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Harvey Norman Retailing Pty Ltd v gghome.com Pty Ltd [2000] GENDND 1142 (25 September 2000)

WIPO Arbitration and Mediation Center

1.1. The Complainant is Harvey Norman Retailing Pty Ltd, a corporation located at Homebush West, New South Wales, Australia. The Respondent is gghome.com Pty Ltd of Oak Flats, New South Wales, Australia.

2.1. The domain name the subject of this Complaint is "harveynorman.com".

2.2. The Registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, USA ("Registrar").

3.1. The Complainant by email and by facsimile submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Uniform Rules"). Both the email copy and the facsimile hard copy of the Complaint were received by the WIPO Center on August 4, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, by email dated August 10, 2000.

3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on August 16, 2000. By email to the WIPO Center on August 21, 2000, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of the domain name "harveynorman.com" is the Respondent; informed that the administrative, technical, zone and billing Contact for the domain name is George Dragovic of the Respondent, and provided postal, telephone, facsimile and email contact details for the Contact; and informed that the status of each of the domain names is "active". The Registrar also confirmed that its 5.0 Service Agreement is in effect. Amongst other things, that agreement provides that the Respondent as registrant of the domain name agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.

3.3. Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier, email and facsimile to the addresses and number provided by the Registrar, on August 21, 2000. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.

3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

3.5. On September 8, 2000, within the time specified in the Notification of Complaint, the Respondent sent to WIPO Center by email a Response to the Complaint. An Acknowledgment of Receipt of Response was sent to the Respondent, and copied to the Complainant, by email on September 11, 2000.

3.6. On September 12, 2000, the Complainant sent to the WIPO Center by email a purported submission in reply to the Response. On the same day the WIPO Center by email informed the Complainant as follows:

Please be advised that the ICANN Rules and Policy do not foresee or provide for submissions to be made after the Complaint and Response. Accordingly, the Complainant’s further submission will not form part of the official case file, but will be forwarded to the Panel appointed in this matter, in whose discretion it rests whether to take it into account.

3.7. On the same date, the Respondent sent to the WIPO Center an email, asking as follows:

Would it be appropriate for me to respond to the Complainant’s reply, or would this be considered a futile exercise? Please advise.

3.8. On the same date, the WIPO Center responded to the Respondent’s enquiry, as follows:

With reference to your enquiry, please note that the ICANN Rules and Policy do not provide for the proposed exchange of submissions following the Complaint and Response.

If a Panelist, in receipt of the Complainant’s submission and your present request, considers that further submissions are necessary to clarify the pleadings, then the Panelist is able to request that these be provided by the parties.

3.9. On September 11, 2000 in accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On September 12, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On the same day the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christie’s appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by September 25, 2000. The case before this Administrative Panel was conducted in the English language.

3.10. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

3.11. The WIPO Center, in its communications with the Complainant and the Respondent subsequent to the filing of the Response, correctly observed the position under the Uniform Policy and the Uniform Rules. The Uniform Policy and the Uniform Rules do not provide for the parties to the dispute filing supplementary submissions subsequent to the Complaint and the Response. However, rule 12 of the Uniform Rules does provide that:

In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.

3.12. This Administrative Panel agrees with the views of the three-member Administrative Panel in Document Technologies, Inc. v. International Electronic Communications, Inc (WIPO Case D2000-0270) in relation to the filing of supplementary submissions, and with the approach adopted and applied by the single-member Administrative Panel in Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case D2000-0596). Supplementary submissions can only be filed at the request of the Administrative Panel. This Administrative Panel considers that it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (ie. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary to the clear intention of ICANN in adopting the Uniform Policy and the Uniform Rules in their present form.

3.13. This Administrative Panel considers that there are no circumstances of this case that are exceptional, such as to require the Panel to request the Complainant to file a reply to the Respondent’s Response. In particular, there is nothing exceptional about the facts in dispute between the parties, the disputed application of the principles of the Uniform Policy to those facts, or the form and substance of the Complaint and the Response filed by the parties, which warrants complicating the resolution of this dispute by requesting supplementary submissions from either or both of the paries. Accordingly, this Administrative Panel does not request supplementary submissions from the parties, and will not read the unsolicited supplementary submission made by the Complainant.

4.1. The Complaint asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.

4.2. The Complainant is a widely known company name in Australia and has been for many years.

4.3. The Complainant is the registered proprietor of the HARVEY NORMAN mark in Australia in class 37 (in relation to repair, installation and maintenance services) and in class 42 (in retail wholesale, distribution and other services in that class relating to a wide range of household furniture and electrical appliances), and in the United States in classes 35 and 37 for retail stores and wholesale distributorships featuring furniture, electrical appliances and the like, and for household renovation services, and repair and installation of household appliances and furniture. The Australian registrations are dated March 29, 1994. The United States registrations are dated August 31, 1999. Copies of these registrations were annexed to the Complaint.

