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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Doteasy Technology, Inc. v. M Makras and E.A Nahed dba Dot Easy Australia

Case No. DAU2006-0011

 

1. The Parties

The Complainant is Doteasy Technology, Inc., of Burnaby, British Columbia, Canada, represented by Johnny Tam, Canada.

The Respondent is a family partnership comprising M Makras and E.A Nahed, doing business as Dot Easy Australia, of Bass Hill, New South Wales, Australia, represented by Guy & Hinton, Solicitors, Australia.

 

2. The Domain Names and Registrar

The disputed domain names <doteasy.com.au> and <doteasy.net.au> are registered with NetRegistry Pty Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2006. It named as Respondent “World Creation/Elie Nahed D/B/A Dot Easy Australia”. On September 27, 2006, the Center transmitted by email to NetRegistry Pty Ltd. a request for registrar verification in connection with the domain names at issue. The Center’s email included a request for confirmation that the domain name would remain locked during the pending administrative proceeding. On September 29, 2006, NetRegistry Pty Ltd. transmitted by email to the Center its verification response naming World Creation (ABN 32 171 759 928 – partnership of Leila El Arif and Elie Nahed) as registrant of the domain name <doteasy.com.au> and Elie Nahed (ABN 87 148 545 883 M Makras & E.A. Nahed) as registrant of the domain name <doteasy.net.au> and providing identical contact details for the administrative, billing, and technical contacts for both domain names. At that stage NetRegistry Pty Ltd advised that it had not received a copy of the Complaint and that it would lock the domains if requested to do so.

On October 5, 2006, NetRegistry Pty Ltd. informed the Center that it had received the Complaint on October 4, 2006, and had also received a request to make amendments to the registrant details for <doteasy.com.au> and to transfer the registration of <doteasy.net.au>. After consulting with auDA, NetRegistry Pty Ltd. acted upon the request as (other than in the Center’s verification request of September 27, 2006) it had not been instructed to lock the domains. NetRegistry Pty Ltd. confirmed that the new registrant for each domain is M Makras & E.A. Nahed, ABN 87 148 545 883. On October 6, 2006, the Center requested that Netregistry Pty Ltd. restore the original registrant information as the proceedings were still pending, or if this was not possible, to lock and confirm lock status on both domain names. On October 10, 2006, NetRegistry Pty Ltd. advised that it was not possible to revert to the original registrant information, but confirmed that the domain names had been locked and would remain so pending the outcome of these proceedings.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 12, 2006, naming the current registrant of both domain names as Respondent. The Center verified that the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for the .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the .au 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 October 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2006. On November 2, 2006, the Respondent’s representative requested an extension of time until November 13, 2006. Due to exceptional circumstances, the Center extended the time for the Response by 4 days to November 10, 2006. The Response was filed with the Center on November 10, 2006.

The Center appointed Alan L. Limbury as the sole panelist in this matter on December 28, 2006. 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.

On November 21, 2006, the Complainant filed an unsolicited supplementary submission. The Center advised that this would be brought to the attention of the Panel and that, in accordance with paragraph 10(d) of the Rules, it would be at the sole discretion of the Panel whether the supplementary submission would be considered or not. On December 14, 2006, the Respondent submitted that the Complainant’s supplementary submission should be rejected or, should the Panel decide to admit it, that the Respondent should be given an opportunity to reply, as was contemplated in Admerex Limited v. Metyor Inc., WIPO Case No. D2005-1246.

4. Factual Background

The Complainant was incorporated in British Columbia, Canada, on March 23, 2000. It provides computer services including registration of domain names, website hosting and design and electronic dissemination of advertising. It is the registrant of the domain name <doteasy.com>, which it uses for its principal website, and it is the registered proprietor of the trademark DOTEASY.COM in both Canada (No. TMA638905, filed on May 28, 2004, registered on May 3, 2005, claiming first use in Canada on May 1, 2000) and the United States of America (No. 3049871, filed on November 22, 2004, registered on January 24, 2006, claiming first use in commerce on May 1, 2000). Complainant is also the registered proprietor of the trademark DOTEASY in Canada (No. TMA637785, filed on August 27, 2003, registered on April 19, 2005, claiming first use in Canada on May 1, 2000).

