The Complainants are Pangaea Laboratories Ltd of Herts, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Pacific Direct Intertrading Pty Ltd of Sydney, New South Wales, Australia, represented by Alexanders Lawyers, Australia.

The Respondent is Astrix Pty Ltd of Ringwood, Victoria, Australia, represented by Defteros Lawyers, Australia.

2. The Domain Names and Registrar

The disputed domain names <nanogen.com.au> and <nanogen.net.au> (the “Disputed Domain Names”) are registered with AussieHQ Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2015. On March 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 14, 2015, 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 .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 April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a Response was May 6, 2015. The due date for filing a Response was extended until May 13, 2015. The Response was filed with the Center on May 13, 2015.

The Center appointed John Swinson as the sole panelist in this matter on May 22, 2015. 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 first Complainant is Pangaea Laboratories Ltd of the United Kingdom (“Pangaea”). Pangaea manufactures skin care, hair care and make up products which it distributes to over 80 countries. “Nanogen” is a brand of hair care products manufactured by Pangaea.

Pangaea holds registered trade marks for NANOGEN in the United Kingdom (registered July 23, 2004) and Australia (registered December 24, 2009) (the “Trade Mark”). The Complainants have provided evidence of these registrations.

The second Complainant is Pacific Direct Intertrading Pty Ltd of Australia (“Pacific Direct”). Pacific Direct has been Pangaea’s exclusive distributor for Nanogen hair products in Australia since April 2014.

The Respondent is Astrix Pty Ltd, an online retailer which has been selling Pangaea’s Nanogen products since at least 2000.

The Disputed Domain Name <nanogen.com.au> was registered on November 27, 2002. The website at <nanogen.com.au> is an online store operated by the Respondent for the purpose of selling Nanogen products.

The Disputed Domain Name <nanogen.net.au> was registered on June 2, 2009. It currently resolves to the website at <nanogen.com.au>.

5. Parties’ Contentions

A. Complainants

The Complainants make the following submissions.

Identical or Confusingly Similar

The Disputed Domain Names are identical to the Trade Mark which is registered in the name of Pangaea. That the Trade Mark was registered after the first Disputed Domain Name is irrelevant for the purpose of satisfying paragraph 4(a)(i) of the Policy.

Pacific Direct has rights in the Trade Mark pursuant to the Exclusive Distributor Agreement which commenced on April 1, 2014. Under that agreement, Pacific Direct is permitted to use Pangaea’s intellectual property, which includes its trade marks, for the purpose of selling and marketing Nanogen products.

Rights or Legitimate Interests

For a period of time unknown to the Complainants, Pangaea supplied Nanogen products to the Respondent. The Complainants have provided two agreements, dated November 12, 2002 and October 19, 2005, which show that the Respondent was an authorized reseller of Nanogen products.

Also for a period of time unknown to the Complainants, the websites operated at the Disputed Domain Names offered for sale a competitor’s products.

For the purpose of paragraph 4(c)(i) of the policy, the Complainants submit that while the Respondent used the Disputed Domain Names in connection with an offering of goods and services before any notice of the subject matter of the dispute, that use was not bona fide.

The Complainants refer to the principles set out in the UDRP case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). They submit that the Respondent’s use of the Disputed Domain Names does not meet the second and third criteria of that test, as the website at the Disputed Domain Names has previously offered for sale a competitor’s products, and it did not disclose its relationship with Pangaea as the manufacturer and brand owner. The website features the Trade Mark in large print and with a ® symbol, and a statement which gives the impression that the website operator is the manufacturer of the Nanogen products.

For the purpose of paragraph 4(c)(ii) of the Policy, the Complainants submit that although the Disputed Domain Names are registered to “Nanogen”, which is a business name registered to the Respondent company Astrix Pty Ltd, the Complainants have found no evidence that the Respondent is commonly known by this name. To the extent that the Respondent provides evidence that it is commonly known by this name, the Complainants submit that this use could not have been in good faith. The business name was only registered on May 5, 2010, and so must have been registered to assist in any potential future dispute about the Disputed Domain Names.

Registered or Subsequently Used in Bad Faith

The Complainants concede that the Disputed Domain Name <nanogen.com.au> was not registered in bad faith. However, the Complainants submit that it is now being used in bad faith.

The Complainants submit that the Disputed Domain Name <nanogen.net.au> was registered and is being used in bad faith.

As the Disputed Domain Names are identical to the Trade Mark, the Complainants submit that the Respondent’s continued use of the Disputed Domain Names to resolve to the Respondent’s own website, which predominantly sells Nanogen brand products, has been done to encourage Internet users to visit the website under the belief that the website is operated by, or affiliated with, the owner of the Nanogen brand and Trade Mark.

