Portmans Consolidated Proprietary Limited v. Anthony Mellick

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

PORTMANS

CONSOLIDATED PROPRIETARY LIMITED v ANTHONY MELLICK

Case No.

D2000-1484

1. The Parties

The Complainant is Portmans

Consolidated Proprietary Limited, ACN 006 137 140 of 187-191 Lennox Street,

Richmond, Victoria 3121, Australia.

The Respondent is Anthony

Mellick of 38 Bourke Road, Alexandria, New South Wales, 2105, Australia.

2. The Domain Name and

Registrar

The domain name on which

the Complaint is based is <portmans.com>.

The registrar with which

the domain name is registered is Network Solutions Inc, 505 Huntmar Park Drive,

Herndon, Virginia 20170, USA.

3. Procedural History

3.1 The Complaint was

made pursuant to the Uniform Domain Name Dispute Resolution Policy approved

by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 ("the Policy") in accordance with the Rules for

Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October

24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform

Domain Name Dispute Resolution Policy in effect as at December 1, 1999 ("the

Supplemental Rules").

3.2 The Complaint was

received by the WIPO Arbitration and Mediation Center (the "Center")

on October 31, 2000.

3.3 The Center has stated

in its "Formal Requirements Compliance Checklist" dated November 20,

2000 that:

- The Complaint was

filed in accordance with the requirement of the Rules and the Supplemental Rules.

- Payment for filing

was properly made.

- The Complainant has

complied with the formal requirements.

3.4 The Panel accepts

these findings and itself finds that:

- The Complaint was

properly notified in accordance with the Rules, paragraph 2(a), having been

sent to the Respondent by Post/Courier and E-mail.

- Having received no

response from the Respondent within the specified time in the Notification of

Complaint, the Center issued to both parties a Notification of Respondent Default

dated December 12, 2000.

- On January 3, 2001

the Center issued to both parties a Notification of Appointment of Administrative

Panel and Projected Decision Date. The notification informed the parties that

the Administrative Panel would be composed of a single member and that, in the

absence of exceptional circumstances, the decision of the Panel was to be forwarded

to the Center by January 16, 2001.

- The Administrative

Panel was properly constituted.

4. Factual Background

4.1 The Complainant

provides clothing and retail services (particularly with respect to women’s

clothing, headgear, footwear and accessories) under the name PORTMANS and owns

registered trade marks for PORTMANS in Australia (since 1991), New Zealand (since

1992), Singapore (since 1995) and Indonesia (1996). These are registered with

respect to clothing retail services (Australia, New Zealand and Indonesia),

and clothing and retail services (Indonesia). Certified copies of the Australian,

New Zealand and Singaporean registrations and photocopies of the Indonesian

registrations are provided in Annexe C of the Complaint.

4.2 The Complainant

further asserts that it has an extensive reputation, particularly in Australia,

in the mark PORTMANS, supported by extensive advertising and that "few

if any women resident in the principal Australian cities would be unaware of

the Complainant’s PORTMANS brand". No evidence, however, is provided of

the extent of this reputation either within Australia or in any other countries,

and it is therefore not possible for the Panel to draw any conclusions in relation

to any non-statutory rights which the Complainant may have in the mark PORTMANS.

4.3 According to the

Whois database of Network Solutions Inc, the Respondent is listed as the Registrant

and Billing Contact of the domain name PORTMANS.COM, while Bendy, Mikey-Wn-Eacd

of Portmans Fashion, 1 Russo Lane, Los Angeles, CA 902880 is given as the Administrative

Contact and Bendy, Mikey (MBT 487) of Portmans Fashion, 1 Russo Lane, Los Angeles,

CA 902880 is given as the Technical and Zone Contact. This registration was

created with Register.com on May 1, 2000, expires on May 1, 2001, and was last

updated October 29, 2000.

5. Parties’ Contentions

A Complainant

- The Complainant does

not address specifically the individual elements listed in paragraph 4(a) of

the Policy, but it seems clear that the following assertions are implicit in

the Complaint.

- With respect to the

element described in paragraph 4(a)(i) of the Policy, that the disputed domain

name is identical to the registered PORTMANS trade marks.

