Aastra Telecom Inc. v. Spring Mountain Enterprises Pty Ltd.
Case No. DAU2008-0003
1. The Parties
The Complainant is Aastra Telecom Inc., Australia, represented by Middletons Lawyers, Australia.
The Respondent is Spring Mountain Enterprises Pty Ltd., Australia, represented by Guy & Hinton Solicitors, Australia.
2. The Domain Name and Registrar
The disputed domain name <aastra.com.au> is registered with NetRegistry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2008. On February 7, 2008, the Center transmitted by email to NetRegistry a request for registrar verification in connection with the domain name at issue. On February 17 and 19, 2008, NetRegistry 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 together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for the .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for the .au 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 February 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2008. The Response was filed with the Center on March 7, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on March 20, 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 following facts are not contested by the parties.
The Complainant is in the business of providing communications products, systems and software, including Internet Protocol (IP)-based networking solutions and Voice Over IP (VOIP) telephony products.
The Complainant is part of the Aastra Group of companies, which has its corporate base in Canada under the name ‘Aastra Technologies Limited’. The Complainant has offices in a number of countries, including Belgium, Denmark, the United Kingdom, and the United States of America, among others.
The Complainant operates websites at a large number of domain names, including “www.aastra.com” and “www.aastra.net”.
The disputed domain name was created on October 12, 2006.
The Respondent specializes in small-medium sized business telephone solutions and systems, including Internet-related systems such as VOIP. The Respondent is a reseller of genuine Aastra VOIP phones through its website at <smountain.com.au>. Those phones are supplied to the Respondent by one of the Complainant’s authorized Australian wholesalers. Since February 2006, more than 98% of the handsets sold by the Respondent have been Aastra IP phones. There is however no direct contractual relationship between the Complainant and the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant provides evidence of having applied for the registration of the word mark AASTRA in Australia, lodged on May 1, 2007. (The Complainant does not provide evidence of having registered trademark rights in any other jurisdiction.) The Complainant also claims that its marks have a widespread reputation, are widely used and promoted extensively in Australia. The Complainant provides evidence of its presence on the Internet, and the use of its marks on packaging, stationery and in advertising.
The Complainant claims that the disputed domain name is confusingly similar to its marks.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant provides evidence that, on October 16, 2007, the disputed domain name then reverted to a website for ‘Vois Technologies Pty Ltd’, a business which offered VOIP services and equipment. The Complainant claims that there is a connection between ‘Vois Technologies Pty Ltd’ and the Respondent. The Complainant states that, after discussions between it and the Respondent’s director, Mr. Watson, the disputed domain name was then redirected to the Respondent’s website. The Complainant provides evidence that the Respondent’s website advertised other telephony products of other manufacturers. The Complainant claims that the Respondent is thus using the disputed domain name to mislead Internet users into believing that there is some kind of connection between the Respondent’s website and the Complainant.
The Complainant claims that the Respondent registered and has used the disputed domain name in bad faith. ‘Aastra’ is an invented word and, the Complainant claims, therefore, not one which the Respondent would legitimately choose unless it was attempting to trade off the Complainant’s reputation. The Complainant claims that almost identical circumstances were present in the previous case of 3M Australia Pty Ltd v Brumby & ASIC (LEADR, auDRP06/07 and asDRP07/07). In this case, the Complainant claims that the Respondent is likewise seeking to profit from the goodwill in the Complainant’s marks, by attracting Internet consumers looking for the Complainant’s products and then presenting them with products of the Complainant’s competitors.
The Complainant also claims, by reference to discussions with the Respondent on November 1, 2007, in which the Respondent stated that there was no “business point” in deregistering the disputed domain name, and asked the Complainant to “show us the dollars.” This, says the Complainant, is evidence of the Respondent’s intention to profit from its registration of the disputed domain name.
B. Respondent
The Respondent concedes that the disputed domain name is identical or confusingly similar to the Complainant’s AASTRA mark.
However, the Respondent denies that it has no right or legitimate interest in the disputed domain name, or that it has acted in bad faith.
