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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Myer Stores Limited v. Mr. David John Singh
Case No. D2001-0763
1. The Parties
The Complainant is Myer Stores Limited of 800 Toorak Road, Tooronga, Victoria 3146, Australia, represented by Mr. John Gibbs of Phillips Ormonde & Fitzpatrick of Melbourne, Australia.
The Respondent is Mr. David John Singh of 4 Zambelli Drive, Lismore NSW 2480, Australia, representing himself.
2. The Domain Name and Registrar
The disputed domain name is <myeronline.com> and the Registrar with which the domain name is registered is Register.com.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on June 8, 2001, and in hardcopy on June 12, 2001. The Complaint was acknowledged on June 11, 2001, when registration details were sought from the Registrar. On June 12, 2001, the Registrar confirmed the registration details and that the Policy is applicable to the disputed domain name. On June 12, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On June 13, 2001, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was July 2, 2001. A Response was filed in hardcopy on June 22, 2001, and by email on June 26, 2001. The Response was acknowledged on June 26, 2001. On July 5, 2001, the Center notified the parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day, the Center transmitted the case file to the panel and notified the parties of the projected decision date of July 19, 2001.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the administrative panel was properly constituted.
4. Factual Background
The Complainant is the largest department store group in Australia with over 65 stores operating nationally and employing approximately 29,000 people. It forms part of Coles Myer Limited, the largest retailing organisation in Australasia and one of the largest retailers in the world. The Myer name is very well known.
The Complainant is the owner of the registered trademark MYER in Australia, and the owner of a total of 85 registered trademarks which incorporate the word MYER either on its own or in conjunction with other words or images.
In addition, the Complainant became on July 3, 2001 the registered proprietor of Australian trademark MYER ONLINE in respect of "online retailing services", with effect from August 28, 2000 - the date the application was filed. The application had been accepted by the Australian Trademarks Office before the Complaint was filed.
The domain name <myeronline.com> was created on September 24, 1999. The Complainant had not authorized the use of its trademarks nor the registration of the disputed domain name.
The Respondent’s website at <myeronline.com> contains company information and commentary on the financial performance of Coles Myer Limited and numerous disclaimers denying any association between the website and the Complainant or Coles Myer Limited.
The Respondent has registered other "dot com" domain names which include well known trademarks registered in Australia with the same <online> addition. These ("the additional domain names") include:
Each of the additional domain names relates to a website which contains material similar to that at the <myeronline.com> website, namely commentary on the financial performance of the company whose name is included in the domain name.
5. Parties’ Contentions
The disputed domain name is identical to the MYER ONLINE trademark. Although not identical to the MYER trademark, it includes the said trademark, "with a simple web-descriptive addition": Estate Of Tupac Shakur V Bobby Grewal & Al. (eResolution Case AF-0347). Therefore, the disputed domain name is identical or confusingly similar to the Complainant’s trademark and the requirement under section 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy has been satisfied.
The Respondent has no legitimate rights or interests in the disputed domain name. The Respondent is not commonly known by the name, nor is the Respondent using the site in connection with a bona fide offering of goods or services or for a legitimate reason.
The disclaimers come too late. Although disclaimers at the <myeronline.com> website are located both at the start and end of the page, they are not effective in displacing assumptions likely to be made by Internet users. Internet users accessing the <myeronline.com> website would have every reason to believe that, until they actually arrived there, they were on their way to visiting a website sponsored or authorized by the Complainant: E & J Gallo Winery v Hanna Law Firm (WIPO Case D2000-0615).
In addition to the disputed domain name, the Respondent has no legitimate interest in the additional domain names, each of which relates to the business of a major Australian corporation which currently operates or is expected to want to operate an online business. Accordingly, each of the additional domain names is likely to be wanted by the respective corporation.
Given the enormous number of alternative domain names which are currently available, the Respondent’s selection of the disputed domain name for use as a web address for the establishment of a website which provides information about the Complainant and Coles Myer Limited without sponsorship or approval from either of those companies is not legitimate, is not fair use, and is designed to mislead and divert the Complainants customers and potential customers to the website maintained by the Respondent in order to tarnish the MYER trademarks: E & J Gallo Winery v Hanna Law Firm (WIPO Case D2000-0615).
The disputed domain name was registered in order to prevent the Complainant from reflecting its MYER mark in the corresponding top level domain name. The Respondent has clearly engaged in a pattern of such conduct by registering the additional domain names, a clear indication of the Respondent’s use of the disputed domain name in bad faith.
The United States laws governing trademarks or service marks are applicable, as is the policy used to decide this dispute. The registration agreement was also issued in the United States of America.
