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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

UEIP Pty Ltd v. Fincar Pty Ltd

Case No. DAU2007-0010

 

1. The Parties

Complainant is UEIP Pty Ltd, Mount Waverley, Victoria, Australia, represented by Deacons, Australia.

Respondent is Fincar Pty Ltd, Chatswood, New South Wales, Australia, internally represented.

 

2. The Domain Name and Registrar

The disputed domain name <unitedenergy.com.au> is registered with IntaServe.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2007. On October 25, 2007, the Center transmitted by email to IntaServe a request for registrar verification in connection with the domain name at issue. On October 30, 2007, IntaServe transmitted by email to the Center its verification response confirming that 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 Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2007. The Response was filed with the Center on November 13, 2007.

The Center appointed Desmond James Ryan as the sole panelist in this matter on November 29, 2007. 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. Supplemental Filing

On December 3, 2007, Complainant filed a Request for Leave to File a Reply to the Response. The Rules make no provision for the filing of further statements beyond the Complaint and the Response, save that the Panel may, in its discretion, request further statements or documents from either of the parties (Rule 12). Nevertheless the Panel has a general power under Rule 10 to conduct the proceedings in such manner as it considers appropriate, and this power has been interpreted as a power to accept or reject a supplemental filing. Supplemental filings may however be accepted only in exceptional cases (see, for example, Pacific Fence & Wire Co v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237), and the Panel is required by Rule 10(c) to ensure that the administrative proceeding takes place with due expedition. Procedural fairness requires that where a supplemental filing is accepted the opposite party be given an opportunity to respond. Acceptance of a supplemental filing therefore inevitably results in delay in the proceedings.

The Panel has considered Complainant’s request and does not consider that it discloses exceptional circumstances, nor does it disclose matters which might materially affect the Panel’s decision. Accordingly, the request for leave for making a supplemental filing is refused.

 

5. Factual Background

Complainant is a member of a group of companies which own and operate an electricity network in the State of Victoria, Australia. Its related corporations United Energy Distribution Pty Ltd (“United Energy”) and Alinta Asset Management Pty Ltd (“Alinta”) respectively own and operate the network. Complainant is the owner of eight Australian registered trademarks consisting of, or including the words “United Energy”. United Energy is one of five electricity distribution businesses in Victoria, formed through the privatization of the previously state-owned Victorian Electricity Commission. It listed on the Australian Stock Exchange in May 1998 as United Energy Limited. The company de-listed in July 2003 and changed its name to United Energy Distribution Pty Ltd. Its network covers some 1,450 square kilometers and serves over 605,000 connections. Complainant is the owner of the domain name “www.ue.com.au” and until registration lapsed on March 24, 2007 it was also the owner of the disputed domain name <unitedenergy.com.au>.

The disputed domain name was registered by Respondent on May 30, 2007. On June 25, 2007, Alinta, acting on behalf of Complainant, addressed a letter to Respondent alleging that Respondent’s use of the domain name was misleading and deceptive and resulted in passing off and demanding that the domain name be transferred to Complainant.

Prior to July 22, 2007 the disputed domain name resolved to a monetized portal page displaying sponsored links to a variety of energy related websites.

Subsequent to July 22, 2007, the content of the page to which the disputed domain name resolved was changed and as at October 7, 2007 it resolved to a page containing extensive discussion of energy related issues. A substantial proportion of the content of the webpage was constituted by material copied directly from the Wikipedia website at “www.en.wikipedia.org”. Included amongst the material were a number of links to energy related commercial websites tabbed “Ads by Google”. The first page of the webpage carried the endorsement “Please note this site is not connected or endorsed in any way by Alinta Ltd or United Energy Distribution Ltd”.

Respondent is an Australian company incorporated in New South Wales in January 2004. Its directors and sole shareholders are David Alan Lye and Nicholas Richard Crawshay. According to Complainant its website at “www.fincar.com.au” shows it to be a vehicle finance company. Messrs Crawshay and Lye are also each directors of Frenbay Pty Ltd which was the unsuccessful respondent to a dispute over the domain name <astonmartin.com.au>, and according to Complainant, Mr Lye is associated with another company Blogger Pty Ltd, in two further domain name disputes.

 

6. Parties’ Contentions

A. Complainant

Complainant contends that:

(a) the domain name is confusingly similar to a name or trademark in which it has rights. It contends that the name United Energy is well and widely known in Australia and that its trademarks are well known. It asserts that in addition to its rights in the registered trademarks it has common law rights in the name and mark UNITED ENERGY due to its significant reputation and goodwill associated with that name.

