The Complainant is Tekla Corporation of Espoo, Finland, represented by Madderns Patent & Trade Mark Attorneys, Australia.
The Respondent is Tekla Project Management of Orange, Australia / Trango Towers Pty Ltd of Orange, Australia, represented by David Finlay.
The disputed domain names <tekla.com.au> and <tekla.net.au> are registered with Enetica.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2014. On March 19, 2014, the Center transmitted by email to Enetica a request for registrar verification in connection with the disputed domain names. On March 25, 2014 and May 8, 2014, Enetica transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On May 19, 2014, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted an amended Complaint. The Center sent an email communication to the Complainant on May 26, 2014 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the amended Complaint on May 27, 2014.
The Center verified that the Complaint together with the amended Complaint and amendment to the amended 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 May 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2014. The Response was filed with the Center on June 17, 2014.
The Center appointed Ross Wilson, Andrew F. Christie and Alistair Payne as the panelists in this matter on July 7, 2014. 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, a publicly listed corporation was founded in Finland in 1966 to develop and distribute information modelling software in the construction energy and infrastructure industries. It now has 23 offices worldwide and a network of re-sellers in 100 countries. Its official name in Finland is Tekla Oyj but in English it is referred to as Tekla Corporation. The Complainant owns 59 trade mark registrations worldwide for or incorporating its TEKLA mark, including Australian word mark registration No. 914628. It also owns domain name registrations in 50 countries which incorporate its TEKLA mark, including its main site at “www.tekla.com”.
The Respondent operates under the business name “Tekla Project Management” which was registered on February 15, 2013 by Trango Towers Pty Ltd and provides services in the field of Civil and Commercial construction work projects. The disputed domain names were registered on February 28, 2007 by the Respondent’s associated entities and were subsequently transferred into the name of Tekla Project Management following its registration in February 2013.
The Complainant submits that it owns registered rights in the TEKLA trade mark and in particular in Australian word mark registration No. 914628. It further says that it has developed a very substantial worldwide reputation in connection with its mark having developed a business with customers in over 100 countries through a network of global re-sellers. It notes that in the 2012 year its global revenue was over 50 million euros and that its global advertising spend is now approximately EUR 500,000. It says that it has extensively promoted its services and products in Australia including through its website at “www.tekla.com” and through social media, advertising and industry journals. It notes that since 1996, its exclusive re-seller in Australia has been Pacific Computing Pty Limited. The Complainant further says that the substantive element of either of the disputed domain names is identical to its TEKLA mark.
The Complainant submits that prior to registration of the disputed domain names and since February 2007, a company called “Trang Imagineering Pty Ltd”, which is associated with the Respondent and which has a common sole director, Mr. D. Finlay, was a licensed user of the Complainant’s Tekla Structures software. The Complainant points to a provision of the licence agreement which prohibits the licensee and its associated companies from registering domain names that include any registered trade marks owned by the licensor.
The Complainant notes that once it became aware of the disputed domain name <tekla.com.au > it had its brand protection agents write in late 2012 to “Trang Imagineering Pty Ltd”, as the original registrant of the disputed domain names, asserting its rights in the TEKLA mark, noting the provision in the licence agreement and requiring the transfer of this disputed domain name. It says that that the Respondent replied in early 2013 stating that it had registered the business name “Tekla Project Management” and had transferred this disputed domain name to it. The Complainant says that it responded objecting to the transfer and to the unauthorized use of its trade mark in this disputed domain name. It subsequently says that it became aware that “Trang Imagineering Pty Ltd” had registered <tekla.net.au> and as early as 4 September 2013 found that the disputed domain names were being advertised for sale at “www.ebay.com.au” AUD 100,000. In addition the Complainant submits that in December 2013 it became aware as a consequence of an approach from Autodesk, Inc., one of its competitors, that one of the disputed domain names was being re-directed to an Autodesk website and that Autodesk had never authorised this re-direction. It then became aware of a further re-direction of one of the disputed domain names to the website of another competitor, Bentley Systems, Inc.
The Complainant says that the Respondent is not commonly known by the name or mark TEKLA, does not appear to provide bona fide goods or services and that it never consented to its use. At the date of filing this Complaint, the Complainant noted that the disputed domain names resolved to a single webpage with non-interactive links headed “Orangebox Associates”. As a result the Complainant says that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant submits that Mr. Finlay as the sole director of both the Respondent and “Trang Imagineering Pty Ltd” is the guiding spirit behind both companies and as a consequence of the licensing arrangements between the Complainant and the latter company was very well aware of the Complainant’s TEKLA trade mark at the first date of registration of the disputed domain names. The Complainant submits that the Respondent registered the disputed domain names in order to prevent it from registering them or to disrupt its business and in any event registered them in bad faith. It further says that the Respondent’s offer for sale of the disputed domain names at AUD 100,000 and its re-direction of the disputed domain names to competitor websites amounts to use in bad faith.
