Westfield Corporation Inc.; Westfield Limited v. Graeme Michael Hobbs; Melinda Gai Carritt d/b/a Dynamic Marketing Consultants

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Westfield Corporation, Inc and Westfield Limited v. Graeme Michael Hobbs (Dynamic Marketing Consultants)

Case No. D2000-0227

1. The Parties

The Complainants are :

Westfield Corporation, Inc., a corporation incorporated in the United States of America, having its principal place of business at 12th Floor, 11601 Wiltshire Boulevard, Los Angeles, CA 90025-1748 and Westfield Limited, a corporation incorporated in Australia, having its principal place of business at Level 24, Westfield Towers, 100 William Street, Sydney, New South Wales 2001, Australia.

Represented by Mallesons Stephen Jaques, Solicitors.

The Respondent is:

Graeme Michael Hobbs, doing business as Dynamic Marketing Consultants, a firm having its principal place of business at 74 Beauchamp Street, Marrickville, Sydney, New South Wales 2204, Australia.

Represented by Provident & Legal, Solicitors.

2. The Domain Name(s) and Registrar

The domain name with which this dispute is concerned is: "westfieldshopping.com"

The Registrar with which the domain name is registered is:

Network Solutions Inc, of Herndon, Virginia, United States of America.

3. Procedural History

3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Centre (the "WIPO Centre") on 30 March and 3 April 2000 respectively.

3.2 On 3 April 2000 all formal requirements for the establishment of the complaint were checked by the WIPO Centre and found to be in compliance with the applicable ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and WIPO Supplemental Rules. The Panel has checked the file and confirms the WIPO Centre's finding of proper compliance with the Rules and establishment of the complaint.

3.3 The Administrative Proceeding commenced on 7 April 2000.

3.4 On 26 April 2000 the Respondent filed its Response. The response was timely filed.

3.5 On 8 May 2000 Complainants filed a Rebuttal of Respondent's Response.

3.6 10 May Respondent filed Observations on the Complainants Rebuttal.

3.7 11 May Complainants filed a further communication in response to Respondent's Observations.

The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.

4. Factual Background

4.1 Complainants are respectively United States and Australian members of the Westfield Holdings group of companies.

4.2 The First Complainant is the registered owner of the following United States trade mark registrations

No. 1,441,465 "Westfield" filed 11 January 1985, registered 2 June 1987.

No. 2,148,842 "A Westfield Shoppingtown" filed 17 October 1996, registered 7 April 1998.

4.3 The Second Complainant is the owner of the following Australian trade mark registrations.

No. 310608 "Shoppingtown" filed 25 August 1977, registered 19 June 1979.

No. 326568 "Westfield", filed 1 February 1979,registered 28 September 1988.

No. 326569 "Shoppingtown" filed 1 February 1979 registered 2 September 1982

No. 352437 "Westfield" filed 23 October 1980 registered 28 September 1988

No. 352438 "Westfield" filed 23 October 198 0registered 28 September 1988

No. 352439 "Westfield" filed 23 October 1980 registered 28 September 1988

No. 541459 "Westfield Frequent Shopper" filed 5 September 1990 registered 24 March 1993

No. 606902 "It's Showtime at Westfield" filed 14 July 1993 registered 13 June 1995

No. 766266 "Westfield" label filed 3 July 1998 registered 19 February 1999

4.4 The First Complainant is the registrant of domain name. "westfieldshoppingtown.com"

4.5 The Second Complainant is the registrant of domain names:

"westfield.com", "shoppingtown.com" and "westfield.com.au".

4.6 Complainants assert that they carry on business as operators of 80 shopping centres in Australia, USA and New Zealand. Complainants lease space in those shopping centres to some 12,750 individual retailers.

4.7 Respondent is a firm of which Graeme Michael Hobbs is the principal. Respondent asserts that it carries on business in the provision of e-commerce and web-site services. Mr Hobbs is the administrative contact for the registration of the domain name in this dispute.

4.8 The domain name registration was created on or about 18 September 1999.

Conflict of Evidence

4.9 This is a matter in which there is a dispute between Complainants and Respondent

in relation to material facts surrounding the registration of the domain name

and communications between Respondent and Second Respondent regarding the name.