(b) Respondent has no rights or legitimate interests in respect of the domain name. It asserts that the domain name has not been actively used in relation to any energy services and that the website is a “dummy” website which offers no goods or services and contains no legitimate contact details. It contains text copied from other websites including Wikipedia. It asserts that the business operated by Respondent is a vehicle financing business, having no business relationship with Complainant and it is not licensed or authorized by Complainant to use the name “United Energy”. Complainant points to Respondent’s failure to reply to its letter of demand and to the alteration of the content of the webpage to which the domain name resolved, following the sending of the letter of demand. Complainant submits that having demonstrated a prima facie case that Respondent has no right or legitimate interest, the burden shifts to Respondent to establish that it has such right or legitimate interest. Complainant cites a number of prior former decisions including Latin Telecomunicaciones SA v. Whoisguard, WIPO Case No. D2005-0380.

(c) The domain name was registered or is subsequently being used in bad faith. Complainant again points to Respondent’s failure to respond to the letter of demand and the alteration of the website after receipt of that letter. Complainant submits that the insertion of the verbatim copy of the Wikipedia website entry was contrived and creates a presumption that Respondent knew that its use of the domain name was not legitimate and is evidence that its registration and on-going use is in bad faith.

Complainant further points to the original and continuing presence of advertising in its website as showing an intention to divert Internet traffic from United Energy or to create confusion with United Energy’s trademark. It says Respondent must have been aware of, and has constructive knowledge of, the trademarks through their use and registration many years before the domain name was registered. It cites MasterCard International Incorporated v. Danny Breeze, NAF Case No. 521039.

Complainant submits that the disclaimer endorsed on the current version of the Respondent’s webpage, but which did not appear on the earlier version, does not negative the bad faith use of the domain name.

Finally Complainant contends that Respondent’s director Mr Lye is known to be engaged in cybersquatting activity on previous occasions and refers to disputes relating to the domain names <babcockandbrown.com.au>, <questacon.com.au>, IAMA Case No. 3058 and <astonmartin.com.au>, LEADR Case No. 09-06.

B. Respondent

(a) Respondent does not deny that the domain name is identical or confusingly similar to Complainant’s name and trademarks. However, it asserts that the trademarks are no longer being used.

(b) Respondent asserts that the domain name is a generic domain name which it has every right to use. It contends that its failure to respond to the letter of demand is irrelevant and that its website is not a dummy website. It says that although the domain name may originally have been parked pending development, that was something which occurred in the natural course of events in the development of the website which has occurred in the six months since the original registration on May 30, 2007. It asserts that it has not failed to provide a proper contact and has a fully functional “Contact Us Form” on the website. It points out however, that in any event the website does not need to show contact details. It asserts that its incorporation of content taken from other websites is legitimate and points out that the Wikipedia site specifically permits the copying and redistribution. Respondent further asserts that it has “firm plans” for the use of the domain name as the “centre-piece for a collection of energy related websites”.

(c) Respondent denies that the domain name has been registered and/or is being used in bad faith and repeats its submission that it operates a genuine website directed to energy related matters. It questions that the United Energy trademarks are still in use, having regard to the fact the domain name was allowed to expire in March and remained available for registration by others for a period of about two months before it was acquired by Respondent. It denies that the registration of the domain name was in order to prevent Alinta from registering the domain name. It asserts, in relation to the previous domain name disputes cited by Complainant, that as a proportion of a number of domain names owned and operated by Mr Lye and his related entities, the number of such disputes is very small. It further asserts that past decisions on unrelated domain names have no bearing on the present dispute.

Finally Respondent contends that the Complaint is a “brazen attempt at reverse domain name highjacking”. It contends that following the takeover of United Energy by Alinta, “Alinta of its own free will decided not to renew the domain name in March of this year”. It asserts that the website at “www.ue.com.au”, and previously accessible at the disputed domain name, has remained parked and unaltered for the past four years. As evidence, the Respondent invites examination of the records contained on “www.archive.org”. In view of the seriousness of the charge of reverse domain name highjacking, the Panel has accepted that invitation. Having done so, the Panel finds that the United Energy name and trademark appears prominently on the archived webpages and that those pages were frequently updated in the period following July 2003. The latest update recorded in the archives is on August 20, 2006.

 

7. Discussion and Findings

A. Identical or Confusingly Similar

The domain name incorporates Complainant’s registered trademarks and this is not contested by Respondent. The addition of the relevant domain designation “.com.au” does not serve in any way to distinguish the domain name from the trademark and accordingly the Panel finds that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights. (The Panel notes the under the auDRP the first requirement of the Policy can be met by showing that the domain name is identical or confusingly similar to a name in which Complainant has rights even if the name is not used as a trade mark. That ground is not available to Complainant in this case since it is not Complainant, but Complainant’s related corporation, which may have rights in the name).

