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Blundstone Australia Pty Ltd v. Carlton Hardware [2005] GENDND 285 (26 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blundstone Australia Pty Ltd v. Carlton Hardware

Case No. D2005-0253

1. The Parties

The Complainant is Blundstone Australia Pty Ltd, Moonah, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, of Australia.

The Respondent is Carlton Hardware, with addresses in Malvern, Australia; Carlton, Australia; and Caulfield North, Australia.

2. The Domain Name and Registrar

The disputed Domain Name is <blundstoneboots.com>. The Registrar is Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on March 8, 2005. (A hardcopy was received on March 14, 2005.) On March 9, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On March 11, 2005, Network Solutions, LLC 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. 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 March 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2005.

The Center appointed Keith Gymer as the sole panelist in this matter on April 14, 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 WHOIS records show that the Domain Name was first registered on November 20, 2000, and that the Registrant is “Carlton Hardware” with an address in Carlton, Australia, as indicated above. The Administrative Contact is identified as one “Paul Steinberg” at the same address as the Registrant.

The Complainant has operated a business in Tasmania manufacturing footwear for over 100 years. The Complainant is an Australian Proprietary Company which was incorporated under ACN 009475852 in 1902, and which was previously named Blundstone Proprietary Limited.

The Complainant provided details of a number of trade mark registrations in various jurisdictions, including an Australian trade mark having the word BLUNDSTONE as the distinctive element, registered as AU338525 dating from October 2, 1979, for footwear. This registration is in-force, although it is presently recorded in the Complainant’s previous company name – but with the same ACN.

The Respondent, Carlton Hardware and its Administrative Contact, Mr. Paul Steinberg, have each previously been Respondents in UDRP cases, Yakka Pty Ltd v. Carlton Handyman & Hardware Centre, WIPO Case No. D2002-0903 (<yakka.com>) and Yakka Pty Ltd v. Mr. Paul Steinberg, WIPO Case No. D2004-0502 (<hardyakka.com>) respectively, in which they were held to have registered and used the disputed domain names in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant made the following various submissions and assertions in support of the Complaint:

History of Blundstone

Blundstone is a footwear manufacturer based in Tasmania, Australia. John and Eliza Blundstone arrived in Hobart, Tasmania, on the “Conway” on October 14, 1855. Natives of Derbyshire, and John being experienced in the manufacture of boots, they set up a business in Hobart. By 1892, John had taken his son in to the business, established a factory and expanded the premises. In 1932, the Cuthbertson Brothers, James and Thomson, purchased Blundstone, amalgamating their manufacturing operations under the Blundstone name.

Today, the Blundstone name is synonymous with quality footwear and Blundstone currently exports to more than twenty countries. The Blundstone footwear group is Australia’s largest manufacturer of heavy-duty work and protective safety footwear, with diversified markets throughout Australia and New Zealand.

Blundstone began exporting its products to Papua New Guinea in 1969. In the subsequent years new markets were established in New Zealand, the South Pacific, the Middle East, Europe and North America.

The earliest record of goods being offered to the public under the Blundstone name dates back to 1878.

Blundstone has acquired a worldwide reputation for its goods bearing the BLUNDSTONE trade mark with substantial sales and extensive advertising campaigns both in Australia and overseas. Blundstone’s annual worldwide advertising expenditure exceeds US$1,000,000. Furthermore, Blundstone’s worldwide sales figures for the goods bearing the BLUNDSTONE trade mark exceed US$50,000,000 per annum.

Blundstone’s Trade Marks

Blundstone is the owner of numerous trade mark registrations worldwide, including trade marks that consist of or contain the word “Blundstone” (collectively, “the BLUNDSTONE trade marks”).