In relation to its rights and legitimate interests, the Respondent submits that it registered and has used the disputed domain name in connection with a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy. The Complainant relies on a statutory declaration of its director, Mr Watson. Mr. Watson deposes that Aastra phones have been sold via the Respondent’s website at <smountain.com.au> since around February 2006. In October 2006, Mr Watson deposes that he became aware that the disputed domain name was available for registration and that “At no point did I believe that there was any reason why Spring Mountain could not register the domain as long as it continued to sell genuine Aastra products purchased from an authorized wholesaler of Aastra goods.” Mr Watson refers to contact, including emails, between himself and the Complainant in mid 2007, in which the Complainant requested the transfer of the disputed domain name to them. Mr Watson responded setting out options in relation to the disputed domain name, including that the Complainant could make an offer for it, or pay “A$12,500 per year”. Those communications then ceased. Mr Watson otherwise denies the allegations made in the Complaint against the Respondent.
The Respondent rests its rights or legitimate interests in the disputed domain name on the fact that, from February 2006, it began to resell genuine Aastra VOIP phones through its website, and that those sales constituted more than 98% of its sales. The Respondent refers to the Panel statement in Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187, that:
“It is apparent from the Respondent’s web page that Respondent is selling Complainant’s goods under Complainant’s registered trademark. Although it appears that Respondent has also used its web page to sell (directly or indirectly) products other than Complainant’s, these instances appear to be minor and Complainant has not controverted Respondent’s alleged removal of these items. Complainant has failed to disprove that Respondent’s use of the domain name in connection with Respondent’s sales of Complainant’s goods was made primarily in connection with the bona fide offering of goods or services.”
On the basis of this, the Respondent claims that the fact that it was offering other products for sale does not preclude it from having made a bona fide offering.
For somewhat similar reasons, the Respondent denies that it registered or used the disputed domain name in bad faith. Among other things, the Respondent states that its intention was to increase sales of Aastra products; and that there would be no confusion as to the relationship between the Respondent and the Complainant.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark 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 was registered in bad faith or was subsequently used in bad faith.
The Complainant must prove all of these three elements, which are discussed in turn below.
The Policy is substantially similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy (as have both the parties).
A. Identical or Confusingly Similar
The Respondent does not dispute that the disputed domain name is relevantly identical to a mark in which the Complainant has rights.
Although the Complainant has not, in fact, demonstrated that it ‘has rights’ in a registered mark (having provided evidence only of applications for such marks in Australia), it is well-established that the Policy allows for a complaint to be based on unregistered (or common law) trademark rights. The Complainant provides extensive evidence of having a substantial business conducted under its AASTRA mark. It is therefore clear to the Panel that the Complainant did establish such rights.
The Complainant has therefore established this first element.
B. Rights or Legitimate Interests
The principal dispute between the parties concerns whether the Respondent has a right or legitimate interest in the disputed domain name. The Respondent says that it does, because it sells genuine Aastra phones via the disputed domain name, and that over 98% of the phones it sells are of that kind. The Complainant denies the Respondent’s rights or legitimate interests, on the basis that the Respondent offered competitors products via the disputed domain name, and registered it to intentionally divert Internet traffic looking for the Complainant.
For the purpose of this dispute, the Panel accepts that the Respondent conducts a legitimate business, and that 98% of the phones that it sells are genuine Aastra phones. However, it is not the overall legitimacy of the Respondent’s business (however defined) that is in dispute. The issue is whether the Respondent has a right or legitimate interest in appropriating the Complainant’s trademark as a domain name.
The extent to which an authorised reseller may have such a right or legitimate interest has been addressed in numerous prior panel decisions. Item 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarises the approaches that panels have taken in this respect, as follows, under the heading: “Can a reseller have a right or a legitimate interest in the disputed domain name?”:
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. […]
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name.
Even taking the majority view however (which is more favourable to the Respondent), the Panel finds that the Respondent has not established a relevant right or legitimate interest in the disputed domain name. This is so for the following reasons.
