The Complainant is Harbord Real Estate, Harbord, New South Wales, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Austin Robinson, Harbord, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <harbordrealestate.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (‘the Center’) on April 3, 2006. On April 5, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 6, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (‘the Policy’), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2006.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on May 5, 2006. 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.
The Respondent’s request for a delay in the proceedings
By email dated April 6, 2006, the Office Manager of the Respondent’s office wrote to the Center and requested a delay in the proceedings until May 12, 2006, on the ground that the Respondent departed Australia for a trip abroad on March 29, 2006, and would not be returning to Australia until May 11, 2006.
On April 10, 2006, the Center replied, informing the Office Manager that the administrative proceeding had formally commenced on that day, that the due date for the Respondent’s response was April 30, 2006, that the time for the Response could be extended in exceptional circumstances but generally only for a period of one week or by written stipulation between the parties and approved by the Center. The Office Manager was then advised that if the Respondent wanted a lengthy extension, he should provide evidence of an agreement between the parties for the extension.
Since that date, no communication has been received from either party.
Paragraph 5(d) of the Rules provides that an extension of time for the filing of the response may be granted by the Provider, that is to say by the Center in the present proceeding, in exceptional circumstances and that it may also be granted by written stipulation between the parties, but then only if that stipulation is also approved by the Provider.
It should also be noted that paragraph 5(e) of the Rules goes on to say that if a Respondent does not submit a response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint. Paragraph 10(b) of the Rules provides that the parties are to be treated equally and that each party is given a fair opportunity to present its case. The Panel also has a power under paragraph 10(a) of the Rules to conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules.
It is clear from the Rules that there is a distinction between the role of the Provider and the role of the Panel. The Provider has a discretion to extend the time for the Response and a further discretion to extend the time if that extension has been agreed between the parties.
The role of the Panel, however, is mandatory and it is to decide the dispute based on the Complaint if the Respondent has not submitted a response.
As no extension of time was granted by the Center and as the Respondent has not submitted a response, the Panel is required by virtue of paragraph 5(e) of the Rules to decide the dispute based on the Complaint, which it will proceed to do.
The remaining aspect of this issue for the Panel to consider is whether the Respondent has been given a fair opportunity to present its case within the meaning of paragraph 10(b) of the Rules. The Panel’s decision on this matter is that the Respondent has been given such an opportunity. That is so for the following reasons.
First, the Respondent was in effect offered a one week extension if he could show exceptional circumstances. The Respondent, however, did not accept that proposal, as it did not respond or put forward the exceptional circumstances relied on.
Secondly, the Respondent was also given the opportunity to seek the agreement of the Complainant to a lengthy extension if that is what he wanted and was specifically requested to provide evidence of such an agreement. The Respondent has apparently taken no action on that advice.
Thirdly, the fact that the Respondent was overseas was not by itself a ground for an extension and a Response of some form within the appointed time, even in the form of an email or a letter, would appear to have been practicable. However, no communication of this sort has been made to the Center or the Panel.
Fourthly, the Respondent had already been notified by means of a letter from the Complainant’s solicitors on March 1, 2005, of the substance of the complaint. The evidence is that the Respondent sent no reply to that letter.
Finally, the Respondent was advised by the Center on April 10, 2006, that the proceeding had commenced and that the deadline for sending in the Response was April 30, 2006, and also on May 1, 2006, that he had defaulted and that as a consequence an Administrative Panel would be appointed and informed of his default and that the Panel had a discretion whether to consider a late Response. The Panel can only assume that this advice was passed on to the Respondent personally. However, none of these warnings elicited a response from the Respondent.
Accordingly, the Panel concludes that the Respondent has had the Complainant’s case brought to his notice, has had adequate time to consider his response, has not exercised any of the opportunities he has had to make a response and has had a fair opportunity to present his case to the Panel.
4. Factual Background
The Complainant is a licensed real estate agent in Sydney and has been engaged in that business under the name ‘Harbord Real Estate’ and ‘Harbord Real Estate The Professionals’ since 1981. It is a registered business name. The Complainant is the only business or company registered under that name in Australia.
The Complainant registered <harbordrealestate.com.au> as its domain name by an application to Melbourne IT on October 6, 2000, and its website www.harbordrealestate.com.au was established from that date. The website has been conducted since then as an integral part of the Complainant’s business.
The Respondent is also a licensed real estate agent in the same suburb of Sydney as the Complainant and his office is located very close to the Complainant’s premises and in the same street in Harbord. His address is 48 Lawrence Street, Harbord, whereas the Complainant’s address is 6-8 Lawrence Street, Harbord. The Respondent conducts his business under the name A & J Robinson & Assoc First National Real Estate.