The Respondent is a family partnership comprising Michael Makras and Elie Nahed, trading as Dot Easy Australia and having the Australian Business Number (ABN) 87 148 545 883 issued by the Australian Taxation Office.

The domain name <doteasy.com.au> was registered on April 17, 2003, in the name Dot Easy Australia ABN 87 148 545 883. The domain name <doteasy.net.au> was registered on April 11, 2006 in the name Elie Nahed with the same ABN.

On October 12, 2005, the Complainant sent an email to the Respondent, referring to the use by the Respondent of the domain names <doteasy.com.au> and <doteasyserver.com> to offer services in direct competition with the Complainant and giving notice of the Complainant’s intention to use all means possible to protect the DOTEASY mark.

On October 22, 2005, the Complainant applied to register the mark DOTEASY in Australia in Class 42. The application was advertised for acceptance on August 3, 2006. The Respondent filed a Notice of Opposition on November 9, 2006, and the application has been suspended pending the determination of the opposition proceedings.

On October 25, 2005, the Respondent applied to register the mark DOTEASYAUSTRALIA and device in Australia in Class 42. The application is under examination and has not been granted.

The domain name <doteasyserver.com> (registered on March 15, 2005) was the subject of proceedings commenced on June 1, 2006 under the UDRP between the same parties (Doteasy Technology Inc. v. Dot Easy Australia, WIPO Case No.D2006-0683) which resulted in a decision on August 3, 2006, that that domain name should be transferred from Dot Easy Australia to the present Complainant.

5. Parties’ Contentions

A. Complainant

In its 6 years of business, the Complainant has acquired over 150,000 customers of which approximately 4,400 are from Australia. The first Australian customer signed up on June 24, 2000.

When the disputed domain names were registered, the DOTEASY.COM mark was widely known as associated with Complainant, a provider of web hosting and domain name registration services. A Yahoo! search performed on September 22, 2006, for an exact match of “doteasy” returned over 480,000 references, the overwhelming majority of which relate to the Complainant.

The disputed domain names contain the Complainant's DOTEASY mark in its entirety, and therefore are virtually identical and confusingly similar to the Complainant's registered DOTEASY or DOTEASY.COM marks.

The Respondent does not have rights or a legitimate interest in the disputed domain names because the DOTEASY mark is famous and the Respondent’s use of the mark is unauthorized. See Kelley Blue Book Co. v. Michailov A.S., WIPO Case No. D2002-0328. The Respondent owns no United States, Canada, Australia, or European Community registrations for the term “DOTEASY”.

In Doteasy Technology Inc. v. Dot Easy Australia, WIPO Case No. D2006-0683, decided on August 3, 2006, the Respondent claimed to have been in business since late 1999. This claim is highly questionable. The domain name <doteasy.com.au> was not registered until April 2003, suggesting that the Respondent did not have a website presence until then. Dot Easy Australia was not registered as a business prior to notice of this dispute on October 12, 2005. A search on the online website archive tool Wayback Machine <www.archive.org> shows that the URL “www.doteasy.com” dates back to August 2000, and “www.doteasy.com.au” dates back to December 2003.

The Complainant contends that the Respondent is not making legitimate, non-commercial, or fair use of the disputed domain names, as their use is undertaken in an attempt to confuse visitors and benefit from the Complainant's DOTEASY and DOTEASY.COM marks. The Respondent therefore has not used the disputed domain names in connection with the bona fide offering of goods or services.

The Complainant believes that the Respondent would not have chosen the disputed domain names unless it was seeking to create an impression of an association with the Complainant.

On June 29, 2006, the Respondent filed a trademark application in Lebanon for the word mark DOTEASY. This application is currently under investigation.

The Complainant submits that the disputed domain names were registered and have been used in bad faith with full knowledge of the Complainant's DOTEASY.COM mark. The Complainant’s records show that Mr. Nahed became a customer of the “doteasy.com” web hosting service on August 15, 2002. Given the fame of the Complainant's DOTEASY.COM mark and the Respondent’s knowledge of it, it is inconceivable that the Respondent has innocently registered the disputed domain names without having an intention to exploit their similarity to the Complainant's famous DOTEASY.COM mark.

