Harvey Norman Retailing Pty Limited v. The Directors Gghome.com Pty Limited

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Harvey Norman

Retailing Pty Ltd v gghome.com Pty Ltd

Case No.

D2000-0945

1. The

Parties

1.1. The Complainant

is Harvey Norman Retailing Pty Ltd, a corporation located at Homebush West,

New South Wales, Australia. The Respondent is gghome.com Pty Ltd of Oak Flats,

New South Wales, Australia.

2. The Domain Names

and Registrar

2.1. The domain name

the subject of this Complaint is "harveynorman.com".

2.2. The Registrar of

this domain name is Network Solutions, Inc. of Herndon, Virginia, USA ("Registrar").

3. Procedural History

Issuance of Complaint

3.1. The Complainant

by email and by facsimile submitted to the World Intellectual Property Organization

Arbitration and Mediation Center ("WIPO Center") a Complaint made

pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by

the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24,

1999 ("Uniform Policy"), and under the Rules for Uniform Domain Name

Dispute Resolution Policy implemented by ICANN on the same date ("Uniform

Rules"). Both the email copy and the facsimile hard copy of the Complaint

were received by the WIPO Center on August 4, 2000. An Acknowledgment of

Receipt was sent by the WIPO Center to the Complainant, by email dated August

10, 2000.

Confirmation of Registration

Details

3.2. A Request for Registrar

Verification was dispatched by the WIPO Center to the Registrar by email on

August 16, 2000. By email to the WIPO Center on August 21, 2000, the Registrar

confirmed that it had received a copy of the Complaint from the Complainant;

confirmed that it was the Registrar of the domain name the subject of this Complaint;

confirmed that the current registrant of the domain name "harveynorman.com"

is the Respondent; informed that the administrative, technical, zone and billing

Contact for the domain name is George Dragovic of the Respondent, and provided

postal, telephone, facsimile and email contact details for the Contact; and

informed that the status of each of the domain names is "active".

The Registrar also confirmed that its 5.0 Service Agreement is in effect. Amongst

other things, that agreement provides that the Respondent as registrant of the

domain name agrees to be bound by the domain name dispute policy incorporated

therein. The policy incorporated into the agreement is the Uniform Policy.

Notification to Respondent

3.3. Having verified

that the Complaint satisfied the formal requirements of the Uniform Policy and

the Uniform Rules, and that payment of the filing fee had been properly made,

the WIPO Center issued to the Respondent a Notification of Complaint and Commencement

of Administrative Proceeding, by courier, email and facsimile to the addresses

and number provided by the Registrar, on August 21, 2000. Copies of this Notification

of Complaint were sent by email to the Complainant, the Registrar and ICANN

on that date.

3.4. This Administrative

Panel finds that the WIPO Center has discharged its responsibility under Paragraph

2(a) of the Uniform Rules "to employ reasonably available means calculated

to achieve actual notice to Respondent".

Filing of Response

3.5. On September 8,

2000, within the time specified in the Notification of Complaint, the Respondent

sent to WIPO Center by email a Response to the Complaint. An Acknowledgment

of Receipt of Response was sent to the Respondent, and copied to the Complainant,

by email on September 11, 2000.

Submissions subsequent

to Filing of Response

3.6. On September 12,

2000, the Complainant sent to the WIPO Center by email a purported submission

in reply to the Response. On the same day the WIPO Center by email informed

the Complainant as follows:

Please be advised that

the ICANN Rules and Policy do not foresee or provide for submissions to be made

after the Complaint and Response. Accordingly, the Complainant’s further submission

will not form part of the official case file, but will be forwarded to the Panel

appointed in this matter, in whose discretion it rests whether to take it into

account.

3.7. On the same date,

the Respondent sent to the WIPO Center an email, asking as follows:

Would it be appropriate

for me to respond to the Complainant’s reply, or would this be considered a

futile exercise? Please advise.

3.8. On the same date,

the WIPO Center responded to the Respondent’s enquiry, as follows:

With reference to your

enquiry, please note that the ICANN Rules and Policy do not provide for the

proposed exchange of submissions following the Complaint and Response.

