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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PA Consulting Services Pty Ltd v. Joseph Barrington-Lew

Case No. DAU2003-0002

 

1. The Parties

The Complainant is PA Consulting Services Pty Ltd, of South Melbourne, Victoria, Australia.

The Respondent is Joseph Barrington-Lew, Park Avenue Consulting, of Malvern, Victoria, Australia.

 

2. The Domain Name and Registrar

The disputed domain name is <paconsulting.com.au>, registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2003. On April 1, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On April 2, 2003, Melbourne IT trading as Internet Name Worldwide 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 .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 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2003. The Response was filed with the Center on April 28, 2003.

The Center appointed John Swinson as the sole panelist in this matter on May 7, 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 a company, registered in New South Wales, Australia, which provides business consultancy services.

The Complainant is a member of the PA Consulting Group. The first PA Consulting Group company, PA Consulting Services Limited, was incorporated in England in 1946. The group commenced business in Australia in the 1950s under the name PA Management Consultants (Australasia) Pty Ltd. The Complainant was formed in August 20, 1987, and has operated under the name PA Consulting Services Pty Ltd since then. The Complainant also has business name registrations for "PA Consulting Group" in Victoria, New South Wales, Tasmania and the ACT. The Complainant has offices in Melbourne and Sydney.

The PA Consulting Group has a number of registered domain names including <paconsulting.com>, <paconsulting.net>, <paconsulting.info> and <paconsulting.biz>.

The Respondent is an individual. He is the owner of a business name "Park Avenue Consulting", registered in Victoria on March 18, 2002. The Respondent registered the disputed domain name on September 24, 2002. The Respondent is a reseller of computer software used for analysing stock market data, and provides training services relating to that software.

 

5. Parties’ Contentions

A. Complainant

The Complainant provided lengthy and detailed submissions, with corresponding supporting materials, regarding its business, brand name and reputation. That information is summarised as follows.

History of the Complainant

The Complainant is a member of the PA Consulting Group of companies, which comprises approximately 150 companies worldwide. PA Holdings Limited (incorporated in England) is the parent company of the companies which comprise the PA Consulting Group, including the Complainant. As a group of companies, they are known generally as PA Consulting or the PA Consulting Group.

The PA Consulting Group has over 40 offices and 4,000 staff worldwide, including throughout Europe, the United Kingdom, Asia, Australia and North and South America.

The PA Consulting Group has operated in Australia for over 50 years and the Complainant has operated under the company name PA Consulting Services Pty Ltd since 1987. The Complainant provides its services under the name PA Consulting, or similar names such as PA Consulting Services and PA Consulting Group, throughout Australia. As a member of the PA Consulting Group, the Complainant is authorised to use the name PA Consulting, and benefits from the substantial goodwill and reputation which the PA Consulting Group has established in this name.

The PA Consulting Group claims that it is a leading business and financial management, investment, systems and technology consulting organisation. Revenue for the PA Consultancy Group worldwide in the past two years exceeded Ј750 million. In Australia alone, the revenue was approximately A$50 million. The Complainant has provided financial and business management consultancy services for several large, high profile organisations in Australia.

The Complainant spent more than A$100,000 on marketing and promotional activities in 2001 and 2002. It is represented at numerous external conferences and was mentioned in numerous published articles in 2002.

The Complainant submits that it has achieved international recognition as a leading consultancy firm.

The PA Consulting Group has a number of registered domain names including <paconsulting.com>. The website operated at this domain name receives around 1.3 million hits per month. Users in Australia constitute the fifth largest group of visitors to the website.

The PA Consulting Group has registered or applied for trade mark registration of the letters "PA" in stylised form in many countries throughout the world. These applications and registrations are owned by subsidiary companies in the PA Consulting Group. In Australia, a group company called PA Knowledge Limited is the registered proprietor of Australian Trade Mark Registration No. 759,442 for the "PA" stylised logo. This trade mark registration was applied for in April 1998. Apparently, this trade mark is licensed to the Complainant.

Submissions of Complainant

The Complainant asserts that the disputed domain name is:

(a) identical to the name "PA Consulting"; and

(b) confusingly similar to:

(i) the Complainant’s company name "PA Consulting Services"; and

(ii) the Complainant’s company name "PA Consulting Group" for which it has business name registrations; and

(ii) the "PA" registered trade mark.

