WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wrigley Confectionery Company Pty Limited v. David Fry
Case No. DAU2018-0009
1. The Parties
The Complainant is The Wrigley Confectionery Company Pty Limited of Scoresby, Victoria, Australia, represented by AJ Park IP Pty Ltd, New Zealand.
The Respondent is David Fry of Marleston, South Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <skittles.com.au> (“Domain Name”) is registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2018. On March 14, 2018, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On March 15, 2018, Web Address Registration Pty Ltd 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 March 20, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2018. On March 20, 2018, March 21, 2018, and March 22, 2018, the Center received email correspondence from the Respondent. On April 10, 2018, the Center informed the Parties that the Center would proceed to panel appointment.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 25, 2018. 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 an Australian confectionary company that, among other things, distributes confectionary in Australia known as “Skittles”. Skittles are a form of sugar confectionary that have been sold and marketed in Australia since the 1980s. The Complainant’s revenue from the sales of Skittles exceeds USD 10 million each year. Skittles are sold through various retail stores and the Complainant has run various marketing campaigns promoting Skittles confectionary.
The Complainant is the owner of two separate Australian trade mark registrations for the word “skittles” (the “SKITTLES Mark”). In particular the Complainant holds trade mark number 190014 for the SKITTLES Mark registered for confectionary. This mark has been registered since September 14, 1964.
The Respondent is an individual, who appears to operate a business selling teeth whitening kits. The Domain Name, <skittles.com.au>, was registered on December 30, 2013. Prior to the commencement of this proceeding the Domain Name was essentially inactive (in that it redirected to a parking page or failed to redirect to a page at all) or, following an initial cease and desist letter from the Complainant, redirected to a page with the text “Skittles Appreciation – Coming Soon” and text about the game known as “skittles” copied directly from Wikipedia (“Respondent’s Former Website”). Presently the Domain Name redirects to a site similar to the Respondent’s Former Website but now states “Online Skittles Game Coming Soon” (the “Respondent’s Website”).
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SKITTLES Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is subsequently being used in bad faith.
The Complainant is the owner of the SKITTLES Mark, having registered this mark in Australia since 1964. The Domain Name is identical or confusingly similar to the SKITTLES Mark, incorporating the SKITTLES Mark in its entirety.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. The Respondent has no licence or right to use the Domain Name and has never been granted any permission by the Complainant for the registration of the Domain Name. Before the Respondent was put on notice of the dispute he had made no preparations to use the Domain Name.
The Domain Name was registered and is being used in bad faith. The SKITTLES Mark is well-known in Australia and it is inconceivable that the Respondent was unaware of the mark when the Domain Name was registered. Furthermore the Respondent in 2015 solicited an invitation for the Complainant to purchase the Domain Name from it. The Respondent has also registered the Domain Name to disrupt the Complainant’s business and has passively held the Domain Name for a long period of time.
B. Respondent
The Respondent did not file a formal response but in email communications stated that he was aware that Skittles was a form of confectionary but that the word “skittles” was also used to describe a game or sport. He indicated that he had never received any communication from the Complainant prior to the present proceeding and that, being of English background he used the name “skittles” in reference to the game.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have a name, trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the SKITTLES Mark, having registrations for the SKITTLES Mark as a trade mark in Australia.
The Domain Name <skittles.com.au> contains the SKITTLES Mark in its entirety with the addition of “.com.au” which may be disregarded in comparing the Domain Name to the trade mark. The Panel finds that the Domain Name is identical to the SKITTLES Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SKITTLES Mark or a mark similar to the SKITTLES Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
While the Domain Name presently re-directs to a site that refers to skittles (the game), the Panel is not satisfied that the Respondent has demonstrated either bona fide use of, or demonstrable preparations to use, the Domain Name before any notice to it of the subject matter of the proceeding. The Respondent’s Former Website (the precursor to the Respondent’s Website) was created after the Respondent first received a letter of demand from the Complainant (in 2015). The Respondent’s Website simply contains five lines of text about the game skittles, copied from the first paragraph of the corresponding Wikipedia page and suggests that an online skittles game is coming soon. However the Response provides no evidence of any intention or demonstrable preparations to create an online skittles game at a website corresponding to the Domain Name, as opposed to simply creating the Respondent’s Website to, in the words of the Complaint, “give the registration of the domain name a veneer of plausibility”.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has failed to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to another person, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on Respondent’s website or location; or
(v) if any of the Respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the Domain Name in bad faith.
In the present case the Panel finds that the Domain Name was registered with awareness of the SKITTLES Mark (this has been conceded by the Respondent) and in the absence of any rights or legitimate interests held by the Respondent. The Domain Name has then been held, essentially inactively, for over four years. The Respondent’s Former Website was created after the Complainant had sent the Respondent a letter of Demand and the Respondent has provided no evidence to suggest that the Respondent’s Website is a precursor to the creation of an online skittles game, as opposed to being created for the purposes of “proving” a legitimate interest in the event of a dispute under the Policy. Finally although the evidence in the Complaint is clear that the Respondent engaged in communication with the Complainant in August/September 2015, in its Response the Respondent asserts that it has never been contacted by the Complainant.
The Panel notes that the initial parking page the Domain Name resolved to include an implicit invitation to the Complainant or a third party to make an offer to purchase the Domain Name. This offer to sell the Domain Name is made more explicitly in the Response. Given the Respondent’s awareness of the SKITTLES Mark at the time of registration, the lack of any evidence to support a finding that the Respondent intended to make any legitimate use of the Domain Name, and the invitations to the Complainant to purchase the Domain Name the Panel finds that circumstances exist indicating that the Respondent acquired the Domain Name primarily for the purpose of selling the Domain Name to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Accordingly, the Panel finds that the Respondent has used the Domain Name in bad faith under paragraph 4(a)(iii) 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, <skittles.com.au>, be transferred to the Complainant.1
Nicholas Smith
Sole Panelist
Date: April 27, 2018
1 The Complainant has requested transfer of the Domain Name. Given that the Complainant is the owner of the SKITTLES Mark and that the Domain Name reproduces the SKITTLES Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.
