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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bwired Group Pty Ltd v. Eric Adem, bWiredDomains

Case No. D2009-1102

1. The Parties

The Complainant is Bwired Group Pty Ltd, Prahran of Victoria, Australia represented by Middletons Lawyers, Australia.

The Respondent is Eric Adem, bWiredDomains of NewburyPark, California, United States of America ("USA").

2. The Domain Name and Registrar

The disputed domain name <bwired.com> (the "Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on August 17, 2009, identifying the Respondent as Eric Adem.

The Center transmitted its request for registrar verification to the Registrar on August 17, 2009. The Registrar replied the same day, stating that the Domain Name had been placed under locked status to prevent transfers or changes during the proceeding; and that its registration agreement was in English and required the registrant to consent to the jurisdiction of Federal and State courts located in King County, Washington. The Registrar also provided the contact details for the registrant on its Whois database, namely organization: bWiredDomains; first name: Eric, last name: Adem.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 16, 2009. On September 11, 2009, the Respondent requested an extension of time for filing the Response until September 30, 2009, stating that he had only received the Complaint on September 8, 2009. The Complainant agreed to the request and the Center extended the time as requested. The Response was filed with the Center on September 30, 2009.

The Center appointed Jonathan Turner as the sole panelist in this matter on October 2, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that it complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainant is a website technology company. It registered the trademark BWIRED in Australia with priority date July 20, 2004. It has a website at "www.bwired.com.au".

The Domain Name was registered by the Respondent in 1998 and resolves to a website which purports to offer various domain names for sale. As at July 17, 2009, the homepage of the Respondent`s website stated at the top "The domain name is for sale. The domain name is for sale with an asking price of $. Click here if you would like to make an offer."

The Complainant sent a cease and desist letter to the Respondent on June 19, 2009. The Respondent did not reply.

5. Parties` Contentions

A. Complainant

The Complainant states that it is the registered owner of the trademark BWIRED in Australia and that it is a leading website technology company with over 250 clients, including prominent international companies such as Nintendo and The Famous Speigeltent. The Complainant contends that it has built up a substantial reputation in its trademark through its Internet site at "www.bwired.com.au", printed advertising material and stationery. It states that it has spent in excess of AUD 53,000 promoting the trademark since 2003 and that its turnover for the past six years has been in excess of AUD 11 million.

The Complainant submits that customers would expect the Domain Name to be owned by it, particularly as it owns the corresponding domain name <bwired.com.au>. The Complainant points out that if a person attempting to access its domain name omitted the .au top level domain, he would be directed to the Respondent`s website.

The Complainant maintains that the Respondent does not have any rights of legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent is not commonly known by the name "bwired" or the Domain Name and does not have any registered trademarks or business names incorporating this name. The Complainant contends that the Respondent is not making a legitimate noncommercial use of the Domain Name, but rather is using it to buy and sell domain names, including the Domain Name itself. The Complainant refers to the wording at the top of the home page of the Respondent`s website.

The Complainant alleges that the Respondent acted in bad faith in registering and using the Domain Name. The Complainant points out that the Respondent owns a considerable number of domain names which resolve to the same website and observes that the Respondent clearly registers domain names with the sole purpose of selling them to the trademark owner. The Complainant asserts that "bwired" is a distinctive word which is not in use in the English language and which would not have been legitimately chosen by the Respondent for use as part of the Domain Name. The Complainant infers that the Domain Name was registered with the sole purpose of sale to the Complainant or one of its competitors.

The Complainant requests a decision that the Domain Name be transferred to it.

B. Respondent

The Respondent denies that the public would suppose his website to be that of the Complainant. The Respondent points out that his website is not similar to the Complainant`s, does not mention the Complainant`s business name, "Bwired Group", and does not offer the same services as the Complainant.

The Respondent accepts that the Domain Name is similar to the Complainant`s mark, but submits that confusion has been created by the Complainant`s carelessness. According to the Respondent, if the Complainant had checked, it would have discovered that the Domain Name had been registered by the Respondent and put into practical commercial use for a website in 1998, well before the Complainant obtained its trademark. The Complainant annexes evidence of the registration of the Domain Name in 1998.

The Respondent submits that the Complainant`s trademark only confers rights in Australia and not in the USA. He contends that the apparent success of the Complainant`s business and its prestigious client list indicate that it is not being harmed by his use of the Domain Name. He states that no one has contacted him through his website asking if he was the Complainant.

The Respondent states that he has an established business under the name "bwired" providing a complete domain name marketing and appraisal service through his website at the Domain Name.

He avers that he has used the name "bwired" as a business name since the Domain Name was registered in 1998. He annexes a printout from the "Wayback Machine" at "www.archive.org" showing that copies of web pages at the Domain Name were recorded from 1998 onwards, albeit with a gap between 2001 and 2003.

He also annexes an undated copy of what he describes as an early version of his website and claims that the purpose and type of service offered by him has never changed, although the website has gone through what he describes as cosmetic changes since 1998. He further annexes printouts from other websites which he says refer to information on the Respondent`s website.

By comparison, the Respondent attaches a printout of the record of the Australian Securities & Investments Commission ("ASIC") showing that the Complainant was incorporated on July 18, 2000. He observes that the Complainant itself admits that it was founded in the same year, apparently referring to a statement to that effect on the Complainant`s website. He notes that the Complainant registered its trademark in 2004 and annexes a further printout from the "Wayback Machine" which indicates that its earliest record for a website at the Complainant`s domain name was taken in October 2002.

