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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants)
Case No. D2000-0227
1. The Parties
The Complainants are :
Westfield Corporation, Inc., a corporation incorporated in the United States of America, having its principal place of business at 12th Floor, 11601 Wiltshire Boulevard, Los Angeles, CA 90025-1748 and Westfield Limited, a corporation incorporated in Australia, having its principal place of business at Level 24, Westfield Towers, 100 William Street, Sydney, New South Wales 2001, Australia.
Represented by Mallesons Stephen Jaques, Solicitors.
The Respondent is:
Graeme Michael Hobbs, doing business as Dynamic Marketing Consultants, a firm having its principal place of business at 74 Beauchamp Street, Marrickville, Sydney, New South Wales 2204, Australia.
Represented by Provident & Legal, Solicitors.
2. The Domain Name(s) and Registrar
The domain name with which this dispute is concerned is: "westfieldshopping.com"
The Registrar with which the domain name is registered is:
Network Solutions Inc, of Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Centre (the "WIPO Centre") on 30 March and 3 April 2000 respectively.
3.2 On 3 April 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Centre and found to be in compliance with the applicable ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Centre's finding of proper compliance with the Rules and establishment of the complaint.
3.3 The Administrative Proceeding commenced on 7 April 2000.
3.4 On 26 April 2000 the Respondent filed its Response. The response was timely filed.
3.5 On 8 May 2000 Complainants filed a Rebuttal of Respondent's Response.
3.6 10 May Respondent filed Observations on the Complainants Rebuttal.
3.7 11 May Complainants filed a further communication in response to Respondent's Observations.
The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.
4. Factual Background
4.1 Complainants are respectively United States and Australian members of the Westfield Holdings group of companies.
4.2 The First Complainant is the registered owner of the following United States trade mark registrations
No. 1,441,465 "Westfield" filed 11 January 1985, registered 2 June 1987.
No. 2,148,842 "A Westfield Shoppingtown" filed 17 October 1996, registered 7 April 1998.
4.3 The Second Complainant is the owner of the following Australian trade mark registrations.
No. 310608 "Shoppingtown" filed 25 August 1977, registered 19 June 1979.
No. 326568 "Westfield", filed 1 February 1979,registered 28 September 1988.
No. 326569 "Shoppingtown" filed 1 February 1979 registered 2 September 1982
No. 352437 "Westfield" filed 23 October 1980 registered 28 September 1988
No. 352438 "Westfield" filed 23 October 198 0registered 28 September 1988
No. 352439 "Westfield" filed 23 October 1980 registered 28 September 1988
No. 541459 "Westfield Frequent Shopper" filed 5 September 1990 registered 24 March 1993
No. 606902 "It's Showtime at Westfield" filed 14 July 1993 registered 13 June 1995
No. 766266 "Westfield" label filed 3 July 1998 registered 19 February 1999
4.4 The First Complainant is the registrant of domain name. "westfieldshoppingtown.com"
4.5 The Second Complainant is the registrant of domain names:
"westfield.com", "shoppingtown.com" and "westfield.com.au".
4.6 Complainants assert that they carry on business as operators of 80 shopping centres in Australia, USA and New Zealand. Complainants lease space in those shopping centres to some 12,750 individual retailers.
4.7 Respondent is a firm of which Graeme Michael Hobbs is the principal. Respondent asserts that it carries on business in the provision of e-commerce and web-site services. Mr Hobbs is the administrative contact for the registration of the domain name in this dispute.
4.8 The domain name registration was created on or about 18 September 1999.
Conflict of Evidence
4.9 This is a matter in which there is a dispute between Complainants and Respondent in relation to material facts surrounding the registration of the domain name and communications between Respondent and Second Respondent regarding the name. In pursuit of this dispute after the commencement of the Administrative Proceeding Complainants have filed a Rebuttal of the Response and both Complainants and Respondent have filed further Observations and comments.
4.9.1 Neither the Rules nor the Supplementary Rules make provision for the filing of further submissions after the commencement of the Administrative Proceeding. It is the duty of Panel to ensure that the proceeding takes place with due expedition (Rule 10(c)). However, the Panel is also required to ensure that each party is given a fair opportunity to present its case. (Rule 10(b)). Within the ambit of the Rules and the Policy the Panel is given a general discretion as to the conduct of the proceeding (Rule 10(a)) and the power to determine the admissibility, relevance, materiality and weight of the evidence (Rule 10(d)).
4.9.2 The underlying purpose of the Policy is to provide a speedy and low cost procedure for resolving, subject to judicial review, disputes as to the registration of domain names in circumstances where those registrations are alleged to be in conflict with trade mark rights. There is no procedure provided for the formal taking of independent evidence, the examination of witnesses or the testing of credit. The Panel must therefore decide matters before it on the face of the record.
