The Complainant is TT-Line Company Pty LTD., Tasmania, Australia, represented by Page Seager Lawyers, Australia.
The Respondent is Vertical Axis, Inc, Christ Church, Barbados.
2. The Domain Name and Registrar
The disputed domain name, <spiritoftasmania.com> (the “Domain Name”), is registered with Nameview Inc. (The “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2007. On November 28, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 11, 2007 (after 5 reminders from the Center) the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notice of change in registrant information by the Center, the Complainant filed an amendment to the Complaint on December 18, 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 4, 2008. 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 trades in Australia under both its corporate name and its registered trading name, Spirit of Tasmania. It provides ferry and tourism services under and by reference to its trading name, Spirit of Tasmania, and has done so continuously since 1993. Every monohull ship operated by the Complainant on the crossing between Tasmania and mainland Australia has borne the name “Spirit of Tasmania”.
The Complainant operates a trading website connected to its domain name, <spiritoftasmania.com.au>, a website through which it has provided fare and tourism services since 2000.
The Complainant is the registered proprietor of a large number of Australian trademark registrations featuring the name SPIRIT OF TASMANIA. The earliest registrations are device marks, dating back to July 1993 and featuring the words SPIRIT OF TASMANIA as the most prominent element of the mark.
The Domain Name was registered on December 25, 2001. The history of the Domain Name is a complex one. Suffice it to say that at the date of filing of the original Complaint, the registrant appeared on the Whois database as “SPIRITOFTASMANIA.COM c/o Whois Identity Shield” of an address in Vancouver, Canada. The Respondent’s name only surfaced as the registrant of the Domain Name following notification of the Complaint by the Center to the Registrar in November last year.
The Domain Name is currently connected to a pay-per-click revenue earning webpage featuring advertising links to a wide variety of website services. As at September 24, 2007 it was connected to another page featuring advertising links to sites associated with tourism services to and around Tasmania.
The unchallenged evidence of the Complainant is that the Respondent, the Registrar and the entities hosting the website connected to the Domain Name are all associated with one another. The Panel agrees that that seems probable, but whether or not that is so is of little relevance to this decision.
On September 25, 2007, the Complainant sent an email message (receipt of which was acknowledged) via the website connected to the Domain Name. The message drew attention to the Complainant’s rights and sought transfer of the Domain Name. No reply was received.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to variously, its registered device marks, its Spirit of Tasmania trading name and its domain name, <spiritoftasmania.com.au>, which is connected to its trading website.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and produces a wealth of evidence to demonstrate that the Respondent and those associated with the Respondent are domainer entrepreneurs whose sole interest is in commercializing the domain names in their portfolio by using them inter alia to earn advertising revenue of one kind and another.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant cites a number of bases for this contention, including amongst others paragraph 4(b)(iv) of the Policy. The Panel does not find it necessary to address the others.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name features the principal textual element of the Complainant’s registered trademarks and, absent the generic domain suffix, is identical to the Complainant’s trading name, a name in which the Panel is satisfied that the Complainant has built up unregistered trademark rights. The Domain Name is also substantially identical to the Complainant’s <spiritoftasmania.com.au> domain name, which the Complainant uses to connect to its trading website.
The Panel finds that the Domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant has made out a powerful prima facie case. The Respondent has no obvious connection of any kind with Tasmania or the name, “Spirit of Tasmania”, save for the Domain Name itself and the Tasmania-related revenue earning click-per-view website to which the Domain Name was previously connected.
The Complainant asserts that it has not granted the Respondent any licence to use the name, “Spirit of Tasmania”, and contends that visitors to any site connected to the Domain Name are likely to believe that they are visiting an official site of or associated with the Complainant.
The Panel agrees that that is likely to be true of a substantial (i.e. not insubstantial) number of visitors to the site. The evidence put before the Panel by the Complainant has satisfied the Panel that the reputation and goodwill built up by the Complainant in respect of the “Spirit of Tasmania” name is such that a substantial level of confusion of that kind is likely to occur. When visitors arrive at the site, they may or may not appreciate that they have been deceived. Much depends upon the nature of the site to which the Domain Name is connected. The site to which the Domain Name was connected last September was clearly a Tasmania-related site, whereas the current site is not. However, the key point is that the Domain Name will have attracted visitors to the site in the belief that they were going to another site and the Respondent will thereby have gained commercial revenue earning opportunities that he would not otherwise have achieved.
Such a use of a domain name cannot constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Complainant has established that there is a case to answer, but the Respondent has chosen not to provide an answer.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant has put forward a large number of contentions in this regard, many of them relating to the Whois history of the Domain Name, the alleged attempts by the Respondent to conceal its identity, the inter-relationship between the Respondent, the Registrar, various other entities at one time associated with the Domain Name (and/or the sites to which it has been connected) and the individuals behind those entities.
The Complainant has also produced substantial evidence to show that the Respondent and/or those with whom the Complainant alleges the Respondent to be associated have an unenviable track record under the Policy.
However, the Panel has not felt it necessary to explore those avenues. The simple fact is that the Respondent has registered the Domain Name, knowing of the Complainant’s reputation and goodwill in respect of the “Spirit of Tasmania” name (the content of the Respondent’s previous site leaves no room for doubt on that score) and is using it to entice Internet users to its site with a view to making a commercial gain.
Enticing Internet users to a website for commercial gain is not of itself objectionable; here, the vice lies in the fact that the enticement necessarily involves a deception. As indicated above, the Panel is satisfied that a significant number of visitors to the Respondent’s site will be people anticipating that the site is a site of or associated with the Complainant.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
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, <spiritoftasmania.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: February 15, 2008
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