The Complainant relies upon the rights of the Complainant in the name PA Consulting, due to the use of this name in its company name PA Consulting Services Pty Ltd and its business name registrations for PA Consulting Group, and its rights to use the "PA" trade mark in Australia.

The Complainant provided evidence of the extensive use of the name PA Consulting, and similar names such as PA Consulting Services and PA Consulting.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant provided numerous reasons as to why it believes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel summarises some of these submissions as follows.

The Respondent does not use the name "PA Consulting". The Respondent does not own any trade marks for "PA" or "PA Consulting" and has not registered any company or business names in Australia which contain the name "PA Consulting", or similar, and has no trade marks or business names for this name.

Considering the significant reputation of the Complainant and the PA Consulting Group in relation to the provision of business management and financial and investment consultancy (which is the industry in which the Respondent claims to conduct business), it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s rights in the PA Consulting name when he registered the disputed domain name. If the Respondent had conducted simple searches of the Internet, the Australian Trade Marks Register, the ASIC Register of Company and Business Names, the Respondent would have seen the substantial rights of the Complainant and PA Consulting Group.

Any use of the disputed domain name by the Respondent has not been legitimate as it has been in breach of the Complainant’s rights in the name PA Consulting.

The Respondent has breached paragraph 2(c) of the Policy, which states that by applying to register a domain name, the domain name applicant represents and warrants to auDA that, to the Applicant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and that the Applicant "will not knowingly use the domain name in violation of any applicable laws or regulations", and it is the Applicant's "responsibility to determine whether [the Applicant's] domain name registration infringes or violates someone else's rights.";

There is no reasonable excuse for the Respondent to register or to continue using the disputed domain name when the Respondent’s business name is "Park Avenue Consulting". There are other more suitable domain names available like <parkavenueconsulting.com.au> and <parkavenueconsultants.com.au>.

In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant argues that the Respondent both registered and has used the domain name in bad faith. The Complainant’s reasons for this assertion can be summarised as follows.

When applying to register the disputed domain name, the Respondent was aware or should have been aware by making appropriate enquiries, that by registering and using the disputed domain name he would be violating the Complainant's and the PA Consulting Group's rights in the "PA Consulting" name.

Failure to conduct adequate searches (for example trade mark, business name, company name and Internet searches) to ensure the Respondent was not registering the disputed domain name in violation of another party’s rights is evidence of bad faith.

The Respondent offered the disputed domain name for sale, in breach of auDA policy and Melbourne IT's domain name licence terms and conditions.

The Respondent attempted to obtain compensation greater than his out-of-pocket expenses in connection with the sale of the domain name. Moreover, the Respondent refused a reasonable, good faith offer of compensation for transfer of the domain name. The Respondent implied that he would go to the media if more substantial offers were not made for the transfer of the domain name; and

The Respondent registered the domain name in breach of his obligations under paragraph 2 of the Policy which states that the domain name registrant must not knowingly use the domain name in violation of any applicable laws or regulations and that it is the registrant’s responsibility to determine whether his or her domain name registration infringes or violates someone else’s rights. The Respondent continues to use the domain name with full knowledge of the Complainant's and the PA Consulting Group's rights in the name PA Consulting and in the trade mark PA, and with full knowledge that the Respondent's use of the disputed domain name has caused confusion.

In particular, the Complainant relies on communications from the Respondent to representatives of the PA Consulting Group and the Complainant as evidence of bad faith as follows:

On February 18, 2003, the Respondent sent an unsolicited email to the PA Consulting Group in England, stating:

"Hello, I operate www.paconsulting.com.au here in Australia together with www.park-avenue-consulting.com. www.paconsulting.com.au> or www.park-avenue-consulting.com are available for sale, would there be an interest at PA Consulting? Offer expires on the 28th February 2003."

After the Complainant indicated an interest in possibly purchasing the disputed domain name, on February 18, 2003, the Respondent again wrote:

"Yes, I am interested in selling the website address www.paconsulting.com.au provided the terms are acceptable and I may continue to use www.park-avenue-consulting.com, which unfortunately is not as easy to relate to colleagues and customers as is paconsulting.com.au.

