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Webjet Marketing Pty Ltd v. Brad Norrish [2005] GENDND 2082 (29 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Webjet Marketing Pty Ltd v. Brad Norrish

Case No. D2005-1096

1. The Parties

The Complainant is Webjet Marketing Pty Ltd of Melbourne, Victoria, Australia, represented by Minter Ellison of Australia.

The Respondent is Brad Norrish of East Perth, Western Australia, Australia.

2. The Domain Name and Registrar

The disputed domain name <webjet.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2005. On October 27, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On October 28, 2005, eNom, Inc. 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 3, 2005. The Center verified that the Complaint together with the amendment to 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 November 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2005.

The Center appointed Ross Wilson as the sole panelist in this matter on December 15, 2005. 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 Complainant is an on-line travel booking service operating since 1999. In 2004-05 its website generated $77.5 million and its marketing and publicity expenditure exceeded $8 million. In the same year its website “www.webjet.com.au” was rated the number one travel agency site in Australia by Hitwise, an Internet activity monitoring company.

The Complainant’s trademark WEBJET was registered in Australia on January 16, 2001.

The disputed domain name <webjet.com> was first registered by a Mr. Murphy on October 2, 1995, and was transferred to the Respondent in October 2005.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that:

(a) the domain name is confusingly similar to its registered WEBJET mark;

(b) the Respondent lacks any legitimate interest in the domain name because it has not used or made any demonstrable preparations to use the domain name in connection with a bone fide offering of goods and services, has not been commonly known by the domain name and has not demonstrated any legitimate basis for registering the domain name;

(c) it is not possible for the Respondent to be unaware of the Complainant’s website, its use of the WEBJET trademark and the Complainant’s rights in the trademark particularly as the disputed domain name currently includes a link to the Complainant’s website;

(d) the fact that the Respondent was not the first registrant of the domain name does not preclude a finding that the domain name was registered and is being used in bad faith;

(e) the disputed domain name website lists links to competitors’ websites and to pornographic websites providing evidence of the bad faith registration and use of the domain name;

(f) the Respondent’s website is hosted by a business which allows domain name registrants to park domain names, to earn money and to sell domain names;

(g) the Respondent has engaged in a pattern of bad faith conduct and has attracted a reputation regarding cybersquatter activities; and

(h) the Respondent has provided false telephone contact information.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions. As provided by paragraph 14 of the Rules, a Panel may draw such inferences from the Respondent’s default as it considers appropriate.

6. Discussion and Findings

A. Identical or Confusingly Similar

According to paragraph 4(a) of the Policy, 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.

The Complainant’s trademark is WEBJET which was registered on January 17, 2001. The disputed domain name is <webjet.com>. Apart from the “.com” extension, the two are identical.

The Panel finds that the Complainant has proven that the domain name is identical or confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to and legitimate interests in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent:

(a) has not used or made any 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;

(b) has not been commonly known by the domain name, nor has it acquired any trademark rights (at common law or otherwise in respect to the trademark WEBJET); and

(c) has not demonstrated any legitimate basis for registering the domain name.

The Complainant submits that the Respondent was aware of the Complainant’s trademark and the Complainant’s rights in the trademark as it is well known in Australia where the Respondent resides. Also, the Complainant points out that the Respondent’s awareness of its trademark is evidenced by the disputed domain name website containing a link to the Complainant’s website.

The Complainant has put forward prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As accepted by many UDRP decisions, in such a case the burden of proof shifts to the respondent to rebut the evidence. The Respondent has not filed any submission or evidence in order to rebut the Complainant’s prima facie evidence.

As there is no evidence before the Panel that the Respondent has any rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy, the Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

As mentioned above, the domain name was first registered in 1995 and transferred to the Respondent in October 2005. The Complainant provided no evidence that there was any bad faith in the initial registration. However, in this case the issue is whether the Policy applies where there is bad faith use following a good faith initial registration. The Complainant relies on the precedent in BWR Resources Ltd v. Waitomo Adventures Ltd, WIPO Case No. D2000-0861, where the Panel “accepts that ‘registration’… refers to the date when it [the respondent] acquired the name from the person who first registered it”. Other cases supporting the concept that the Policy applies to respondents who are domain name transferees include Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 and Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016. In the latter case the Panel’s view was that “there is no reason to differentiate between a direct registration and registration after a transfer”.

Similarly, in Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496 the Panel argued that the “registration or acquisition” wording of paragraph 4(b)(i) recognises that the acquisition must be from a third party who has previously registered the domain name in question. In that case the Panel argued that the Policy must be construed as a whole and so produce a sensible interpretation, that is, the paragraph refers to both the registration and subsequent acquisition of the domain name by transfer. The Panel concluded that the Policy must be interpreted in such a way as to give effect to the aims and purposes of the Policy.

This Panel agrees with the Complainant’s submission that the fact that the Respondent was not the first registrant of the domain name does not preclude a finding that the domain name was registered and is being used in bad faith.

The evidence provided by the Complainant that bad faith use took place includes the use of links to competitor and pornographic sites to create confusion amongst Internet users. Also, the Respondent’s use of the Sedo host business was to intentionally attempt to attract financial gain.

The Complainant went to some length to show that the Respondent has engaged in a pattern of bad faith by referring to a number of legal decisions against the Respondent demonstrating that he had attracted a reputation as a cybersquatter. For example, in ACCC v. Internet Registrations Australia Pty Ltd, Federal Court Proceeding No. ACD45/2002, the company in which the Respondent was one of two directors and the sole shareholder was found to have misrepresented, inter alia, that it had exclusive authority to register or renew “.com.au” domain names, that renewals were required to be made through the company and that it could register domain names for in excess of two years. In Nominet UK v. Diverse Internet Pty Ltd [2004] FCA 1244 the Court found that the Respondent had engaged in misleading and deceptive conduct and conduct which infringed the intellectual property rights of Nominet. In BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001, the Panel found that Basketball Times Pty Ltd, a company of which the Respondent was a director, had no rights or legitimate interests in the disputed domain name. Also, in that case the Panel found that the domain name was registered and used in bad faith based on the domain name resolving to a pornographic site and had been registered in order to prevent BT Financial Group Pty Ltd from reflecting its trademark in a corresponding domain name and in order to disrupt the company’s business and that the respondent had provided false details when registering the domain name.

In this case too, the Complainant provided evidence that the Respondent had provided a false telephone contact number when registering the domain name.

Based on the above, the Panel finds that the domain name was registered and used in bad faith.

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 <webjet.com> be transferred to the Complainant.

Ross Wilson
Sole Panelist

Date: December 29, 2005