supre.com.au

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Supre Pty Ltd v. Paul King

Case No. DAU2004-0006

1. The Parties

The Complainant is Supre Pty Ltd, c/ Middletons Lawyers, Melbourne, Victoria of Australia, represented by Middletons Lawyers, Australia.

The Respondent is Paul King, Landsdale, Western Australia, of Australia.

2. The Domain Name and Registrar

The disputed domain name <supre.com.au> is registered with TPP Internet.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2004. On November 3, 2004, the Center transmitted by email to TPP Internet a request for registrar verification in connection with the domain name at issue. On November 19, 2004, TPP Internet 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2004.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on December 16, 2004. 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 well-known manufacturer and retailer of clothing and fashion accessories in Australia, targeted at the female youth market. Its website discloses that it began its operations in 1984, has expanded considerably and now operates over 100 stores that are situated in every State of Australia, the Australian Capital Territory and the Northern Territory. It also has nine shops in New Zealand and appears to be still expanding. The stores and the products all carry the name SUPRÉ. The products are designed and developed in Australia and some 50 % of them are manufactured in Australia. It is clear that the name SUPRÉ itself is a very significant part of the business as not only is it carried in the name of the stores and the products, but the company also produces a magazine called SUPRÉ ME, plays music in its stores under the name Radio Supre and has a club named Supre A-List which its customers may join. The name is also used in the Complainant’s domain name, which is <supre.au.com> which the Complainant uses for on-line sales and to disseminate to its customers the latest news on products and developments in the social milieu in which they move.

The Complainant is the registered owner of three Australian trademarks, each consisting of the word ‘SUPRÉ’, in Class 25 for clothing, footwear and headgear and Class 35 for wholesale and retail services, advertising and marketing services. The earliest of the trademarks was registered on March 23, 1990. The name SUPRÉ used in the trademarks is, of course, the Complainant’s own company name as well as its brand name and the name that it uses to promote its products, services, magazine and club.

The Respondent registered the domain name, <supre.com.au>, with the Registrar, TPP Internet, on February 1, 2001, and it was most recently renewed on May 11, 2003. It is that domain name which is at the heart of the present Complaint.

The Respondent was the registered owner of a Business name, Supre Marketing, which he registered on November 14, 2000, but that registration was cancelled on December 19, 2003, and the Complainant has shown by Annexure G to its Complaint that, as at October 15, 2004, the registration had not been renewed. Other searches conducted on behalf of the Complainant and evidenced in Annexure I to the Complaint, show that there is no listing for a business in Western Australia by the name ‘Supre Marketing.’

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the contentious domain name <supre.com.au> 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 the Policy, the domain name is identical or confusingly similar to the Complainant’s name and its trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered or 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 the domain name <supre.com.au> is confusingly similar to the trademark ‘SUPRÉ’. It points to the obvious similarity between the two expressions and the likelihood of confusion between them. It also maintains that the word ‘ supre’ is distinctive in that it is not a word in the English language. It relies on this fact to argue that there being no ready explanation as to why the Respondent would choose such an unusual and distinctive word for its domain name, the explanation is that its choice was a deliberate attempt to trade off the Complainant’s trademark.

The Complainant also argues that the confusion comes, in effect, from the fact that the Supre business is both well- known and known to be Australian; it is said therefore that users seeking it on the Internet would naturally expect that its domain name would be <supre.com.au> and that if they typed that name , they would go to the Complainant’s domain. As they would in fact be directed not to the Complainant’s site but elsewhere, that result has come about because the domain name chosen by the Respondent is unique to the Complainant and confusingly similar to the Complainant’s trademark.

The Complainant then contends, to establish the second element, that it is simply a matter of fact that the Respondent has no rights or interests in the domain name, because he does not conduct a business under that name, is not commonly known by it and does not use it in connection with a bona fide offering of goods and services.

The Complainant also makes a more fundamental point under this heading, for it alleges that the Respondent is no longer eligible to hold the domain. This is said to be because the Respondent cannot meet any of the eligibility criteria specified in Schedule C of the au Domain Name Eligibility and Allocation Rules for the Open 2LDs, as he is neither a company nor trading under a registered business name.

Finally, the Complainant alleges that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent has given false contact details, at least in the sense that they are no longer accurate and that he has allowed them to remain on the record. It is therefore argued that the Respondent has been passively holding the domain name to prevent anyone else from registering it. It is also contended that the domain name has been used to divert traffic to other sites, from which the inference may be drawn that he is doing this to ensnare potential customers for those sites for commercial gain to himself.

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.