The Respondent denies that the Domain Name was for sale and claims that it was only ever used for providing domain name marketing services. The Respondent states that he chose the Domain Name for this business because it resembles the phrase "be wired" and is therefore appropriate for a business marketing domain names which connect an entity to the rest of the world. He states that the Domain Name was never included in the list of domain names on his website which were for sale and points out that it was not included in the list of the domain names for sale on his website set out in the Complaint.

The Respondent explains that his website is set up to display an offer for sale with an asking price and link for inquiries automatically when an Internet user seeks to access one of the domain names which is for sale. He states that an upgrade in the software malfunctioned with the result that the wording was displayed when an Internet user sought to access the Domain Name, but no figure was given for the price because there was no entry for the Domain Name in the database of domain names for sale, reflecting the fact that it was not for sale. He states that the problem existed only for a short time and has now been corrected.

The Respondent states that in any case, he could not possibly have registered the Domain Name for the purpose of sale, rental or other transfer to the Complainant or its competitors for profit, since he registered it before the Complainant existed.

The Respondent further denies that the domain names which he is offering for sale infringe the trademarks of other parties and points out that the Complainant has provided no evidence to support this allegation.

Finally, the Respondent alleges that the Complainant is engaging in reverse domain name hijacking. He submits that the Complainant has failed to prove or adduce evidence substantiating any of the three requirements of the Policy. He contends that the Complainant founded and developed its business knowing that the Domain Name was already registered and used for a commercially viable website by someone else, and is now trying to steal the Domain Name from him. He adds that the Complaint is frivolous and a waste of the Panel`s time.

6. Discussion and Findings

A. Applicable Rules

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

In accordance with paragraph 15(e) of the Rules, if after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking, it shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the proceeding. Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

B. Identical or Confusingly Similar to Mark in which Complainant has Rights

The Panel is satisfied that the Complainant has registered and unregistered rights in the mark BWIRED by virtue of its registration and use in Australia. The fact that these rights postdate the registration of the Domain Name is irrelevant to this requirement, although it is relevant to the second and third requirements of the Policy. This approach is in accordance with the consensus view of the Center`s panelists as recorded in paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

The Domain Name is identical to this mark. For the purpose of this requirement, the generic top level domain suffix is discounted. The first requirement of the Policy is satisfied.

C. Rights or Legitimate Interests

The Panel finds on the evidence that the Respondent was carrying on a business in the sale of domain names through a website at the Domain Name prior to notice of this dispute by the Complainant`s cease and desist letter of June 19, 2009.

It is necessary to consider whether this offering was bona fide. The Panel notes that the Domain Name was registered in 1998, before the Complainant commenced its business in 2000. There is no evidence on the file contradicting the Respondent`s statement that he was the original registrant.

The Panel does not accept the Respondent`s claim that he has used the Domain Name for the sale of domain names since 1998. The earliest web pages archived by the "Wayback Machine" in relation to the Domain Name offered a different service of providing the use of software for the development of online stores.

However, the web page recorded by the "Wayback Machine" at the Domain Name on May 20, 2000, did purport to offer domain names for sale and appears to be the page annexed to the Response as an early form of the Respondent`s website. This predates the incorporation of the Complainant on July 18, 2000.

Therefore it appears on the evidence available to the Panel that the Respondent has been carrying on its present business using the Domain Name since before the Complainant commenced its business.

Furthermore, the Respondent does not appear to have exploited the Complainant`s mark or goodwill in any way. The Complainant`s mark is not a mass-consumer brand; the Complainant has a relatively small number of discerning customers. It is most unlikely that the Respondent would have gained any business as a result of the correspondence between the Domain Name and the Complainant`s mark.

In these circumstances, the Panel finds that the Respondent has used the Domain Name for a bona fide offering of goods or services prior to any notice of this dispute. In accordance with paragraph 4(c)(i), this demonstrates that the Respondent has a right or legitimate interest in respect of the Domain Name. The second requirement of the Policy is not satisfied.

D. Registered and Used in Bad Faith

It is clear from the wording of the Policy and confirmed in many decisions under it that the two parts of its third requirement are cumulative conditions: the requirement is only satisfied if the domain name in issue both was registered and is being used in bad faith.

In this case the Domain Name was registered before the Complainant was formed or started its business. It could not possibly have been registered for the purpose of sale, rental or other transfer to the Complainant or a competitor of the Complainant at a profit.

There is no other basis for the Complainant`s case against the Respondent on this point. The Panel finds on the evidence that the Domain Name was not registered in bad faith.

For the reasons stated above, the Panel further finds that the Respondent is using the Domain Name in good faith.

The third requirement of the Policy is not satisfied.

E. Reverse Domain Name Hijacking

The Panel notes that the record of the registration of the Domain Name annexed to the Complaint states that it was registered in January 1998, which was more than two years before the Complainant was formed or commenced its business. Despite this, the Complainant founded its Complaint on the allegation that the Respondent registered the Domain Name for the purpose of sale, rental or other transfer to the Complainant or a competitor of the Complainant at a profit.

The Panel considers that this allegation was made recklessly without any proper consideration of the information in the Complainant`s possession, let alone further information readily available on the Internet.

In these circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking, as defined in the Rules.

7. Decision

For all the foregoing reasons, the Complaint is denied and the Panel declares that it was brought in bad faith and constitutes an abuse of the proceeding.

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Jonathan Turner
Sole Panelist

Dated: October 16, 2009