The Complainant does not have a trademark or service mark registration in the United States for MYER or MYER ONLINE. At the time of submission of the Complaint, MYER ONLINE was not even registered in Australia. It is questionable if an application for a trademark constitutes a right to a trademark.
Identity/ confusing similarity
The disputed domain name is neither identical nor confusingly similar to a trademark or service mark in which the Complainant has rights.
The name "myer" is neither identical nor confusingly similar to the disputed domain name. No confusion exists related to the domain name and the trademark "myer" due to the "online" extension. The average internet user would be foolish to associate the "myer" trademark with my domain, since my website has numerous disclaimers stating that there is no connection between the website and the Complainant.
I have rights or legitimate interests in respect of the disputed domain name. The disputed domain name was chosen in order to inform the public, potential and current stock holders of the parent company of the Complainant. A substantial portion of the public is unaware the Complainant is a subsidiary of another company, particularly young members of the public, who have a high propensity to use the Internet. Hence, this website linked to the domain name aims at providing information to anyone who has an interest as I have, in the Complainant and its parent company.
This site is noncommercial as it is not used or intended to be used in the course of any commercial activities. Consumers are not misled or diverted due to the numerous disclaimers stating that there is no connection in any way whatsoever between the Complainant and the Respondent or the website.
There is no intent for commercial gain to misleadingly divert consumers because I do not have links or any facility whatsoever on my website where consumers can take part in commerce.
The trademark or service mark at issue is certainly not tarnished by the website linked to the domain name due to the lack of any negative comments or negative material related to the trademark or the Complainant. Hence, I am making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
E&J Gallo Winery v Hanna Law Firm (WIPO Case D2000-0615) is not even remotely applicable here. Firstly, the Respondent in that case was using two <trademark.com> and <trademark.net> domain names each linked to a different complaint site regarding Complainant. The use of two domain names linked to complaint sites about the Complainant was judged to tarnish the trademark and hence be proof of bad faith. Here there is just one domain name which is not <trademark.com> and certainly does not tarnish the trademark in any way whatsoever.
My domain name has not been registered and is not being used in bad faith. There are no circumstances falling within sub-paragraphs 4(b)(i) to (iv) of the Policy.
The disputed domain name was registered with the purpose of setting up a website containing company information concerning Coles Myer Limited, the parent company of the Complainant. The general public and potential and current investors in Coles Myer Limited have the right to obtain information as to the business description, financial performance and stock performance, free of any type of advertising, commercial gain for me or any other party, in a concise, straight-to-the-point manner at this noncommercial website linked to the disputed domain name.
I have not registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and I have not engaged in a pattern of such conduct.
I registered the disputed domain name and the additional domain names in order to create noncommercial websites providing information to the general public and potential and current investors The domain names I chose were related to either the subsidiary or the parent company, followed by an "online" extension.
In each case, including the disputed domain name, I have not prevented the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
The Complainant owns the domain <myeronline.com.au> and <myer.com.au>. Neither the Complainant nor the Respondent own the <myer.com> website.
Reverse domain name hijacking
All the additional domain names are of companies or parents of these companies whose shares are listed on the Australian Stock Exchange. Hence, this was clearly my reason behind such a choice of names. Each of those companies has a domain name registration under their <trademark.com>. However, Myer does not, because the trademark in the United States of America is owned by another individual, as is the <myer.com> domain.
Hence, the Complaint is nothing but an attempt by the Complainant to gain a foothold into the <.com> domains. This is clearly an element of bad faith by the Complainant which should be closely examined. None of the other companies or their parent companies have complained due to the fact they all have a presence in the <.com> domain. Hence, the motivation behind the Complaint is clearly disturbing. It is absurd to suggest that the other companies or parent companies will want their domains, due to the fact that they all have this <.com> presence. However, note that the Complainant does not. Hence, this is a clear attempt at a manipulation of the Policy by the Complainant for its own gain.
6. Discussion and Findings
To qualify for cancellation or transfer, a 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 trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant is incorporated and carries on business in Australia. The Respondent resides in Australia. The trademarks on which the Complainant relies are registered in Australia. The Registrar is in the United States. The website reached by means of the disputed domain name is accessible to Internet users worldwide. In the Complaint, the Complainant agreed to submit, only with respect to any challenge that may be made by the Respondent to a decision by the panel to transfer or cancel the disputed domain name, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the Registrar’s Whois database at the time of the submission of the Complaint to the Center.
In these circumstances the panel finds that, in addition to the Policy, the Rules and Supplemental Rules, the applicable law is the law of the State of New South Wales, Australia, including Australian Federal law.
The Policy applies where a Complainant establishes rights in a trademark, regardless of the territory in which those rights are recognized. Accordingly it is irrelevant that the Complainant may not have trademark rights in the United States.