The Respondent has also used the disputed domain names in bad faith by offering services of the same nature as the Complainant by creating a likelihood of confusion with the Complainant's DOTEASY.COM mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website, or of a product or service on the Respondent's website or location.

The Respondent claims to target only Australian customers. However, the Complainant has evidence of email sent directly by the Respondent to the Complainant's customers in the United States of America soliciting similar services. The email caused concern and confusion to the Complainant's customers due to the similarity of the trade names and was reported to the Complainant as abuse.

The Respondent registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant. Therefore, the domain names were registered and are being used in bad faith.

The Complainant seeks transfer of the domain names <doteasy.com.au> and <doteasy.net.au> to the Complainant.

B. Respondent

The Respondent contends that the Complainant is relying only on its trademark rights. Although the Complainant may possess Canadian trademark rights in DOTEASY and DOTEASY.COM registered on April 19, 2005 and May 3, 2005, respectively and United States trademark rights in DOTEASY.COM registered on January 24, 2006, the Respondent contests the relevance of these foreign trademarks in conferring rights with regard to Australian ccTLD names generally and to the disputed domain names in particular, especially since the <doteasy.com.au> domain name was registered two years prior to any of the Complainant’s foreign trademark rights.

The Respondent would refute any claim by the Complainant to common law rights extending from a foreign jurisdiction to Australia and says the Respondent’s first use in Australia in 1999 pre-dates the incorporation of the Complainant on March 23, 2000.

Under the .au Domain Name Eligibility and Allocation Rules of the Open 2LDs (2202-07), Schedule C, the only .au eligibility criterion which the Complainant satisfies is (f), namely that it is an applicant for an Australian registered trademark. Note 1 to this criterion says the domain name licence will not be renewed if the trademark application has not by then been accepted, unless one of the other criteria is satisfied.

The Respondent expects the outcome of its opposition to the Complainant’s trademark application (on the basis that the Respondent has rights of prior use in Australia of the trademark DOT EASY AUSTRALIA) and the outcome of the Respondent’s own trademark registration application will be resolved by IP Australia.

The Respondent submits that the Complainant has no Australian trademark rights and is unlikely ever to secure such rights. As such, it is ineligible to register an Australian ccTLD since Note 1 to criterion (f) clearly envisages that a mere trademark application, unless approved, is not sufficient to confer such rights. Therefore the Complainant cannot be considered to have rights to a trademark or name in the Australian jurisdiction to which the disputed domain names are identical or confusingly similar and is also ineligible for the remedy of transfer.

As to legitimacy, the Respondent annexes a Statutory Declaration of Michael Makras, made on November 10, 2006, stating inter alia that in late 1999, he and Elie Nahed commenced operations as a partnership, trading under their own partnership names using the sign Dot Easy Australia as an unregistered trademark; that they subsequently adopted a registered business name, “Dot Easy Australia”, although not required to do so by law; that they originally provided services through the domain name <www.geocities.com/doteasyaustralia>; that in April 2003 they registered the domain name <www.doteasy.com.au> as it seemed the logical expression of Dot Easy Australia as the .com.au domain name extension is commonly known to be associated with Australia; that they have spent the last 6 years building and developing their business goodwill and reputation in Australia; that they have a client base of 30,000 customers, with 99% within the Australian jurisdiction; and that they have not advertised in the United States of America or Canada but have advertised in Australia. Mr. Makras denies creating any website with the intention of trading off the Complainant’s reputation or confusing people or disrupting their business and denies attempting to compete with the Complainant in its jurisdiction.

The Respondent further submits that the Panel in Doteasy Technology Inc. v. Dot Easy Australia, WIPO Case No. D2006-0683 inferentially recognized the Respondent’s rights and legitimate interests in the presently disputed domain names, such that this Complaint should never have been filed, is frivolous and vexatious and amounts to Reverse Domain Name Hijacking.

The Respondent says it used the disputed domain names bona fide in connection with the offering of computer services including web hosting, email and domain name registration, audio and video streaming, live and on demand, prior to any notice of the subject matter of this dispute on October 17, 2006. Also, it has been and continues to be commonly known by the disputed domain names and has been commonly known by and conducting business under the name Dot Easy Australia for 6 years. It is a domain name reseller listed on the .auDA website.