If a Panelist, in receipt

of the Complainant’s submission and your present request, considers that further

submissions are necessary to clarify the pleadings, then the Panelist is able

to request that these be provided by the parties.

Constitution of Administrative

Panel

3.9. On September 11,

2000 in accordance with the request in the Complaint, the WIPO Center proceeded

to appoint a single Panelist, and invited Andrew F. Christie to so act. On September

12, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance

and Declaration of Impartiality and Independence. On the same day the WIPO Center

issued to both parties a Notification of Appointment of Administrative Panel

and Projected Decision Date, informing of Dr. Christie’s appointment and that

absent exceptional circumstances a decision would be provided by this Administrative

Panel by September 25, 2000. The case before this Administrative Panel

was conducted in the English language.

Compliance with the formalities

of the Uniform Policy and the Uniform Rules

3.10. Having reviewed

the Case File in this matter, this Administrative Panel concurs with the assessment

by the WIPO Center that the Complaint complies with the formal requirements

of the Uniform Policy and Uniform Rules.

Decision on Submissions

subsequent to Filing of Response

3.11. The WIPO Center,

in its communications with the Complainant and the Respondent subsequent to

the filing of the Response, correctly observed the position under the Uniform

Policy and the Uniform Rules. The Uniform Policy and the Uniform Rules do not

provide for the parties to the dispute filing supplementary submissions subsequent

to the Complaint and the Response. However, rule 12 of the Uniform Rules does

provide that:

In addition to the complaint

and the response, the Panel may request, in its sole discretion, further statements

or documents from either of the Parties.

3.12. This Administrative

Panel agrees with the views of the three-member Administrative Panel in Document

Technologies, Inc. v. International Electronic Communications, Inc (WIPO

Case D2000-0270) in relation to the filing of supplementary submissions, and

with the approach adopted and applied by the single-member Administrative Panel

in Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case D2000-0596).

Supplementary submissions can only be filed at the request of the Administrative

Panel. This Administrative Panel considers that it would, and should, be in

exceptional cases only that supplementary submissions are requested by a Panel.

If requesting supplementary submissions were to become unexceptional, the dispute

resolution procedure under the Uniform Policy and Rules would most likely become

significantly more resource-consuming to all the actors (ie. the parties, the

dispute resolution service provider, and the Administrative Panel) than is currently

the case, as the unfolding scenario in this case demonstrates. Such an outcome

seems contrary to the clear intention of ICANN in adopting the Uniform Policy

and the Uniform Rules in their present form.

3.13. This Administrative

Panel considers that there are no circumstances of this case that are exceptional,

such as to require the Panel to request the Complainant to file a reply to the

Respondent’s Response. In particular, there is nothing exceptional about the

facts in dispute between the parties, the disputed application of the principles

of the Uniform Policy to those facts, or the form and substance of the Complaint

and the Response filed by the parties, which warrants complicating the resolution

of this dispute by requesting supplementary submissions from either or both

of the paries. Accordingly, this Administrative Panel does not request supplementary

submissions from the parties, and will not read the unsolicited supplementary

submission made by the Complainant.

4. Factual Background

4.1. The Complaint asserted,

and generally provided evidence in support of, the following facts. Unless otherwise

specified, this Administrative Panel finds these facts established.

Complainant’s Activities

and Trademarks

4.2. The Complainant

is a widely known company name in Australia and has been for many years.

4.3. The Complainant

is the registered proprietor of the HARVEY NORMAN mark in Australia in class

37 (in relation to repair, installation and maintenance services) and in class

42 (in retail wholesale, distribution and other services in that class relating

to a wide range of household furniture and electrical appliances), and in the

United States in classes 35 and 37 for retail stores and wholesale distributorships

featuring furniture, electrical appliances and the like, and for household renovation

services, and repair and installation of household appliances and furniture.

The Australian registrations are dated March 29, 1994. The United States registrations

are dated August 31, 1999. Copies of these registrations were annexed to the

Complaint.

