The Complainant is Mighty Men Pty Ltd trading as Opalshop, Australia, represented internally.
The Respondent is R.D. Opal Pty Ltd, Australia, self-represented.
The disputed domain name <opalshop.com> (the “Disputed Domain Name”) is registered with Brandon Gray Internet Services Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 27, 2020, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. On June 4, 2020, the Center received the Respondent’s request for extension of the Response due date. Taking into account the reasons mentioned in the Respondent’s latter communication, the Center in accordance with paragraph 5(e) of the Rules granted the extension of time until June 27, 2020. The Response was filed with the Center on June 27, 2020. The Center received email communications on June 28 and 30, 2020, from the Complainant commenting on the Respondent’s previous emails. The Center also received an email communication on July 3, 2020 from the Respondent.
The Center appointed John Swinson as the sole panelist in this matter on July 2, 2020. 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 Complainant is Mighty Men Pty Ltd, a company incorporated in Australia. The Complainant operates under the business name Opalshop, which has been registered since January 20, 2000. According to the Complainant, the Complainant has been a retailer of gemstones and jewellery in Australia since 1983. The Complainant also says that it has operated a global online store using the domain name <opalshop.com.au> since 1999, and is also the registrant of the domain names <opalshopaustralia.com> and <opalshopaustralia.ch>.
The Complainant is the owner of trade mark application number 39553913 for OPALSHOP in China, filed on July 10, 2019 in class 35. According to the Complainant, the Complainant has also developed significant goodwill in, and owns, the common law trade mark “OPAL SHOP”.
The Respondent is RD Opal Pty Ltd, a company that was formerly incorporated in Australia (but has now been deregistered). A Response has been filed by Mrs. Deskoski, a former director of the Respondent. According to the Response, the Respondent registered the Disputed Domain Name in 1998, originally as a landing page for the commercial shopfront of the Respondent. As at the date of this decision, the Disputed Domain Name redirects to the website of an opal jewellery business called “Black Star Opal” (at “www.blackstaropal.com”), which is an online store also run by Mrs. Deskoski and her husband. According to the Response, Mrs. Deskoski mistakenly thought that the Disputed Domain Name was registered to her personally, and not the now-deregistered Respondent. Mrs. Deskoski and her husband previously lived in in the mining town of Lightening Ridge and were opal miners, and for a number of decades have operated a physical retail store called The Opal Centre, located at The Big Banana attraction in Coffs Harbour, New South Wales, which sells opals (“www.theopalcentre.com”).
The Complainant makes the following submissions.
Identical or Confusingly Similar
By reason of the length of time that the Complainant has been operating, the Complainant has developed significant goodwill in (and owns) the common law trade mark “OPALSHOP” in Australia. The Complainant also owns the OPALSHOP logo device used on its website for 20 years and has applied for the word mark OPALSHOP in China.
Ignoring the “.com” generic Top-Level Domain (“gTLD”), the Disputed Domain Name is identical to the Complainant’s registered name and unregistered trade mark or, at the very least, confusingly similar to it.
The Respondent is an Australian company that was voluntarily deregistered in July 2016. According to the WhoIs search, the Respondent’s address is in the state of New York, United States of America (“United States”). There is no record of any entity name containing the Respondent’s name in the state of New York, United States.
Until recently, the Disputed Domain Name was forwarded to the website at <blackstaropal.com>, which appears to be an online store selling opals under the name “The Opal Centre”. The Disputed Domain Name recently began to resolve to a blank page containing “This is the default page for opalshop.com”. That page is also now generating a malware warning.
The Complainant has not authorised the Respondent or any similarly named person, firm or company to use the Complainant’s name or trade mark, nor to divert consumers looking for the Complainant’s website to any other website. A deregistered company cannot lawfully carry on business in Australia and it can therefore have no lawful entitlement to use the Complainant’s business name or trade mark.
A deregistered entity cannot possibly have any rights or legitimate interests in a current domain name, and certainly cannot remain as registrant of the Disputed Domain Name. The 2018 and 2020 renewals of the Disputed Domain Name were invalid as a deregistered entity is not eligible to hold a domain name licence in the “.au” country code Top-Level Domain (“ccTLD”).