- With respect to the

element described in paragraph 4(a)(ii) of the Policy, that there is no indication

in the registration details of the disputed domain name of any interest by the

Respondent in the mark PORTMANS. The Respondent further alleges that there is

no indication that the Respondent has ever made any bona fide offer of

goods or services by reference to the mark PORTMANS from the web site portmans.com.

It notes further that the domain name was registered on May 1, 2000 and as of

October 30, 2000 the web site merely displayed the banner "This site is

currently under construction. Please email us your name and any comments you

wish to say, and we'll’ let you know when our site is being launched" (Annex

D of the Complaint).

- With respect to the

element described in paragraph 4(a)(iii) of the Policy, the Complainant asserts

that the disputed domain name has been registered by the Respondent "in

bad faith primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to one or other of the Complainant". The reference

here to "one or other of the Complainant" is unclear, as there is

only one Complainant referred to in the Complaint. The language in which this

part of the Complaint is framed reflects directly that used in paragraph 4(b)(i)

of the Policy.

B Respondent

As noted above, the Respondent

has not filed a Response to the Complaint.

6. Discussion and Findings

In accordance with paragraph

4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

6.1 That the Complainant

has rights in a trade or service mark with which the Respondent’s Domain Name

is identical or confusingly similar

As noted in paragraph 4.1

above, the Complainant is the owner of registered trade and service marks comprising

the name PORTMANS in four countries. Leaving aside the suffix .com, the Respondent’s

domain name is exactly the same, and therefore the Complainant has established

this element of paragraph 4(a) of the Policy, namely that it has rights in a

trade or service mark identical to that of the Respondent’s domain name.

6.2 That the Respondents

must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy

sets out certain matters which a Respondent can point to as demonstrating rights

or legitimate interests in a disputed domain name for the purposes of paragraph

4(a)(ii). These include:

(i) before any notice

to you [the Respondent] of the dispute, your 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) you (as an individual,

business, or other organisation) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making

a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark

or service mark at issue.

In the present proceeding,

there is no evidence that the Respondent has used the domain name portmans.com

in connection with any bona fide business (subpara (i)). Nor can it be concluded

that the banner on the portmans.com web site amounts to evidence of "demonstrable

preparations" to use the domain name in that way (subpara (i)). Likewise,

there is no evidence before the Panel, apart from the statement on the portmans.com

web site that "Portmans is a Worldwide Fashion Enterprise", that indicates

that the Respondent has ever carried on a business under the name "Portmans"

(subpara (ii)). Furthermore, there is no evidence that on which the Panel can

make any assessment of the matters referred to in subpara (iii), i.e. whether

the Respondent has made or is making a legitimate noncommercial or fair use

of the domain name without intent for commercial gain to mislead customers or

to tarnish the trade mark at issue.

The matters referred to

paragraph 4(c) are not an exhaustive statement of what may constitute rights

or legitimate interests in a domain name, and it is therefore open to a Respondent

to point to other evidence that may show this. In the present proceeding, however,

there has been no evidence at all presented by the Respondent and, under Paragraph

14(b) of the Rules, the Panel is entitled to draw from such default such inferences

as it considers appropriate. The Panel therefore concludes that the Complainant

has established this element of Paragraph 4(a) of the Policy, namely that the

Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent

registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy

lists certain factors which, if found by the Panel to be present, shall be evidence

of registration and use of a domain name in bad faith. This is not an exclusive

list, and includes:

(i) circumstances indicating

that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain

name; or

(ii) you have registered

the domain name in order to prevent the owner of the trademark or service mark

from reflecting the mark in a corresponding domain name, provided that you have

engaged in a pattern of such conduct; or

(iii) you have registered

the domain name primarily for the purpose of disrupting the business of a competitor;

or

(iv) by using the domain

name, you have intentionally attempted to attract, for commercial gain, Internet

users to your web site 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 your web site or location or of a product or service on your

web site or location."

It will be noted that both

registration and use of the domain name in bad faith are required here. Of the

factors listed above, (i)-(iii) relate primarily to registration, while (iv)

relates to use following registration. However, in view of the fact that these

factors are stated to be inclusive, it follows that there may be other factors

that will point to bad faith, both in registration and in use. In this regard,

it is worth noting an early decision of the Administrative Panel to the effect

that registration in bad faith followed by a passive holding of a domain name

when there is no way in which it could be used legitimately can amount to use

in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows Case D 2000-0003.