Firstly, it is obvious to observe that there are different degrees of potential confusion. As noted above, the disputed domain name is relevantly identical to the Complainant’s mark. As such, it is more likely that a significant number of Internet users would believe that the domain name would lead to the Complainant’s website. As relevantly stated by the Panel in CELLEX-C International Inc. v. Jaye Pharmacy and Absolute Cellex C,
WIPO Case No. D2003-0423, “while the Respondents claim that their primary purpose was to promote sales of [the Complainant’s] products, the risks of confusion identified above must have been obvious to the Respondents when registering the domain names.” (That case dealt with the registration of an identical domain name and a confusingly similar domain name by a reseller of the then Complainant’s products.)
While the Respondent denies that it intended to create any such confusion, this does not displace what is an obvious likelihood of confusion. Neither does it matter that an Internet user, on visiting the Respondent’s website, might become aware that the website is not that of the Complainant’s. The confusion arises by a simple comparison between the Complainant’s trademark and the disputed domain name. Thus there is a potential for initial confusion, even before an Internet user might visit the Respondent’s website. As relevantly noted by the panel in Triodos Bank NV v. Ashley Dobbs,WIPO Case No. D2002-0776: “The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done.”
Secondly, it is not in dispute that the Respondent had no authority from the Complainant to use its mark. Anticipating this issue, the Respondent refers to Philip Morris Incorporated v. Alex Tsypkin,
WIPO Case No. D2002-0946. In that case, the Panel stated (in the course of finding against the then Respondent) that the fact that the then Respondent was not an authorized reseller was not dispositive because “in principle, it is not an infringement of a trademark without the authority of a trademark owner to resell or promote for resale genuine trademarked goods by reference to the mark.” However, the Panel in that case clearly made that statement to support the application of the test in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (which involved an authorized dealer) to a case which did not involve an authorized dealer. Even applying that test in this case, there are two elements which the Respondent has arguably not met.
By reference to Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187, the Respondent states that it has primarily used the disputed domain name to sell the trademarked goods. The Respondent points out that more than 98% of the phones sold via its website are those of the Complainant. To this extent, the Respondent claims that the fact that the Complainant’s products were not the only ones sold via its website does not prevent a finding that it was engaged in a bona fide offering of goods or services (which would meet the requirements of paragraph 4(c)(i) of the Policy).
But the Panel does not accept this argument. Simply put, other products were offered via the Respondent’s website. This fact weighs against the Respondent’s conduct coming within the general majority view set out above. While the vast majority of the Respondent’s sales may have turned out to be of the Complainant’s products, this may simply be a reflection of market demand rather than a reflection of the Respondent’s conduct. This is not to say that there could be cases where a predominant, although not exclusive, use of a domain name to sell a Complainant’s products could (other things being equal) establish a legitimate interest. This was obviously the finding in the Weber-Stephen Products case cited by the Respondent. However, the finding in that case was (as stated by the then Panel) in circumstances of a “substantial showing made by Respondent that Complainant was aware of, and repeatedly approved, Respondent’s web site over a period of several years.” There are no such circumstances in this case.
Another element of the majority view is that a bona fide offering might be established by the Respondent’s “site accurately disclosing the registrant’s relationship with the trademark owner.” In this case, the Respondent provided evidence of the website to which the disputed domain name reverted on October 16, 2007. The Respondent states that it is self-evident that the website is operated by it, and not the Complainant. But there is nothing in that website that makes the Respondent’s relationship with the Complainant clear.
The Complainant has therefore established this second element.
C. Registered or Used in Bad Faith
For similar reasons to those set out above, the Panel finds that the Respondent registered or has used the disputed domain name in bad faith.
This is a finding for the purpose of paragraph 4(a)(iii) of the Policy. It does not mean that the Respondent does not otherwise conduct a legitimate business, or that it does not sell genuine products of the Complainant.
However, the Respondent has registered a domain name that is identical to the Complainant’s mark. The Respondent was clearly aware of the Complainant and its mark. The Respondent nevertheless registered the disputed domain name without first seeking a licence or authority from the Complainant. The Respondent did so for commercial gain: as the Respondent states “to increase sales in Aastra products”. Having registered a domain name identical to a trademark with which it was familiar, the Respondent must have been aware of the obvious risk of confusion that would be created.
The Complainant has therefore established this third element.
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 <aastra.com.au> be transferred to the Complainant.
James A. Barker Sole Panelist
Date: April 9, 2008
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