Unofficial print-outs of details of Blundstone’s purported BLUNDSTONE trade mark registrations in Australia, Austria, Brazil, Brunei, Canada, the European Community, Fiji, France, Germany, Hong Kong, Iceland, Israel, Italy, Japan, Malaysia, New Zealand, Norway, Papua New Guinea, Philippines, Singapore, South Africa, South Korea, Sweden, Taiwan, United Arab Emirates, the US & Western Samoa were annexed to the Complaint. Applications for the trade mark BLUNDSTONE were also alleged to be pending in China and Switzerland. Given the ready availability of official records online from many Registries, including IP Australia, the Panel considers that proof of the status of these marks should have been provided from official records.

The BLUNDSTONE trade marks are used on footwear that is suitable for safety, rural, work and general street applications. The BLUNDSTONE trade marks appear on the promotional material, product packaging and on the goods themselves.

Examples of the BLUNDSTONE trade marks as they are apparently used on various items were annexed to the Complaint. However, the Panel notes that no dates were given as to when these examples were produced i.e. whether they were before or after the date of registration of the Domain Name.

The goods bearing the BLUNDSTONE trade mark are regularly advertised in various publications.

Blundstone has received numerous industry awards. In 1979, Blundstone became the first Australian footwear manufacturer to receive a design award from the Industrial Design Council of Australia. In 1986, Blundstone was awarded an Australian export award.

Blundstone’s Domain Names

Blundstone is the registrant inter alia of the domain names <blundstone.com> and <blundstone.com.au>. The domain name <blundstone.com.au> resolves to the website at “www.blundstone.com”.

Print-outs from the website at www.blundstone.com were annexed to the Complaint. However, the Panel notes that the content in these printouts appears to date from 2002, at the earliest, which is after the date of registration of the Domain Name at issue. However, the Complainant’s domain name blundstone.com was evidently registered in March 1999 – before the date of registration of the Domain Name at issue.

History of the Disputed Domain Name

The Respondent operates a hardware store by the name of Carlton Hardware and Handyman Centre, located in a suburb of Melbourne, Australia, called Carlton. The Respondent was a customer of Blundstone until the end of 2002, i.e. the Respondent sourced goods directly from Blundstone.

At around mid 2002, Blundstone became aware of the Respondent operating a website under “www.blundstoneboots.com”. Numerous telephone conversations ensued, during which the Respondent refused to remove from its website Blundstone’s copyright materials as well as any reference to Blundstone’s BLUNDSTONE trade mark. Blundstone subsequently put the Respondent on notice (in a letter of July 29, 2002 – copy annexed to the Complaint) to remove from its website any references to “safety” footwear. Furthermore, Blundstone requested that the Respondent place on its website certain disclaimers.

On November 7, 2002, Mr. Ross of Blundstone met with Mr. Steinberg of the Respondent. In that meeting, Mr. Ross requested that the Respondent relinquish the domain name <blundstoneboots.com> to Blundstone. The Respondent refused to do so. Blundstone subsequently terminated its relationship with the Respondent. Furthermore, Blundstone sent a letter to its entire wholesaler and retailer customer base (copy annexed to the Complaint), in which its customers were advised of a policy setting out new terms of trade. The new terms of trade state, inter alia, that “the buyer will not sell product of Blundstone on the Internet using a site that has the word Blundstone or any derivative (eg blunnies) in the domain name”.

After Blundstone terminated its relationship with the Respondent, the Respondent continued to source Blundstone’s products from other Blundstone customers within Australia. Furthermore, the Respondent did not cease selling Blundstone’s products through its website at “www.blundstoneboots.com”.

The Respondent’s trading activities resulted in numerous complaints, two of which are exemplified below. It is common to both complaints that the complainant believed, at the time of purchasing the product, that the Respondent had the approval of, or was in some other way associated with, Blundstone.

On October 15, 2002, Ms. Bisignara sent an email to Mr. Ross of Blundstone indicating that she had returned goods purchased from the Respondent requesting an exchange for another size. However, Ms. Bisignara did not receive any replacement from the Respondent. Mr. Ross responded to Ms. Bisignaro on the same day, explaining that Blundstone and the Respondent were in no way related other than the Respondent being a buyer of Blundstone’s products.