The Respondent says its entitlement to register the <doteasy.com.au> domain name in April 2003 was established though its use of the Dot Easy Australia business name since 1999. It says it offered various services through the website “www.geocities.com/doteasyaustralia” in 1999. It annexes 3 letters from third parties addressed to “Dot Easy Australia” dated March 14, 2000, October 6, 2000 and July 23, 2001.

The Respondent says the domain name <doteasy.net.au> was registered on April 11, 2006, as a further extension of its online presence and provision of services to customers within the Australian jurisdiction and pursuant to the Respondent’s existing rights and interests.

When the Complainant’s Canadian trademark was registered the Respondent had already been trading under the name Dot Easy Australia for nearly 5 years and under the <doteasy.com.au> domain name for 2 years.

As to bad faith, the Respondent says that when it registered the <doteasy.com.au> domain name in April, 2003, the Complainant had no registered trademarks in Australia or anywhere else in the world, and had not even filed its Canadian or United States trademark applications.

The earliest registration by the Complainant of a name which could be identical or confusingly similar to the disputed domain names was the Canadian word mark DOTEASY on April 19, 2005. Considering that the Respondent has been conducting business as Dot Easy Australia since 1999, the Complainant did not incorporate until March 2000 and that the <doteasy.com.au> domain name was registered in April 2003, the domain name could not have been registered or used in bad faith pursuant to the Policy, paragraph 4(a)(iii).

Further, the registration of the <doteasy.com.au> domain name could not be construed as having had the intention of preventing the Complainant from reflecting its name or mark in a corresponding domain name because at that time the Complainant did not have any trademark rights and had not filed any trademark applications in Australia or elsewhere.

The Respondent says it registered the disputed domain names because they were Australian domains which corresponded to the Respondent’s trading name under which it had been conducting business since 1999.

The Respondent contends that, even if the Panel finds against the Respondent on bad faith, the Policy does not provide for the transfer of the domain name if the Respondent has legitimate rights and interests in the domain name: Lonely Planet Publications Pty Ltd v. Tyler, WIPO Case No. D2004-0670.

The Respondent submits that the Complainant was aware of the legitimate rights or interests of the Respondent, particularly in consequence of the previous domain name dispute between the parties and that the filing of this Complaint amounts to Reverse Domain Name Hijacking: Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565.

6. Discussion and Findings

As with the UDRP, the Policy makes no provision for unsolicited submissions and these are usually considered by panels only in exceptional circumstances when the party filing an unsolicited submission explains those circumstances and why the material could not have been submitted initially: Gordon Sumner, p/k/a Sting v. Michael Urvane, WIPO Case No. D2000-0596. The Complainant has not shown exceptional circumstances and has not explained why the contents of its unsolicited submission could not have been submitted earlier. Indeed its additional submission is substantially devoted to repetition of the Complaint and does not appear to contain anything that could not have been submitted in the Complaint. Therefore, as in PRL USA Holdings, Inc. v. J. Schwarz, WIPO Case No. D2006-0147, the Complainant’s unsolicited submission will not be considered by the Panel and there is no need for the Panel to request a further submission from the Respondent.

Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

i. the disputed domain name is identical or confusingly similar to a name¹, 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 name²; and

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

A. Rights in a mark

This is not the appropriate forum in which to determine issues arising in the parties’ respective trademark applications before IP Australia.

Although the Complainant’s trademark registrations post-date the Respondent’s registration of the <doteasy.com.au> domain name, Paragraph 4(a)(i) of the Policy, like its UDRP counterpart, embodies no requirement that the trademark rights must have arisen before the domain name registration: WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking” WIPO Case No. DAU2006-0007.

The reference in Paragraph 4(a)(i) of the Policy to a trademark or service mark is not to be construed as a reference to an Australian trademark or service mark. A complainant is entitled to rely on a foreign trademark in invoking the Policy: WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking” WIPO Case No. DAU2006-0007.

The Complainant has established that, as at the date of filing of the Complaint, it has registered trademark rights in Canada for DOTEASY and DOTEASY.COM and in the United States for DOTEASY.COM in connection computer-related services.