In the present proceeding,

the situation is complicated by the fact that the Respondent has not filed any

Response or provided any evidence as to its intentions in registering and maintaining

the disputed domain name. As noted above, under Paragraph 14(b) of the Rules,

where a party defaults in complying with any requirement of the Rules, the Panel

is entitled to draw from such default such inferences as it considers appropriate.

In the light of the above,

the Panel makes the following findings:

- With respect to the

factor mentioned in subpara 4(b)(i), there is no evidence presented by the Complainant

that the Respondent registered the disputed domain name for the purpose of selling

or transferring it for valuable consideration in excess of out of pocket expenses.

In particular, there is no evidence that the Respondent has at any time approached

the Complainant with the object of transferring the domain name for such a consideration.

Nonetheless, the Respondent has not responded to the Complainant’s allegation

that this was his intention in registering the name, and it is open to the Panel

draw this inference from the Respondent’s silence.

- With respect to the

factor mentioned in subpara 4(b)(ii), there is no evidence of a pattern of conduct

by the Respondent which consists of registering domain names in order to prevent

the owner of the trademark or service mark from reflecting the mark in a corresponding

domain name and it is therefore not appropriate to draw such an inference from

the fact that the Respondent has not filed any contrary evidence in response.

- With respect to the

factor mentioned in subpara 4(b)(iii), there is also no direct evidence that

the Respondent has registered the domain name primarily for the purpose of disrupting

the business of a competitor. Nonetheless, it has been clearly established that

the Complainant is the owner of registered trade and service marks in four countries

comprising the mark PORTMANS and that these are registered with respect to clothing

and similar articles (particularly for women) and for retail services in respect

of the same. While the Complainant has not provided evidence of the extent of

the reputation in the marketplace of these marks, the registered marks are nonetheless

statutory monopolies that give exclusive rights to the use of those marks within

their respective territories with respect to the goods and services for which

they are registered. The Respondent has registered the identical word as its

domain name, and there is an indication on its web site that it is engaged in

the same area of business ("Portmans is a worldwide fashion enterprise").

From these facts, and in the absence of any explanation from the Respondent,

it is open to the Panel to infer that the Respondent’s registration of the disputed

domain name was made in bad faith and falls within the criterion referred to

in subparagraph 4(b)(iii).

- So far as use in bad

faith of the disputed domain name is concerned (subparagraph 4(b)(iv)), it is

clear that the web site has been established under the domain name portmans.com

and that this was still in existence as at October 30, 2000. Up until this time

(and perhaps this still remains the case), it has been possible for web users

to access the site and to read the limited information that is contained there.

Among other things, this states that this is the "world-wide internet site

for PORTMANS and that the site is presently under construction". While

there is no offering of goods or services from the web site, this still constitutes

a use of the domain name and is unlike the Telstra case, where no web

site had been established and where the question was whether the passive holding

of a domain name registration alone was sufficient to constitute "use".

In the present proceeding, the question remains whether the Respondent’s use

of the disputed domain name is in bad faith. As to this, the Panel notes again

that the disputed domain name is the same as the Complainant’s registered trade

and service marks, and that the web site appears to be concerned with the same

area of business as that of the Complainant, namely "fashion", which

in turn indicates clothing and related items and services relating to these

products. There is nothing in the web site to distinguish it from the operations

of the Complainant, and the Respondent has provided no explanation of what it

is doing or is intending to do. In the light of the above, the Panel therefore

draws the inference that the disputed domain name is being used in bad faith

within the meaning of subparagraph 4(b)(iv), namely for the purposes of attracting,

for commercial gain, Internet users to the Respondent’s web site, by the creation

of a likelihood of confusion with the Complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of the web site.

On the basis of the above

findings, the Panel concludes that there is sufficient evidence that the Respondent

has both registered and used the domain name in bad faith since the time of

registration.

7. Decision

The Administrative Panel

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

4(a) of the Policy and accordingly requires that the domain name portmans.com

be transferred to the Complainant.

Staniforth

Ricketson

Sole Panelist

Dated: January

11, 2001