4.4. The Complainant

has used these marks for retail stores and wholesale distributorships featuring

furniture, electronic appliances, lighting goods, hardware, home improvement

goods, floor coverings, computers, computer accessories, computer software,

household appliances and baby nursery equipment and household renovation services,

repair of household appliances and furniture, installation and maintenance of

household appliances and furniture.

Respondent’s Activities

4.5. The Complaint is

unhelpfully brief, and lacking in detail about the activities of the Respondent.

In fact, the Complaint made no express assertions about particular activities

of the Respondent. However, the Complaint did annex a letter from the Complainant’s

solicitor (attorney) to the Respondent, dated December 9, 1998, in which reference

is made to the Respondent "advertising the sale of computer goods".

Although it is not clear from this letter (and it is not mentioned in the Complaint),

the implication is that the alleged advertising for sale of computer goods occurred

on a web site located at the URL http://www.harverynorman.com. The Complaint

also annexed a letter from the Respondent to the Complainant’s solicitor, dated

December 16, 2000, in which it is stated: "Web page displaying our domain

name was not used for retailing purposes, but rather for testing our US and

Canadian based servers. At no time was anything purchased or sold through or

in association with the domain, thus no [records of goods sold] exist."

4.6. The Respondent

made the following express assertions in the Response about its activities:

As we are an exclusively

web-based enterprise specifically for US market, our intended and actual use

of the domain name was for the purposes of:

- custom-made web design

packages,

- testing of our US

and Canada based servers,

- web site hosting services,

- custom-made software,

and

- conglomerate of e-commerce

services.

In essence, the goods and

services we provide are tailored to individual needs of our clients and are

not offered by retail stores such as Harvey Norman Retailing Pty. Ltd.

4.7. Due to the paucity

of content in the Complaint, it is not possible for this Administrative Panel

to make any detailed findings about the Respondent’s conduct. However, the assertions

in the Response, when read in the context of the annexures to the Complaint,

lead this Administrative Panel to find that the Respondent used the domain name

"harveynorman.com" in the URL of a web site to offer commercial services

relating to web site design and hosting.

5. Parties’ Contentions

The Complaint

5.1. The Complainant

contends that each of the three elements specified in paragraph 4(a) of the

Uniform Policy are applicable to the domain names the subject of this dispute.

5.2. In relation to

element (i) of paragraph 4(a) of the Uniform Policy, the Complainant contends

that the domain name in issue is identical to the Complainant’s registered trademark

HARVEY NORMAN.

5.3. In relation to

element (ii) of paragraph 4(a) of the Uniform Policy, the Complaint contends

that the Respondent has no rights or legitimate interests in respect of the

domain name in issue "because they (sic) have no interest in the trade

marks that have been registered".

5.4. In relation to

element (iii) of paragraph 4(a) of the Uniform Policy, the Complainant contends

that evidence of bad faith registration and use is established by the fact that

the Complainant is "a widely known company in Australia and has been for

many years", and that "it is likely that the domain name was registered

in order to prevent Harvey Norman Retailing Pty Limited … from reflecting the

mark in a corresponding domain name or for the purpose of selling the domain

name to the Complainant at a future date".

The Response

5.5. At the outset,

the Respondent contends that the Complainant’s trademark is "flawed",

and so the Complainant "has no basis for the complaint". In particular,

the Respondent contends that the Australian trademark registrations "have

no relevance to this case as [they] are only valid in Australia". In relation

to the US trademark registrations, the Respondent contends that "the complainant

has not registered the services we provide and hence, even if the trademark

is deemed valid - we still do not have conflict with the goods & services

listed under the Trademark".

5.6. In relation to

element (i) of paragraph 4(a) of the Uniform Policy, the Respondent contends

that the domain name "harveynorman.com" is not identical to the trademark

HARVEY NORMAN. The Response does not, however, provide any argument in support

of this contention.

5.7. In relation to

element (ii) of paragraph 4(a) of the Uniform Policy, the Respondent contends

that it has "all rights associated with the domain name "harveynorman.com"

as outlined in this response, even though there is no interest in the Trademark

"HARVEY NORMAN"’. The Response does not, however, indicate what are

these rights associated with the domain name or how the Respondent has acquired

them.

