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PORTMANS CONSOLIDATED PROPRIETARY LIMITED v ANTHONY MELLICK [2001] GENDND 51 (11 January 2001)

WIPO Arbitration and Mediation Center

The Complainant is Portmans Consolidated Proprietary Limited, ACN 006 137 140 of 187-191 Lennox Street, Richmond, Victoria 3121, Australia.

The Respondent is Anthony Mellick of 38 Bourke Road, Alexandria, New South Wales, 2105, Australia.

The domain name on which the Complaint is based is <portmans.com>.

The registrar with which the domain name is registered is Network Solutions Inc, 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2000.

3.3 The Center has stated in its "Formal Requirements Compliance Checklist" dated November 20, 2000 that:

- The Complaint was filed in accordance with the requirement of the Rules and the Supplemental Rules.

- Payment for filing was properly made.

- The Complainant has complied with the formal requirements.

3.4 The Panel accepts these findings and itself finds that:

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a), having been sent to the Respondent by Post/Courier and E-mail.

- Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued to both parties a Notification of Respondent Default dated December 12, 2000.

- On January 3, 2001 the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of a single member and that, in the absence of exceptional circumstances, the decision of the Panel was to be forwarded to the Center by January 16, 2001.

- The Administrative Panel was properly constituted.

4.1 The Complainant provides clothing and retail services (particularly with respect to women’s clothing, headgear, footwear and accessories) under the name PORTMANS and owns registered trade marks for PORTMANS in Australia (since 1991), New Zealand (since 1992), Singapore (since 1995) and Indonesia (1996). These are registered with respect to clothing retail services (Australia, New Zealand and Indonesia), and clothing and retail services (Indonesia). Certified copies of the Australian, New Zealand and Singaporean registrations and photocopies of the Indonesian registrations are provided in Annexe C of the Complaint.

4.2 The Complainant further asserts that it has an extensive reputation, particularly in Australia, in the mark PORTMANS, supported by extensive advertising and that "few if any women resident in the principal Australian cities would be unaware of the Complainant’s PORTMANS brand". No evidence, however, is provided of the extent of this reputation either within Australia or in any other countries, and it is therefore not possible for the Panel to draw any conclusions in relation to any non-statutory rights which the Complainant may have in the mark PORTMANS.

4.3 According to the Whois database of Network Solutions Inc, the Respondent is listed as the Registrant and Billing Contact of the domain name PORTMANS.COM, while Bendy, Mikey-Wn-Eacd of Portmans Fashion, 1 Russo Lane, Los Angeles, CA 902880 is given as the Administrative Contact and Bendy, Mikey (MBT 487) of Portmans Fashion, 1 Russo Lane, Los Angeles, CA 902880 is given as the Technical and Zone Contact. This registration was created with Register.com on May 1, 2000, expires on May 1, 2001, and was last updated October 29, 2000.

- The Complainant does not address specifically the individual elements listed in paragraph 4(a) of the Policy, but it seems clear that the following assertions are implicit in the Complaint.

- With respect to the element described in paragraph 4(a)(i) of the Policy, that the disputed domain name is identical to the registered PORTMANS trade marks.

- With respect to the element described in paragraph 4(a)(ii) of the Policy, that there is no indication in the registration details of the disputed domain name of any interest by the Respondent in the mark PORTMANS. The Respondent further alleges that there is no indication that the Respondent has ever made any bona fide offer of goods or services by reference to the mark PORTMANS from the web site portmans.com. It notes further that the domain name was registered on May 1, 2000 and as of October 30, 2000 the web site merely displayed the banner "This site is currently under construction. Please email us your name and any comments you wish to say, and we'll’ let you know when our site is being launched" (Annex D of the Complaint).

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the disputed domain name has been registered by the Respondent "in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to one or other of the Complainant". The reference here to "one or other of the Complainant" is unclear, as there is only one Complainant referred to in the Complaint. The language in which this part of the Complaint is framed reflects directly that used in paragraph 4(b)(i) of the Policy.

As noted above, the Respondent has not filed a Response to the Complaint.

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

As noted in paragraph 4.1 above, the Complainant is the owner of registered trade and service marks comprising the name PORTMANS in four countries. Leaving aside the suffix .com, the Respondent’s domain name is exactly the same, and therefore the Complainant has established this element of paragraph 4(a) of the Policy, namely that it has rights in a trade or service mark identical to that of the Respondent’s domain name.

