WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koorong Books Pty Ltd v. Living Waters Queensland Pty Ltd

Case No. DCO2010-0046

1. The Parties

The Complainant is Koorong Books Pty Ltd of West Ryde, New South Wales, represented by LegalIT Lawyers, Australia.

The Respondent is Living Waters Queensland Pty Ltd of Greenhill Grove, Daisy Hill, Queensland, Australia, represented internally.

2. The Domain Name and Registrar

The disputed domain name <koorong.co> is registered with GoDaddy.com, Inc (the “ Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 24, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Response was filed with the Center on December 22, 2010.

The Center appointed John Swinson as the sole panelist in this matter on January 7, 2011. 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.

On January 10, 2011, the Complainant filed and served a Reply to the Response.

4. Factual Background

The Complainant is Koorong Books Pty Ltd (ACN 001 583 759), a company incorporated under the laws of Australia and involved in the sale of Christian media throughout Australia, including in physical stores and online.

The Complainant is the owner of the Australian registered trademarks Nos. 654301 and 717578, respectively registered on February 27, 1995 and September 23, 1996, for a stylised KOORONG logo. The Complainant also owns a number of domain names based around the word “Koorong” including <koorong.com> and <koorong.com.au>.

The Respondent is Living Waters Queensland Pty Ltd (ACN 142 119 275), a company incorporated under the laws of Australia. The Respondent primarily operates as a church ministry.

The disputed domain name, < koorong.co>, was registered on July 20, 2010 by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

Identical or Confusingly Similar

The Complainant’s business was founded in 1978 under the name “Koorong Books” and traded using its corporate name Koorong Books Pty Ltd since its incorporation on June 8, 1978 until 1988. Since 1988, while still using its corporate name, “Koorong Books”, the Complainant has traded under the name or style “Koorong” and has been using “Koorong” as a trademark since this time.

Specifically, the Complainant has intellectual property rights in the following trademarks which are stylised versions of the word “Koorong”:

- Australian registered trademark No. 654301, originally lodged on February 27, 1995; and

- Australian registered trademark No. 717578, originally lodged on September 23, 1996.

The Complainant is also the owner of a number of domain names based around the word “Koorong”, including <koorong.com> and <koorong.com.au>.

The disputed domain name contains the words of the Complainant’s stylised “Koorong” trademark in its entirety and is therefore identical to the Complainant’s registered trademark except for the country code suffix “.co” and will cause confusion to the public. The suffix “.co” does nothing to lessen the likelihood of confusion.

Further, the content of the website is irrelevant when considering whether the domain name is confusingly similar (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

Rights or Legitimate Interests

There is no evidence of a bona fide offering of services, the Respondent is not known as “Koorong” and the Respondent has no trademarks or pending trademarks containing the word or words similar to “Koorong”. Further, the Respondent has engaged in a pattern of cybersquatting and as such has no legitimate interests in the disputed domain name. Finally, the Respondent has no licence from the Complainant to use its trademark or register the domain name in dispute.

Registered and Used in Bad Faith

The Respondent acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for value as it has indicated its intention to sell the domain name for adequate “compensation”. Further, the Respondent has engaged in this behaviour in relation to other domain names. Specifically, the Respondent has registered at least three domain names that the Complainant is aware, each with the “.co” suffix, which comprise trademarks of parties other than the Respondent. In addition to the domain name <koorong.co>, the Respondent has registered the domain names <brambles.co> and <transurban.co>.

The Respondent is preventing the Complainant from reflecting its trademark in a corresponding domain name and again has engaged in a pattern of such conduct.

Further, the Respondent has created confusion as to the affiliation between the Complainant’s mark and the Respondent to intentionally attract Internet users for commercial gain.

Finally, the Complainant was under no obligation to register the disputed domain name (see Maplin Electronics Limited v. ME New Enterprise, Mayni Efrem, WIPO Case No., DCO2010-0016).

Therefore, the Complainant requests that in accordance with paragraph 4(i) of the Policy, the disputed domain name be transferred to the Complainant.

In a Reply to the Response, the Complainant further submits the following:

- as to the first element, the Panel should consider whether the domain name is identical or confusingly similar to the Complainant’s trademark and not whether the content of the website falls within the same class or classes in which the Complainant’s trademark is registered; and

- as to the second element, “Koorong Aboriginal Arts” was registered as a business name on November 1, 2010, however this is well after first contact from the Complainant on October 6, 2010 and the Complainant’s legal representative on October 26, 2010. As such, the Respondent has not produced any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.

B. Respondent

The Respondent makes the following submissions and arguments:

Identical or Confusingly Similar

The Respondent acknowledges the Complainant’s trademarks. However, the disputed domain name has been established for the purpose of selling Aboriginal art and church ministry which do not fall within the classes for which the Complainant has registered its trademarks.

The Complainant is not prominent or famous within the Christian community.