It is appropriate therefore to note that the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence. In fact, Paragraph 4 of the Policy expressly provides that in administrative proceedings ‘ …the complainant bears the onus of proof ’and it follows that, as the proceeding is a civil one, the standard of proof must be the balance of probabilities. The onus of proof clearly remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

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.

However, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, Paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.

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:

A. That the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain name; and

C. That the domain name has been registered or subsequently used in bad faith.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The essential question here is whether the domain name <supre.com.au> is identical or confusingly similar to the trademark ‘SUPRÉ.’ Even if a domain name is not identical with a trademark, it is sufficient if the domain name is confusingly similar to it. The Panel has concluded that the domain name is confusingly similar to the trademark. That is so, for the following reasons.

First, the domain name contains the entire wording of the trademark and, accordingly, the domain name and the trademark consist essentially of the same word.

Secondly, the two are, with certain minor exceptions to which the Panel will shortly refer, visually the same.

Thirdly, it is now well- established that in determining the question whether names are identical or confusingly similar, it is invalid to argue that there is a real difference between the two, simply because a domain name inevitably carries a suffix, such as ‘.com’. Thus, in Société des Hôtels Méridien v. ABC-Consulting, WIPO Case No. D2004-0792, an Administrative Panel had to decide if the domain name ‘ <lemeridien.com> was confusingly similar to the trademark LE MERIDIEN. The Panel decided that they were confusingly similar and in the course of so deciding, observed that ‘ …in accordance with many decisions rendered under the UDRP (Uniform Dispute Resolution Policy) the addition of the extension indicating the gTLD ‘. com’ and the use of the accent on the letter ‘e’ are both irrelevant in determining the similarity of the domain name with a trademark and avoiding confusion.’ The Panel also adopted the submission of the Complainant to the effect that the view just expressed ‘… has been asserted by several WIPO decisions and notably in Accor v. Winston Minor, WIPO Case No. D2003-1002.’ That being so, it is clear in the present case that in determining if there is an identity or confusing similarity between <supre.com.au> and ‘ SUPRÉ’, the suffix or extension ‘com.au’ in the domain name must be disregarded. Omitting it from the domain name, the comparison must then be made simply between ‘supre’ and ‘SUPRÉ’. The issue need only be stated thus to show how confusingly similar the two expressions are.

Fourthly, as will already have been seen from the decision in the Le Meridien Case, the accent on the ‘e’ of ‘SUPRÉ’ should also be disregarded. Of course, in the Le Meridian Case, the accent that was disregarded had been added to the domain name, although it was absent from the trademark, which was in capital letters, whereas in the present case it is present in the trademark, but omitted from the domain name. The principle, however, is the same and the principle is that the Panel should not be diverted by minor issues, but should look at the substance of the two expressions.

In any event, the matter is settled and was well -expressed by the Administrative Panel in Kelemata S.p.A. v. Mr. Bassarab Dungaciu,WIPO Case No. D2003-0849 where the Panel had to decide if the domain name ‘kelemata.org’ was confusingly similar to the trademark ‘Kelémata’, where, as in the present case, the accent was in the trademark, but not in the domain name. The Panel decided that the domain name was confusingly similar to the trademark, despite the omission of the accent when the domain name was being created. On that issue, the Panel said:

‘The trademark is included in its entirety into the domain name under dispute with the exception of the acute accent on the second ‘e’. This omission is due to a technical reason because, as every body knows it is not possible to register a domain name with accents. An exhaustive history of previous cases states that the registration as a domain name of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark.’

That position was established in 2000 in Esteé Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, which was referred to with approval in Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970 and is often cited.

Accordingly, applying these consistent decisions, the accent on the trademark and the suffix ‘com.au’ should both be disregarded and when that is done the true comparison is between two identical words. There can then be no doubt but that they are confusingly similar.

The only reason why they are not identical is that the trademark would usually be seen printed in upper case, whereas the domain name would be printed in lower case.

The Panel also accepts the Complainant’s further argument, which is, in effect, that this case goes further than a mere similarity between the two names. The confusion comes from the fact that the Respondent has chosen a domain name which, because of the renown of the Complainant in the fashion industry and among its customers, people would expect it to be the domain name of the Complainant.

So the Respondent has chosen a domain name which is confusing, simply because it is a name that the Complainant had publicly used since 1984, and which has become associated with its business.

That is significant in the present case because, unlike the Uniform Domain Name Dispute Resolution Policy, the .au Domain Name Dispute Resolution Policy prohibits identity or confusing similarity with a ‘name’ as well as with a trade or service mark. ‘Name’ is then defined to include a complainant’s registered company name. So, in the present case, the Respondent has chosen a domain name, which is confusingly similar to the Complainant’s company name.