Bad faith is also indicated by the fact that the website offers for sale a competitor’s products.

B. Respondent

The Respondent makes the following submissions.

Identical or Confusingly Similar

The Disputed Domain Names were first registered by the Respondent pursuant to contractual agreement with Pangaea prior to the registration of the Trade Mark.

To the extent that Pangaea has given Pacific Direct the exclusive right to distribute its products, then there is no issue as the Respondent’s supply is not obtained directly from Pangaea. To the extent that Pangaea has given Pacific Direct the exclusive right to use the Trade Mark in Australia, then this is an issue between Pangaea and Pacific Direct.

These issues do not permit a restraint on the use of the Disputed Domain Names.

Rights or Legitimate Interests

The Respondent makes the following submissions in relation to paragraph 4(c)(i) of the Policy:

- The Respondent has legally distributed Nanogen products online under a contractual arrangement with Pangaea since 2000. The Respondent refers to the agreements annexed to the Complaint dated November 12, 2002 and October 19, 2005. It has since developed an online business and created value and goodwill in the Disputed Domain Names. The Complainants have not provided any evidence that this arrangement has expired or has been validly terminated.

- The Respondent had obtained Nanogen products directly from Pangaea until approximately five years ago, when it began to purchase those products from a nominated Australian distributor at Pangaea’s request. Later, the Respondent legally sourced authentic Nanogen products from another legitimate supplier. Pangaea has never advised the Respondent that it objected to the Respondent sourcing its products in this way.

- Any sale of a competitor’s product on the website at the Disputed Domain Names was done by mistake, and those products were removed as soon as the Respondent was notified of this error.

- Oki Data can be distinguished, as the Respondent has a written agreement with Pangaea which gives the Respondent permission to use the Trade Mark in a domain name.

- Even if there was no contractual relationship, Oki Data can still be distinguished as the offering of a competitor’s product was done in error, and because the Respondent believed Pangaea was aware of and had consented to its use of the Trade Mark and other material on its website at the Disputed Domain Names.

The Respondent makes the following submissions in relation to paragraph 4(c)(ii) of the Policy:

- The Respondent has acquired a legitimate interest in the Disputed Domain Names by continuing to use the Disputed Domain Names with the knowledge and express or implied consent of Pangaea since approximately 2000. Registration of the Disputed Domain Names predates Pangaea’s registration of the Trade Mark in both Australia and the United Kingdom.

- The Respondent registered the business name “Nanogen” in 2010 to protect its reputation and customer base. This registration predates Pangaea’s registration of the Trade Mark in Australia.

- Given that the Respondent has operated a successful online store at the Disputed Domain Names for approximately 15 years, the Respondent has become commonly known by that name.

- Pacific Direct implicitly acknowledged that there was significant value in the Disputed Domain Names’ reputation, customer base and popularity when they offered to purchase the Disputed Domain Names from the Respondent for $100,000 (presumably AUD) in 2014.

- Pangaea has never notified the Respondent that it no longer has permission to use the Disputed Domain Names or other material on its website.

Registered or Subsequently Used in Bad Faith

The Respondent submits that the initial registration of the Disputed Domain Names, which predates the registration of the Trade Mark, was done with the permission of Pangaea for the purpose of selling Pangaea’s product. The images and text used on the website at the Disputed Domain Names was also expressly permitted by Pangaea.

Until the Complaint was received, the Respondent had no reason to suspect that the agreement was no longer in force, and was unaware of any objection that Pangaea had with the content of the website at the Disputed Domain Name.

The Respondent submits that Pacific Direct’s offers to purchase the Disputed Domain Names show that Pacific Direct is using the complaint process to acquire the Respondent’s online business at no cost.

6. Discussion and Findings

To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered or have subsequently been used in bad faith.

The onus of proving these elements is on the Complainants.

A. Procedural Issues

The Complaint is filed jointly by Pangaea and Pacific Direct. Previous panels have permitted a single complaint where the complainants have a “common grievance” against the respondent, as long as it is equitable and procedurally efficient to do so (National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021). The Panel accepts that Pangaea and Pacific Direct have common legal interests in the Trade Mark. Pangaea is the owner of the Trade Mark, and Pacific Direct has express permission to use the Trade Mark in Australia. As such, the Panel permits both parties to be joint Complainants in this dispute.