The word Koorong is a common geographical name in Australia and an Aboriginal name and word.

Typo-squatting is out-dated and exaggerated.

The suffix “.co” is relevant in overcoming any confusion on the part of Internet users.

The content of the website is different to the content of the Complainant’s business and website.

The Complainant failed to demonstrate any customers searching for the Complainant’s website accidentally went to the disputed domain name.

Rights or Legitimate Interests

Koorong Aboriginal Arts is one of the Respondent’s registered businesses.

Registered and Used in Bad Faith

The Respondent has registered many domain names.

The Respondent has never offered to sell the disputed domain name to anyone.

The Complainant did not register the disputed domain name as soon as it became available and has no need for a Columbian domain name.

The director of the Respondent is in the process of migrating all its domain names to the “.co” extension.

The Complainant’s trademarks are not famous or well-known.

It is unlikely that a consumer of the Complainant’s product would accidentally find the disputed domain name and impossible for them to be confused.

The Respondent has never offered to sell its domain name and it has no prior history of ever doing so. Other domain names are currently for sale because the Respondent is now fearful further action will be taken against it by other company’s. Other domain names are for sale at the lowest price.

The Respondent requests that the Panel dismiss the Complaint and make a finding of reverse domain name hijacking.

6. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.

The onus of proving these elements is on the Complainant.

Procedural Issue

The Complainant has filed a Reply. There is no right under the Policy or Rules for a Reply. However, in the circumstances of this dispute, the Reply is directly relevant to issues raised by the Respondent in the Response, and the Complainant could not have been expected to deal with such issues in its original Complaint. Accordingly, the Panel will accept and consider the Complainant’s Reply.

A. Identical or Confusingly Similar

The Complainant is the owner of two Australian Registered trademarks which are stylized versions of the word “Koorong”. For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The disputed domain name contains the word “Koorong” and as such is confusingly similar to the Complainant’s trademark. The “.co” suffix does nothing to alleviate the confusion that will be caused to the public. The dominant feature of the Complainant’s trademark registrations is the word “Koorong”.

The Complainant is also the owner of a number of domain names including the word “Koorong” and trades under “Koorong” as its primary business name. Thus, the Complainant also has common law rights in “Koorong” in relation to its use of “Koorong”.

In the circumstances of this case, it is not relevant that “Koorong” is also a place name or an Australian aboriginal word. The Complainant has trademark rights in “Koorong” and does not use “Koorong” to signify a place. There is no association between the aboriginal meaning of “Koorong” and the operation of a book store.

It is irrelevant that the disputed domain name has been established for purposes outside of the classes for which the trademarks have been registered. For this element of the Policy to be satisfied, the existence of a trademark and that the disputed domain name is identical or confusingly similar to it is all that is required to be satisfied. No issue of trademark infringement is relevant to this assessment.

Finally, the Complainant need not prove that any Internet users were in fact confused and visited the website at the disputed domain name mistakenly when attempting to search for the Complainant’s website.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and as such paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent is not known as “Koorong” and has no trademarks or pending trademarks containing the word “Koorong” or words similar. Further, the Respondent does not have a license from the Complainant to use the Complainant’s trademark or register the domain name.

Paragraph 4(c)(i) of the Policy provides that the respondent may demonstrate rights or legitimate interests in a domain name by use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to it of the dispute.

The Respondent contends that it has legitimate interests in respect of the domain name as “Koorong Aboriginal Art” is one of its registered businesses. The Respondent annexed to its Response a Certificate of Registration for this business name. The Certificate indicates that the business name was registered on November 1, 2010. However, as the Complainant outlines in its Reply to Response, the Respondent was first contacted by the Complainant on October 6, 2010. The Respondent was again contacted by the Complainant’s legal representative on October 26, 2010. As it is necessary to demonstrate use or preparation to use the domain name or a similar name in connection with the relevant offering of services, before any notice of the dispute, the Respondent cannot rely on registration of this business name as evidence of a right or legitimate interest in the domain name. The Respondent was aware of the dispute prior to undertaking any preparation to use the domain name for the purpose suggested. No other evidence in the form of business plans or other preparatory steps in establishing a business under the name “Koorong” have been provided by the Respondent to demonstrate preparation to use the disputed domain name for the sale of Aboriginal art or any other legitimate purpose.

The Complainant annexed to its Complaint screen captures of what appeared when it accessed the website at the disputed domain name. On October 22 and 27, 2010 the domain name redirected to the Living Waters Queensland website. On October 25, 2010 the domain name redirected to a website comprising a phone listing for Koorong White Suffolk Stud, a stud farm run by Koorong Pty Ltd and with seemingly no connection to the Respondent. On November 15, 2010, the disputed domain name did not redirect to any website. This further demonstrates that the Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services and specifically, not in connection with the selling of Aboriginal art. That the domain name resolved to these various websites, in particular, one not connected in anyway to the Respondent, evidences an absence of any legitimate interest in the domain name.