B. Rights or Legitimate Interests

The Panel accepts Complainants submission that it has put forward a prima facie case that Respondent has no rights or legitimate interests in the domain name and that the onus of showing that it has such rights or legitimate interests reverts to Respondent.

Section 4(c) of the Policy sets out three non-limiting examples of how a respondent may demonstrate rights or legitimate interests in the domain name. The first of these is a showing that before any notice of the subject matter of the dispute the Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Respondent admits in the Response that the website at the domain name was not being used in relation to the provision of energy services and there is no other indication in the evidence produced by the Complainant or in the submissions made by Respondent that Respondent can avail itself of a defence based on this circumstance. Likewise, there is no evidence that Respondent has been commonly known by the domain name and Respondent does not so contend.

The third circumstance set out in paragraph 4(c) of the Policy is that the Respondent was making a legitimate non-commercial or fair use of the domain name without intent of commercial gain to mislead or divert customers or to tarnish the trademark at issue.

The website of the domain name, as it currently stands, offers extensive information with respect to energy related issues. It also provides links to other energy related sites. If that were all that the website showed there may have been a showing of legitimate non-commercial or fair use of the domain name. However, the website as it originally was structured and as it presently appears, clearly contains links to commercial sites offering goods or services including goods or services in the energy industry. Accordingly, the use does not appear to be non-commercial and it is a reasonable inference, not rebutted by Respondent, that the domain name is being used for commercial gain and to misleadingly attract consumers to the website in the belief that the domain name will lead to the website of United Energy or one associated with it. The use of the domain name in this way substantially resembles that in the case of Australian Government Department of Education, Science and Training v. Blogger Pty Ltd, IAMA Case No. 3058 (“the Questacon Case”).

Respondent has failed to show any other basis upon which it could claim to have rights or legitimate interests in the domain name and accordingly, the Panel finds that Respondent has no such rights or interests.

C. Registration of Subsequent Use in Bad Faith

Complainant is the owner of the registrations of several Australian registrations of the trademark UNITED ENERGY which it holds on behalf of its sister company United Energy. The evidence shows that the company uses the United Energy trademark in relation to energy distribution services covering a substantial area of Australia’s second largest city and areas adjacent to it. Until March of this year Complainant held the domain name and its sister company used the domain name in the course of its business. Until mid-2003 United Energy was a company listed and extensively traded on the Australian Stock Exchange. Respondent is an Australian company and its directors are residents in Australia. There is therefore a strong presumption that when it registered the domain name, Respondent was aware of the existence and reputation of the United Energy trademark.

It is apparent from the Response that Respondent and its director Mr Lye are experienced users of the domain name system and that they seized the opportunity to register the domain name when Complainant’s registration of it lapsed in March 2007. That in itself is not evidence of bad faith. However, where the domain name in question incorporates a well known name or trademark in which another person has rights, and where the use of the trademark and the domain name is calculated to deceive persons familiar with the trademark and lead them to a website from which the domain name holder derives commercial gain, that is evidence of bad faith falling within paragraph 4(b)(iv) of the Policy. Respondent’s website as originally launched was plainly a commercial website. Its modification, subsequent to the issue of the letter of demand of June 25, 2007, to a site which was more generally oriented (but still contained commercial links) gives rise to a reasonable suspicion that Respondent was, as contended by Complainant, “attempting to cover its tracks”. The entry of the disclaimer of association with United Energy or Alinta clearly does not serve to negative the initial confusion which leads customers to the site in the first place, see the Questacon Case supra.

For the above reasons the Panel concludes that the domain name was registered and/or is being used in bad faith.

 

8. Reverse Domain Name Highjacking

In the light of the conclusions of the Panel set out above there can be no question of Complainant being guilty of reverse domain name highjacking. Furthermore, there is nothing in the Respondent’s submissions to support such a claim.

 

9. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel finds that Complainant succeeds.

Complainant seeks the transfer of the domain name to it, however, under paragraph 4(i) of the Policy, transfer of the domain name may be ordered only if Complainant meets the eligibility criteria for the .com.au domain. Complainant is an Australian company and the domain name is an exact match for Complainant’s trademark. It therefore satisfies the eligibility criteria for the domain and accordingly the Panel orders that the domain name <unitedenergy.com.au> be transferred to Complainant.

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Desmond J Ryan
Sole Panelist

Dated: December 13, 2007