In pursuit of this dispute after the commencement of the Administrative Proceeding

Complainants have filed a Rebuttal of the Response and both Complainants and

Respondent have filed further Observations and comments.

4.9.1 Neither the Rules nor the Supplementary Rules make provision for the

filing of further submissions after the commencement of the Administrative Proceeding.

It is the duty of Panel to ensure that the proceeding takes place with due expedition

(Rule 10(c)). However, the Panel is also required to ensure that each party

is given a fair opportunity to present its case. (Rule 10(b)). Within the ambit

of the Rules and the Policy the Panel is given a general discretion as to the

conduct of the proceeding (Rule 10(a)) and the power to determine the admissibility,

relevance, materiality and weight of the evidence (Rule 10(d)).

4.9.2 The underlying purpose of the Policy is to provide a speedy and low cost

procedure for resolving, subject to judicial review, disputes as to the registration

of domain names in circumstances where those registrations are alleged to be

in conflict with trade mark rights. There is no procedure provided for the formal

taking of independent evidence, the examination of witnesses or the testing

of credit. The Panel must therefore decide matters before it on the face of

the record.

4.9.3 The Panel has considered the Rebuttal, the Observations and the further

comments of the Complainants and admits them to the record but finds them unhelpful

in resolving the dispute save in so far as:

(a) they show that the facts as to the communications which passed between

the parties are in dispute;

(b) they contain admissions by the party submitting them; and

(c) they state otherwise verifiable facts.

5. Applicable Dispute

5.1 To succeed in their complaint, Complainants must show that each of the

conditions of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or

service mark in which Complainants have rights;

(ii) the Respondent has no rights or legitimate interests in the domain name;

(iii) the domain names has been registered and used in bad faith.

Identical or Confusingly Similar Marks

5.2 Complainant asserts that the domain name is identical with or confusingly

similar to one or more of the trade marks set out in paragraphs 4.2 and 4.3.

5.2.1 Respondent contests Complainants' assertion that the domain name is identical

with the Complainants' name. Respondent does not contest that the domain name

is confusingly similar to Complainants' trade marks. The Panel must nevertheless

decide this question.

5.2.2 Rule 15(a) of the Rules provides that the Panel shall decide a complaint

in accordance with the Policy, the Rules and "any rules and principles of law

that it deems applicable". A question arises here as to what is the applicable

law. As the dispute is one concerning the similarity between a domain name and

a trade mark, it is clearly appropriate that the principles of law to be applied

should be those derived from the law of trade marks and unfair competition.

As the Respondent is located in Australia and as the Complainants are each subsidiaries

of an Australian corporation, it is also appropriate that the Panel should look

to the Australian law for guidance on the question of whether or not the name

and the marks are identical or confusingly similar. That said however, the principles

adopted by the Australian courts do not differ significantly from that adopted

by the courts in other common law jurisdictions.

Guidance may therefore be sought from the Australian trade mark law in determining

the question of whether or not marks and names are identical or confusingly

similar.

In Australian trade mark law the comparison, for purposes of infringement,

is whether or not marks are "substantially identical or deceptively similar"

- see Trade Marks Act 1995, s.120. Principles applied by the Australian

courts in determining questions of identity and similarity may therefore be

applied bearing in mind however, that the tests under the Policy require, on

the one hand actual identity, and on the other, confusing similarity rather

than deceptive similarity. Thus, the test of identity under the Rules may be

said to be more stringent, whilst that for similarity is less so. It is also

to be recognised that under the Policy the question to be determined is simply

one of identity or similarity and not one of infringement, i.e. it is not necessary

to determine whether the use complained of amounts to use as a trade mark

– see Shell Co. (Aust.) Limited v. Esso Standard Oil (Aust) Limited,

109 CLR 407, or whether the goods or services concerned are the same or of the

same description.