5.8. In relation to

element (iii) of paragraph 4(a) of the Uniform Policy, the Respondent contends

that the domain name has been registered and used in good faith. In particular,

the Response states that the Respondent used the domain name in association

with an offering of services relating to web site design and hosting. These

are services "not offered by retail stores such as Harvey Norman Retailing

Pty Ltd" and not the subject of the trademark registrations. The Respondent’s

web site at the address containing the domain name "harveynorman.com"

was deactivated on November 18, 1998, and then reactivated in about June, 2000.

Due to the pending nature of this dispute, that web site contains only the words

"CURRENTLY UNDER CONSTRUCTION". Further, the Respondent states that

it registered the domain name in 1997 in the US, two years prior to the Complainant’s

trademark registrations in the US.

5.9. The Respondent

makes a contention that alludes to "reverse domain name hijacking",

or at least bad faith in bringing this action, by the Complainant. In particular,

the Respondent states:

It is likely however, the

Trademark was registered in the USA in order to obtain the rights to the domain

name. As the Internet has been around since 1980’s and the complainant is an

entity that sells equipment that uses Internet, it is reasonable to assume that

the complainant would have registered the harveynorman.com domain name if it

had any intention of using e-commerce, in particular – using it globally. Approximately

two months ago, Gerry Harvey (MD Harvey Norman Retailing Pty. Ltd.) stated

on Australian National Television that his company will not actively move into

e-commerce as they found the results have been very poor. Furthermore, his buyers

prefer to purchase items through his stores. This clearly indicates that the

action by the complainant is in bad faith and in direct contradiction to the

practices adopted by Harvey Norman Retailing Pty. Ltd.

6. Discussion and Findings

Basis of the Complaint

6.1. The Respondent’s

general contention that the Complaint is flawed because the Australian trademark

registrations are not relevant, and because the US trademark registrations cover

goods and services not being offered by the Respondent, is without foundation.

The Australian trademark registrations are at least as relevant as the US trademark

registrations. There is nothing about the generic top level domain .com that

makes US trademark registrations the only relevant registrations, or even the

more relevant registrations compared with registrations in other countries.

In fact, the Australian registrations are more relevant than the US registrations

in this particular case, because both the Complainant and Respondent are based

in Australia.

6.2. Further, it is

not the case that a remedy under the Uniform Policy is only available where

the Respondent has used the domain name in relation to an offering of goods

or services in relation to which the Complainant’s trademark is registered.

The basis for a remedy under the Uniform Policy is bad faith registration and

use of the domain name. It is clear from the wording of the Uniform Policy,

as well as from numerous cases decided under the Policy, that there can be such

bad faith where the domain name is used in relation to an offering of goods

or services quite different from those in relation to which the Complainant’s

trademark is registered.

Identical or Confusingly

Similar Domain Name

6.3. In relation to

the domain name "harveynorman.com", the relevant part of this domain

name is "harveynorman". This Administrative Panel finds that this

part of this domain name is identical to the Complainant’s registered trademark

HARVEY NORMAN.

Respondent’s Rights or

Legitimate Interests in the Domain Name

6.4. The Respondent

has not provided evidence of circumstances of the type specified in paragraphs

4(c)(ii) and (iii) of the Uniform Policy. The Respondent did, however, allude

to circumstances of the type specified in paragraph 4(c)(i) of the Uniform Policy,

namely that before notice of the dispute (and in fact two years before the Complainant’s

registration of the US trademark), the Respondent had used the domain name in

connection with a bona fide offering of goods or services. As stated in paragraph

4.7 of this Decision above, this Administrative Panel finds that the Respondent

used the domain name "harveynorman.com" in the URL of a web site to

offer services relating to web site design and hosting. If such offering of

services was bona fide, then the Respondent will have demonstrated a right or

legitimate interest in the domain name.