The Respondent also has a domain name for his business which is <ajrobinson.com.au> which resolves to the website www.ajrobinson.com.au and which promotes the Respondent’s business.
The Respondent registered the disputed domain name <harbordrealestate.com> on October 2, 2002. It resolves to a website the title page of which is ‘A & J Robinson and Associates’.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the contentious domain name <harbordrealestate.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s unregistered or common law trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant maintains that although it does not have a registered trademark in the name Harbord Real Estate, it has since 1981, come to be so associated with that name that it has acquired a common law trademark in it. It then says that the domain name <harbordrealestate.com> is identical or at least confusingly similar to the common law trademark and that the only difference between the two is the addition of the suffix ‘.com’.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because he was never given any authority to use the name, does not have a company or business in that name and uses the domain name solely for the illegitimate purpose of leading internet users to his own website, that is to say the website for A & J Robinson And Assoc First National Real Estate which is almost identical to the Respondent’s own website “www.ajrobinson.com.au”. The Complainant also says that the Respondent has not established any such right or legitimate interest in the domain name by any other means.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because essentially what the Respondent is doing is preventing the Complainant from using the common law trademark of its business in a corresponding domain name in the .com generic Top Level Domain and that this has disrupted the Complainant’s business. Indeed, the Complainant argues that the main purpose motivating the Respondent in registering the contentious domain name must have been to disrupt the Complainant’s business by diverting users to the website of the Respondent who is in open competition with the Complainant. The Complainant also contends that within the meaning of paragraph 4(b)(iv) of the Policy, the Respondent has attempted to attract for commercial gain, internet users to the <harbordrealestate.com> website by creating the likelihood of confusion with the Complainant’s mark as the source of the products or services offered at that website. The Complainant concludes that all of these matters go to show that the domain name was registered and has been used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.
That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy.
Those three elements, all of which must be proved, are that:
A. the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the domain name; and
C. the domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Complainant must first establish that there is a trade or service mark in which it has rights. The Complainant says that there is such a trade or service mark and that it is a common law or unregistered mark in the name HARBORD REAL ESTATE.
It is now well established that a common law or unregistered trademark may form the basis of a successful UDRP complaint: see in this regard the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions1 where it is said:
‘1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Imperial College v. Christophe DessimozWIPO Case No. D2004-0322 <idealeague.com> among others, Transfer.’
Applying that principle, the Complainant says that the facts show that it has established a common law trade or service mark in the name. The Panel accepts that argument because the Complainant has made out a very strong case to the effect that since 1981, it has been trading under the name Harbord Real Estate and that large numbers of potential buyers and sellers of properties deal with the Complainant under that name. In addition, on the real estate websites www.realestate.com.au and www.domain.com.au, properties are listed for sale by the firm named Harbord Real Estate which is at the same address and telephone number as the Complainant and which clearly is the Complainant. The Complainant has also exhibited in Annex 9 to the Complainant some monthly reports showing that each month thousands of potential buyers or tenants visit properties being sold or leased by the Complainant through its own website www.harbordrealestate.com.au to enquire about properties listed by the Complainant and who are clearly dealing with the Complainant under that name. Furthermore, evidence is contained in the Complaint and documented in Annex 10 to the effect that between 1992 and March 30, 2006, the Complainant sold 1527 properties under the name Harbord Real Estate. The Complainant has also set out in Annex 11 a selection of the many letters of appreciation it has received from grateful clients who have dealt with the Complainant and benefited from its services under the name Harbord Real Estate. The evidence is also to the effect that the Complainant has widely advertised under the same name, has received editorial recognition and become embedded in the local community in that name for its community contributions, has been the recipient of many industry awards under the same name and has used it for all of its business activities and means of communication.
Thus the case it has advanced to meet the requirements set out in the WIPO Overview is very strong. Above all, the evidence shows that the name in question is associated with the Complainant and no one else.
Accordingly, the Panel’s conclusion is that the Complainant has established that it has a common law or unregistered trade or service mark in HARBORD REAL ESTATE (‘the trademark’).
That being so, the next question is whether the disputed domain name is identical or confusingly similar to the trademark. The conclusion of the Panel is that it is identical to it. The word ‘identical’ means ‘the same’ or ‘exactly alike’. The domain name is the same as and exactly like the service mark, for the words ‘HARBORD REAL ESTATE’ that constitute the domain name also constitute the entirety of the service mark. The only exception is the ‘.com’ suffix and it is now well established that the use of suffixes like ‘.com’ cannot defeat a conclusion of confusing similarity for they are part of every domain name: see, for example, the decision cited by the Complainant: America Online, Inc. v.Ultima Gold, WIPO Case No. D2000-1766.