4.4. The Complainant has used these marks for retail stores and wholesale distributorships featuring furniture, electronic appliances, lighting goods, hardware, home improvement goods, floor coverings, computers, computer accessories, computer software, household appliances and baby nursery equipment and household renovation services, repair of household appliances and furniture, installation and maintenance of household appliances and furniture.

4.5. The Complaint is unhelpfully brief, and lacking in detail about the activities of the Respondent. In fact, the Complaint made no express assertions about particular activities of the Respondent. However, the Complaint did annex a letter from the Complainant’s solicitor (attorney) to the Respondent, dated December 9, 1998, in which reference is made to the Respondent "advertising the sale of computer goods". Although it is not clear from this letter (and it is not mentioned in the Complaint), the implication is that the alleged advertising for sale of computer goods occurred on a web site located at the URL http://www.harverynorman.com. The Complaint also annexed a letter from the Respondent to the Complainant’s solicitor, dated December 16, 2000, in which it is stated: "Web page displaying our domain name was not used for retailing purposes, but rather for testing our US and Canadian based servers. At no time was anything purchased or sold through or in association with the domain, thus no [records of goods sold] exist."

4.6. The Respondent made the following express assertions in the Response about its activities:

As we are an exclusively web-based enterprise specifically for US market, our intended and actual use of the domain name was for the purposes of:

- custom-made web design packages,

- testing of our US and Canada based servers,

- web site hosting services,

- custom-made software, and

- conglomerate of e-commerce services.

In essence, the goods and services we provide are tailored to individual needs of our clients and are not offered by retail stores such as Harvey Norman Retailing Pty. Ltd.

4.7. Due to the paucity of content in the Complaint, it is not possible for this Administrative Panel to make any detailed findings about the Respondent’s conduct. However, the assertions in the Response, when read in the context of the annexures to the Complaint, lead this Administrative Panel to find that the Respondent used the domain name "harveynorman.com" in the URL of a web site to offer commercial services relating to web site design and hosting.

5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain names the subject of this dispute.

5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name in issue is identical to the Complainant’s registered trademark HARVEY NORMAN.

5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue "because they (sic) have no interest in the trade marks that have been registered".

5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends that evidence of bad faith registration and use is established by the fact that the Complainant is "a widely known company in Australia and has been for many years", and that "it is likely that the domain name was registered in order to prevent Harvey Norman Retailing Pty Limited … from reflecting the mark in a corresponding domain name or for the purpose of selling the domain name to the Complainant at a future date".

5.5. At the outset, the Respondent contends that the Complainant’s trademark is "flawed", and so the Complainant "has no basis for the complaint". In particular, the Respondent contends that the Australian trademark registrations "have no relevance to this case as [they] are only valid in Australia". In relation to the US trademark registrations, the Respondent contends that "the complainant has not registered the services we provide and hence, even if the trademark is deemed valid - we still do not have conflict with the goods & services listed under the Trademark".

5.6. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Respondent contends that the domain name "harveynorman.com" is not identical to the trademark HARVEY NORMAN. The Response does not, however, provide any argument in support of this contention.

5.7. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Respondent contends that it has "all rights associated with the domain name "harveynorman.com" as outlined in this response, even though there is no interest in the Trademark "HARVEY NORMAN"’. The Response does not, however, indicate what are these rights associated with the domain name or how the Respondent has acquired them.

5.8. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Respondent contends that the domain name has been registered and used in good faith. In particular, the Response states that the Respondent used the domain name in association with an offering of services relating to web site design and hosting. These are services "not offered by retail stores such as Harvey Norman Retailing Pty Ltd" and not the subject of the trademark registrations. The Respondent’s web site at the address containing the domain name "harveynorman.com" was deactivated on November 18, 1998, and then reactivated in about June, 2000. Due to the pending nature of this dispute, that web site contains only the words "CURRENTLY UNDER CONSTRUCTION". Further, the Respondent states that it registered the domain name in 1997 in the US, two years prior to the Complainant’s trademark registrations in the US.

5.9. The Respondent makes a contention that alludes to "reverse domain name hijacking", or at least bad faith in bringing this action, by the Complainant. In particular, the Respondent states:

It is likely however, the Trademark was registered in the USA in order to obtain the rights to the domain name. As the Internet has been around since 1980’s and the complainant is an entity that sells equipment that uses Internet, it is reasonable to assume that the complainant would have registered the harveynorman.com domain name if it had any intention of using e-commerce, in particular – using it globally. Approximately two months ago, Gerry Harvey (MD Harvey Norman Retailing Pty. Ltd.) stated on Australian National Television that his company will not actively move into e-commerce as they found the results have been very poor. Furthermore, his buyers prefer to purchase items through his stores. This clearly indicates that the action by the complainant is in bad faith and in direct contradiction to the practices adopted by Harvey Norman Retailing Pty. Ltd.