4.9.3 The Panel has considered the Rebuttal, the Observations and the further comments of the Complainants and admits them to the record but finds them unhelpful in resolving the dispute save in so far as:
(a) they show that the facts as to the communications which passed between the parties are in dispute;
(b) they contain admissions by the party submitting them; and
(c) they state otherwise verifiable facts.
5. Applicable Dispute
5.1 To succeed in their complaint, Complainants must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain names has been registered and used in bad faith.
Identical or Confusingly Similar Marks
5.2 Complainant asserts that the domain name is identical with or confusingly similar to one or more of the trade marks set out in paragraphs 4.2 and 4.3.
5.2.1 Respondent contests Complainants' assertion that the domain name is identical with the Complainants' name. Respondent does not contest that the domain name is confusingly similar to Complainants' trade marks. The Panel must nevertheless decide this question.
5.2.2 Rule 15(a) of the Rules provides that the Panel shall decide a complaint in accordance with the Policy, the Rules and "any rules and principles of law that it deems applicable". A question arises here as to what is the applicable law. As the dispute is one concerning the similarity between a domain name and a trade mark, it is clearly appropriate that the principles of law to be applied should be those derived from the law of trade marks and unfair competition. As the Respondent is located in Australia and as the Complainants are each subsidiaries of an Australian corporation, it is also appropriate that the Panel should look to the Australian law for guidance on the question of whether or not the name and the marks are identical or confusingly similar. That said however, the principles adopted by the Australian courts do not differ significantly from that adopted by the courts in other common law jurisdictions.
Guidance may therefore be sought from the Australian trade mark law in determining the question of whether or not marks and names are identical or confusingly similar.
In Australian trade mark law the comparison, for purposes of infringement, is whether or not marks are "substantially identical or deceptively similar" - see Trade Marks Act 1995, s.120. Principles applied by the Australian courts in determining questions of identity and similarity may therefore be applied bearing in mind however, that the tests under the Policy require, on the one hand actual identity, and on the other, confusing similarity rather than deceptive similarity. Thus, the test of identity under the Rules may be said to be more stringent, whilst that for similarity is less so. It is also to be recognised that under the Policy the question to be determined is simply one of identity or similarity and not one of infringement, i.e. it is not necessary to determine whether the use complained of amounts to use as a trade mark – see Shell Co. (Aust.) Limited v. Esso Standard Oil (Aust) Limited, 109 CLR 407, or whether the goods or services concerned are the same or of the same description.
5.2.3 The determination of whether or not marks or names are substantially identical requires a comparison of them side by side, noting their differences and similarities - see Shell Case – supra. A consideration of whether or not the marks are confusingly similar involves different questions. The net impression of the two marks is to be considered taking into account what are the essential features of the marks, the visual and aural comparison, the effect of imperfect recollection and the importance of the first word or syllable in the marks - see Shanahan D.R., Australian Law of Trade Marks and Passing Off, Second Edition, Chapter 9.
5.2.4 The domain name consists of the running together of the words "westfield" and "shopping". The First Complainant is the registered owner in the United States of the trade marks "Westfield" and "A Westfield Shoppingtown". The Second Complainant is the owner in Australia of a number of registrations of the word "Westfield" and of two registrations of the words "Shoppingtown". The domain name is not identical to any of these trade marks. Is it confusingly similar? The dominant identifying characteristic of the domain name is the word "Westfield". It is that word which conveys the dominant impression. It is that name which is the principal memory trigger, and it is that name which is likely to lead persons seeing the domain name to think of a connection with the Complainants' trade marks.
5.2.5 Applying the principles of law enumerated above and observing the decision of the Panel in comparing the domain name walmart.canada.com and the trade mark "Wal-Mart" in Case D2000-0150, the Panel decides that the domain name is confusingly similar to the trade mark "Westfield" owned in the United States by the First Complainant and in Australia by the Second Complainant.
Respondent's to Rights or Legitimate Interests
5.3 Complainants assert that Respondent has no right or legitimate interest in the domain name.
5.3.1 Complainant further asserts with reference to paragraph 4(c) of the Policy that:
(i) Respondent has not traded under the name "Westfield" or "Westfield Shopping";
(ii) Respondent could not lawfully trade under the name "Westfield" or "Westfield Shopping" in any jurisdiction in which the Westfield Group operates having regard to the trade marks of the Complainants;
(iii) Complainants have not licensed or other otherwise permitted the Respondent to use the trade marks or to apply for or to use any domain name incorporating the trade marks.