The Panel also viewed the disputed domain name on January 18, 2011 and was directed to a pay-per-click (“PPC “) webpage with numerous links for inter alia Christian books, bookstores, publishers, as well as two links unrelated to this class of information such as a links titled “Australia” and “Sydney Australia Airline”. When clicking on these links a user is directed to further external links, some related to Christian books and related topics and others that are unrelated. It would therefore appear that the Respondent is attempting to divert Internet traffic to its website in order to generate “pay-per-click revenue” (see eg BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478). This further evidences that the Respondent does not have a legitimate interest in the domain name and is not using the domain name for the bona fide offering of goods and services as suggested.

The Complaint has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this and establish that it has any rights or legitimate interests in the disputed domain name. Specifically, the Respondent has not provided any evidence sufficient to establish use, or preparation for use, of the disputed domain name in connection with the offering of Aboriginal art for sale.

As to whether the Respondent has engaged in a pattern of cybersquatting which evidences an absence of a legitimate interest, as the Complainant contends, will be dealt with in relation to the third element of bad faith. However, in the event the Respondent has engaged in such behaviour, this supports the finding that the Respondent has no legitimate interests in the disputed domain name.

Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.

The Complainant claims that it is one of the two largest retailers of Christian books and media in Australia, operating 18 Christian bookstores across Australia. The Complainant’s main form of advertising is via brochure mailing to over 120,000 and it also regularly advertises on Christian radio stations throughout Australia and has done so for the past five years. The Panel is satisfied that this is sufficient evidence to suggest that the Complainant and its trademark are well-known within the Christian community.

Further, the address of the Respondent is less than 1.2km from the Complainant’s Springwood store, opened in 2008. The proximity of the Complainant’s business to the Respondent’s premises is therefore further evidence that the Respondent was likely to have been aware of the Complainant’s trademark.

As relied upon by the Complainant, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 is relevant in finding that the Respondent was aware of the Complainant, its reputation, rights and interests. There the panel found that given the trademark was well-known and the respondent’s mailing address was in the same district as the complainant’s business address, it was inevitable that the respondent registered the domain names in full knowledge of the complainant’s rights and interests.

The Respondent submits that the Complainant has exaggerated its reputation in the Christian community and that its trademark is not well-known. However, even if the Complainant’s trademark is not as prominent as claimed by the Complainant, it can be inferred that Respondent by way of its directors was aware of the Complainant’s trademark, business and reputation given their apparent active participation in the Christian community.

In any event, it is clear from correspondence sent by the Respondent to the Complainant that the Respondent was aware of the existence and reputation of the Complainant and was familiar with its business.

Therefore, the Panel is satisfied that the Complainant’s trademark is sufficiently well-known to those in the Christian community that Internet users may mistakenly believe there is an affiliation between the Respondent’s website and the Complainant’s trademarks. The Panel is also satisfied that, most likely, the Respondent had knowledge of the Complainant’s trademark and reputation and that it intentionally chose the disputed domain name in order to cause confusion in the mind of Internet users as to the affiliation between the website and the Complainant’s trademarks and as such attract them to its website.

The Complainant submits that the commercial gain to the Respondent was attracting parishioners to its church and further, or alternatively, to obtain sponsorship or some other advantage for the church. It is noted that the Respondent submits it has never taken up a collection or offering of any kind to run its meetings.

In any event, as established earlier, the Respondent appears to be currently operating a PPC landing page and therefore deriving a commercial gain in this way (see e.g. BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQuest.com, Inc., WIPO Case No. D2009-1493).

Therefore, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating confusion as to the affiliation between the Complainant’s trademarks and the Respondent’s website.

As to the other grounds of bad faith, paragraph 4(b)(i) provides that bad faith is established where the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or competitor of the complainant for value.

As discussed previously and with particular reference to Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, the Panel decides that, most likely, the Respondent registered the disputed domain name with full knowledge of the Complainant’s rights and interests.

Further, the Respondent is also the registered owner of the domain names <brambles.co> and <transurban.co>. Trademarks including the words “brambles” and “transurban” are registered in Australia and worldwide, and are trademarks of well-known Australian businesses. Moreover, the Respondent has offered the <brambles.co> and <transurban.co> for sale for USD 100. However, it is unclear whether the disputed domain name was acquired primarily for the purpose of selling, renting or otherwise transferring the domain name.

Irrespective of whether this is evidence of a consistent course of cybersquatting, that the Respondent has registered several domain names identical or similar to registered trademarks of others is relevant to bad faith on the part of the Respondent.

As to whether the Respondent registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name is not made out in the circumstances.

Therefore, the Panel finds that the Respondent registered and used the domain name in bad faith.

D. Reverse Domain Name Hijacking

The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant. The Panel finds that the Complaint was not brought in bad faith and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking.

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, <koorong.co> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: January 19, 2011