The Complainant is Eva-Last Hong Kong Limited, China, represented by Ashurst, Australia.
The Respondent is Ben Ranieri, The Trustee for B J Trust, Australia.
The disputed domain name <eva-last.com.au> is registered with Web Address Registration Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2019. On the same day, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On August 2, 2019, 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” 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 16, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 30, 2019. 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.
EVA-LAST is a brand of co-extruded wood-plastic composite decking and related products sold internationally.
A South African company named EVA LAST Distributors (Pty) Ltd holds South African trademark registrations numbers 2009/24019 and 2009/24020, both for a word and device mark (the “EVA-LAST device”), both registered on August 8, 2011, and specifying services in classes 35 and 37, respectively. A Hong Kong corporation named MCC Investments Limited holds multiple trademark registrations, including European Union trademark registration number 015807324 for the EVA-LAST device, registered on January 25, 2017, specifying goods and services in classes 19 and 35. Those trademark registrations remain current. MCC Investments Limited has recently obtained two United States of America trademark registrations for the EVA-LAST device, claimed in specific colors, and filed applications for Australian and New Zealand trademark registrations, that both remain pending. The evidence includes extracts from the WhoIs database for various domain names consisting of “eva-last” and different Top-Level Domain (“TLD”) or Second-Level Domain (“2LD”) suffixes but the names of the registrants of most of these other domain names have been redacted while one identifies another party as registrant.
The Respondent “Ben Ranieri” is an individual who is the registrant contact for the disputed domain name while the Respondent “The Trustee for B J Trust” is the disputed domain name registrant, as identified in the auDA WhoIs database. Mr. Ranieri is a director of a business trading as Urban Direct Wholesale that sells a composite decking product under the brand NewTechWood. According to evidence provided by the Complainant from online Australian government sources, B J Trust formerly operated under the business name “Urban Direct Wholesale”.
The disputed domain name was created on July 30, 2018. It resolves to a webpage that prominently displays the disputed domain name with the message “Our website under construction. We’re coming soon!”
A representative of the Complainant or an affiliated company met the Respondent Mr. Ranieri at a trade fair on January 17, 2019. The Complainant sent a letter to the Respondent dated January 18, 2019 requesting the transfer of the disputed domain name to the Complainant, with reimbursement of the costs of registration and hosting the site. The Respondent replied by a letter dated January 31, 2019, asking the Complainant to procure compensation for allegedly defective co-extruded decking that it had imported in 2014 from a third party that had joined a joint venture with the Complainant in the meantime.
MCC Investments Limited, EVA LAST Distributors (Pty) Ltd, Eva-Last Hong Kong Limited, and Asahi Sentai are part of a joint venture formed in May 2015 with a common controlling shareholding (the “Eva Last joint venture”). The disputed domain name is identical or confusingly similar to the Eva Last joint venture’s EVA‑LAST trademark. The trademarks are held in the name of the Eva Last joint venture companies individually for the collective benefit of the Eva Last joint venture. The Eva Last joint venture’s products have been available in South Africa since 2007, Europe since 2012, the United States since 2014 and Australia since 2018. The Eva Last brand is internationally well known.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by the name “Eva Last”. The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. The Respondent has not applied for, or registered, “Eva Last” as a trademark.
The Eva Last joint venture has not granted any right, license or permission for the registrant to use the name Eva Last or any variation thereof.
The Respondent registered the disputed domain name in bad faith and has subsequently used that registration in bad faith in order to extract financial payment from the Eva Last joint venture.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 1 of the Rules defines the “Complainant” as the party initiating a complaint concerning a domain name registration. The Complaint concerning the disputed domain name registration was initiated by Eva-Last Hong Kong Limited. Section II.A of the Complaint identifies that company as complainant and provides that company’s details. The Complainant’s legal representative also stated in its cover email that the Complaint was “filed on behalf of Eva-Last Hong Kong Limited”.
