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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wesfarmers Ltd. v. Kirk Mower

Case No. D2003-0046

 

1. The Parties

The Complainant is Wesfarmers Ltd., C/O Christian Bauer of PO Box M978, Perth, WA, 6001, Australia, represented by Clayton Utz Solicitors of Perth, Australia.

The Respondent is Kirk Mower of Carmichael, California, United States of America or of Sandy Bay, Tasmania, Australia or of Nedlands, Western Australia, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <wesfarmers.net> was registered with Register.com, Inc on December 29, 2000.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2003. On January 23, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 23, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform 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 January 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2003.

The Center appointed Clive Duncan Thorne as the sole Panelist in this matter on March 5, 2003. 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 active in numerous areas of business and industry, apparently in Western Australia. The activities of the Complainant include, but are not limited to:

(a) Agri business
(b) Hardware
(c) Coal and gas
(d) Finance
(e) Energy
(f) Fertiliser and chemicals
(g) Forest products
(h) Industrial safety products
(i) Insurance
(j) Retail

Since at least 1931, the Complainant has owned the Australian trademark Wesfarmers and has since November 1931 used Wesfarmers as a name and trademark extensively throughout Western Australia. The Complainant asserts that almost every member of the public, business and government agency within Western Australia has come to associate Wesfarmers exclusively with the Complainant.

At Annexure D to the Complaint there is set out a schedule of the Australian trademarks Wesfarmers in numerous classes which appear to reflect the business activities referred to above. At Annexure E to the Complaint there are a series of some 50 corporate names apparently used by the Complainant and its group of companies using the name Wesfarmers in Australia.

The Complainant also asserts that it has established as a result of its activities a trading goodwill in the name Wesfarmers. This is especially so because the Complainant has registered and operates a series of domain names including <wesfarmers.com>, <wesfarmers.com.au>, <wesfarmers.biz> and <wesfarmers.info>.

In summary the Complainant asserts that through its extensive marketing and promotion of Wesfarmers the Complainant has established a significant reputation in any domain name that refers to Wesfarmers including the domain name <wesfarmers.net>. Apparently much of the Complainant's business now involves the use and promotion of the name and trademark WESFARMERS through electronic means using the Internet, through business e-commerce and through email.

The background to the present Complaint is that the Complainant's lawyers, presumably after the Complainant had become aware of the Respondent's registration of the domain name in dispute, wrote to the Respondent pointing out that the Complainant's trademarks and trading goodwill had been infringed by the Respondent. The Respondent did not respond to the Complainant's correspondence. However, not long after correspondence was handed to the Respondent the Respondent changed the address of the domain name registration to an address in the United States without notice to the Complainant. The Complainant's lawyers attempted to contact the Respondent at the US address and were informed that the Respondent lives in Australia, not at the contact address in the United States. Eventually through contact with the Respondent's mother the Complainant's lawyers were informed that the Respondent now resided in Tasmania, Australia.

The Complainant's lawyers then contacted the Respondent in Tasmania and informed him that the Complainant’s trademark rights were being infringed. Apparently, in response the Respondent indicated:

(a) That he could not offer any legitimate explanation why the registration address for the domain name was changed from Perth, Western Australia to the address in California yet he nevertheless continued to reside and operate in Australia.

(b) Refused to confirm his contact details in Tasmania.

(c) Promised to respond by telephone to the Complainant's lawyers in relation to the allegations of trademark infringement but has apparently failed. (He has apparently not yet done so.)

No Response has been filed by the Respondent. In the absence of any evidence to the contrary the Panel accepts the facts asserted by the Complainant and set out above.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts:

(i) The domain name is identical or confusingly similar to a trademark and service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

(iii) The domain name was registered and is being used in bad faith.

Under the terms of the Policy the burden of proof in satisfying the Panel on each of these three elements which are set out at paragraph 4(a)(i) of the Policy rests upon the Complainant.

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

In support of this contention the Complainant relies upon the trademark rights referred to above.

(ii) The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant relies upon the communications that took place with the Respondent referred to above. It also points out that the Respondent is not known, commonly or otherwise, by reference to the domain name and that the Respondent has acquired no business name registrations, corporate registrations, trademark or service mark rights in relation to the name "Wesfarmers."

It also submits that any potential use of the domain name is unlawful and constitutes passing off, misleading and deceptive conduct and trademark infringement.

(iii) The domain name was registered and is being used in bad faith.

The Complainant submits that bad faith is evidenced by the fact that the Complainant and its trademarks are well known by almost every Western Australian and that at the time the Respondent registered the domain name the Respondent knew very well that there was no prospect that the Respondent could use the name to conduct any legitimate or bona fide business.

It further submits that the Respondent registered the domain name for the express and overt purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out of pocket costs directly related to the domain name.

It also submits that the Respondent's conduct in applying for and obtaining registration of the domain name is "illegal" and infringes the Complainant's rights.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel having found that on the evidence the Complainant has trademark rights (both registered and unregistered rights) in the mark Wesfarmer has to consider whether the domain name in dispute is identical or confusingly similar to the trademarks relied upon. The domain name in dispute is <wesfarmers.net> and in the Panel's view is therefore identical with the mark WESFARMERS in which the Complainant has rights. The Panel therefore finds for the Complainant under this element.

B. Rights or Legitimate Interests

There is no evidence before the Panel that the Respondent has any rights or legitimate interests in respect of the domain name. To the contrary the Complainant submits that there is no evidence that the Respondent is known, commonly (or otherwise) by reference to the domain name and the Respondent has acquired no business name registrations, corporate registrations, trademark or service mark rights in relation to the "Wesfarmers" name.

Moreover it relies upon the fact that the website invites the public to make an offer to purchase the domain name. Moreover the Respondent points out that any potential use of the domain name is going to infringe the Complainant's rights either by way of passing off, misleading and deceptive conduct under the Western Australian Fair Trading Act (WA) 1987 or under Section 120 of the Australian Trademarks Act.

Taking all these submissions into account and bearing in mind that there are no submissions to the contrary from the Respondent the Panel finds for the Complainant under this element.

C. Registered and Used in Bad Faith

The Complainant relies primarily upon the fact that the Complainant and his trademarks are well known "by almost every Western Australian." The Panel having found for the Complainant in having established a significant number of trademark rights and corporate entities trading under the name Wesfarmers is prepared to accept this submission and find that the Respondent who was based in Australia must have known that there was no prospect that he could use the name to conduct any legitimate bona fine business.

The Panel is also mindful of the fact that the Respondent has invited the public to make offers to purchase the domain name. This does not in the Panel's view however go as far as to establish that the Respondent registered the domain name with the express and overt purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out of pocket costs. Nevertheless it would appear that the Respondent did not register the domain name for bona fide use. Given the strong evidence of the Complainant's trading activities in Australia it nevertheless finds that the domain name was registered and is being used in bad faith. It therefore finds for the Complainant in respect of this element.

 

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 domain name, <wesfarmers.net> be transferred to the Complainant.

 

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Clive, Duncan Thorne
Sole Panelist

Dated: March 18, 2003