WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Woolworths Limited v. Joan Kerr

Case No. D2011-1826

1. The Parties

The Complainant is Woolworths Limited of Bella Vista NSW, Australia, represented by Mallesons Stephen Jaques, Australia.

The Respondent is Joan Kerr of Mississauga, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <woolworthscloud.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011. On October 25, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 25, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2011. On November 25, 2011, the Center received email communication from the Respondent filing its Response, of which the Center acknowledged receipt.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 29, 2011. 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.

In the exercise of his discretion under the Rules the Panel decided to accept and consider the Respondent’s email communication of November 25, 2011, which was in the form of a Response, albeit filed two days after the Center’s notification of the Respondent’s default.

4. Factual Background

Undisputed or evident facts include the following: the Complainant is a long-established and major commercial retailer in Australia and holds numerous Australian trademarks incorporating the word “Woolworths” in a large number of classes of food, clothing, beverage, and household products; the first of these trademarks was registered in 1988 and the most recent in 2007 (see Annex 7 to the Complaint.); The Complainant also operates at least one website at the domain name <woolworths.com.au>, in connection with its business. The disputed domain name was registered in April 2011. The Complainant’s solicitors sent the Respondent a cease and desist letter, demanding the transfer of the disputed domain name, on August 18, 2011, which engendered a series of exchange communications with the Respondent and an individual, apparently resident in Australia, named Mr Leo. Kerr. The tenor and impact of these communications is controversial, but they did not lead to a settlement of the dispute.

Further facts or factual assertions, some of which are also disputed, are discussed below.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name incorporates the entirety of its trademarked name and that the addition of the word “cloud” does nothing to dissipate the evident confusion with the same. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not known by that name and has received no license or permission to use it. Accordingly, the Complainant submits that it has met its prima facie burden on this part of the Policy’s test. In this connection the Complainant goes further and alleges that, in order to give a semblance of rights and assert that it was involved in the legitimate sale of goods and services, the Respondent, after having received a cease and desist letter, proceeded to register the domain name <uniquecloudinc.com> as a putative basis or justification for its use of the disputed domain name, which incorporates the word “cloud”. The Complainant asserts this to be an attempt by the Respondent to falsify a legitimate interest in the disputed domain name. This, together with an announced, but apparently not effected, transfer of the disputed domain name and the use of a domain name “proxy service” is also, the Complainant asserts, evidence of bad faith use. In essence, the Complainant submits that “the Respondent has taken active steps to conceal its true identity, which is evidence of bad faith”, and cites A.H. Belo Corporation v. King TV and 5 Kings,WIPO Case No. D2000-1336 in support. The Complainant further alleges that the Respondent acquired the disputed domain name for purposes of sale in excess of its out of pocket costs in registering the disputed domain name. In the alternative the Complainant asserts that the disputed domain name “was registered and is being used with the intention of causing confusion with the Woolworths Marks and the Complainant’s domain name to divert Internet traffic otherwise rightfully bound for the Complainant”, and for illegitimate profit.

For all these reasons the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not timely reply to the Complainant’s contentions but, as noted above, the Panel has decided to admit its late-filed Response.

The Respondent does not reply to all of the Complainant’s arguments and factual allegations, but rather submits a number of, somewhat disparate, points in its Response.

Notably, the Respondent alleges that the Complainant is “bereft of any international rights as there are multiple unassociated companies throughout the world (some in exactly the same industry) that have the same name i.e. Woolworths.” In particular there are Woolworth entities, which the Respondent states are spun off from the original F.W. Woolworths name, in Germany, United Kingdom of Great Britain and Northern Ireland, Cyprus and Mexico. The Respondent also repeatedly points out that the Complainant has no connection with the original F.W. Woolworths. The Respondent thus submits that it cannot be argued that the disputed domain name causes any confusion with the Complainant’s business as there are so many Woolworths entities and that a site providing IT/Cloud services on a small scale could not be confused with a large Australian chain of supermarkets. As to its legitimate interests in the disputed domain name the Respondent states that the original owner of the name was an Australian company and that there exists a “family connection” between the original owner and the current owner—which the Response identifies as being the Respondent. The Respondent then states that upon receipt of a desist letter from the Complainant it first offered to transfer the disputed domain name and requested a small donation to an Australian environmental charity but, having not heard back from the Complainant, the original owner sold the disputed domain name to the Respondent to “protect their interests from litigation”, and that it is still the intention of the Respondent and the original owner to utilize the disputed domain name for the original purpose of online “cloud” services. The Respondent concludes its response as to rights in the disputed domain name by asserting that the issue is “irrelevant” as the Complainant does not hold “exclusivity with [sic] the name Woolworths and in fact registered the name for exactly the same reasons as the web name has been registered—its global familiarity.”

