WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tigerturf Australia Pty Ltd. v. Mason Merion, Tiggerturf (Unregistered)
Case No. DAU2018-0021
1. The Parties
The Complainant is Tigerturf Australia Pty Ltd. of Campbellfield, Victoria, Australia, represented by Spruson&Ferguson Lawyers, Australia.
The Respondent is Mason Merion, Tiggerturf (Unregistered) of Shoalwater, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <tigerturf.com.au> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 27, 2018. On July 27, 2018, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On July 27, 2018, GoDaddy.com, LLC transmitted by email to the Center its verification response. The Complainant filed an amended Complaint on August 10, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), 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 August 13, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on September 18, 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 a synthetic turf manufacturer which has been trading for over 36 years and is now also one of the world's largest synthetic turf manufacturers with worldwide recognition and accreditation.
The Complainant registered Australian trademark No. 893822 incorporating the words "Tiger Turf" and device on November 2, 2001. From January 2005 to January 2018, the Complainant was also the previous registrant of the disputed domain name. In 2017, the Complainant moved its primary website to "www.tigerturf.com/au" under the Top-Level Domain ".com" and inadvertently allowed its registration of the disputed domain name to lapse in January 2018.
According to the documentary submissions of the Complainant, the Respondent is a sole trader resident in Victoria, Australia. The Registrar's WhoIs records list the Respondent as being located in Shoalwater, Queensland, Australia. The disputed domain name was registered on January 3, 2018 in the name of "tiggerturf", which is an unregistered business name. The disputed domain name resolves to an inactive website.
5. Parties' Contentions
A. Complainant
The Complainant's contentions are as follows:
Identical or confusingly similar
The disputed domain name is identical to the Complainant's TIGERTURF trademark because the Top-Level Domain (i.e., ".com.au") may be disregarded when the balance of a domain name is identical to a trademark.
No rights or legitimate interests
The Respondent's business name "tiggerturf" is unregistered and there is no evidence that the Respondent carries on business or has applied for a trademark under this name. Therefore, there is no proper basis for the Respondent to be eligible for the disputed domain name under the auDA eligibility criteria for ".com.au" domain names.
The domain name was registered and is being used in bad faith
The Respondent opportunistically registered the disputed domain name when it had expired due to an inadvertent non-renewal by the Complainant. Moreover, the Respondent used an unregistered business name ("Tiggerturf") almost identical to and in infringement of the Complainant's trademark TIGERTURF to register the disputed domain name and has maintained the disputed domain name so that the Complainant is blocked from using it.
The Respondent's registration and use of the disputed domain name clearly demonstrates an intention to divert Internet users to the Respondent's website situated on the disputed domain name for commercial gain.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's TIGERTURF trademark. The Top-Level Domain (i.e., ".com.au") may be disregarded because it is viewed as a standard registration requirement. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.11.1).1
The first element of paragraph 4(a) of the Policy is therefore satisfied
B. Rights or Legitimate Interests
Section 2.1 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0") provides:
"A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. The complainant will usually make out a prima facie case by establishing that none of the paragraph 4(c) circumstances are present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by showing that the company name Tiggerturf is unregistered, that the Respondent has no trademark applications or registrations for "tiger turf", that the Respondent is not commonly known under the disputed domain name, and that the Respondent did not reply to the Complainant's pre-complaint cease-and-desist letter regarding the disputed domain name. The Respondent has not responded to assert any rights or interests or explain its use of the disputed domain name or the name Tigger Turf.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered or Subsequently Used in Bad Faith
The Respondent opportunistically registered the disputed domain name when it had expired due to an inadvertent non-renewal by the Complainant. This constitutes bad faith and is supported by a long line of Uniform Domain Name Dispute Resolution Policy and auDRP decisions, which is reflected by the following finding of the panel in Commission for Art Recovery, Inc. v. Alexandr Zaharov,
WIPO Case No. D2008-1591:
"The actions of the Respondent in acquiring the disputed domain name after it had lapsed and after it had been used by the Complainant for 7 years was clearly an opportunistic acquisition of the sort discussed in the Rug Doctor case cited earlier. It would be hard to find a more obvious case where there has been an opportunistic capitalization by the Respondent of the Complainant's error in allowing the disputed domain name to lapse".
The third part of paragraph 4(a) of the auDRP is therefore satisfied.
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 name <tigerturf.com.au> be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: October 3, 2018
1 Noting the substantive similarities between the .au Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has made reference to the UDRP, where appropriate.