The renewal of the Disputed Domain Name by a person or persons unknown but in the name of the Respondent after its 2016 voluntary deregistration is per se bad faith.
By redirecting the Disputed Domain Name to another website, the Respondent (or somebody masquerading as the Respondent) is disrupting the Complainant’s business within the meaning of paragraph 4(b) of the Policy.
Someone masquerading as the technically non-existent Respondent has taken over the Disputed Domain Name but, instead of doing so by way of a transfer, is seeking to cloak itself in the relative longevity of the Disputed Domain Name’s registration to avoid a finding of bad faith registration and use. The last two renewals cannot be continuing renewals by the same registrant if it ceased to exist as a corporate entity in October 2016 (if an Australian entity) or does not exist as the Buffalo NY, USA entity recorded as registrant.
The Panel can see from the evidence that someone masquerading as the Respondent intentionally attempted to attract for commercial gain, Internet users to their website or other online 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 Respondent’s website or location, namely, opal gemstone and jewellery products.
The Complainant also relies on the Respondent’s use of a privacy shield, and/or a false name and address in Buffalo NY, USA.
The Respondent has also failed to respond to the Complainant’s previous communications to the Admin Contact for the Disputed Domain Name.
The Respondent makes the following submissions.
The Respondent registered the Disputed Domain Name in or around 1998, and the website at the Disputed Domain Name remains live today. The website at the Disputed Domain Name was originally designed as a landing page for the commercial shopfront of the Respondent. At the time, Mr. and Mrs. Deskoski (“the Deskoski’s”) were the directors of the Respondent. The Respondent focused on opal mining, wholesaling and retailing. In 1985, the Respondent opened an opal shop called RD Opal Centre. This business is still trading today, and has an excellent reputation in the industry.
The Deskoski’s deregistered the Respondent as a company in 2016 because it was a family trust and was no longer needed to financially support the Deskoski’s children. Mrs. Deskoski incorrectly thought that the Disputed Domain Name was registered in her personal name, and not in the name of the Respondent company. Mrs. Deskoski has personally paid to renew the Disputed Domain Name for over 20 years, with the continued objective of promoting the opal shop.
The Disputed Domain Name is now being used to redirect to the Deskoski’s retail store. This is partly due to the domain name value, and also to shepherd older customers toward the new website (to establish brand continuity) as the physical retail shop has moved to a new location, and the address on the old website at the Disputed Domain Name is no longer correct. This purpose, and the original purpose of the website at the Disputed Domain Name (as an information site) were not intended to affect the Complainant’s business. The Disputed Domain Name was registered and the website at the Disputed Domain Name was established before the Complainant registered <opalshop.com.au>. At the time of registering the Disputed Domain Name, the “.au” ccTLD was not available.
The Complainant’s managing director first contacted the Deskoski’s in 1998. The Parties came to an understanding that the Respondent would use the term “opalshop.com” and that the Complainant would use “opalshop.com.au” as their respective branding on their respective websites. After the Complainant reneged on this agreement, the Respondent changed references to “opalshop.com” on its website back to “opalshop”.
On June 17, 2019, the Complainant’s managing director contacted Mrs. Deskoski asking to buy the Disputed Domain Name for AUD 1,000. When Mrs. Deskoski declined the offer, the Complainant’s managing director said that the Complainant may commence legal proceedings.
In the past 20 years, the Deskoski’s and/or the Respondent have only received two emails that were intended to be addressed to the Complainant’s business.
Prior to receiving the Complainant’s communication, the Deskoski’s were in the process of redesigning the website at the Disputed Domain Name to specialise in the sale of loose opals and rough opals, not jewellery. Mrs. Deskoski believes that this is why the Complainant has instigated these proceedings.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
The Response was filed with the Center on June 27, 2020. The Response does not fully address the elements of the Policy or contain the required certification (see paragraph 5(viii) of the Policy). Despite this, the Panel has taken into account parts of the Response relevant to this proceeding in making its decision. The Panel considers that the deficiencies are not material due to the Panel’s finding on element one below.
On June 28, 2020, the Complainant sent an email communication to the Center in response to a former director of the Respondent’s email on June 4, 2020. On June 30, 2020, the Complainant made various submissions in response to the Response. A former director of the Respondent then sent an email communication to the Center on July 3, 2020.
Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the Parties. There is no provision in the Rules for a party to file additional unsolicited submissions.
Unsolicited supplemental filings are generally discouraged. A party submitting an unsolicited supplemental filing should show some exceptional circumstances as to why it was unable to provide the information contained therein in its complaint or response (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel has reviewed the supplemental filings and has decided to admit them in this instance. Having said this, the supplemental filings were mostly irrelevant and carried little weight.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant is relying on a Chinese trade mark application for OPALSHOP (device) in class 35 and common law trade mark rights in “OPAL SHOP”.
The Complainant has not provided any evidence of the claimed trade mark rights for OPAL SHOP in China (for example, trade mark application details or registration certificates). The Internet database for Chinese Trade Marks reviewed by the Panel indicates that the application has not yet proceeded to registration. This application, for a device mark, was filed in July 2019.
The Complainant has not provided any reasons as to why a pending trade mark application should confer trade mark rights for the purposes of the Policy. The Complainant refers to owning the word mark OPAL SHOP in China but did not make it clear to the Panel that this trade mark application has not proceeded to registration, and that it is not a word mark. As far as the Panel is aware from the record presented, the Complainant does not have a trade mark registration for OPAL SHOP or similar.
A pending trademark application does not by itself establish trade mark rights within the meaning of UDRP (see section 1.1.4 of WIPO Overview 3.0). This is consistent with previous UDRP decisions where panels have found that “unless such applications have proceeded to grant they do not constitute trademarks in which a complainant has UDRP-relevant rights” (Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349).
In Rodale, Inc. v. Christianne Schelling, WIPO Case No. DBIZ2002-0130 the Panel found that “the broad consensus in domain name dispute resolution is that a trademark application alone is not sufficient evidence of mark rights in a disputed domain name”.
To establish unregistered or common law trade mark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services (see RoofPro, LLC v. Privacydotlink Customer 774656 / Blue Nova Inc., WIPO Case No. D2018-0883 and section 1.3 of WIPO Overview 3.0).
Relevant evidence demonstrating such acquired distinctiveness includes a range of factors such as: the duration and nature of use of the mark; the amount of sales under the mark; the nature and extent of advertising using the mark; and, the degree of actual public recognition.
A complaint should include specific evidence supporting assertions of acquired distinctiveness.
In this instance, the Complainant has stated that the Complainant has been operating under the name Opalshop since 1983. Apart from this broad statement which the Panel accepts as true, the Complainant has not provided any evidence to support any of these factors so as to show its reputation giving it any acquired distinctiveness in the claimed mark. For example, the Complainant has not provided any sales figures, marketing material, figures relating to number of customers, or any evidence (for example, media report or articles) to show that they are a known brand.
Further, the term “opal shop” is descriptive of the Complainant’s services, so there is a greater onus on the Complainant in this case to present evidence of acquired distinctiveness/secondary meaning (see Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083).
The Panel has reviewed the Complainant’s website at “www.opalshop.com.au”. This website includes a logo that comprises the words Opal Shop in fancy fonts and colours (the same as the logo which is the subject of the Chinese trade mark application). There is no use of the TM or ® symbol on this website to show a claim to unregistered or registered trade mark rights.
The Complainant has failed to demonstrate trade mark rights in the term OPAL SHOP to support its Complaint. The Complainant has not established the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Threshold Issue – Respondent Capacity
The Complainant argues that:
- the Respondent was deregistered as a company in 2016; and
- on deregistration, the Disputed Domain Name vested in ASIC (an Australian government regulator); and
- accordingly, the Respondent could not possibly have any rights or legitimate interests in the Disputed Domain Name.
There is some support for the Complainant’s submissions. In Cash Converters Pty Ltd v. Casshies Investments Pty Ltd, WIPO Case No. DAU2013-0040 (“Casshies”), the panel proceeded on the basis that the disputed domain name in that case vested in ASIC on the date that the respondent was deregistered, and therefore ASIC may have been the correct “holder” of the domain for the purpose of the auDRP proceeding. The Panel in Galvin Green AB; Tomas Nilsson v. John Waugh, Buffalo Technology Solutions Pty Ltd, WIPO Case No. DAU2010-0011 (“Galvin Green”) also made a similar finding. Neither party referred to these decisions in their submissions.
