Elders Limited v. Domain Administration Limited/ David Halstead
Case No. D2007-1026
1. The Parties
The Complainant is Elders Limited, Adelaide, Australia, represented by Kelly & Co. Lawyers, Australia.
The Respondent is Domain Administration Limited/ David Halstead, Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <eldersrealestate.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007 listing Whois Privacy Protection Service Inc. as the Respondent. On July 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 18, 2007, eNom transmitted by email to the Center its verification response confirming that Domain Administration Limited/ David Halstead is listed as the registrant and providing the contact details. In response to a notification by the Center conveying the registrant information as indicated by the registrar, the Complainant filed an amendment to the Complaint on July 26, 2007. The Center verified that the Complaint together with the amendment to 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 July 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007.
The Center appointed Jon Lang as the sole panelist in this matter on August 27, 2007. 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.
4. Factual Background
The Complainant is a body corporate registered in Australia and provides a wide range of goods and services including real estate services, financial services, agricultural products and services and telecommunications products and services.
The Complainant is well recognised in the Australian and international marketplace and relies on its goodwill to further its business and to develop new initiatives.
The Complainant has been trading under the name “Elders” since 1839, since when it has acquired significant market recognition and reputation in the “Elders” name throughout Australia and internationally.
The Complainant is the proprietor of numerous Australian trademark registrations in respect of the “Elders” name, including:
No. 620796 ELDERS logo mark in class 35 (agricultural business advisory services), registered since January 20, 1994;
No. 620797 ELDERS logo mark in class 36 (rural financing, rural loans, rural deposits, insurance services of all kinds acting as both agents and brokers), registered since January 20, 1994;
No. 620799 ELDERS logo mark in class 42 (rural merchandising services, buying and selling of livestock, agricultural agents, general stock and station agency services, handling of livestock of all kinds), registered since January 20, 1994;
No. 677589 ELDERS logo mark in class 36 (real estate services, management of real estate, real estate agents, real estate brokers, leasing of real estate, appraisal of real estate), registered since November 7, 1995;
Moreover, in May 2007, the Complainant applied to register ELDERS as a word mark in Malaysia in respect of various goods and services.
Also, the Complainant is the registrant of the following domain names containing the word “Elders”:
<elders.com.au>
<elders.net.au>
<elders.biz>
<elders.mobi>
<eldersweather.com>
<eldersruralbank.com.au> and
<eldersrealestate.com.au>
The Respondent has not participated in these proceedings and nothing is known of its background.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name in issue, <eldersrealestate.com>, is confusingly similar to the trademarks in which the Complainant has rights, as it incorporates the name ELDERS, and that the addition of the words “real estate” do not distinguish the domain name from the name ELDERS. The services provided by the Complainant include real estate services and therefore the additional words “real estate” add to the confusion.
The domain name is being used to display sponsored and unsponsored hyperlinks to entities which provide real estate services in Australia. These hyperlinks included hyperlinks to companies which are direct competitors of the Complainant.
On May 23, 2007, the Complainant sent a cease and desist letter to the Respondent notifying the Respondent of the Complainant’s rights and requesting transfer of the domain name. No response has been received.
There is no evidence that the Respondent used, or made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services, prior to receiving notice of the Complainant’s rights, or the dispute.
The Complainant has not at any time authorised, permitted or licensed the use of the Complainant’s trademarks to the Respondent.
There is no evidence that the Respondent has been commonly known by the domain name at any time.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name and, given the fact that some of the listings on the website to which the domain name resolves were sponsored, the Complainant suggests that the Respondent has obtained some financial reward. The Complainant contends that the use of hyperlinks to direct competitors of the Complainant to other sites illustrates that the Respondent had the intention to misleadingly divert consumers or to tarnish the trademarks of the Complainant.
The Complainant contends that the Respondent is not using the domain name in connection with a bona fide offering of goods and services.
The Complainant also suggests that the Respondent should have known that ELDERS was a trademark and that if the Respondent has failed to conduct prior searches, this constitutes bad faith.
The use of hyperlinks to the Complainant’s competitors in the real estate industry indicates that the Respondent had actual knowledge of the Complainant’s rights in the name “Elders”.
In addition, the use of such hyperlinks suggests a “degree of human review and evaluation” which should have included some effort to avoid infringement of third party intellectual property rights. The Complainant submits that failure to do so is further evidence of bad faith by the Respondent.
The Complainant submits that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant, by diverting Internet users searching for the Complainant’s business to a website comprising hyperlinks to websites of the Complainant’s competitors, and generating income from this process.
The Complainant submits that the Respondent, being aware of the Complainant’s rights in the name “Elders”, including the relevant trademarks, has intentionally attempted to attract Internet users to the Respondent’s website, for commercial gain.
The Complainant submits that the Respondent intentionally used the domain name to mislead Internet users to its site.