For all of these reasons, the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
‘(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] are 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.’
Thus, if the Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. The Respondent in the present case was given notice that he had until April 30, 2006, to send in his Response and that he would be in default if he did not do so. By virtue of paragraph 14 of the Rules, the Panel may then draw appropriate inferences from that default.
As the Respondent is in default, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name. It is appropriate to draw that inference because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were.
Moreover, the Respondent has clearly appropriated the Complainant’s business name, which the Respondent must have seen displayed on the Complainant’s premises 100 meters from his own and appropriated it without permission, giving rise to the prima facie assumption that he did so for an illegitimate purpose. If there were a more innocent or legitimate explanation, the Respondent could have given it, but this he has failed to do.
Furthermore, the Respondent had the opportunity to bring himself within paragraph 4(c) of the Policy which sets out several criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the Respondent’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in paragraph 4(c), giving rise to the inevitable inference that he could not do so by credible evidence.
All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name.
Moreover, it is quite apparent, on the unchallenged evidence, that the Respondent could not bring himself within any of those criteria. He could not come within paragraph 4(c)(i) because he has been using the domain name to sell real estate by diverting internet users away from Harbord Real Estate and to his own website and such a use is not bona fide, for it is based on a deception; it is in fact ensnaring unsuspecting internet users who are looking for Harbord Real Estate and maneuvering them to A & J Robinson & Associates which is the opposite of bona fide conduct.
Nor could he come within paragraph 4(c)(ii) because he has never been known as Harbord Real Estate and could not have been, for it is the registered business name of the Complainant.
Clearly, he could not come within paragraph 4(c)(iii) because his use of the domain name is plainly a commercial one, being designed to deceive users and to make money out of them by selling or leasing real estate to them or for them.
In any event, the evidence shows that on any test the Respondent could not have any rights or legitimate interests in the domain name. The evidence shows that he is not authorized to use the name, he has no company or business name including the words ‘Harbord Real Estate’ and has never been known by that name.
More significantly, the domain name resolves to the Respondent’s own website, or more precisely the website with the title page ‘A & J Robinson And Associates’ which is virtually the same as the website of ‘A & J Robinson & Assoc. First National Real Estate’. The domain name for that website is registered in the name of the Respondent and the website itself promotes the Respondent’s own real estate business which is clearly in competition with the Complainant. There are two vices in that set-up.
First, as the Complainant says, if internet users seeking the Complainant accidentally omit the ‘. au’ suffix from the Complainant’s domain name, they will end up with the Respondent. But, secondly, if users seek Harbord Real Estate by typing in what many people automatically do, namely <www.harbordrealestate.com>, intending to do that, they will also end up with the Respondent. But in neither case would they have intended to do so.
Moreover, as the Complainant amply demonstrates in the Complaint and in the evidence contained in Annexes 23, 24 and 25 to the Complaint, the whole structure of the website to which the contentious domain name resolves, with its meta tags, keyword sections and source code, makes it plain that the Respondent has set up the website so that it will attract users who are seeking the business known as Harbord Real Estate on search engines.
It should not therefore be surprising that when the Panel sought Harbord Real Estate on the combined Dogpile search engine2, the first result obtained was not the official site of Harbord Real Estate, but www.ajrobinson.com.au, the website of A & J Robinson & Assoc. First National Real Estate. So at least on this test, the device used by the Respondent has been successful
The Panel noted above that the website to which the contentious domain name resolves is virtually the same as the A & J Robinson & Assoc. First National Real Estate website. It is not, however, exactly the same and the difference is itself significant. The A & J Robinson & Assoc. First National Real Estate website, that is to say, the Respondent’s own official website, has the metatag ‘Real Estate in Harbord’, printed in that way on its home page and presumably a legitimate means of attracting, through search engines, potential clients who are looking for real estate in Harbord. Likewise, the title page to that website is ‘A & J Robinson selling freshwater and harbord real estate.’
The words ‘Real Estate in Harbord’, however, are not used on the website to which the contentious domain name resolves, namely <www.harbordrealestate.com>, for the corresponding words in the same place have been changed on that website to read ‘Harbord Real Estate’. The two versions are clearly visible when the two home pages are printed. The words ‘Harbord Real Estate’ are clearly not being used in any generic sense, as they are the Complainant’s business name, which must have been known to the Respondent and they are being used in that form and style to attract users who are not merely looking for real estate in Harbord, but who are looking for the firm known as Harbord Real Estate.