Finally, the Panel also accepts the Complainant’s argument that an inference can be drawn from the fact that the Respondent chose for its domain name a word that is not in the English language and with which he had no apparent connection or reason for choosing. Nor, for that matter, is SUPRÉ a French word and, if it were, it would not carry an accent on the capital ‘E’. It therefore stretches credulity almost to breaking point to accept that it was a mere co-incidence that the Respondent chose a word that is neither English nor French but which happened to be the Complainant’s trademark and company name. The inference that should be drawn is that the Respondent chose the name because it is the Complainant’s name and he hoped to trade off the cache that came with it.

For those reasons, the Panel concludes that the domain name is confusingly similar to the Complainant’s name and trademark.

B. Rights or Legitimate Interests

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.

That is so in the present case, where the Respondent was given notice on November 23, 2004, that the administrative proceeding had been commenced and was served with a copy of the Complaint, which of course included the allegation that he had no rights or legitimate interests in the domain name <supre.com.au>.

The Respondent was also given notice that he had until December 13, 2004, to send his response, that he would be in default if he did not do so and that, by virtue of Paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.

As the Respondent is in default, the Panel, after considering all of the evidence, 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 substance of what has happened in this matter is that the Respondent has taken the Complainant’s unique and unusual name, giving rise to the possible explanation that he did so for an illegitimate purpose. If there were, however, a more innocent or legitimate explanation for his conduct, which of course is also possible, the Respondent could have given it, but this he has failed to do.

In the absence of such an explanation, as the Administrative Panel observed in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273, the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘ any evidence of the Respondent would not have been in his favour.’

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 registrant’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.

In addition to this, the known facts are that the Respondent’s Business Name registration of Supre Marketing was cancelled on December 19, 2003, it has not been renewed and there are no businesses of that name in the White or Yellow Pages telephone directories for Western Australia, where the Respondent claimed his business was conducted. In addition, there is evidence to the effect that the Respondent has never used the domain name in connection with an active website and certainly not for conducting a legitimate business, but only for the purpose of diverting traffic elsewhere.

All of these facts support a conclusion that the Respondent has no rights or legitimate interests in the domain name.

In any event, as the Complainant points out, one additional reason why the Respondent has no rights or legitimate interest in the domain name is that he is not eligible to hold it. The reason why this is so is that Schedule C of the au Domain Name Eligibility and Allocation Rules for the Open 2LDs requires the registrant to be a company or to be trading under a registered Business Name. However, the Respondent is neither.

For these reasons the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered or Used in Bad Faith

With respect to this third element, Paragraph 4(b) of the Policy sets out some detailed criteria, any one of which, if proven, are deemed to be ‘evidence of the registration and use of a domain name in bad faith’.

However, the Policy, unlike the Uniform Domain Name Dispute Resolution Policy, does not require proof of registration in bad faith and use in bad faith, but simply one or the other.

Furthermore, the criteria are not exhaustive and other factors, in addition to those set out in Paragraph 4(b), may also be shown to constitute bad faith.

The first criterion set out is that the primary purpose of registering the domain name was, in substance, to sell it. This may of course have been the end objective that the Respondent had in mind when he registered the domain name, but it cannot be said that it was his primary, that is, his principal or fundamental purpose in registering it.

The second criterion is that the domain name was registered to prevent a party, in this case the Complainant, from reflecting its name or mark in a domain name. That criterion is not conclusive in the present case as is seen from the fact that the Complainant has registered its own domain name, <supre.au.com> and that it can also register other domain names reflecting its name or mark.

The third criterion is that the primary purpose of registering the domain name was to disrupt the business or activities of another person. The Panel concludes from all of the circumstances that it was one of the purposes of the Respondent to disrupt the business of the Complainant, by diverting traffic from its website and that this was certainly a major purpose, as it was an integral part of the Respondent’s modus operandi. It is not necessary to decide, however, if this was the Respondent’s primary purpose, for there is a far more compelling candidate, about which the Panel has no doubt.

The primary purpose of the Respondent in registering and using the domain name was to make money and to do so by trading on the Complainant’s good name. All else flowed from that. It is the view of the Panel that the facts of this case come squarely within the fourth criteria set out in Paragraph 4(b) of the Policy. This criterion can be paraphrased as using the domain name to attract Internet users to a website by creating confusion with the Complainant’s name or mark as to whether that other website or the products or services on it were sponsored by the Complainant. The offending use must be must be intentional and it must also be done for commercial gain.