Awaiting your offer, with interest and I would like to negotiate quickly without fuss but please be aware there are two US based companies www.parkavenueconsultants and www.paconsultants.com that I have not contacted as yet and given the opportunity to express their interest …"

On February 19, 2003, the Respondent wrote:

"Please let me know if PA Consulting Group is still interested in the purchase of www.paconsulting.com.au prior to 28th February?

I can’t speak for other countries but I found Australians prefer to deal with a company that has invested time and money in Australia where they hope to do business, demonstrated by a local website and email address which gives the company credibility and the impression that they are here to stay. I’m sure a local website and email address would be advantageous for both your Sydney and Melbourne office, just as it will be with www.paconsulting.co.nz and your New Zealand office."

When the Complainant offered the Respondent Ј200 to transfer the disputed domain name on February 21, 2003, the Respondent replied as follows:

"… No, I’m sorry, it will not suffice, for starters you have forgotten a "0"? … I make more than that in one order from my website and other affiliate website links. Having the extension of com.au is held by established firms in Australia, the laws in Australia to hold a com.au extension are far more difficult than any other. I look forward to seeing a far more serious offer to consider otherwise I will make alternative arrangements. Have you lost any business because an Australian client has inadvertently emailed paconsulting.com.au in error and the email address was rejected, client felt uncomfortable and went elsewhere? How will you know. What is a new client worth, more than Ј200 I’m sure. Enough said, if there is no further interest please confirm."

On February 26, 2003, the Respondent again emailed the PA Consulting group inquiring whether there would be any interest "accompanied by a serious offer from PA Consulting Group (Melbourne / Sydney AUSTRALIA)?" to purchase the disputed domain name. The offer was open until February 28, 2003, at which time the Respondent would be "committed to launching a major advertising campaign … promoting [the Respondent’s] website address and business".

On February 26, 2003, a representative from PA Consulting emailed the Respondent and stated that:

- if people are under the impression that they are dealing with PA Consulting Group at the Respondent’s website then those emails should be forwarded to the PA Consulting Group;

- the Respondent was on notice of the rights the PA Consulting Group had in the name "PA Consulting" and that the Registrant’s use of the disputed domain name was causing confusion in the marketplace; and

- the Complainant offered the Respondent Ј600 to transfer the disputed domain name to the Complainant and that if this offer was refused, further legal action would be taken.

The Respondent rejected the Complainant’s offer claiming that it was inadequate compensation and denying that the disputed domain name was improperly registered.

On March 13, 2003, the Complainant’s lawyers sent the Respondent a letter of demand.

Also, the Complainant submits there is evidence that the Respondent’s registration of the disputed domain name has caused confusion in the marketplace, evidenced by comments by the Respondent in various emails to the PA Consulting Group as follows:

- On February 23, 2003, the Respondent wrote: "p.s. received an email today addressed to info@paconsulting.com.au and suggested sender re-direct email to info@paconsulting.com. What should I do with these in the future?"

- On February 26, 2003, the Respondent wrote: "… What would you like me to do with future emails sent to info@paconsulting.com.au regardless of how valuable they may be. Is there interest? Is it now too complicated to keep it simple?"

- On April 1, 2003, the Respondent wrote: "As professional courtesy I am forwarding the following emails (14) to you to redirect to the intended recipient. As you have read in my previous correspondence my intention has never been to gain any advantage from PA Consulting but I am not on your payroll and I am not a secretarial service and unless we can come to some arrangement, in future I will delete all emails not intended for either me or Park Avenue Consulting. I do not intend to waste any more time and continue re-directing incorrectly addressed emails. Since September 2002 I have used many email contact names at paconsulting.com.au, sometimes temporary ones but due to limitations on my server and not being able to recall all of them I am now forced to receive an redirect incorrectly addressed emails. Can we resolve this amicably without involving the blood sucking lawyers?"

B. Respondent

The Respondent registered the business name "Park Avenue Consulting" in Victoria on March 18, 2002. The Respondent claims that he commenced trading in his share market training and software business on December 1, 1994.

The Respondent admits that the disputed domain name is similar to the Complainant’s name but claims that it is not identical. The Respondent claims he has a legitimate right to register the disputed domain name as an abbreviation of his business name.