B. Identical or Confusingly Similar

Each of the disputed domain names wholly incorporates the Complainant’s DOTEASY trademark. The <doteasy.com.au> domain name also wholly incorporates the Complainant’s DOTEASY.COM trademark. It is well established that the ccTLDs “.com.au” and “.net.au” are to be disregarded when determining identity or confusing similarity, and that identity or confusing similarity should be determined simply by comparing the domain name with the trademark.

The Panel finds the disputed domain names to be virtually identical and in any case confusingly similar to the Complainant’s DOTEASY trademark.

The Complainant has established this element of its case.

C. Rights or Legitimate Interests

Nothing appears to turn on the change to the registrant which took place shortly after the filing of the Complaint. The change appears to have placed both registrations on a correct footing, in that the listed registrant information now appears to contain the name of both of the partners carrying on business under the name “Dot Easy Australia”.

The Complainant asserts that its DOTEASY mark is famous and that the Respondent’s use of the mark is unauthorized. As with the UDRP, this is sufficient to establish a prima facie case against the Respondent in relation to this element. Accordingly, the burden shifts to the Respondent to provide concrete evidence of its rights or legitimate interests under paragraph 4(c) of the Policy: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.

That paragraph lists (non-exhaustively) three circumstances that can demonstrate a registrant’s rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the subject matter 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 (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or

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

(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 name, trademark or service mark at issue.

The Respondent relies on the Policy, paragraphs 4(c)(i) and (ii) and has provided the following evidence:

- a Statutory Declaration by one of the partners in the Respondent that they commenced operations in late 1999 using the sign Dot Easy Australia as an unregistered trademark;

- a letter dated March 14, 2000, from Webmasters International of Seattle, Washington, addressed to Dot Easy Australia, naming both partners, welcoming Dot Easy Australia into membership of Webmasters International;

- a letter dated October 6, 2000, from the Ambassador for Lebanon in Australia addressed to Dot Easy Australia, responding to a letter dated February 5, 2000, which is not before the Panel;

- a letter dated July 23, 2000, from St. Charbel’s Church and Monastery, Punchbowl, Australia, addressed to Mr. Elie Nahed, Dot Easy Australia; and

- a printout of a webpage at “http://www.geocities.com/doteasyaustralia” showing the name Dot Easy Australia, offering hosting and reseller plans for reward and containing a copyright notice “Copyright 2000 Dot Easy Australia”.

The question arises whether paragraph 4(c)(ii) of the Policy requires that the domain name correspond precisely with the name by which the Respondent has been commonly known (disregarding as inconsequential the suffixes “.com.au” and “.net.au”).

In Banco Espнrito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, the Respondent’s contention that he registered the domain name <bancoespiritosanto.com> as being his personal name was rejected on the ground that his whole surname, “Bancovic Espirito Santo”, did not correspond to the domain name at issue. By contrast, in John Hayes v. Vaughan Enterprises, WIPO Case No. D2004-0531, the Panel found that the respondent’s use of part of its name (Vaughan Enterprises) in the domain name <vaughan.com> was sufficient evidence of its legitimate interests and rights. Likewise in Arizona Golf Properties, Inc. v. Mr. Dean Benigno d/b/a Realty Executives, WIPO Case No. D2003-0571, the respondent’s involvement in the publication of a magazine entitled “Exclusive Arizona Golf Properties and Luxury Homes” and his mother’s ownership of an Arizona trade name registration for “Exclusive Arizona Golf Properties and Luxury Homes” sufficient to establish a legitimate interest in the domain name <arizonagolfproperties.com>.

Here, the domain names <doteasy.com.au> and <doteasy.net.au> are not identical to the name Dot Easy Australia but the word doteasy is undoubtedly the distinctive element of that name. The Panel prefers the approach adopted in John Hayes v. Vaughan Enterprises and Arizona Golf Properties, Inc. v. Mr. Dean Benigno d/b/a Realty Executives which focuses attention on the distinctive element common to both the domain name and name claimed to be commonly used.

