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Yakka Pty Ltd v. Mr. Paul Steinberg [2004] GENDND 1234 (3 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Yakka Pty Ltd v. Mr. Paul Steinberg

Case No. D2004-0502

1. The Parties

The Complainant is Yakka Pty Ltd, Broadmeadows, Victoria, Australia, represented by Phillips Ormonde & Fitzpatrick, Australia.

The Respondent is Mr. Paul Steinberg, Carlton, Victoria, Australia, represented by The Alfreds Group Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <hardyakka.com> is registered with Melbourne IT, trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2004. On July 9, 2004, the Center transmitted by email to Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On July 12, 2004, Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2004. The Response was filed with the Center on August 9, 2004.

The Center appointed James A. Barker as the Sole Panelist in this matter on August 20, 2004. 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 following facts are uncontested:

The Complainant was incorporated in 1947 to carry on the business of a clothing manufacturer. The Complainant is the owner of the registered trademarks YAKKA and HARD YAKKA. The trademark HARD YAKKA was registered in Australia by the Complainant in 1995, and is registered in other jurisdictions, including New Zealand, the United States of America, and the United Kingdom. The Complainant has used its marks for the promotion and sale of the Complainant’s products in Australia and elsewhere.

The Respondent operates a retail outlet in the Australian State of Victoria, trading under the name of “Carlton Hardware & Handyman Centre.” Business name details attached to the Complaint indicate that business is carried on by the company Steinberg (Australia) Pty Ltd. The Respondent’s retail outlet offers for sale a broad range of clothing and footwear manufactured by different manufacturers, including clothing manufactured by the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark HARD YAKKA.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has an extensive and long standing reputation in the trademarks YAKKA and HARD YAKKA. The Complainant has never authorized the Respondent to use its trademarks.

The Respondent registered and used the domain name in bad faith. The Respondent was aware of the Complainant’s rights to and extensive reputation in the trademarks YAKKA and HARD YAKKA, for reasons including the dispute in Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903. The panel in that case made a finding that the domain name <yakka.com> be transferred to the Complainant. (The Panel notes that the respondent in WIPO Case No. D2002-0903 was named as “Carlton Handyman & Hardware Centre.” The business said to be operated by the Respondent in this case is named as “Carlton Hardware & Handyman Centre.” It seems reasonable to accept and the parties appear to refer to that business as the same in both cases.)

B. Respondent

The Respondent claims, in effect, that the Complainant has not provided adequate evidence to support its trademark rights in all of the countries claimed. In relation to the Complainant’s Australian registered marks, the presumption of registrability would certainly have been dismissed by the Registrar of Trademarks on the grounds that the mark is not inherently able to distinguish the Complainant’s goods as the words themselves - “hard yakka” - in that order, are common words in Australia, simply meaning “hard work.” The Respondent provides a number of dictionary references, including that from the Macquarie Dictionary (3rd edition). That dictionary relevantly defines the word “yakka” as “noun Colloquial 1 work: The old man come up the hard way but his kids’ll always have plenty others to do the hard yakka. - Mary Durack, 1959.”

There are many businesses which incorporate the words “hard yakka” and “yakka.” (The Respondent provided, attached to the Response, a list of businesses in Australia which incorporate the words “yakka” or “hard yakka” in their business names.)

The relationship between the Complainant and the Respondent is that between a manufacturer/supplier and their retailer, which is a critical relationship to the Respondent’s business.

The Respondent on the Internet is commonly known as “hardyakka.com.”

In Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903, the Respondent did not respond and, in any event, views the Complainant’s reference to that case in the current proceeding as irrelevant.

Even after the decision in Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903, the Complainant failed to register the domain name <hardyakka.com>. It is the view of the Respondent that the Complainant did not “use it” so should “loose it” [sic].

The Respondent has never used a website in bad faith and has never made any demand for payment in return for surrender of a website. Even the “www.hardyakka.com” website provides a prominent link to the Complainant’s website.

6. Discussion and Findings

For the Complaint to succeed the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and

- the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)); and

- the domain name was registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed respectively below.

A. Identical or Confusingly Similar

Complainant’s rights

There is no dispute that the Complainant has a registered trademark in HARD YAKKA in Australia, where both the Respondent and Complainant reside. The Respondent argues that, despite the Complainant’s registered mark, the mark is not capable of distinguishing the Complainant’s goods because the words “hard yakka” have a common dictionary meaning in Australia. But that contention is not relevant to these proceedings. Paragraph 4(a)(i) of the Policy requires only that a Complainant establish that it “has rights” in a trademark or service mark. The Complainant clearly has rights arising from its registered mark.