As stated by the panel in HCOA Pty Ltd, Molescan Australia Pty Ltd v. The Trustee for the Terantica Trust / Terry Lockitch, WIPO Case No. DAU2013-0003, “in a case brought by multiple complainants where more than one of the complainants has entitlement to the trademark(s) on which the complaint is based, the decision about which of the complainants the domain name should be transferred to should be decided by the complainants, not the panel.” In this case, both Pangaea and Pacific Direct have an interest in the Trade Mark on which this Complaint is based. As such, if the Complaint is successful, the Panel will order that the Disputed Domain Names are transferred to the particular Complainant as nominated by the Complainants (being Pacific Direct).

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Names wholly incorporate, and are identical to the Trade Mark.

Pangaea has rights in the Trade Mark as the registered owner of the Trade Mark in Australia and the United Kingdom.

Pacific Direct has rights in the Trade Mark as the exclusive distributor of Nanogen products for Pangaea in Australia. The Exclusive Distributor Agreement annexed to the Complaint gives Pacific Direct express permission to use the Trade Mark for the purpose of selling and marketing those products. As submitted by the Complainants, this can be distinguished from a situation in which the distributor merely has permission to use the “trade name”.

It is irrelevant for the purpose of paragraph 4(a)(i) of the Policy that one of the Disputed Domain Names was registered before the Trade Marks were registered.

The Complainants succeed on the first element of the Policy.

C. Rights or Legitimate Interests

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 Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.

Rights or legitimate interests can be demonstrated by the Respondent’s bona fide use of the Disputed Domain Names in connection with an offering of goods or services, before it received notice of the dispute (paragraph 4(c)(i) of the Policy).

The Respondent has demonstrated use of the Disputed Domain Names in connection with an offering of goods or services. From at least as early as 2002, the Respondent was an authorized reseller of Pangaea’s Nanogen products.

The Respondent submits that its contractual arrangement with Pangaea has not expired or been validly terminated, and therefore still governs the relationship between those parties. The Complaint implies that this contractual arrangement is no longer in force, however the Complainants have not provided any evidence of its expiry or termination.

The Panel notes that the Respondent no longer obtains its products from Pangaea. It is open for the Panel to consider that the Respondent only had permission to use the Trade Mark (including in the Disputed Domain Name) during the term of the reseller arrangement. If that arrangement is no longer in force, then the outcome is clear: the Respondent no longer has rights or legitimate interests in the Disputed Domain Names. This was recently confirmed by the panel in ESET, spol. s.r.o. v. Antivirus Australia PTY Ltd., Rodney Fewster, ESET Pty Ltd., WIPO Case No. DAU2015-0014. (Also see, e.g., SPECS GmbH v. SPECS Scientific Instruments Inc. d/b/a. SPECS Technologies Corporation, WIPO Case No. D2009-0308 and the cases cited therein, and Jerome Stevens Pharmaceuticals, Inc. v. Watson Pharmaceuticals, WIPO Case No. D2003-1029).

It is open to the Panel to find that the permission from Pangaea to use to Trade Mark has expired, because it is not in dispute that the Respondent no longer purchases products from Pangaea.

However, in the absence of any clear evidence either way, the Panel will also consider the outcome on the basis that the contractual arrangement between the parties is still effective.

This requires consideration of Oki Data and the principles described in that decision in relation to bona fide use of a Disputed Domain Name by a reseller. The panel in Oki Data stated that a reseller or distributor (and particularly an authorized reseller or distributor) can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.

Even if the contractual arrangement has expired, the Oki Data principles have been extended to apply to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481).

Oki Data is an exception to a general rule. The general rule is that it is generally not permissible to register a domain name that is the same as another’s trade mark rights, knowing of those trade mark rights, to seek traffic to a commercial website. Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Oki Data is also subject to any agreement between the parties.

The examination of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Names is determined at the time the Complaint is filed. Based on the evidence provided by the parties, at the time the Complaint was filed, the Respondent’s use of the Disputed Domain Names did not meet the second and third elements of the Oki Data test for the following reasons:

- The Respondent has offered for sale a competitor’s products on its website at the Disputed Domain Names. The Panel does not accept the Respondent’s submissions that this was done in error, but even if it was, the Panel is of the view that a single instance is sufficient to fail the second element of this test.

- The Respondent has not disclosed its relationship with Pangaea, the Trade Mark owner, and instead has included a statement on the website at the Disputed Domain Names which gives the impression that the Respondent is the owner of the Trade Mark or the product manufacturer.

An Internet user visiting the Respondent’s website at the Disputed Domain Names could easily be confused as to the role of the Respondent, and believe that the Respondent is the manufacturer or brand owner of Nanogen products, and not simply one of a number of Australian resellers. Accordingly, use of the Disputed Domain Names in these circumstances is not legitimate.