In other words, in the website to which the contentious domain name resolves, the expression ‘Harbord Real Estate’ is used as a proper noun and as a clear description of a firm, namely the Complainant.
As this change is the only difference between the two websites, it suggests that the change was deliberate and that it was done to give the false impression that <harbordrealestate.com> led to the firm known as Harbord Real Estate, which it does not, as it leads to its rival. Such a deceptive use of a domain name cannot remotely be described as conferring a right or legitimate interest on the person who has registered the domain name.
The Complainant further alleges that the Respondent’s use of the domain name contravenes section 4(1) of the Business Names Act 2002 (NSW). Given the above findings, the Panel does not find it necessary to reach a conclusion on this issue.
For all of these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the Complainant has made out its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limitedv. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(ii)(iii) and (iv). It may be that the Respondent’s conduct falls within paragraph 4(b)(ii), but it is not necessary to decide that issue, as it is very clear that the conduct falls within paragraphs 4(b)(iii) and (iv) and also that it falls within the general meaning of bad faith, irrespective of any of the specific clauses of paragraph 4(b).
The conduct comes within paragraph 4(b)(iii) because the only rational inference that can be drawn from the evidence is that the Respondent registered the contentious domain name primarily to disrupt the business or activities of the Complainant.
The Panel has already discussed the construction of the website to which the domain name resolves and it is not necessary to repeat that analysis here, although it is equally applicable to the issue under discussion. It is apparent from that analysis that the Respondent has used the combined word ‘harbordrealestate’ in his domain name and placed the words ‘Harbord Real Estate’ on his website to attract users who are seeking the firm of that name, i.e. to prevent potential customers of the Complainant finding their way to the Complainant’s website and to head them off instead into another and different website controlled by the Respondent and promoting only the Respondent’s services to the detriment of the Complainant.
Moreover, the Respondent meant and, it must be inferred, intended to attract persons seeking the firm named Harbord Real Estate and not merely people seeking real estate in Harbord. This is shown by the fact that on his own official website, www.ajrobinson.com.au, the Respondent has used the metatag ‘Real Estate in Harbord’, but in exactly the same place on the deceptive site to which <harbordrealestate.com> resolves, he has changed this to ‘Harbord Real Estate’. That change must have been made for some reason and the Panel concludes that the reason was to attract users to the deceptive site by pretending that it was the site of the firm known as Harbord Real Estate.
This conduct clearly represents an attempt to disrupt the Complainant’s business and graphically illustrates the reason why such conduct is outlawed by the Policy.
It is also beyond argument that the conduct of the Respondent comes within paragraph 4(b)(iv) because the Respondent’s whole modus operandi is designed to attract internet users to the Respondent’s website by creating confusion between the Complainant’s Harbord Real Estate and the Harbord Real Estate to which the Respondent is attempting to lure unsuspecting internet users by means of the disputed domain name and the website to which it leads. The confusion that is sought to be created is between the Complainant’s mark HARBORD REAL ESTATE and its affiliation with the Respondent’s website and the products and services offered on it, thus bringing the Respondent’s conduct squarely within the terms of paragraph 4(b)(iv).
It would also be naïve in the extreme to assume that this was being done for any purpose other than commercial gain, for the inference must be drawn that the Respondent’s intention was to trade on this confusion to sell or lease properties to or for the internet users who came to the site and who bought or leased a property on which the Respondent would be paid a commission.
As the circumstances described in paragraph 4(b) are not exclusive, it has long been held that it is also open to a complainant to rely on matters not falling within the literal meaning of the paragraph but which go to show general bad faith conduct. In the present case the whole process engaged in by the Respondent can only be described as bad faith and the Panel so finds. By using the Complainant’s name in the disputed domain name and by constructing the relevant website as he has, it is as if the Respondent built a second entrance to his office, over which he put the sign ‘Harbord Real Estate’, inviting customers into the office under the pretext that they would be entering the office of Harbord Real Estate, when he knew that they would in fact be entering the office of A & J Robinson First National Real Estate. On any test, that is conduct in bad faith.
The Panel also finds that, within the meaning of paragraph 4(b)(iv), the Respondent’s conduct shows that the domain name has been both ‘registered and is being used in bad faith.’
The Complainant as therefore made out the third and final element that it must establish.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <harbordrealestate.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC Sole Panelist