5.2.3 The determination of whether or not marks or names are substantially

identical requires a comparison of them side by side, noting their differences

and similarities - see Shell Case – supra. A consideration of whether

or not the marks are confusingly similar involves different questions. The net

impression of the two marks is to be considered taking into account what are

the essential features of the marks, the visual and aural comparison, the effect

of imperfect recollection and the importance of the first word or syllable in

the marks - see Shanahan D.R., Australian Law of Trade Marks and Passing

Off, Second Edition, Chapter 9.

5.2.4 The domain name consists of the running together of the words "westfield"

and "shopping". The First Complainant is the registered owner in the United

States of the trade marks "Westfield" and "A Westfield Shoppingtown". The Second

Complainant is the owner in Australia of a number of registrations of the word

"Westfield" and of two registrations of the words "Shoppingtown". The domain

name is not identical to any of these trade marks. Is it confusingly similar?

The dominant identifying characteristic of the domain name is the word "Westfield".

It is that word which conveys the dominant impression. It is that name which

is the principal memory trigger, and it is that name which is likely to lead

persons seeing the domain name to think of a connection with the Complainants'

trade marks.

5.2.5 Applying the principles of law enumerated above and observing the decision

of the Panel in comparing the domain name walmart.canada.com and the

trade mark "Wal-Mart" in Case D2000-0150, the

Panel decides that the domain name is confusingly similar to the trade mark

"Westfield" owned in the United States by the First Complainant and in Australia

by the Second Complainant.

Respondent's to Rights or Legitimate Interests

5.3 Complainants assert that Respondent has no right or legitimate interest

in the domain name.

5.3.1 Complainant further asserts with reference to paragraph 4(c) of the Policy

that:

(i) Respondent has not traded under the name "Westfield" or "Westfield Shopping";

(ii) Respondent could not lawfully trade under the name "Westfield" or "Westfield

Shopping" in any jurisdiction in which the Westfield Group operates having regard

to the trade marks of the Complainants;

(iii) Complainants have not licensed or other otherwise permitted the Respondent

to use the trade marks or to apply for or to use any domain name incorporating

the trade marks.

5.3.2 The Respondent asserts in response that it is the legal owner of the

domain name which it lawfully applied for and paid the appropriate fee. The

Respondent further asserts that the fact that it has not traded under the domain

name does not operate to deny the Respondent its title to that domain name.

5.3.3 Respondent's response confirms that it is not using the domain name in

connection with the bona fide offering of goods or services. The Respondent

does not claim to be commonly known by the domain name, nor does it assert that

it is making a legitimate non-commercial or fair use of the domain name. The

Respondent asserts use of the domain name only in relation to discussions with

the Second Complainant, to which reference is made below.

5.3.4 Mere assertion by Respondent that it is the legal owner of the domain

name is not sufficient to displace Complainants' submission based on demonstrated

ownership of the trade mark. Respondent's use of the registration of the domain

name as an inducement to Complainants to engage its web-site services does not

constitute use in connection with the bona fide offering of those services.

Respondent's services are not being offered under or by reference to those services,

and the domain name is not being used to direct customers to those services.

The Panel therefore concludes that Respondent has failed to rebut Complainants'

assertion that Respondent has no rights or legitimate interest in respect of

the domain name.

6. Registration and Use in Bad Faith

6.1 Complainants assert that Respondent has registered and used the domain

name in bad faith.

6.1.1 Complainants contend that Respondent's only intention when registering

the domain name was to sell it to the Westfield group. Complainants further

contend that Respondent is in the business of registering domain names solely

for the purposes of sale to the party properly associated with the name. As

evidence of their contention the Respondents produce:

(i) A letter dated 17th November from Respondent to Second Complainant

with an offer to sell the domain name to the Second Complainant.

(ii) A letter dated 12th November to Respondent from a party known

as "Certain Other Services".

The letter of 12th November provided to Respondent valuations for

33 domain names registered to Respondent. The letter stated that "As per your

requests all names have been valued on a quick sale basis". Attached to the

letter is a "Domain Name Valuation" valuing the domain name as follows:

"Expected sale value on open market AUS $265,000

Expected value where vendor agrees to non-disclosure of

sale contract price AUS $344,000".