In mid 2004, a complainant by the name of Mr. Cafritz sent an email to the online service YAHOO! Shopping indicating that he had placed an order with the Respondent on August 30, 2004, followed by a written cancellation on August 31, 2004. However, despite having received Mr. Cafritz’ cancellation letter, the Respondent proceeded to debit Mr. Cafritz’ credit card. Furthermore, the goods were never sent to Mr. Cafritz. Mr. Cafritz’ complaint was later forwarded to Mr. Ross of Blundstone who, in an email of October 11 2004, was forced to yet again explain that Blundstone and the Respondent were not in any way associated.

The complaints of Mr. Cafritz and Ms. Bisignaro were both forwarded to the Compliance and Enforcement Branch of Consumer Affairs of Victoria, a department of the Victorian Government in Australia. However, Mr. Williams of Consumer Affairs Victoria indicated that he had been unable to resolve the matters as the Respondent had been uncooperative.

It is submitted that the domain name <blundstoneboots.com> is confusingly similar to Blundstone’s BLUNDSTONE trade mark. It is further submitted that the BLUNDSTONE trade mark is not only highly distinctive but the mark has, over the years, become one of the world’s most well known brands in relation to footwear. It follows that a non-distinctive addition (“boots”) to this highly distinctive trade mark does not sufficiently distance the disputed domain name from Blundstone’s trade mark in order to avoid confusion. The word “boots” is in fact descriptive of the goods in relation to which the BLUNDSTONE trade mark is applied. The Complainant therefore submits that the domain name <blundstoneboots.com> is confusingly similar to Blundstone’s BLUNDSTONE trade mark in which Blundstone has rights in numerous countries, including in Australia.

The Complainant submits that, similarly, consumers are highly likely to expect an association with Blundstone, upon viewing the Respondent’s domain name <blundstoneboots.com>, and that therefore the domain name is confusingly similar to Blundstone’s BLUNDSTONE trade mark.

It is submitted that, for the reasons outlined below, the Respondent does not have any rights or legitimate interests in the disputed domain name.

(a) The Respondent has no connection with Blundstone. In particular, the Respondent has not been licensed or authorised by Blundstone to use the disputed domain name.

(b) The Respondent is not an authorised retailer of Blundstone. At the time the Respondent was sourcing products directly from Blundstone, the Respondent was not authorised to use Blundstone’s BLUNDSTONE trade mark in its domain name. In fact, it is submitted that the Respondent acted in breach of Blundstone’s terms of trade which clearly state that “the buyer will not sell product of Blundstone on the Internet using a site that has the domain name Blundstone or any derivative (eg Blunnies) in the domain name”.

(c) The disputed domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration.

(d) It is submitted that the Respondent has not at any time been commonly known by the disputed domain name. Furthermore, Blundstone is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name.

(e) It is further submitted that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. Reference is made to the print-outs of the Respondent’s website at “www.blundstoneboots.com” (copies annexed to the Complaint), which indicate that the Respondent is conducting a business related to the offering of various traders’ goods via the Respondent’s website. While the goods offered through the Respondent’s website include Blundstone’s footwear, the website also offers a range of outdoor products, including those bearing the DRIZABONE, RED BACK and YAKKA trade marks (which are unrelated to Blundstone). It is therefore by no means necessary to operate such an online retailing website with a domain name containing Blundstone’s BLUNDSTONE trade mark.

(f) It is submitted that the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from Blundstone’s website. It is submitted that the Respondent is exploiting confusion amongst consumers as to the association or affiliation of the Respondent with Blundstone and thereby attempting to generate business by luring Blundstone’s customers to the Respondent’s own website.

(g) Reference is also made to a print-out from a Google search for the term “blundstone” (copy annexed to the Complaint). The search results reveal the first and most prominent entry being that of the Respondent. The entry appearing at the top of the page is a sponsored link containing the heading “Blundstones Website”. It is submitted that the Respondent is intentionally engaging in conduct to mislead consumers into believing that the Respondent is in some way associated with Blundstone. In this regard, reference is also made to the instances of actual confusion as outlined above.

