|Kläger||Bartercard International Pty. Ltd., Bartercard Ltd.|
|Beklagter||Ashton-Hall Computer Services|
|Entscheider||Elliott, Clive L.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bartercard Ltd & Bartercard International Pty Ltd . v Ashton-Hall Computer Services.
Case No. D2000-0177
1. The Parties
The complainants are Bartercard Limited and Bartercard International Pty Limited, both of which are companies incorporated and registered in Queensland, Australia and having their principal place of business in Southport, Queensland, Australia ("the Complainant").
The respondent is Ashton-Hall Computer Services, having its principal place of business in Dover, Delaware, USA ("the Respondent").
2. The Domain Name and Registrar
The domain name the subject of this dispute is <bartercard.org> ("the Domain Name"), which was first registered on August 7, 1996.
The registrar of the domain name is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").
3. Procedural History
A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on March 17, 2000, and in hard copy on March 20, 2000. The latter was accompanied by payment in the required amount for a single Panelist.
On March 22, 2000, an informal Acknowledgment of Receipt (Complaint) was sent to the Complainant.
On March 24, 2000, the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory.
On March 24, 2000, the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding ("the First Notification") was sent to the Complainant and the Registrar, advising that the Response was due by April 12, 2000. The First Notification was also sent by email, fax and courier to the Respondents administrative and billing contacts. However, the contact information used was incorrect, being the contact information that had been on the register until December 29, 1999, when it was updated by the Respondent.
Accordingly, it is not clear whether the First Notification was appropriately served on the Respondent. It appears that WIPO relied on the Respondent details provided by the Complainant in the body of the Complaint, which are incorrect, rather than on those contained in the latest registration details, annexed to the Complaint as Annexure A.
On March 24, 2000, a Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On March 28, 2000, a response was sent to WIPO by the Registrar, confirming that it had received a copy of the Complaint from the Complainant and that the domain name was currently registered with it. It provided a copy of the requested Whois details, advised that the Domain Name was in "Active" status, and stated that the Policy was in effect by virtue of Network Solutions 4.0 Service Agreement.
On April 8, 2000, a Notification of Error was sent to WIPO by Ashton-Hall Pty. Limited, a third party, purporting that it had incorrectly been named as the Respondent in this Proceeding. It also raised a number of objections to statements made in the Complaint and requested that this Proceeding be adjourned pending the resolution of matters currently before the Supreme Court of Queensland, Australia.
The Panel notes that Ashton-Hall Pty. Limited is not named as Respondent in this Proceeding, and that the Notification of Error was copied to the Respondent using the email address firstname.lastname@example.org, which has been the correct administrative contact for the Domain Name since December 29, 1999.
On April 18, 2000, a message was sent to the Complainant by email, requesting the Complainants comments on the matters raised by Ashton-Hall Pty. Limited within five (5) days.
On April 19, 2000, a response was sent to WIPO by the Complainant, pointing out that Ashton-Hall Pty. Limited was not named as the Respondent in the Proceeding and that the comments made by that party were without standing, without merit, and made for the purposes of delay only.
On April 24, 2000, a second Notification of Complaint and Commencement of Administrative Proceeding ("the Second Notification") was sent to the Respondent by email, fax and courier and also to the Complainant and Registrar, advising that the Response was due by May 13, 2000. This second Notification was sent to the Respondent using the registration details that had been on the register since December 29, 1999 for the Domain Name, including the email addresses email@example.com, firstname.lastname@example.org and email@example.com and the fax number 001 302 192 435.
On May 12, 2000, the Respondent requested an extension of time for the filing of its response, on several grounds. First, it claimed that it had only just become aware of the Proceeding as it was in the process of moving offices. Secondly, it alleged some confusion over who was named as Respondent. Thirdly, it alleged administrative deficiency in the Complaint in that the Administrative and Technical contacts referred to were incorrect in both the Complaint and Notification of Complaint. Fourthly, it queried whether the Panel has jurisdiction to issue a decision in this Proceeding, given the existence of court proceedings relating to substantially the same matter.
On May 16, 2000, WIPO responded to the Respondents request, pointing out that the Respondent was the correct Respondent according to the current registration details, which also confirmed that the administrative, technical and billing contact information used by WIPO to transmit the Second Notification were correct. In addition, copies of the Complaint and second Notification had been sent by post to both addresses provided in the registration details on April 24, 2000. WIPO also pointed out that the Panel has a discretion to terminate, suspend or continue with a decision where court proceedings are in progress or are subsequently initiated.