6.1. The Respondent’s general contention that the Complaint is flawed because the Australian trademark registrations are not relevant, and because the US trademark registrations cover goods and services not being offered by the Respondent, is without foundation. The Australian trademark registrations are at least as relevant as the US trademark registrations. There is nothing about the generic top level domain .com that makes US trademark registrations the only relevant registrations, or even the more relevant registrations compared with registrations in other countries. In fact, the Australian registrations are more relevant than the US registrations in this particular case, because both the Complainant and Respondent are based in Australia.

6.2. Further, it is not the case that a remedy under the Uniform Policy is only available where the Respondent has used the domain name in relation to an offering of goods or services in relation to which the Complainant’s trademark is registered. The basis for a remedy under the Uniform Policy is bad faith registration and use of the domain name. It is clear from the wording of the Uniform Policy, as well as from numerous cases decided under the Policy, that there can be such bad faith where the domain name is used in relation to an offering of goods or services quite different from those in relation to which the Complainant’s trademark is registered.

6.3. In relation to the domain name "harveynorman.com", the relevant part of this domain name is "harveynorman". This Administrative Panel finds that this part of this domain name is identical to the Complainant’s registered trademark HARVEY NORMAN.

6.4. The Respondent has not provided evidence of circumstances of the type specified in paragraphs 4(c)(ii) and (iii) of the Uniform Policy. The Respondent did, however, allude to circumstances of the type specified in paragraph 4(c)(i) of the Uniform Policy, namely that before notice of the dispute (and in fact two years before the Complainant’s registration of the US trademark), the Respondent had used the domain name in connection with a bona fide offering of goods or services. As stated in paragraph 4.7 of this Decision above, this Administrative Panel finds that the Respondent used the domain name "harveynorman.com" in the URL of a web site to offer services relating to web site design and hosting. If such offering of services was bona fide, then the Respondent will have demonstrated a right or legitimate interest in the domain name.

6.5. This Administrative Panel concludes that such offering of services by the Respondent was not bona fide, in the manner in which that term is used in paragraph 4(c)(i) of the Uniform Policy. It is of significance that the Respondent has provided no explanation for why it chose the words "harvey norman" for its domain name. The Complainant’s registered trademark HARVEY NORMAN is long-established and widely known in Australia, which is the location of the Respondent. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of its registration of the domain names. Further, the words "harvey norman" bear no obvious relationship to the business or other activities of the Respondent, and no such relationship was even asserted by the Respondent. Thus, the inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant. Accordingly, this Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name "harveynorman.com".

6.6. The Complainant asserts that the Respondent was aware of the Complainant’s trademark HARVEY NORMAN at the time of registration of the domain names, and registered the domain names for the purpose either of selling them to the Complainant or of preventing the Complainant from reflecting its trademark in corresponding domain names. The former purpose constitutes a use of the domain name of the type contemplated by paragraph 4(b)(i) of the Uniform Policy, but only if the Respondent seeks to sell the domain name for valuable consideration in excess of its out-of-pocket costs directly related to the domain name. The Complainant did not provide any evidence in support of the assertion that the Respondent registered the domain name the subject of this Complaint for the purpose of selling it to the Complainant. Accordingly, this Administrative Panel does not find that there are circumstances of the type contemplated by paragraph 4(b)(i) of the Uniform Policy. The latter purpose, of preventing the trademark owner from reflecting its trademark in a corresponding domain name, constitutes a use of the domain name of the type contemplated by paragraph 4(b)(ii) of the Uniform Policy, but only if the Respondent has engaged in a pattern of such conduct. No such pattern was shown or even asserted by the Complainant. Accordingly, this Administrative Panel does not find that there are circumstances of the type contemplated by paragraph 4(b)(ii) of the Uniform Policy.

6.7. There are, however, other circumstances specified by paragraph 4(b) as being evidence of bad faith registration and use of a domain name. In particular, paragraph 4(b)(iv) provides that such bad faith is evidenced by the Respondent’s use of the domain name to intentionally attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the web site. As discussed in paragraph 4.7 of this Decision above, this Administrative Panel finds that the Respondent used the domain name "harveynorman.com" in the URL of a web site to offer commercial services relating to web site design and hosting. Further, as discussed in paragraph 6.5 of this Decision above, this Administrative Panel finds that the words "harvey norman" are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant. Thus, this Administrative Panel finds that the Respondent intentionally sought to attract, for commercial gain, users to its web site at www.harveynorman.com, by creating a likelihood of confusion with the Complainant’s trademark HARVEY NORMAN as to the source, sponsorship, affiliation, or endorsement of that web site. Accordingly, this Administrative Panel finds established the circumstances specified in paragraph 4(b)(iv) of the Uniform Policy, and therefore finds that the Respondent registered and used the domain name "harveynorman.com" in bad faith.

7.1. This Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint.

7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel requires that the Registrar, Network Solutions, Inc., transfer to the Complainant, Harvey Norman Retailing Pty Ltd, the domain name "harveynorman.com".

Andrew F. Christie
Sole Panelist

Dated: September 25, 2000