The Respondent relies on its written agreements with Pangaea which gives the Respondent permission to use the Trade Mark, and other material from Pangaea’s own website, for the purpose of selling Nanogen products. However, it was also a term of those agreements that the Respondent only use that material to sell Nanogen products and none other, which it has failed to do.

Rights or legitimate interests can also be demonstrated by evidence that the Respondent has been commonly known by the Disputed Domain Names (paragraph 4(c)(ii) of the Policy). The Respondent submits that it is commonly known by the Disputed Domain Names, as it has operated a successful online store at the Disputed Domain Names for approximately 15 years. However, it has not provided any evidence (for example, of the extent of its customer base, sales figures, marketing materials, etc) to support this claim.

It further submits that its registration of the Disputed Domain Names predates the registration of the Trade Marks in both Australia and the United Kingdom. Based on the dates provided to the Panel by the Registrar, this is not entirely accurate. However, in any event, registration of a Disputed Domain Name prior to a Trade Mark is not determinative of bona fide use. The Respondent did not create the Nanogen brand. Pangaea had been using this brand before the Disputed Domain Names were registered (even though Pangaea registered the Trade Mark later). The Respondent registered the Disputed Domain Name with knowledge of, and because of, the Trade Mark and Pangaea’s products. It did so with Pangaea’s permission, and for the benefit of the Nanogen brand. As stated above, the conditions of that permission were not complied with by the Respondent. Further, the Panel can conclude that the permission ceased, either when the Respondent ceased buying products from Pangaea or when the Complaint was filed.

Similarly, registration of the business name “Nanogen” (which, as submitted by the Respondent, predates the registration of the Trade Mark in Australia) does not of itself establish rights or legitimate interests in the Disputed Domain Names. The Respondent must show that it has traded under the business name in good faith.

The Panel concludes that the Respondent has failed to provide sufficient evidence of its rights or legitimate interests to rebut the Complainants’ prima facie case.

The Panel notes the submissions made by both parties in respect of the delay in the Complainants’ initiation of the auDRP proceeding. As mentioned above, the examination of whether or not the Respondent has rights or legitimate interests in the Disputed Domain Names is determined at the time the Complaint is filed. The Panel does not see any need to address this issue in detail, given that the conduct the subject of the Complaint has occurred as recently as February 2015.

The Complainants succeed on the second element of the Policy.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered or used the Disputed Domain Names in bad faith.

The Panel finds that the Disputed Domain Names were registered pursuant to a contractual arrangement with Pangaea, and therefore were not registered in bad faith. This is less clear in respect of the Disputed Domain Name <nanogen.net.au>, which was registered in 2009, but absent any evidence from either party that the contractual arrangement had been terminated prior to that date, the Panel considers that this Disputed Domain Name may also have been registered with Pangaea’s permission.

However, the Panel must still consider whether the subsequent use of the Disputed Domain Names was in bad faith.

The Complainants submit that as the Disputed Domain Names are identical to the Trade Mark, the Respondent’s continued use of the Disputed Domain Names to resolve to the Respondent’s own website, which predominantly sells Nanogen brand products, has been done to encourage Internet users to visit the website under the belief that the website is operated by, or affiliated with, the owner of the Nanogen brand and Trade Mark. Bad faith is also indicated by the fact that the website offers for sale a competitor’s products. This appears to be in reference to paragraph 4(b)(iv) of the Policy.

The Panel accepts these submissions. While the Panel does not believe the Respondent’s conduct was aimed at intentionally disrupting Pangaea’s business activities, or “stealing” sales from either of the Complainants, it remains that the Respondent was, for a time, holding itself out as being the Trade Mark owner or manufacturer of the Nanogen products, and selling a competitor’s products on its website at the Disputed Domain Names. It is irrelevant that the Respondent was unaware that Pangaea objected to the contents of the website until the Complaint was filed.

Further, the Respondent states that the fact that Pacific Direct has previously offered to purchase the Disputed Domain Names from the Respondent shows that it is trying to use the complaint process to acquire the Respondent’s online business at no cost. In fact, the Complainant has provided evidence that the Respondent rejected an offer by Pacific Direct to purchase the Disputed Domain Names for $30,000, and instead asked for $100,000 (presumably AUD). In those circumstances, the Panel finds that Pacific Direct’s offer was nothing more than an attempt to bring a speedy resolution to the dispute.

The Complainants succeed on the third element 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 Disputed Domain Names <nanogen.com.au> and <nanogen.net.au> be transferred to the Complainant Pacific Direct Intertrading Pty Ltd.

John Swinson
Sole Panelist
Date: June 3, 2015