On May 16, 2000, WIPO requested the Complainants comments on the Respondents request or an extension of time.
On May 17, 2000, a response was sent by the Complainant to WIPO, objecting to any extension of time on the basis that the Respondent had indulged in previous correspondence with WIPO, hence was aware of the Proceeding, and that the Respondent was simply attempting to delay matters.
On May 18, 2000, the parties were advised that the Respondents request for an extension of time for filing the Response was denied as the Complainant had objected to that request.
On May 18, 2000, the parties were sent a Notification of Default, advising that the Respondent had failed to file a Response within the allotted time and that any Response filed might or might not be taken into account, at the Panels discretion.
The Panel notes that the first Notification was sent by post to the correct Respondent on March 24, 2000, and that the Notification of Error sent by Ashton-Hall Pty. Ltd. was sent by email to the correct Respondent on May 8, 2000. In addition, a further month has elapsed since the Notification of Respondent Default was issued, and the Respondent has elected not to file a Response or request permission from WIPO or the Panel to do so. Accordingly, the Respondent has been aware of the Proceeding for some time and has had a reasonable opportunity to respond to the Complainants allegations.
On May 24, 2000, in view of the Complainants designation of a single panelist, WIPO invited Clive Elliott ("the Panelist") to serve as the panelist in this Proceeding and transmitted a Request for Declaration of Impartiality and Independence to the Panelist.
On May 31, 2000, a Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist was received by WIPO.
On June 8, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the Complainants request, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr Clive Elliott ("the Panel"), and advised that the decision should be forwarded to WIPO by June 22, 2000.
On June 8, 2000, the case file was transmitted to the Panel.
Having reviewed the communications records it appears that there has been a delay caused by the Complainant, which originally transmitted the Complaint to out-of-date contact details for the Domain Name, and WIPO, which relied on the contact details used by the Complainant without ensuring these contact details were correct. This resulted in the involvement of a third party and a delay in the resolution of this dispute.
Despite these procedural complications, the Panel is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.
4. Factual Background
The Complainant asserted and provided evidence in support of the following, which is accepted by the Panel.
The Complainant is the registered holder of many trade marks in classes 35, 36 and 42 for trade exchange services that incorporate the word BARTERCARD as their dominant feature. Trade marks registered before the Domain Name was registered exist in many countries, including Australia, Brunei, Denmark, Germany, Holland, Indonesia, Mexico, New Zealand, Russia, Sri Lanka, Taiwan, the United Kingdom and the United States of America.
The Complainant asserted but did not provide evidence in support of the following.
The Complainant has operated a business under the name BARTERCARD since February 8, 1991, and there are presently 30,000 members in the Complainants organization, with annual trade turnover being in excess of AUS$540,000,000.
The Complainant currently operates in Australia, New Zealand, United Kingdom, Thailand, Hong Kong, Lebanon, Canada, Malaysia and Sri Lanka.
The Complainant is the registrant of a number of domain names containing the word BARTERCARD, namely:
In addition, the following domain names are operated under licence from the Complainant:
The Complainant operates its principal website at <bartercard.com>, which the Panel notes was first registered on June 11, 1996.
The Complainant is the owner of substantial goodwill in the name BARTERCARD.
In the absence of any conflicting evidence from the Respondent or other circumstances, the Panel is obliged to accept these assertions.
The Respondent has failed to file a Response in this proceeding.
5. Relevant Provisions of the Policy
The relevant clauses of the Policy are clauses 4(a), 4(b) and 4(c), which are as follows:
4(a) You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
(c) How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(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 trademark or service mark at issue.
6. Complainants Assertions
In relation to para 4(a)(i) of the Policy the Complainant asserts that the name used by the Respondent is identical to that of the Complainant and that the logo used by the Respondent is of a deceptively similar design and color to that of the Complainant.
In relation to para 4(a)(ii) of the Policy the Complainant asserts that the Respondent is not the holder of any trade mark registrations for the word BARTERCARD and has not been licensed or permitted by the Complainant to use any of its trade marks or to apply for use of any domain name incorporating its name or any of those marks. The Complainant further asserts that the name BARTERCARD is an invented word and as such is not one that a trader would legitimately choose unless seeking to create a false impression of association with the Complainant.