5.3.2 The Respondent asserts in response that it is the legal owner of the domain name which it lawfully applied for and paid the appropriate fee. The Respondent further asserts that the fact that it has not traded under the domain name does not operate to deny the Respondent its title to that domain name.
5.3.3 Respondent's response confirms that it is not using the domain name in connection with the bona fide offering of goods or services. The Respondent does not claim to be commonly known by the domain name, nor does it assert that it is making a legitimate non-commercial or fair use of the domain name. The Respondent asserts use of the domain name only in relation to discussions with the Second Complainant, to which reference is made below.
5.3.4 Mere assertion by Respondent that it is the legal owner of the domain name is not sufficient to displace Complainants' submission based on demonstrated ownership of the trade mark. Respondent's use of the registration of the domain name as an inducement to Complainants to engage its web-site services does not constitute use in connection with the bona fide offering of those services. Respondent's services are not being offered under or by reference to those services, and the domain name is not being used to direct customers to those services.
The Panel therefore concludes that Respondent has failed to rebut Complainants' assertion that Respondent has no rights or legitimate interest in respect of the domain name.
6. Registration and Use in Bad Faith
6.1 Complainants assert that Respondent has registered and used the domain name in bad faith.
6.1.1 Complainants contend that Respondent's only intention when registering the domain name was to sell it to the Westfield group. Complainants further contend that Respondent is in the business of registering domain names solely for the purposes of sale to the party properly associated with the name. As evidence of their contention the Respondents produce:
(i) A letter dated 17th November from Respondent to Second Complainant with an offer to sell the domain name to the Second Complainant.
(ii) A letter dated 12th November to Respondent from a party known as "Certain Other Services".
The letter of 12th November provided to Respondent valuations for 33 domain names registered to Respondent. The letter stated that "As per your requests all names have been valued on a quick sale basis". Attached to the letter is a "Domain Name Valuation" valuing the domain name as follows:
"Expected sale value on open market AUS $265,000
Expected value where vendor agrees to non-disclosure of
sale contract price AUS $344,000".
6.1.2 By its response Respondent does not deny or otherwise question the letters of the 12th and 17th November 1999 but states that:
(i) at the time of registration it was not Respondent's intention to sell the name;
(ii) Respondent is and was at the time of registration interested in the business of creating e-commerce and e-shopping programs;
(iii) Respondent contacted Second Complainant offering its services to create a site for Second Complainant;
(iv) in the course of the discussions the Second Complainant asked Respondent to sell the domain name to it.
6.1.3 In support of its contentions Respondent sets out what purports to be the substance of certain telephone discussions occurring between its principal, Graeme Hobbs, and an officer of the Second Complainant occurring between early October 1999 and early February 2000. The substance of these discussions was that Respondent informed Second Complainant that it had registered the domain name "westfieldshopping.com" and would like to build a web-site for Westfield's retailers. Respondent asserts that in subsequent telephone discussions, Second Complainant asked whether Respondent would be prepared to sell the name to it. Respondent further asserted that the name was not for sale and that his only interest was in developing an e-commerce retailing site. Respondent asserted further, "If you want to buy it you make me an offer and put it in writing". Respondent further asserts that the Second Complainant asked Respondent to put a price on the domain name and that subsequently Respondent obtained the valuation contained in the letter of 12th November and forwarded it to Second Complainant under cover of the letter of 17th November.
6.1.4 By its Rebuttal Second Complainant did not deny that the telephone conversations took place but asserted, without supporting evidence, that the "transcripts of the conversations provided in the response are inaccurate and misleading". The Rebuttal contained further assertions by the Second Complainant, which are the subject of Observations filed by Respondent and which in turn were the subject of the Complainants' further communication. As noted in paragraph 4.9.3 the Panel finds these further submissions of limited value.
6.1.5 As noted in paragraph 4.9 the Panel is not in a position to resolve the conflicting assertions as to what took place in the conversations between Respondent and officers of Second Complainant nor is it in a position to resolve the conflicting claims of the Complainants and the Respondent in relation to the nature of the business conducted by the Respondent. The panel therefore proceeds to its decision on the basis that the following facts have been established:
(i) Complainants are well and widely known by reference to the names "Westfield" and "Shoppingtown" and are the owners of trade mark registrations of those words.
(ii) on or about 18 September 1999 the Respondent registered the domain name "westfieldshopping.com".
(iii) in early October 1999 Respondent contacted the Second Complainant informing it that Respondent had registered the domain name and offering to provide web-site and/or e-commerce services for the Second Complainant.
(iv) further telephone conversations took place between the Respondent and officers of the Second Complainant leading to the Respondent's letter of 17th November 1999.