There is no dispute that the Complainant has rights in the Australian registered trademark MYER. The trademark MYER ONLINE was not registered until after the Complaint was lodged with the Center. The application to register that mark was filed after the disputed domain name was registered. There is no evidence of common law rights in that mark acquired through use. Since the panel finds that the Complaint succeeds by reason of the Complainant’s rights in the trademark MYER, it is unnecessary to decide whether an application to register a trademark in Australia confers rights in a trademark of the kind contemplated in the Policy.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy (Footnote 1). The disputed domain name is identical to the Complainant’s registered trademark MYER ONLINE. Given the date of the application for registration, the date of registration, the date of the Complaint and the absence of evidence of common law rights, no reliance is placed by the panel on this finding for the purposes of this decision.
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark (Footnote 2). Accordingly, disclaimers placed on the website are irrelevant. Here the disputed domain name incorporates the whole of the Complainant’s well-known trademark MYER and is followed by a descriptive word denoting a modern form of communication and trading with which customers and others familiar with the Complainant would expect the MYER mark to be or to become associated. Thus the disputed domain name is likely falsely to convey to Internet users an association with the Complainant that does not exist.
The panel finds the disputed domain name is confusingly similar to the Complainant’s trademark MYER. The Complainant has established this element.
The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The name of the Respondent is not and does not include any part of the disputed domain name.
The trademark MYER is well-known and used in Australia to denote the goods and services of the Complainant. Before registering the disputed domain name, the Respondent clearly knew of the trademark MYER because he chose the disputed domain name in order to provide information about the Complainant’s parent company. It is, of course, legitimate to provide information about the Complainant or its parent to Internet users. The issue, however, is whether the Respondent has a legitimate interest in the disputed domain name.
In Monty & Pat Roberts Inc. v.J.Bartell (WIPO Case D2000-0300), the learned panelist, considering the domain name <montyroberts.org>, which led to a website containing criticisms of the Complainant, Mr. Monty Roberts, said:
"Respondent’s claim to use of Complainant’s mark for legitimate news dissemination purposes is a serious one, since the Panel is greatly concerned to assure that rights of the public to freely communicate their views on the Internet are protected and preserved. However, in balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant’s services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant’s commercial interests in the mark.
….. the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine."
Here the Respondent is using a domain name which falsely conveys an association with the Complainant to lead Internet users to his website. He is thus illegitimately identifying himself as the Complainant and attracting visitors to his site by trading off the Complainant’s goodwill in its MYER trademark. By the time users reach the disclaimers on the website they have already been exposed to the misrepresentation inherent in the disputed domain name.
The panel finds the Complainant has established this element. The Respondent has no rights or legitimate interests in the disputed domain name.
Bad faith registration and use
The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive. A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name (Footnote 3). Here the fame of the trademark MYER in Australia is such that the Respondent, an Australian resident, must have known of the mark before registering the domain name (Footnote 4) and cannot use it without infringing the Complainant’s rights (Footnote 5). Indeed, the Respondent’s explanation as to why he chose the disputed domain name demonstrates that he did so with the Complainant’s name and trademark MYER in mind.
Registration of a domain name which incorporates the trademark of another prevents the trademark owner from reflecting that mark in a corresponding domain name. Under paragraph 4(b)(ii) of the Policy, registering a domain name for such a purpose is evidence of both bad faith registration and bad faith use provided there has been a pattern of such conduct. It is irrelevant that a Complainant may have other domain names.
The Respondent has registered eight additional <[name]online.com> domain names incorporating the well-known trademarks of Australian companies in identical circumstances. The panel concludes that in each case the Respondent had, as at least one of his purposes, to prevent the trademark owners from reflecting their marks in <online.com> domain names, so that he might gain the benefit of greater traffic to his sites than would otherwise be the case. This pattern of conduct is evidence of bad faith registration and use of the disputed domain name within paragraph 4(b)(ii) of the Policy.
Accordingly the Complainant has established that the disputed domain name was registered and is being used in bad faith.
Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines reverse domain name hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." See also Paragraph 15(e). To prevail on such a claim, a Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd. (WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line (WIPO Case No. D2000-1151). Since the complainant has succeeded in establishing the elements entitling it to relief under the Policy, this claim must be rejected.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the domain name <myeronline.com> be transferred to the Complainant.
Alan L. Limbury
Dated: July 10, 2001
1. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102). (back to text)
2. AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109). See also General Mills, Inc. v. John Zuccarini (NAF Case FA 104000097050). (back to text)
3. SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956). Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037). (back to text)
4. Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., (WIPO Case No. D2000-0163); Empresa Brasileira de Telecomunicacoes S.A. – Embratel v. Kevin McCarthy (WIPO Case No. D2000-0164). (back to text)
5. See Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028). (back to text)