Both of these decisions were made under the auDRP. However, the decisions relate to matters of Australian law and the Panel considers that they are relevant to this decision because the Respondent company was registered (and deregistered) under Australian corporations law. For present purposes, the Panel will also proceed on the basis that the Disputed Domain Name vested in ASIC on the date that the Respondent was deregistered. However, the Panel does not agree that this automatically results in a finding in favour of the Complainant on this element.
In Casshies, the Panel found that upon deregistration, the rights and interests of the respondent devolved to ASIC which took the disputed domain name subject to the same rights and interests of the company. In Galvin Green, the Panel found that because the respondent company was already deregistered at the time the respondent purported to register the domain name in the company's name, that company plainly could not have any rights or legitimate interest in the domain name, as it had no legal existence.
The Disputed Domain Name was registered well before the Respondent was deregistered as a company. Accordingly, the Panel finds the reasoning in Casshies relevant, and the question for the Panel to consider is whether the Respondent had rights or legitimate interests in the Disputed Domain Name up to the time of its deregistration.
Based on the evidence before the Panel, the Respondent has genuinely used the Disputed Domain Name in connection with its dictionary meaning, and not to trade off the Complainant’s rights, such as they are. Since its creation, the Disputed Domain Name has been used as an informational website about the Respondent’s opal shop shopfront, and then to redirect to an online store, also selling opal products.
The Complainant has not established any common law rights in the name OPAL SHOP. Although the Complainant asserts that it has been operating under OPAL SHOP since 1983, the Complainant did not register a business name containing OPAL SHOP until 2000, and did not register its primary domain until 1999, both after the registration of the Disputed Domain Name in 1998. The Respondent has also been operating in the opal industry since 1985. There is no evidence that the Respondent registered the Disputed Domain Name to trade off the Complainant’s rights, or that the Respondent’s offering of goods or services from the website at the Disputed Domain Name was not bona fide.
In light of the Complainant’s lack of evidence of use and reputation, unless there is persuasive evidence that the Disputed Domain Name was selected opportunistically by the Respondent to create confusion and exploit the Complainant’s mark, the Panel would conclude that the Respondent has a legitimate interest in using the Disputed Domain Name, as it is of descriptive English words, for advertising or other commercial purposes. Thus, the determination of legitimacy in this case is intertwined with the question of bad faith, which is also addressed below in connection with the third element of the Policy. See for example, Tax Analysts v. eCorp, WIPO Case No. D2007-0040.
If the Panel were required to decide this element, the Panel would find that the Respondent had rights and legitimate interest in the Disputed Domain Name up to the time of its deregistration, and upon deregistration those rights and interests devolved to ASIC.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
Due to the Panel’s findings on the first element of the Policy, the Panel is not required to decide this element. However, even assuming the Complainant proved ownership of common law trade mark rights in OPAL SHOP, the Panel notes that there is insufficient evidence submitted by the Complainant to demonstrate bad faith registration and use on the part of the Respondent.
The evidence that is before the Panel strongly suggests that the Respondent registered the Disputed Domain Name for the purposes of the Respondent’s opal-related business, and not to trade off any reputation of the Complainant.
Paragraph 15(e) of the Policy states:
“… If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
It appears to the Panel that the Complainant has omitted material evidence from the Complaint. For example, according to the Response, the Complainant made an offer to buy the Disputed Domain Name from the Respondent in 2019. The Complaint is silent on this. The Complaint misrepresents the Chinese trade mark application as a word mark, and also did not make it clear to the Panel that the application had not proceeded to registration. The Complaint has also been drafted in a way that gives the impression that the Complainant does not know who is operating the website at the Disputed Domain Name, when (according to the Response) there have been various prior dealings between the Parties.
The Panel’s view is that the Complainant is seeking to use the UDRP to attempt to opportunistically obtain a domain name that has been legitimately used for over 20 years in connection with its ordinary meaning. The Complainant’s conduct verges on bad faith, appears to have been brought to harass a known competitor, and in the Panel’s view constitutes an abuse of the administrative proceeding.
For the foregoing reasons, the Complaint is denied.
Date: July 16, 2020
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