

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.

Unlike the equivalent provision in the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the word “and” is not used in the Policy and therefore the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise. In this case there is no evidence that the Respondent initially registered the Disputed Domain Name in bad faith. At one time, the Respondent may have used the Disputed Domain Name in good faith.

However, given the change in circumstances since the Respondent registered the Disputed Domain Name, the Panel must consider whether the Respondent is now using the Disputed Domain Name in bad faith.

The Complainant submits that the Respondent’s use of the Disputed Domain Name to redirect customers to <superitsolutions.com.au>, a business which now competes with that of the Complainant, constitutes bad faith use, and that the Respondent is misleading consumers into believing that the Complainant’s business is associated with that of the Respondent. The Respondent submits that the reputation in the Disputed Domain Name belongs to the business operated by the Respondent’s associated entities, but provides no evidence to support this.

While the Panel empathizes with the Respondent’s situation, the Panel considers that use of the Disputed Domain Name, which is identical to the Trade Mark in which the Respondent has no rights, to redirect Internet users to a third party’s rebranded business, constitutes use of the Disputed Domain Name in bad faith. See e.g., ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014; Rejuvatek Medical, Inc. v. Biosoft (Aust) Pty Ltd, WIPO Case No. DAU2017-0014.

The Complainant succeeds on the third element of the Policy.

7. 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 <supergeek.com.au> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: May 14, 2019