The Respondent rejects the suggestion that he should have registered a different domain name such as <parkavenueconsulting.com.au> and claims that he chose the disputed domain name because it was "shorter in length and easier to remember".

The Respondent claims he has had an association with the words "Park Avenue" since 1989, including directorship of a company named Park Avenue Holdings Pty Ltd, predating the Complainant’s trade mark.

The Respondent denies that:

(a) he registered the disputed domain name to trade off the Complainant’s goodwill or reputation;

(b) he was aware of the existence of the Complainant when registering the disputed domain name;

(c) that the website for the disputed domain name could be mistaken for the Complainant’s business as nowhere on the website or in any other collateral materials does he refer to "paconsulting" or the Complainant’s name (except for in the domain name itself);

(d) he is carrying on the same or a similar business to the Complainant because:

(i) he does not provide financial advice and he is not operating in the same industry;

(ii) he is a reseller of computer software (which relates to "the science of Technical Analysis used for analyzing stock market data"), and he provides training in the use of the software;

(iii) the Complainant appears only to have commercial entities as clients whereas the Respondent has clients that are individuals;

(e) he registered or is using the disputed domain name in bad faith;

(f) he registered the disputed domain name for the purpose of selling it.

The Respondent admits that he approached the Complainant "with the intention to explore commercial interest in the domain name" but denies registering the disputed domain name for that purpose. He claims that he approached the Complainant "in an act of fairness and goodwill, understanding that the Complainant appeared to have a business operation in Australia".

The Respondent claims that the reason he refused to accept the Complainant’s offers to buy the disputed domain name is because he wanted to recover "just costs" (which the Respondent admits he has not disclosed to the Complainant). The Respondent decided to continue using the disputed domain name given the time and money the Respondent had invested in developing the website for a legitimate business purpose unrelated to the Complainant’s activities.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining this dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires a Complainant to prove:

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

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

(iii) the domain name has been registered or subsequently used in bad faith.

The onus of proof is on the Complainant in relation to all three of these elements.

A. Identical or Confusingly Similar

For the purposes of this Policy, auDA has determined that a "name … in which the complainant has rights" includes the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority.

The Complainant has registered the company name "PA Consulting Services Pty Ltd" with ASIC. The Complainant also owns business name registrations for "PA Consulting Group." Although not strictly necessary under the Policy, the Complainant provided substantial evidence of its use and reputation of these names in Australia. It is undisputed that the Complainant has a well-established reputation in Australia and worldwide for its business and financial management, investment, systems and technology consulting services.

The Panel finds that the disputed domain name is confusingly similar to the company name "PA Consulting Services Pty Ltd" and the business name for "PA Consulting Group."

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

Accordingly, the Panel does not need to decide whether PA Knowledge Limited’s trade mark registration in Australia for "PA" is a trade mark in which the Complainant has rights or is a trade mark that is confusingly similar to the disputed domain name.

B. Rights or Legitimate Interests

For the purposes of this policy, auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

Although the onus of proof is on the Complainant, once the Complainant has made out a prima facie case that it satisfies this element, it is up to the Respondent to provide evidence to the contrary. Paragraph 4(c) of the Policy sets out example grounds upon which the Respondent is able to demonstrate rights or a legitimate interest in a domain name.

In relation to this dispute, the Panel does not believe the Respondent has satisfied any of these grounds, or provided other satisfactory grounds to show a right or legitimate interest in respect of the domain name.

The Respondent’s registered trading name is "Park Avenue Consulting". The question to be decided in this dispute is whether the Respondent’s use of "Park Avenue Consulting" is a bona fide use of a name corresponding to the disputed domain name, within the meaning of paragraph 4(c)(i) of the Policy.

As an initial observation, the Respondent pointed to his directorship in Park Avenue Holdings Pty Ltd more than 10 years ago as long standing use of the name "Park Avenue Consulting." First, the name "Park Avenue Holdings" has no relationship to the disputed domain name. Second, it appears from the materials provided by the Respondent that Park Avenue Holdings Pty Ltd was deregistered on 6 July 1994 as a result of a strike-off action, although this was not explained in the Respondent’s materials. The Respondent’s business name, on which he mostly relies, was registered only in 2002, and there is no apparent association between the Respondent’s use of this business name and the deregistered company called Park Avenue Holdings Pty Ltd.