The Respondent does not deny the Complainant’s case that the disputed domain names are identical or confusingly similar to the trade marks in which the Complainant has rights.
The Respondent says that it is making a bona fide and active use of the disputed domain names and has recently made submissions for project management work. It says that in any event the word or name “tekla” is in common usage for a range of products and services. It admits having previously diverted the disputed domain names to competitor websites for a brief period but it asserts that it only did this as a result of on-going correspondence by the Complainant’s legal representatives. It says that in early 2014 it was approached by a UK entity called Orangebox Associates to acquire its Tekla Project Management business and that while these negotiations were ongoing the disputed domain names were forwarded to the Orangebox website.
The Respondent agrees that it offered the disputed domain names on Ebay and invited purchase offers. However the Respondent denies seeking AUD 100,000 and states that the Ebay auction listing gave the Complainant the opportunity to make an offer for the disputed domain names. Finally, the Respondent says that there is nothing on its website that would confuse Internet users and that it has not registered any keywords that would unduly divert Internet users from the Complainant’s website, apart from the word “tekla”.
The Panel finds that the Complainant, whom it notes is officially registered in Finland as Tekla Oyj, is the owner of Australian word mark registration no. 914628 for TEKLA and that the substantive element of both of the disputed domain names is identical to this mark. Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy.
The Complainant has asserted that it never authorised the Respondent to register the disputed domain names and that the sole director behind the Respondent was well aware and on notice of the Complainant’s rights in the TEKLA mark as a consequence of the software licence previously held by “Trang Imagineering Pty Ltd”. The Complainant says that the Respondent is not making a fair or legitimate use of the disputed domain names and in several respects (as described under section C below) has demonstrated its bad faith.
Having reviewed the Respondent’s submissions, the Panel finds that the Respondent has not rebutted the Complainant’s arguments under this element of the Policy and has not made a bona fide use of the disputed domain names. The Panel infers that the Respondent was well aware of the Complainant’s rights in the TEKLA mark upon registration of the disputed domain names based on the knowledge of its sole director of the licensing arrangements between “Trang Imagineering Pty Ltd” and the Respondent and yet chose to register and use the disputed domain names regardless. For the further reasons as discussed under Part C below, the Panel finds that the Respondent’s registration and use of the disputed domain names wholly containing the Complainant’s TEKLA mark was not legitimate and was in bad faith. As a result it finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under this element of the Policy.
The Panel infers that the Respondent must have been aware of the Complainant’s TEKLA mark and business when it registered the disputed domain names. The Respondent’s knowledge can be inferred from its sole director having also been a sole director of “Trang Imagineering Pty Ltd” which held a software licence from the Complainant through its Australian re-seller from February 2007. Contrary to the provision in the agreement prohibiting unauthorised use of the Complainant’s marks, or of registration of domain names containing its marks, Mr Finlay as sole director of both companies appears to have immediately arranged for the Respondent to register the disputed domain names in its own name and without reference to the Complainant. Subsequently and following an approach from the Complainant’s representatives in 2012 he transferred the disputed domain names into the name of “Tekla Project Management” instead of transferring the disputed domain names to the Complainant. The Panel infers that the Respondent did all of this with full knowledge of the Complainant’s rights to its TEKLA mark and with a view to using the disputed domain names for its own purposes and gain. Accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.
Subsequently, the Respondent offered the disputed domain names for sale on “www.ebay.com .au”. Certainly the advertisement invited offers, but it also set an indicative price of AUD 100,000 a sum well beyond the administrative costs involved in registering and maintaining the disputed domain names and clearly with a view to profiting from the sale. In addition the Respondent, by its own admission, and even, if only as it asserts for a limited period, arranged for the disputed domain name at <tekla.com.au> to resolve to websites of two competitors of the Complainant with the effect that Internet traffic is likely to have been diverted away from the Complainant’s site to its competitors’ websites during this period. The Respondent’s explanation that it did this because it was unhappy at being contacted by the Complainant’s brand representatives about its unauthorized use of the TEKLA mark in the disputed domain names does not negate the act of bad faith. The Panel considers that both these examples of conduct amount to use by the Respondent in bad faith in terms of the Policy.
As a result, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and the Complaint also succeeds under this element of the Policy.
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 names <tekla.com.au> and <tekla.net.au> be transferred to the Complainant company registered in Finland under the name Tekla Oyj, subject of course to fulfilling the eligibility requirements specified by the .au Domain Administration Limited.
Alistair Payne
Presiding Panelist
Ross Wilson
Panelist
Andrew F. Christie
Panelist
Date: July 16, 2014
Stay updated! Get new cases and decisions by daily email.