Identical or confusingly similar

The domain name is only different to the Complainant’s mark HARD YAKKA in the addition of the “.com” extension; the lack of a space between the words “hard” and “yakka,” and the representation of it in lower case. None of these differences distinguish the disputed domain name from the Complainant’s mark. All of those differences arise incidentally and necessarily in the nature of a domain name. In other proceedings under the Policy panels have consistently disregarded insubstantial differences of these kinds. Accordingly, the Panel finds that the disputed domain name is at least confusingly similar to the mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent put forward a number of arguments to support its rights or legitimate interests in the disputed domain name. The Panel does not accept those arguments for the following reasons.

Generic meaning

Firstly, the Respondent contends that Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903 is irrelevant to these proceedings - although the Respondent does not explain why. The facts in that case were very similar to this one. In that case, the panel found that the respondent (in that case, the business associated with the Respondent) had no rights or legitimate interests in the domain name <yakka.com>.

The Respondent also notes that, in that case, the respondent did not respond to the complaint. However the panel in that case did consider arguments raised by the respondent (as exhibited in attachments to the complaint) which are also raised by the Respondent in this case. Those arguments are, in effect, that the Respondent is free to register the words “hard yakka” in a domain name because the words have a generic meaning. But, as noted by the panel in Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903, that argument ignores the Complainant’s rights in its registered mark. It also ignores the existence of the Policy.

First to register

Secondly, the Respondent states that “[e]ven after the decision on case number D2004-0903, the Complainant failed to register the domain of <hardyakka.com>…the Complainant did not ‘use it’ and so should ‘loose [sic] it’.” Put another way, the Respondent appears to contend that, because the Complainant did not register the domain name, it has no rights to it. But again, that argument ignores the existence of the Policy and the Complainant’s trademark rights. If the argument were correct, no complaint could ever succeed under the Policy. (The Respondent’s argument in this connection was apparently made in relation to the issue of bad faith under paragraph 4(a)(iii) of the Policy, although it appears to the Panel that it is more relevant to a determination here, under paragraph 4(a)(ii).)

Retailer - Supplier Relationship

Thirdly, the Respondent states that its relationship with the Complainant is a relationship between a manufacturer/supplier and its retailer. The existence of that relationship is not in dispute. But that relationship does not by itself confer the Respondent with a right or legitimate interest in the disputed domain name. See for example The Marigny Corporation v. Discount Coffee.com, Inc., WIPO Case No. D2001-0354. That case, like this one, involved a complainant with rights in a registered trademark which the respondent argued was generic, and involved the respondent using the domain name to offer goods for sale similar to those offered by the complainant. In that case, the respondent was found to have no rights or legitimate interests in the domain name.

Some panel decisions have found in favour of respondent retailers, where the supplier/complainant acquiesced or approved to some extent of the respondent’s conduct. (See for example Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.) However the evidence in this case is that the Complainant did not approve of or acquiesce in the Respondent’s registration and use of the disputed domain name.

Commonly known

Fourthly, the Respondent asserts that “on the Internet [the Respondent] is commonly known as ‘hardyakka.com’.” Paragraph 4(c)(ii) of the Policy provides that evidence that a respondent is commonly known by a domain name shall demonstrate rights or legitimate interests in the domain name.

The Respondent provided little evidence to support its assertion that it is commonly known as <hardyakka.com>. The Respondent is Mr. Paul Steinberg. The company associated with the Respondent is Steinberg (Australia) Pty Ltd which trades under the name “Carlton Hardware & Handyman Centre.” None of those facts suggest that the Respondent is commonly known as “hardyakka.com.” And the registration and use of the disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent was commonly known by the domain name.

Rights of third parties

Fifthly, the Respondent states that “there are some other 80 traders apart from the Complainant who would have equal rights to the said domain name in Australia alone.” But that argument is not relevant to this proceeding. This proceeding is only between the Complainant and the Respondent. Evidence of the rights of third parties is not evidence of rights or legitimate interests of the Respondent.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy relevantly provides that evidence of the bad faith registration and use of a disputed domain name can be found where:

“by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.” (emphasis added)

There is no dispute that the Respondent knew of the Complainant’s mark when it registered the disputed domain name. The Respondent would clearly have been aware of the Complainant’s mark because the Respondent retails the Complainant’s goods. Accordingly, the Panel finds that the Respondent intentionally attempted to attract Internet users by using the disputed domain name.

There is also no dispute that the Respondent operates its website (to which the disputed domain name refers) for commercial gain.

The disputed domain name is confusingly similar to the Complainant’s mark, for the reasons stated above (under the subheading ‘Identical or confusingly similar’). Accordingly, the panel finds that the Respondent created a likelihood of confusion with the Complainant’s mark, within the meaning of paragraph 4(b)(iv) of the Policy.

For these reasons the Panel finds that the disputed domain name was registered and used in bad faith. That finding is also consistent with the panel’s finding in Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903 which involved substantially similar facts.

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, <hardyakka.com> be transferred to the Complainant.

James A. Barker
Sole Panelist

Dated: September 3, 2004