The Panel finds that "Park Avenue Consulting" could be regarded as a name corresponding to the disputed domain name. However, the Respondent’s use is not a bona fide use within the meaning of paragraph 4(c)(i) of the Policy. As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847 (October 16, 2000), "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy." Here, based upon all the evidence presented by both parties, the Panel concludes that the reason that the Respondent registered the disputed domain name was to sell it, not to trade under it, and that does not give the Respondent rights or a legitimate interest in the disputed domain name. The disputed domain name was offered for sale to the Complainant less than 5 months after it was registered, and only one month after the launch of the Respondent’s website at this address. The Respondent’s reason for this unsolicited offer of sale of the disputed domain name was unconvincing.

The Respondent is not commonly known by the disputed domain name. In particular, the Respondent admits that he does not use the term "PA Consulting" except in relation to use of the disputed domain name. Additionally, the Respondent does not own any trade marks for "PA Consulting" and has not registered any company or business names in Australia which contain the name "PA Consulting."

It is clear that the Respondent is making a commercial use of the disputed domain name, by trying to sell software at the website accessible via the disputed domain name.

Accordingly, the Panel does not believe the Respondent has satisfied any of the grounds in paragraph 4(c) of the Policy, or provided other satisfactory grounds to show a right or legitimate interest in respect of the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the disputed domain name was either registered or subsequently used in bad faith. Paragraph 4(b) of the Policy set out circumstances that are evidence of registration or use of a domain name in bad faith. The Panel finds that the Complainant has satisfied this element.

The Respondent’s story is not credible. The Respondent launched his website at the disputed domain name on January 14, 2003. The Respondent claims that at this time he was not aware of the Complainant, but found out about the Complainant after this. The Respondent does not state how he found out about the Complainant. The Respondent then contacted the Complainant on February 18, 2003, offering to sell the disputed domain name, and requesting a response within seven days. Later that day, the Respondent wrote in an email to the Complainant that he may offer the disputed domain name for sale to a U.S. entity if the Complainant was not interested in it. This is inconsistent with the Respondent’s assertions in the Response that he "approached the complainant in an act of fairness and goodwill" once learning that the Complainant had a business in Australia under this name. In negotiating the price for the disputed domain name, the Respondent suggested that he wanted more than Ј2000. Again, this does not seem like "an act of fairness and goodwill". Why would a business that has just launched then offer to sell the domain name used by the business (that it believed and still believes, and indeed certifies in the Response in these proceedings, to be legitimate) without prompting only a month after the launch of the business?

Correspondence from the Respondent to the Complainant strongly suggests that the Respondent wished to sell or transfer the domain name to the Complainant (or the PA Consulting Group) for valuable consideration in excess of the Respondent’s out of pocket expenses. The panel concludes that, on the balance of probabilities, that the Respondent was aware of the Complainant when registering the disputed domain name, and that the primary purpose of registering this domain name was to sell it to the Complainant at a significant profit.

At no time did the Respondent appear committed to using the disputed domain name to building up his newly established business or to promote his products. Most likely this was because he always intended to try to sell the disputed domain name to the Complainant.

Even if the Respondent was not aware of the Complainant at the time of registration of the disputed domain name, once the Respondent soon found out about the Complainant, the Respondent used the disputed domain name in such a way to attempt to disrupt the Complainant’s business (with the overall aim of getting a better price for the disputed domain name.)

Correspondence from the Respondent suggests that the Respondent was aware of the confusion the disputed domain name was causing in the marketplace, and that the Respondent was attempting to leverage off this fact when trying to sell the disputed domain name to the Complainant. The Panel believes that the Respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the website.

The emails from the Respondent to the PA Consulting Group also indicate that the Respondent was aware that the Complainant’s customers are sending emails to the Respondent that are intended for the Complainant.

In short, the Panel concludes that the Respondent registered and used the dispute domain name in bad faith.

 

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, <paconsulting.com.au> be transferred to the Complainant.

 

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John Swinson
Sole Panelist

Dated: May 20, 2003