For the reasons outlined above, it is submitted that the Respondent has no legitimate rights or interests in the disputed domain name.

It is submitted, for the reasons outlined below, that the Respondent registered the disputed domain name in bad faith.

(a) It is submitted that the Respondent registered the disputed domain name in order to divert Internet traffic intended for Blundstone to the Respondent’s website. The respondent is not and has never been commonly known by the name of Blundstone. The Respondent operates a small hardware store in a suburb of Melbourne which it has named Carlton Hardware and Handyman Centre. In its hardware store, the Respondent sells, inter alia, outdoor clothing and footwear, which also includes Blundstone’s goods. It is submitted that it is not necessary for the Respondent to register a domain name containing the BLUNDSTONE trade mark if it is merely selling Blundstone products, and particularly not if it is merely selling many other traders’ products as well. Rather, it is submitted that the Respondent’s choice of domain name was clearly intended to create, amongst consumers, the impression that the Respondent is affiliated or otherwise associated with Blundstone.

(b) Reference is made to Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, in which it was held that registration of a domain name with the purpose of diverting potential customers of the Complainant to the Respondent’s website leads to the disruption of the business of a competitor. It is submitted that the present circumstances are analogous to those in the Expedia decision in that the Respondent intended to divert potential customers of Blundstone to its own website, and that therefore the Respondent is disrupting Blundstone’s business.

(c) It is submitted that Blundstone enjoys a worldwide reputation in its BLUNDSTONE trade mark. Reference is made to Zwack Unicum Rt. v. Erica J Duna, WIPO Case No. D2000-0037, in which it was held that bad faith registration may be inferred from the registration of a well known mark. Similarly, it is submitted that it may be inferred from the Respondent’s registration of a domain name containing Blundstone’s well known BLUNDSTONE trade mark, as its only distinctive feature, that the domain name <blundstoneboots.com> was registered in bad faith.

It is further submitted, for the reasons outlined below, that the Respondent used the disputed domain name in bad faith.

(a) It is submitted that the Respondent, by using the well known and highly distinctive BLUNDSTONE trade mark in its domain name, is intentionally attracting for commercial gain Internet users to its website by creating a likelihood of confusion with Blundstone’s BLUNDSTONE trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (Paragraph 4(b)(iv) of the Policy). It is submitted that the Respondent’s intention to divert Internet traffic in bad faith is evident from its conduct in using, without authorization, Blundstone’s well known BLUNDSTONE trade mark in its domain name. Furthermore, it is submitted that the Respondent was clearly aware of the BLUNDSTONE trade mark as it was selling products bearing the BLUNDSTONE mark.

(b) It is further submitted that it is by no means necessary for the Respondent to use the BLUNDSTONE trade mark in the disputed domain name in order for the Respondent to be able to operate its website. The Respondent may also not assert that the use of the BLUNDSTONE trade mark in its domain name is necessary as it refers to the product it sells through its online retailing platform. The Respondent sells a variety of outdoor wear including products bearing the DRIZABONE, YAKKA and RED BACK trade marks, which are unrelated to Blundstone. It is not necessary for the Respondent to include the BLUNDSTONE trade mark (or any other trade mark for that matter), in a domain name used to point to an online retailing platform selling a variety of different trader’s goods. In any event, it is submitted that even if the Respondent were to restrict itself to only selling Blundstone’s goods, this would not be sufficient to give the Respondent a right to use Blundstone’s BLUNDSTONE trade mark in its domain name.

(c) It is submitted that the Respondent’s use of the BLUNDSTONE mark in the disputed domain name is intended to exploit confusion amongst consumers in order to solicit custom to the Respondent’s retail website. The Respondent’s intention in this regard is evident from its conduct of purchasing a sponsored link from Google and headings its entry with the words “Blundstones Website”.