Paragraph 4(c) of the Policy sets out certain matters which a Respondent can point to as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

(i) before any notice to you [the Respondent] of the dispute, your 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; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present proceeding, there is no evidence that the Respondent has used the domain name portmans.com in connection with any bona fide business (subpara (i)). Nor can it be concluded that the banner on the portmans.com web site amounts to evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)). Likewise, there is no evidence before the Panel, apart from the statement on the portmans.com web site that "Portmans is a Worldwide Fashion Enterprise", that indicates that the Respondent has ever carried on a business under the name "Portmans" (subpara (ii)). Furthermore, there is no evidence that on which the Panel can make any assessment of the matters referred to in subpara (iii), i.e. whether the Respondent has made or is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to mislead customers or to tarnish the trade mark at issue.

The matters referred to paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, however, there has been no evidence at all presented by the Respondent and, under Paragraph 14(b) of the Rules, the Panel is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the 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 service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that both registration and use of the domain name in bad faith are required here. Of the factors listed above, (i)-(iii) relate primarily to registration, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there may be other factors that will point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of the Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under Paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences as it considers appropriate.

In the light of the above, the Panel makes the following findings:

- With respect to the factor mentioned in subpara 4(b)(i), there is no evidence presented by the Complainant that the Respondent registered the disputed domain name for the purpose of selling or transferring it for valuable consideration in excess of out of pocket expenses. In particular, there is no evidence that the Respondent has at any time approached the Complainant with the object of transferring the domain name for such a consideration. Nonetheless, the Respondent has not responded to the Complainant’s allegation that this was his intention in registering the name, and it is open to the Panel draw this inference from the Respondent’s silence.

- With respect to the factor mentioned in subpara 4(b)(ii), there is no evidence of a pattern of conduct by the Respondent which consists of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and it is therefore not appropriate to draw such an inference from the fact that the Respondent has not filed any contrary evidence in response.

- With respect to the factor mentioned in subpara 4(b)(iii), there is also no direct evidence that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Nonetheless, it has been clearly established that the Complainant is the owner of registered trade and service marks in four countries comprising the mark PORTMANS and that these are registered with respect to clothing and similar articles (particularly for women) and for retail services in respect of the same. While the Complainant has not provided evidence of the extent of the reputation in the marketplace of these marks, the registered marks are nonetheless statutory monopolies that give exclusive rights to the use of those marks within their respective territories with respect to the goods and services for which they are registered. The Respondent has registered the identical word as its domain name, and there is an indication on its web site that it is engaged in the same area of business ("Portmans is a worldwide fashion enterprise"). From these facts, and in the absence of any explanation from the Respondent, it is open to the Panel to infer that the Respondent’s registration of the disputed domain name was made in bad faith and falls within the criterion referred to in subparagraph 4(b)(iii).

- So far as use in bad faith of the disputed domain name is concerned (subparagraph 4(b)(iv)), it is clear that the web site has been established under the domain name portmans.com and that this was still in existence as at October 30, 2000. Up until this time (and perhaps this still remains the case), it has been possible for web users to access the site and to read the limited information that is contained there. Among other things, this states that this is the "world-wide internet site for PORTMANS and that the site is presently under construction". While there is no offering of goods or services from the web site, this still constitutes a use of the domain name and is unlike the Telstra case, where no web site had been established and where the question was whether the passive holding of a domain name registration alone was sufficient to constitute "use". In the present proceeding, the question remains whether the Respondent’s use of the disputed domain name is in bad faith. As to this, the Panel notes again that the disputed domain name is the same as the Complainant’s registered trade and service marks, and that the web site appears to be concerned with the same area of business as that of the Complainant, namely "fashion", which in turn indicates clothing and related items and services relating to these products. There is nothing in the web site to distinguish it from the operations of the Complainant, and the Respondent has provided no explanation of what it is doing or is intending to do. In the light of the above, the Panel therefore draws the inference that the disputed domain name is being used in bad faith within the meaning of subparagraph 4(b)(iv), namely for the purposes of attracting, for commercial gain, Internet users to the Respondent’s web site, by the creation of a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site.

On the basis of the above findings, the Panel concludes that there is sufficient evidence that the Respondent has both registered and used the domain name in bad faith since the time of registration.

The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy and accordingly requires that the domain name portmans.com be transferred to the Complainant.

Staniforth Ricketson
Sole Panelist

Dated: January 11, 2001