Accordingly the Panel finds that the Respondent has established that it has rights and a legitimate interest in each of the disputed domain names because the evidence before the Panel establishes that it is and has been commonly known by the name “Dot Easy Australia”.

As to paragraph 4(c)(i), the Panel accepts that the Respondent received notice of the subject matter of this dispute on October 12, 2005, when the Complainant sent an email to the Respondent, referring to the domain names <doteasy.com.au> and <doteasyserver.com> and giving notice of the Complainant’s intention to protect its DOTEASY mark. The domain name <doteasy.net.au>was registered on April 11, 2006, after that email had been received and shortly before the proceedings over <doteasyserver.com> were commenced. Accordingly, it would appear that the domain name <doteasy.com.au> was registered after notice to the Respondent of the subject matter of this dispute.

The Complainant casts doubt on the Respondent’s claim to have been in business under the Dot Easy Australia name because that name was not registered as a business prior to notice of this dispute on October 12, 2005. Whether or not the Respondent was required by law to register its business name, the evidence just described establishes that at least as early as March 14, 2000, prior to the incorporation of the Complainant on March 23, 2000, the Respondent was known as Dot Easy Australia and that, by the time the Respondent registered the domain name <doteasy.com.au> in April 2003, it was commonly known by and was carrying on business under a name corresponding to the domain name.

The Complainant says that when the disputed domain names were registered, the DOTEASY.COM mark was widely known as associated with the Complainant. There is no evidence before the Panel (as distinct from mere assertion) that the Complainant had established common law trademark rights prior to securing its trademark registrations, the earliest of which was in August 2003, several months after the Respondent registered the <doteasy.com.au> domain name.

The evidence before the Panel indicates that Mr. Nahed became a customer of the <doteasy.com> web hosting service on August 15, 2002, and had knowledge of the Complainant’s <doteasy.com> domain name and website on or prior to registration of the <doteasy.com.au> domain name. This needs to be considered in light of the absence of any evidence before this Panel of the Complainant then having trademark rights, and in the light of the Respondent having by then been trading as Dot Easy Australia since before the Complainant was incorporated and using the name “doteasyaustralia” as part of the geocities website to offer services since 2000.

Under these circumstances the adoption by the Australian family partnership of the <doteasy.com.au> domain name in April 2003 in order to offer, primarily to Australian customers, services similar to those offered at <doteasy.com> by the Complainant, being services that the partnership had already been offering since 2000, can be seen as a bona fide extension of the Respondent’s business. The Panel accepts as plausible the evidence of Mr. Makras that the Respondent registered the domain name <doteasy.com.au> as it seemed the logical expression of Dot Easy Australia as the “.com.au” domain name extension is commonly known to be associated with Australia.

As to the domain name <doteasy.net.au> (which leads to a website offering identical services to <doteasy.com.au>), notice of this dispute was received before that domain name was registered, so the protection of paragraph 4(c)(i) of the Policy is unavailable. As already mentioned however, the Respondent has established its rights to and legitimate interests in this domain name under paragraph 4(c)(ii) of the Policy.

Accordingly the Panel finds that the Respondent has demonstrated that it has rights to and legitimate interests in both of the disputed domain names and that the Complainant has failed to establish this element of its case.

D. Registered or Used in Bad Faith

In light of the Panel’s finding of legitimacy, it is unnecessary to consider this element.

E. Reverse Domain Name Hijacking

It seems to this Panel that, far from inferring (as submitted by the Respondent) that the Respondent has a legitimate interest in either of the disputed domain names in issue in this proceeding, the panel in the previous domain name dispute between the parties (over the domain name <doteasyserver.com>) expressly treated as irrelevant to that dispute the Respondent’s trading name and its use of the domain name <doteasy.com.au> (paragraphs 6.5.13 and 6.5.14 of Doteasy Technology Inc. v. Dot Easy Australia, supra).

Accordingly, having regard to the findings of the panel in the previous proceeding and the present circumstances, the Panel is not prepared to make a finding here that the Complainant knew it had no case. There will be no finding of reverse Domain Name Hijacking.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Alan L. Limbury
Sole Panelist

Dated: January 18, 2007

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¹ For the purposes of the 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.

² These are not established merely by satisfying the relevant eligibility criteria at the time of registration.