Although Section V of the Complaint asserts that “the Complainant is making this complaint on behalf of the Eva Last joint venture” (made up of Eva-Last Hong Kong Limited and three other companies), the other three companies are named only in the course of argument. The Complaint does not assert the existence of a separate joint venture entity.
Pursuant to paragraph 4(f) of the Policy and paragraph 10(e) of the Rules, a complaint may be brought by multiple complainants against a single respondent provided certain prima facie criteria are met. These criteria may include whether the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 22.214.171.124 The Panel notes that the Complaint does not advance any arguments for consolidation of complaints, nor does it present any supporting evidence to that effect. Accordingly, the Panel is unable to discern any grounds for consolidation.
Therefore, the Panel does not find any party besides Eva-Last Hong Kong Limited to be a complainant in this proceeding.
Accordingly, the Panel finds that the Complainant in this proceeding is Eva-Last Hong Kong Limited.
Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(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 has been registered or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
This Complaint is based on multiple registrations of the EVA-LAST device trademark in multiple jurisdictions.2
The sole textual element of the EVA-LAST device trademark consists of the letters “eva” and the word “last”, which are very prominent in the trademark. These letters and word are not subject to a disclaimer. The design or non-textual elements of the trademark do not overtake this textual element in prominence and the design elements are incapable of representation in a domain name. Therefore, the Panel will disregard the design elements in its comparison for the first element of the Policy. See WIPO Overview 3.0, section 1.10.
The disputed domain name wholly incorporates the sole textual element of the EVA-LAST device trademark, including the hyphen between EVA and LAST. The only additional element is the 2LD suffix “.com.au”. A 2LD suffix is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the EVA-LAST device trademark.
The difficulty for the Complainant is that the first element of paragraph 4(a) of the auDRP requires it to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel has already found in section 6.1 above that, given the lack of grounds for consolidation, the sole Complainant in this proceeding is Eva-Last Hong Kong Limited.
The Complaint does not assert that Eva-Last Hong Kong Limited holds any EVA-LAST device trademark registration. Thus, the critical threshold (which the Complainant fails to meet for the reasons set out below), is to demonstrate how the Complainant is related to either trademark holder sufficient to establish that the Complainant has rights in the EVA-LAST trademark for the purpose of this proceeding. The Panel notes in this regard that no evidence has been submitted demonstrating how the named Complainant is entitled to use the relevant trademarks.
The Complainant does not substantiate its assertion that trademarks are held in the name of the Eva Last joint venture companies individually for the collective benefit of the Eva Last joint venture. The Complaint asserts that the Eva Last joint venture companies are subject to a common controlling shareholding, but it does not identify the party who allegedly exercises common control. Rather, it implies that the joint venture companies that hold registered trademark rights (i.e. EVA LAST Distributors (Pty) Ltd and MCC Investments Limited) are neither parent corporations nor subsidiaries of the Complainant. Further, the Complaint does not produce any evidence that a party that does have rights in the EVA-LAST device trademark has authorized Eva-Last Hong Kong Limited to file the Complaint or granted it an implied license to use an EVA-LAST trademark. See WIPO Overview 3.0, section 1.4.1 and, for example, NA PALI SAS v. BWI Domains, Domain Manager, WIPO Case No. D2008-1859.
Accordingly, the Panel does not find that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant, Eva-Last Hong Kong Limited, has rights. The Complainant has failed to establish the first element of paragraph 4(a) of the auDRP.
Given the above finding, the Complainant lacks standing to bring the Complaint. It is unnecessary for the Panel to consider the other elements of paragraph 4(a) of the auDRP, or whether the Complainant fulfils the eligibility and allocation rules for the “.com.au” 2LD with respect to the disputed domain name.
This Decision is without prejudice to the rights of other parties who can prove an interest in a relevant trademark to initiate a complaint under the auDRP with respect to the disputed domain name.
For all the foregoing reasons, the Complaint is denied.
Date: October 14, 2019
1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel cites UDRP jurisprudence when appropriate.
2 The trademarks submitted with the Complaint indicate registrations are held by MCC Investments Limited or EVA LAST Distributors (Pty) Ltd.
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