The Panel concludes that the Respondent used the domain name with the intention of attracting Internet users to the websites specified in the Complaint. He did this first, by choosing a domain name, which was the Complainant’s name, its trademark, business and company name.

The Respondent also created confusion between the websites referred to and the Complainant’s name and mark as to the sponsorship of those sites and the products and services promoted on them. The confusion created was to give the impression that those sites were approved or sponsored by the Complainant or even that they were part of the Complainant’s operation.

This impression was created by registering the domain name <supre.com.au> so that if visitors typed that address, they would naturally think it was the address of the SUPRÉ company. However, they would be diverted to another site, which in reality was quite unconnected with the house of SUPRÉ. The impression was therefore a false one, engineered deliberately by the Respondent and with the intention of ensnaring the visitor so that he, or more likely she, would be diverted to a different website that offered goods and services, not from SUPRÉ, but from businesses unconnected with it.

Annexure J to the Complaint illustrates this process and makes it clear. It shows that, on occasions, visitors to the Respondent’s site have been diverted to “www.lovecalculator.com”, which is a romantic name-matching service. But the Panel discerns that its real function is to be found in the invitation on the front page of the site to visitors who wish to remain secret admirers to send anonymous SMS messages to the object of their affections. Naturally, it is expected that they will then spend money on SMS messages, which undoubtedly is where the Respondent has been making his money.

The Panel cannot help, therefore, but conclude that the Respondent’s process and intention was a colorable device to solicit business for the burgeoning SMS market and that he was paid for it.

This process, to divert traffic to other sites for profit, is known as auto forwarding and has been held to be using the domain name in bad faith. The cases cited by the Complainant are examples where this principle has been applied: see Kapiteeli Oy v. John Denver, WIPO Case No.D2003-0333; Altavista Company v. Brunosousa,WIPO Case No. D2002-0109 and Ameriquest Mortgage Co v. Jason Banks,WIPO Case No. D2003-0293.

Annexure K to the Complaint shows that diversions have also been made to at least one other website, the function of which is less clear. However, it has been held that if a registrant is diverting visitors to another site and is doing so even without an apparent purpose or even diverting them back again to the Complainant’s own site, that form of auto forwarding is also deemed to be acting in bad faith. That is so because the point is not the actual loss suffered by the Complainant, which may be hard to identify and harder to quantify, but the fact that the Respondent’s subterfuge ‘ …interferes with Complainant’s ability to control the use of its own trademarks on the Internet…’, Ameriquest Mortgage Co v. Jason Bank, supra.

The Panel finds that the process described was engaged in for commercial gain for, as has been observed by many previous UDRP panels, it is hard to conceive of an explanation for it other than commercial gain.

Accordingly, this is a case that comes within Paragraph 4 (b) (iv) of the Policy and shows, because of the wording of the Paragraph, that the Respondent has both registered and used the domain name in bad faith.

That requirement is also shown by other factors. The facts are that the Respondent registered the domain name but, so far as is known, he has never used it for an active website. When he has not been using it to divert traffic to other websites, he has simply held it passively, thus preventing others from taking up the name and putting it to good use.

Moreover, he has clearly engaged in what might be called the general subterfuge of adopting the Complainant’s name and using it in a deceptive manner, claiming by inference that the services he is offering are the Complainant’s, in clear breach of trademark and fair trading laws and the tort of passing off.

Finally, as the Complainant contends, whatever the situation may have been when the domain name was registered, the position now is that the Respondent has allowed the record to contain inaccurate information. This is so, as the Respondent asserted at the time of registration that he was the owner of the Business Name Supre Marketing, the registration of which was cancelled on December 19, 2003, but which to this day remains on the record of the registrar of the domain. This can only confirm the suspicion that the Respondent is not making a bona fide use of the domain name. The case that is often cited in this regard and where the facts were similar is Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case the Administrative Panel found that where the Respondent was passively holding a domain name and not making any legitimate use of it, that practice could be described as acting in bad faith, subject of course to the particular circumstances of the case, one of which was that the Respondent operated ‘under a name that is not a registered business name.’

All of those factors go to the conclusion that, within the meaning of Paragraph 4(b)(iv) of the Policy and generally, the domain name was registered and is being used in bad faith.

Accordingly, the Complainant has made out all three of the requirements of Paragraph 4(a) 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 <supre.com.au> be transferred to the Complainant.

The Honorable Neil Anthony Brown, QC
Sole Panelist

Dated: December 22, 2004