It is also submitted that the Respondent had actual knowledge of the Complainant’s rights in the name “Elders”, and that the Respondent therefore registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
Finally, it is submitted by the Complainant that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark ELDERS in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The domain name in issue is clearly very similar to the trademarks of the Complainant. It uses the mark ELDERS in its entirety. It does however also include a generic term “realestate”. But given the Complainant’s sphere of activity, which includes real estate, the addition of this generic term adds to, or creates, a likelihood of confusion. Its inclusion may strengthen in the mind of the Internet user the possibility if not likelihood of the owner of the domain name in fact being the owner of the mark to which it is similar, or some form of association between the Respondent and the Complainant.
In UDRP decision, AT&T Corp. v. Amjad Kausar,
WIPO Case No. D2003-0327, in which a transfer of the domain names was awarded, it was said:
“The domain name <attuniversal.com> combines the Complainant’s mark “ATT” with a generic term “universal”. The domain name <attinternet.com> similarly combines the Complainant’s mark with the generic term “internet”. The combination in each case is calculated to suggest the involvement of the Complainant with the domain names by reference to an adjectival quality “universal” which fairly describes the commercial reach of the Complainant in the telecommunications market and in the case of “internet” is suggestive of a particular branch of telecommunications service in an area where the Complainant is active commercially.
In the circumstances the disputed domain names are inherently similar to the Complainant’s marks and likely to be confusing to the public on face value as suggesting either an operation of the Complainant or one associated with or endorsed by it.”
For similar reasons, the domain name in issue is confusingly similar to the mark ELDERS in which the Complainant clearly has rights. This element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, the Respondent is not known by the domain name in issue and there is no evidence advanced by the Respondent of legitimate noncommercial or fair use. In the absence of contrary evidence, this Panel can only assume that the Respondent derives some commercial benefit from the website to which the domain name in dispute resolves given the links to commercial third party sites that one finds there.
A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. But promoting competing goods or services using a domain name confusingly similar to a complainant’s mark is not a bona fide offering of goods or services. There is ample support for this proposition. For instance, in Philip Morris USA Inc. v. n/a,
WIPO Case No. D2004-0462, it was said
“To offer competing brands for sale using a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy: See Pfizer Inc v. The Magic Islands,
WIPO Case No. D2003-0870 (December 31, 2003); Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,
WIPO Case No. D2000-1774 (February 26, 2001).”
In UDRP decision, Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774, referred to earlier, in which transfers were ordered, it was said:
“On the facts of this case, it is clear that, under either approach, Respondent lacks a legitimate interest. That is because Respondent appears to have used at least the <nikoncamera.com> domain name to sell both Nikon products and goods of other manufacturers who compete directly against Nikon. See Mariah Boats, Inc., supra (finding no legitimate interest in the use of a mark in a domain name that “sells competitive products of other manufacturers”); Antera S.p.A v. Antera, Inc.,
WIPO Case No. D2000-0689 (September 28, 2000) (when a respondent’s proposed activities threaten a complainant with the possibility of competing against a confusing site, the respondent has not met its burden of showing a legitimate use). Even under the minority view, this use of a trademark owner’s mark to promote and sell competitive goods does not constitute a legitimate use.”
The Respondent is not licensed in any way by the Complainant – there is no affiliation at all, and the Complainant has more than satisfied a prima facie case that the Respondent lacks rights or legitimate interests in the domain name in issue. The Respondent therefore carries the burden of demonstrating such rights or legitimate interests but has failed to do so. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its 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 website or of a product or service on the website.
In UDRP decision Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304 it was said;
“Using a domain name “to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors,” is evidence of bad faith. Royal Bank of Canada v. Chan,
WIPO Case No. D2003-0031 (March 5, 2003).”
This appears to be the position in this Complaint.
“It has been held that actual or constructive knowledge of the Complainant’s rights in the trademarks is a factor supporting a finding of bad faith (see Trip.com v. Daniel Deamone,
WIPO Case No. D2001-1066; Expedia, Inc. v European Travel Network,WIPO Case No. D2000-0137). It is obvious from the facts in issue that the Respondent had actual knowledge of such rights.
Previous cases have also established that the deliberate choice and registration of a famous mark as domain names suggests, in the absence of an explanation from the Respondent, that the registrations were made in bad faith.”
Given the high profile of the Complainant’s mark, and the inclusion of the words “realestate” in the domain name, it is likely that the Respondent had knowledge of third party rights existing in the mark ELDERS and that such third party rights owner’s business included real estate activity.
Given the finding of confusion and the circumstances of this Complaint, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, which contains links to websites of competitors, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of services available via the website, and accordingly this Panel finds, for the purposes of the Policy, that the domain name in issue was registered and is being used in bad faith.
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 <eldersrealestate.com> be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: September 13, 2007
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