6.1.2 By its response Respondent does not deny or otherwise question the letters

of the 12th and 17th November 1999 but states that:

(i) at the time of registration it was not Respondent's intention to sell the

name;

(ii) Respondent is and was at the time of registration interested in the business

of creating e-commerce and e-shopping programs;

(iii) Respondent contacted Second Complainant offering its services to create

a site for Second Complainant;

(iv) in the course of the discussions the Second Complainant asked Respondent

to sell the domain name to it.

6.1.3 In support of its contentions Respondent sets out what purports to be

the substance of certain telephone discussions occurring between its principal,

Graeme Hobbs, and an officer of the Second Complainant occurring between early

October 1999 and early February 2000. The substance of these discussions was

that Respondent informed Second Complainant that it had registered the domain

name "westfieldshopping.com" and would like to build a web-site for Westfield's

retailers. Respondent asserts that in subsequent telephone discussions, Second

Complainant asked whether Respondent would be prepared to sell the name to it.

Respondent further asserted that the name was not for sale and that his only

interest was in developing an e-commerce retailing site. Respondent asserted

further, "If you want to buy it you make me an offer and put it in writing".

Respondent further asserts that the Second Complainant asked Respondent to put

a price on the domain name and that subsequently Respondent obtained the valuation

contained in the letter of 12th November and forwarded it to Second

Complainant under cover of the letter of 17th November.

6.1.4 By its Rebuttal Second Complainant did not deny that the telephone conversations

took place but asserted, without supporting evidence, that the "transcripts

of the conversations provided in the response are inaccurate and misleading".

The Rebuttal contained further assertions by the Second Complainant, which are

the subject of Observations filed by Respondent and which in turn were the subject

of the Complainants' further communication. As noted in paragraph 4.9.3 the

Panel finds these further submissions of limited value.

6.1.5 As noted in paragraph 4.9 the Panel is not in a position to resolve the

conflicting assertions as to what took place in the conversations between Respondent

and officers of Second Complainant nor is it in a position to resolve the conflicting

claims of the Complainants and the Respondent in relation to the nature of the

business conducted by the Respondent. The panel therefore proceeds to its decision

on the basis that the following facts have been established:

(i) Complainants are well and widely known by reference to the names "Westfield"

and "Shoppingtown" and are the owners of trade mark registrations of those words.

(ii) on or about 18 September 1999 the Respondent registered the domain name

"westfieldshopping.com".

(iii) in early October 1999 Respondent contacted the Second Complainant informing

it that Respondent had registered the domain name and offering to provide web-site

and/or e-commerce services for the Second Complainant.

(iv) further telephone conversations took place between the Respondent and

officers of the Second Complainant leading to the Respondent's letter of 17th

November 1999.

(v) in registering the domain name Respondent did not do so at the request

of, or as agent for, Complainants.

6.1.6 In order to satisfy the third leg of paragraph 4(a) of the Policy the

Complainants must show that the domain name has both been registered and is

being used in bad faith.

The record shows that the domain name is not being used in the sense that the

entry of the domain name does not resolve to a web-site – see Complaint paragraph

12, Response paragraph 4(3). However, as pointed out by the Panel in Telstra

Corporation v. Nuclear Marshmallows, WIPO Case

No D2000-0003 "the concept of a domain name "being used in bad faith" is

not limited to positive action; inaction is within the concept. That is to say,

it is possible, in certain circumstances, for inactivity by the Respondent to

amount to the domain name being used in bad faith" – see paragraph 7.9.. It

is not necessary to show that there is in existence a web-site which can be

reached via the domain name in order to show use. Furthermore as discussed below

this is not a case in which inaction or mere passive holding is in point. The

record shows that Respondent has used the domain name registration as an element

in commercial negotiations.

6.1.7 The Panel therefore holds that the domain name has been used by Respondent.

It is therefore necessary to decide whether the use of the domain name and registration

of it, is in bad faith. This requires an inquiry into the circumstances of the

application for registration and the use to which the registration is put. Though

these two inquiries are separated in time, evidence of the latter can provide

the means for the determination of the former. That is, the purpose of the registration

may be discerned from the subsequent use which is made of it.