(e) The Respondent’s bad faith is further evidenced by its pattern of conduct of including well known trade marks in its domain names in order to divert internet traffic from the trade mark owners. In particular, the Respondent registered the domain names <yakka.com> and <hardyakka.com>, consisting of and containing the trade mark YAKKA owned by Yakka Pty Ltd., Australia’s largest supplier of industrial work wear and corporate clothing. Both domain names were transferred to Yakka Pty Ltd. by a UDRP Panel.

The Complainant asks for the Domain Name to be transferred to the Complainant.

B. Respondent

The Respondent made no Response to the Complainant’s contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under Paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under Paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

A. Identical or Confusingly Similar

In the present case, it is clear that the Domain Name will be readily perceived as being comprised of the initial element “blundstone” with the descriptive qualifier “boots”, together with the generic “.com” suffix.

The Complainant has made claims to trade mark rights in the mark BLUNDSTONE. Although, in the Panel’s view, the unofficial print-outs provided by the Complainant would not normally be acceptable as probative evidence, the Respondent has not challenged any of the Complainant’s claims.

The Panel has the authority under Paragraph 12 of the Rules to request further documents from the parties. The Panel also has the general power under Paragraph10(c) of the Rules to ensure that the proceeding takes place with due expedition. Some Panels have taken the view that Paragraph 15(a) of the Rules should be interpreted to prevent a Panel from making any verification of facts of their own motion. The present Panel respectfully disagrees and considers that the obligation to decide the complaint “on the basis of the statements and documents submitted” does not preclude the Panel from obtaining direct verification of the statements and documents made by the Parties, where this is public and readily accessible. The Panel could have requested such verification from the Complainant under Paragraph 12 of the Rules. This would have inevitably led to delays which are contradictory to the aims of the UDRP. Therefore, pursuant to Paragraph10(c) of the Rules, the Panel has independently verified the Complainant’s claim to rights in one Australian trade mark registration from the official sources at IP Australia and ASIC.

Consequently, the Panel is satisfied that the Complainant has rights in the trade mark BLUNDSTONE.

The addition of “boots” to the mark BLUNDSTONE in the Domain Name is of no distinctive benefit for the Respondent. The Panel accepts the Complainant’s submissions on this point and finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

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

It is plain from the facts and the evidence that none of the above factors apply. The Respondent has simply been using the Domain Name to attract customers seeking the Complainant’s goods as if it were the Complainant. The Respondent has made no effort , and made no submissions, to justify any claim to legitimate authority for such use. Neither has it sought to challenge any of the allegations made by the Complainant.

The Respondent is not itself known by the Domain Name and, without the authority of the Complainant, which it manifestly does not have, it is also impossible to conceive that the Respondent could contrive to justify its actions as “non-commercial or fair use”, and it is unsurprising, therefore, that it has not attempted to do so.

Consequently, the Panel accepts that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the Domain Name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name “has been registered and is being used in bad faith”.

Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:

“(ii) [Respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.”

The Panel considers the example of 4(b)(iv) most directly relevant to the present case.

In this respect, the Panel finds the following elements from the Complainant’s evidence persuasive:

The print-outs of the Respondent’s website, which does nothing to disabuse the customer of the perception that the site is operated by or in association with the Complainant itself.

The reports of unsatisfied complaints directed at the Complainant as a consequence of the Respondent’s defaults.

The previous UDRP decisions against the Respondent and its Administrative Representative in similar cases, illustrating a pattern of abusive conduct.

In registering the Domain Name, the Panel believes that the Respondent effectively misappropriated the Complainant’s rights and goodwill, with no legitimate reason for doing so, and has explicitly used that registration in an unjustified attempt to create an association between its business and the Complainant’s business to the detriment of the Complainant’s reputation.

The Panel considers that the Policy was intended to provide a remedy to deal with this sort of misappropriation.

The Panel therefore holds that the Domain Name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.

7. Decision

For the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <blundstoneboots.com> be transferred to the Complainant.

Keith Gymer
Sole Panelist

Dated: April 26, 2005