In relation to para 4(a)(iii) of the Policy the Complainant makes a number of assertions, as follows:
First, it claims that the Respondent is in breach of the relevant Australian business name legislation by virtue of a failure to register its business name.
Secondly, the Complainant claims to have attempted to contact the Respondent using the telephone and facsimile contact details provided in the Domain Name registration, and concluded that such details were false, thereby breaching para 2(a) of the Policy, which requires the applicant for a domain name to provide complete and accurate information. The Complainant also notes that the administrative contact is currently Wayne Sharpe, email address firstname.lastname@example.org. The Complainant notes that the Complainants Chief Executive Officer is named Wayne Sharpe.
Thirdly, that the widespread use by the Complainant of its trade marks means that any use by the Respondent of the Domain Name would cause members of the public to assume that there was a connection or association between the Complainant and the registrant of the Domain Name, and further that any use of the Domain Name would constitute passing off, trade mark infringement and breaches of the Australian consumer protection legislation.
Fourthly, that the Respondent has attempted to make financial gain from the Domain Name by offering to sell it to the Complainant. This claim is based on the response to an email sent by the Complainant to the then administrative contact on January 7, 1999, in which the Respondent advised that:
"As we have done considerable development on the site and consider it a valuable property (as you also obviously do), we would only be prepared to consider the disposal of such a valuable property on the basis of adequate compensation."
Fifthly, the Respondent circulated a derogatory email to members of the Complainants organization, attempting to persuade them to register and trade with the Respondent, who attempted to gain financial benefit from this conduct by requesting a registration fee of US$95.
Finally, the Respondent used the Domain Name to host a website offering products directly competing with those offered by the Complainant.
On the basis of these assertions, the Complainant requests that the Administrative Panel order the transfer of the Domain Name to the Complainant.
7. Discussion and Findings
In relation to para 4(a)(i) of the Policy, the Complainants assertions are somewhat misdirected, as the question the Panel must address is whether or not the Domain Name is identical or confusingly similar to the Complainants registered trade marks, regardless of the Complainants company name or logos used. However, the Panel considers that the Domain Name is confusingly similar to the trade mark registrations owned by the Complainant, as all of these registrations contain the word BARTERCARD as their dominant feature.
In relation to para 4(a)(ii) of the Policy, the Complainant has alleged that the Respondent has no legitimate right or interest in the Domain Name. This allegation has not been denied by the Respondent and there is no evidence before the Panel to refute this allegation. Accordingly, on the record as it stands, the Panel holds that the Respondent has no legitimate right or interest in the Domain Name.
In relation to para 4(a)(iii) of the Policy, the Complainant has not clearly identified exactly how its claims fit within the requirements of the Policy. However, the evidence filed indicates that the Domain Name has been used to host a website offering competing products to those offered by the Complainant. In the absence of any contradiction, this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor, as contemplated by para 4(b)(iii) of the Policy. It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainants mark, as contemplated by para 4(b)(iv) of the Policy. Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith and accordingly para 4(a)(iii) of the Policy is satisfied.
The Panel also notes that no evidence has been placed before it that supports any of the grounds of legitimate use described in para 4(c) of the Policy.
Having been give notice of the Complaint it is reasonable to infer that the Respondent has chosen to leave the Complainants allegations unanswered.
When other legal proceedings are in progress, para 18 of the Rules grants the Panel a discretion as to whether to suspend or terminate the Proceeding, or proceed to a decision.
It is understood that the parties to this Proceeding are currently involved in court proceedings before the Supreme Court of Queensland, Australia ("the Court"), in relation to the Domain Name and other related issues, including passing off, trade mark infringement, and breach of Australian consumer protection legislation.
The Panel considers that the jurisdiction of the Panel and that of the Court are separate and distinct and note that each has different powers and requirements upon it. Accordingly, the Proceeding and the Court proceedings are different and can operate in parallel. No specific submission has been made by the Respondent identifying why, in this particular case, a decision should be suspended. By maintaining the registration of the Domain Name the Respondent has submitted to the jurisdiction of this Panel and no clear or compelling reason has been advanced why a decision should not be issued by this Panel and given effect by the Registrar in due course.
The Complainant has satisfied the requirements of paras 4(a)(i), (ii) and (iii) of the Policy.
The Respondent has not filed any evidence that displaces or casts doubt on the Complainants claims and assertions.
The Panel accordingly finds in favour of the Complainant and orders that the Domain Name be transferred to the Complainant.
Clive L. Elliott
Dated: June 26, 2000