6.1.8 Paragraph 4(b) of the Policy sets out, without limitation, circumstances

which, if they are found to exist, shall be evidence of the registration and

use of the domain name in bad faith.

The record does not disclose evidence that the domain name has been registered

or is being used to prevent the owner of the trade mark from reflecting the

mark in a corresponding domain name; nor does it to show the registration was

primarily for the purpose of disrupting the business of a competitor, or that

it was done to attract users to the web-site by creating a likelihood of confusion

with Complainants' mark. Respondent's conduct does not, therefore, appear to

fall within sub-paragraphs (ii), (iii) or (iv) of paragraph 4(b)

6.1.9 Paragraph 4(b)(i) requires a showing that the Respondent registered or

acquired the domain name primarily for the purpose of selling, renting or otherwise

transferring the domain name registration to the Complainant for valuable consideration

in excess of the Respondent's documented out of pocket costs directly related

to the domain name.

Respondent asserts that it was not its intention to sell the name when it registered

it and that it is, and was at the time of registration, interested in the business

of creating e-commerce and e-shopping programs. Nevertheless in the letter of

17th November 1999 the Respondent not only states that it is prepared

to accept the price of, minimum, $265,000 quoted in the valuation given by "Certain

Other Services" but puts forward an alternative proposal of an annual per tenant

charge of $236.25 "not including hosting cart-hosting e-mail addresses and set-up

costs etc" thus giving an annual cost to the Second Complainant of $236.25 multiplied

by the number of tenants that it has. The record does not show how many tenants

the Second Complainant alone has but based on the Complainants' uncontroverted

statement that the Westfield group has over 12,000 retailers in Australia, The

United States and New Zealand it is apparent that by either method of calculation

the sum sought by the Respondent is vastly in excess of its out of pocket expenses.

It is also apparent that the amount sought by Respondent is attributable to

the purchase or rental of the domain name and not to the provision of other

services.

6.1.10 The circumstances enumerated in paragraph 4(b)(1) of the Policy are

not confined to sale but extend also to "renting, or otherwise transferring

the domain name registration". If the Respondent did not itself intend to establish

a web-site which would be accessed by the use of the domain name, it must have

done so with the intention that it would ultimately sell, rent or otherwise

transfer the domain name to the Second Complainant. If it did not have that

intention there is no logical reason why it should make reference to the domain

name in its approach to the Second Complainant on the basis that it wished to

build a web-site for its retailers. The Panel therefore concludes that Respondent's

conduct falls within the circumstances enumerated in paragraph 4(b)(1) and amounts

to registration and use of the domain name in bad faith.

6.1.11 The Panel is further of the opinion that, even if Respondent did not

intend ultimately to sell, rent or otherwise transfer the domain name to the

Complainant but intended merely to hold it and to use it, as it did, as an element

in negotiation with Second Complainant for the provision of its internet and

e-commerce services to the Second Complainant or persons associated with Second

Complainant; that in itself would have amounted to use of the domain name in

bad faith. It would have amounted to use of the domain name, not for the purpose

of identifying Respondent, but for the purpose of obtaining a commercial advantage

in its negotiations with the owner of the trade mark which forms the dominant

part of the domain name. Paragraph 4(b) is not exhaustive of the categories

of bad faith, and accordingly, even if the Panel had not found that Respondent's

conduct fell within paragraph 4(b)(1), it would have found Respondent's use

and registration to be in bad faith and that the condition of paragraph 4(a)(iii)

of the Policy is therefore satisfied.

7. Remedy

In this case there are two Complainants related to each other, and each having

rights in the same trade marks in their respective jurisdictions. Each of them

would have been entitled independently to succeed in their complaint. They have

requested that the domain name be transferred to the Second Complainant. The

Panel agrees that that would be an appropriate course.

8. Decision

The Panel therefore concludes and decides that:

(i) the domain name of Respondent is confusingly similar to trade marks in

which Complainants have rights;

(ii) Respondent has no rights or legitimate interest in respect of the domain

name;

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

(iv) the domain name should be transferred to Second Complainant.

D.J. Ryan

Presiding Panelist

Dated: May 18, 2000