Melbourne Inner City Management Pty Ltd v. Julie Valetic
Case No. D2015-1811
1. The Parties
The Complainant is Melbourne Inner City Management Pty Ltd of Southbank, Victoria, Australia, represented by Central Legal, Australia.
The Respondent is Julie Valetic of Parkdale, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2015. That day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 11, 2015. 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 provides services in the field of real estate in metropolitan Melbourne, Australia.
The Domain Name was created on July 25, 2014.
5. Parties’ Contentions
The Complainant has been operating in the metropolitan Melbourne real estate market for the last 20 years. Its services include property leasing and rental under the acronym “micm”. It owns Australian registered trademarks, including No. 1224373 MICM PROPERTY, registered on February 14, 2008. It also owns business names and domain names incorporating the acronym “micm”.
The Domain Name is confusingly similar to its marks, business names, and domain names because the use of the term “rentals” in conjunction with the acronym “micm” creates the impression that an association with the Complainant exists.
The Respondent has no rights or legitimate interests with respect to the Domain Name because the Respondent does not carry on business under that or any similar name; there is no evidence the Respondent is using the Domain Name in connection with a bona fide offering of goods or services; the Respondent is not commonly known by the Domain Name; and the Complainant has established common law rights in the trademark MICM in the field of real estate over the last 20 years.
The Domain Name was registered and is being used in bad faith. It has not been used for a bona fide offering of goods or services since it was registered. The Respondent is Managing Director of a real estate business known as Let’s Get Real Estate. That name has no connection with or similarity to the “micm” acronym.
Operating in the property sector, the Respondent is well aware of the Complainant’s reputation and profile in that sector. It defies all credibility to suggest that registration of the Domain Name was coincidental, particularly since the Respondent’s principal office in Melbourne is located less than 3 kilometers from Southbank, where the Complainant’s profile is at its highest.
In a conversation with the Complainant’s legal representative, the Respondent admitted that she “collects” domain names.
The inference to be drawn from these circumstances is that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the registration; or with the future intention of directing web traffic to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant.
Accordingly, the Complainant seeks the transfer to it of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, a complainant requesting the transfer of a domain name must prove the following three elements: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The Complainant has established that since 2008 it has owned Australian registered trademark MICM PROPERTY, No. 1224373 for (inter alia) rental services in class 36 (Complaint Annexure D). It is unnecessary to address the Complainant’s business names and domain names nor the issue of whether the Complainant has common law trademark rights in the acronym “micm”.
The Domain Name consists of “micm”, which the Panel finds to be the dominant and distinctive feature of the Complainant’s MICM PROPERTY trademark, followed by the generic Top-Level Domain (“gTLD”) (“.rentals”).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, “The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”.
The recent introduction of new gTLDs such as “.guru”, “.clothing”, “.plumbing”, “.florist” and, as in the present case, “.rentals” (available since February, 2014) leads this Panel to the conclusion that, as in project.me GmbH v. Alan Lin, WIPO Case No. DME2009-0008, where the applicable top-level suffix has inherent meaning beyond the mere technical requirement of registration, it may be taken into account when considering the identity or confusing similarity test.
In determining confusing similarity, evidence of actual confusion is not required. The test is an objective one, confined to a comparison of the Domain Name and the trademark alone, independent of the products or services for which the Domain Name may be used, or other marketing and use factors usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000 1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007 0648.
In the present case, an objective comparison of the Domain Name and the Complainant’s MICM PROPERTY mark leads this Panel to conclude that the gTLD suffix “.rentals” following the acronym “micm”, which is the distinctive part of the Complainant’s mark, will cause people to wonder whether there is an association between the Domain Name and the Complainant. Accordingly, the Panel finds the Domain Name to be confusingly similar to the Complainant’s MICM PROPERTY mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate her rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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 trademark 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 customers or to tarnish the trademark or service mark at issue.
The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that she does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that the Respondent has registered the Domain Name in bad faith and that the Respondent is using the Domain Name in bad faith. The Complainant invokes sub-paragraphs 4(b)(i) and (iv) of the Policy, which set out illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for purposes of paragraph 4(a)(iii):
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
In the absence of any evidence that the Respondent has sought to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant, the Panel does not accept the Complainant’s submission that it is to be inferred that the Respondent registered the Domain Name primarily for the purpose set out in the Policy, paragraph 4(b)(i). Further, since the Respondent has not been shown to have used the Domain Name at all since registration in 2014, the Panel is unable to find that the circumstances of this case fall within the Policy, paragraph 4(b)(iv).
However, as mentioned, the circumstances set out in the Policy, paragraph 4(b) are not exclusive. The Panel therefore addresses the issues of registration and use separately.
As to registration, the Panel can conceive of no bona fide basis on which the Respondent, the Managing Director of a real estate business operating in the same market as the Complainant, could have registered the Domain Name. The Respondent could not have been unaware of the Complainant and its MICM PROPERTY mark when she registered the Domain Name and must have known that any use in relation to the field of real estate would falsely misrepresent a connection with the Complainant. Accordingly the Panel finds that the Domain Name was registered in bad faith.
As to use, this requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Barney’s, Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400; Video Networks Limited v. Larry Joe King, WIPO Case No. D2000-0487; Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194; and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468.
Given the Respondent’s position as Managing Director of a competitor of the Complainant, the Panel finds that her decision to retain the Domain Name in her collection following its registration amounts to use in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Alan L. Limbury
Date: November 22, 2015