(v) in registering the domain name Respondent did not do so at the request of, or as agent for, Complainants.
6.1.6 In order to satisfy the third leg of paragraph 4(a) of the Policy the Complainants must show that the domain name has both been registered and is being used in bad faith.
The record shows that the domain name is not being used in the sense that the entry of the domain name does not resolve to a web-site – see Complaint paragraph 12, Response paragraph 4(3). However, as pointed out by the Panel in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No D2000-0003 "the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith" – see paragraph 7.9.. It is not necessary to show that there is in existence a web-site which can be reached via the domain name in order to show use. Furthermore as discussed below this is not a case in which inaction or mere passive holding is in point. The record shows that Respondent has used the domain name registration as an element in commercial negotiations.
6.1.7 The Panel therefore holds that the domain name has been used by Respondent. It is therefore necessary to decide whether the use of the domain name and registration of it, is in bad faith. This requires an inquiry into the circumstances of the application for registration and the use to which the registration is put. Though these two inquiries are separated in time, evidence of the latter can provide the means for the determination of the former. That is, the purpose of the registration may be discerned from the subsequent use which is made of it.
6.1.8 Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if they are found to exist, shall be evidence of the registration and use of the domain name in bad faith.
The record does not disclose evidence that the domain name has been registered or is being used to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name; nor does it to show the registration was primarily for the purpose of disrupting the business of a competitor, or that it was done to attract users to the web-site by creating a likelihood of confusion with Complainants' mark. Respondent's conduct does not, therefore, appear to fall within sub-paragraphs (ii), (iii) or (iv) of paragraph 4(b)
6.1.9 Paragraph 4(b)(i) requires a showing that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent's documented out of pocket costs directly related to the domain name.
Respondent asserts that it was not its intention to sell the name when it registered it and that it is, and was at the time of registration, interested in the business of creating e-commerce and e-shopping programs. Nevertheless in the letter of 17th November 1999 the Respondent not only states that it is prepared to accept the price of, minimum, $265,000 quoted in the valuation given by "Certain Other Services" but puts forward an alternative proposal of an annual per tenant charge of $236.25 "not including hosting cart-hosting e-mail addresses and set-up costs etc" thus giving an annual cost to the Second Complainant of $236.25 multiplied by the number of tenants that it has. The record does not show how many tenants the Second Complainant alone has but based on the Complainants' uncontroverted statement that the Westfield group has over 12,000 retailers in Australia, The United States and New Zealand it is apparent that by either method of calculation the sum sought by the Respondent is vastly in excess of its out of pocket expenses. It is also apparent that the amount sought by Respondent is attributable to the purchase or rental of the domain name and not to the provision of other services.
6.1.10 The circumstances enumerated in paragraph 4(b)(1) of the Policy are not confined to sale but extend also to "renting, or otherwise transferring the domain name registration". If the Respondent did not itself intend to establish a web-site which would be accessed by the use of the domain name, it must have done so with the intention that it would ultimately sell, rent or otherwise transfer the domain name to the Second Complainant. If it did not have that intention there is no logical reason why it should make reference to the domain name in its approach to the Second Complainant on the basis that it wished to build a web-site for its retailers. The Panel therefore concludes that Respondent's conduct falls within the circumstances enumerated in paragraph 4(b)(1) and amounts to registration and use of the domain name in bad faith.
6.1.11 The Panel is further of the opinion that, even if Respondent did not intend ultimately to sell, rent or otherwise transfer the domain name to the Complainant but intended merely to hold it and to use it, as it did, as an element in negotiation with Second Complainant for the provision of its internet and e-commerce services to the Second Complainant or persons associated with Second Complainant; that in itself would have amounted to use of the domain name in bad faith. It would have amounted to use of the domain name, not for the purpose of identifying Respondent, but for the purpose of obtaining a commercial advantage in its negotiations with the owner of the trade mark which forms the dominant part of the domain name. Paragraph 4(b) is not exhaustive of the categories of bad faith, and accordingly, even if the Panel had not found that Respondent's conduct fell within paragraph 4(b)(1), it would have found Respondent's use and registration to be in bad faith and that the condition of paragraph 4(a)(iii) of the Policy is therefore satisfied.
In this case there are two Complainants related to each other, and each having rights in the same trade marks in their respective jurisdictions. Each of them would have been entitled independently to succeed in their complaint. They have requested that the domain name be transferred to the Second Complainant. The Panel agrees that that would be an appropriate course.
The Panel therefore concludes and decides that:
(i) the domain name of Respondent is confusingly similar to trade marks in which Complainants have rights;
(ii) Respondent has no rights or legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith;
(iv) the domain name should be transferred to Second Complainant.
Dated: May 18, 2000