As to bad faith registration and use the Respondent reiterates some of the points above, asserting that there can be no confusion between the Complainant’s business and the Respondent’s intended cloud computing services purpose for the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the entirety of the Complainant’s name and registered trademarks; the addition of the word “cloud”, while indicative of cloud computing, does not remove the initial confusion and would, due to confusing similarity likely lead an Internet user to conclude that the site is connected to “Woolworths”. The Respondent’s defense that there is no confusion because there are many other persons in countries other than Australia that have rights to the “Woolworths” name fails for a number of reasons. First, the Respondent’s right to and use of the disputed domain name is not alleged to derive from the purported other “Woolworth” companies; the argument would likely be relevant if this dispute were between two such parties with rights in the “Woolworths” name, but that is not the case here. Furthermore, it is not correct that the Complainant needs to demonstrate “exclusive” rights to a name or a worldwide trademark registration of the name in order to demonstrate rights and confusing similarity under the Policy. See, e.g.No Zebra Network Ltda v. Baixaki.com Inc., WIPO Case No. D2009-1071. These points are also highly pertinent to the determination of rights under the second leg of paragraph 4(a) of the Policy, discussed immediately below.

The Panel concludes that the Complainant has proven confusing similarity under paragraph 4 (a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any proper basis for its rights or legitimate interests in the disputed domain name containing the Complainant’s trademarked name. Nor, as determined above, is there any evidence that the Respondent derives any rights in the disputed domain name due to alleged use by others of like “Woolworths” trademarks or names outside Australia. The Respondent’s assertion that it obtained the disputed domain name through a family connection to an Australian company and person (presumably the Mr. Kerr who communicated with the Complainant) is confusing and inconsistent, but does not on the basis of the Respondent’s own assertions confer any rights or legitimate interest in the disputed domain name on the Respondent, as none are alleged for the purported transferor. The Respondent’s repeated assertion that it registered the disputed domain name containing the word “Woolworths” due to its “global familiarity” is also unavailing in conferring the Respondent rights under the Policy.

The second leg of the test of paragraph 4(a) of the Policy is, accordingly, also proven by the Complainant.

C. Registered and Used in Bad Faith

The Complainant has asserted a number of bases for its claim that the Respondent registered and used the disputed domain name in bad faith; they are adumbrated in Section 5A, above. The Respondent’s essential arguments are that it was not in bad faith as it intended to use the disputed domain name for cloud computing services that are entirely unrelated to the Complainant’s large Australian retail operations. As to bad faith registration it is clear from the Respondent’s own admissions that the disputed domain name was registered with the trademarked word “Wollworths” due to its “global familiarity”; it is difficult to accept that the Respondent did not conceive that it was a name in which other parties had existing rights, even if one accepts the Respondent’s assertion that it had no knowledge of the Complainant’s Australian operations and trademarks. That assertion is, furthermore, undercut by the Respondent’s explanation that it acquired the disputed domain name from an Australian original registrant. The Panel adds that there is no necessary or plausible reason to couple the name “Woolworths” with the cloud computing services that the Respondent claims—but has been unable to prove with any tangible evidence—was intending to offer through the disputed domain name. This last factor is substantial indicia of bad faith use as well.

Further as to bad faith use the Panel accepts the Complainant’s contention, backed by substantial evidence, that the Respondent made efforts to conceal its identity, transfer or assert transfer of the disputed domain name once it became contentious, and sought to manufacture a legitimate basis for its use of the disputed domain name after it had received the Complainant’s cease and desist letter. These actions are, on the facts here, further evidence of bad faith use. See generally, A. H. Bello Corporation, supra; Ustream. TV Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598. The Respondent’s Response does not provide evidence or convincing explanations of its good faith use of the disputed domain name and there is little or nothing in the record of this case that is consistent with a good faith use of the disputed domain name by the Respondent. It is accordingly not necessary to decide the Complainant’s alternative allegations of bad faith use by improper competition with the Complainant and an intent by the Respondent to make use of the disputed domain name for profitable sale, although there is indicia and evidence for both claims.

The Panel thus finds that the Complainant has proved bad faith registrations and use within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <woolworthscloud.com> be transferred to the Complainant.

Nicolas Ulmer
Sole Panelist
Dated: December 1, 2011