6.5. This Administrative

Panel concludes that such offering of services by the Respondent was not bona

fide, in the manner in which that term is used in paragraph 4(c)(i) of the Uniform

Policy. It is of significance that the Respondent has provided no explanation

for why it chose the words "harvey norman" for its domain name. The

Complainant’s registered trademark HARVEY NORMAN is long-established and widely

known in Australia, which is the location of the Respondent. In the absence

of evidence or even an assertion by the Respondent to the contrary, knowledge

of the Complainant’s rights in the trademark can be imputed to the Respondent

at the time of its registration of the domain names. Further, the words "harvey

norman" bear no obvious relationship to the business or other activities

of the Respondent, and no such relationship was even asserted by the Respondent.

Thus, the inevitable conclusion is that these words are not ones that the Respondent

would legitimately choose in the context of provision of goods, services or

information via a web site unless seeking to create an impression of an association

with the Complainant. Accordingly, this Administrative Panel finds that the

Respondent has no rights or legitimate interests in the domain name "harveynorman.com".

Domain Name Registered

and Used in Bad Faith

6.6. The Complainant

asserts that the Respondent was aware of the Complainant’s trademark HARVEY

NORMAN at the time of registration of the domain names, and registered the domain

names for the purpose either of selling them to the Complainant or of preventing

the Complainant from reflecting its trademark in corresponding domain names.

The former purpose constitutes a use of the domain name of the type contemplated

by paragraph 4(b)(i) of the Uniform Policy, but only if the Respondent seeks

to sell the domain name for valuable consideration in excess of its out-of-pocket

costs directly related to the domain name. The Complainant did not provide any

evidence in support of the assertion that the Respondent registered the domain

name the subject of this Complaint for the purpose of selling it to the Complainant.

Accordingly, this Administrative Panel does not find that there are circumstances

of the type contemplated by paragraph 4(b)(i) of the Uniform Policy. The latter

purpose, of preventing the trademark owner from reflecting its trademark in

a corresponding domain name, constitutes a use of the domain name of the type

contemplated by paragraph 4(b)(ii) of the Uniform Policy, but only if the Respondent

has engaged in a pattern of such conduct. No such pattern was shown or even

asserted by the Complainant. Accordingly, this Administrative Panel does not

find that there are circumstances of the type contemplated by paragraph 4(b)(ii)

of the Uniform Policy.

6.7. There are, however,

other circumstances specified by paragraph 4(b) as being evidence of bad faith

registration and use of a domain name. In particular, paragraph 4(b)(iv) provides

that such bad faith is evidenced by the Respondent’s use of the domain name

to intentionally attract, for commercial gain, Internet users to a web site

by creating a likelihood of confusion with the Complainant’s trademark as to

the source, sponsorship, affiliation, or endorsement of the web site. As discussed

in paragraph 4.7 of this Decision above, this Administrative Panel finds that

the Respondent used the domain name "harveynorman.com" in the URL

of a web site to offer commercial services relating to web site design and hosting.

Further, as discussed in paragraph 6.5 of this Decision above, this Administrative

Panel finds that the words "harvey norman" are not ones that the Respondent

would legitimately choose in the context of provision of goods, services or

information via a web site unless seeking to create an impression of an association

with the Complainant. Thus, this Administrative Panel finds that the Respondent

intentionally sought to attract, for commercial gain, users to its web site

at www.harveynorman.com, by creating a likelihood of confusion with the Complainant’s

trademark HARVEY NORMAN as to the source, sponsorship, affiliation, or endorsement

of that web site. Accordingly, this Administrative Panel finds established the

circumstances specified in paragraph 4(b)(iv) of the Uniform Policy, and therefore

finds that the Respondent registered and used the domain name "harveynorman.com"

in bad faith.

7. Decision

7.1. This Administrative

Panel decides that the Complainant has proven each of the three elements in

paragraph 4(a) of the Uniform Policy in relation to the domain name the subject

of the Complaint.

7.2. Pursuant to paragraph

4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative

Panel requires that the Registrar, Network Solutions, Inc., transfer to the

Complainant, Harvey Norman Retailing Pty Ltd, the domain name "harveynorman.com".

Andrew F.

Christie

Sole Panelist

Dated: September

25, 2000

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• Harvey Norman Retailing Pty Limited v. Mr. University; University, Oxford — D2000-0944 · harveynorman.net, harveynorman.org · Transfer · 25 Sept 2000