Myer Stores Limited v. David John Singh

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Myer Stores Limited v. Mr. David John Singh

Case No. D2001-0763

1. The Parties

The Complainant is Myer Stores Limited of 800 Toorak Road, Tooronga, Victoria

3146, Australia, represented by Mr. John Gibbs of Phillips Ormonde & Fitzpatrick

of Melbourne, Australia.

The Respondent is Mr. David John Singh of 4 Zambelli Drive, Lismore NSW 2480,

Australia, representing himself.

2. The Domain Name and Registrar

The disputed domain name is <myeronline.com> and the Registrar with which

the domain name is registered is Register.com.

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules

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

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

Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO

Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on June 8, 2001, and in hardcopy

on June 12, 2001. The Complaint was acknowledged on June 11, 2001, when registration

details were sought from the Registrar. On June 12, 2001, the Registrar confirmed

the registration details and that the Policy is applicable to the disputed domain

name. On June 12, 2001, the Center satisfied itself that the Complainant

had complied with all formal requirements, including payment of the prescribed

fee. On June 13, 2001, the Center formally notified the Respondent by post/courier

and email of the Complaint and of the commencement of this administrative proceeding

and sent copies to the Complainant, the Registrar and ICANN.

The last day specified by the Center for a Response was July 2, 2001. A Response

was filed in hardcopy on June 22, 2001, and by email on June 26, 2001. The Response

was acknowledged on June 26, 2001. On July 5, 2001, the Center notified the

parties of the appointment of Alan L. Limbury to serve as panelist, Mr. Limbury

having submitted a Statement of Acceptance and Declaration of Impartiality and

Independence. That day, the Center transmitted the case file to the panel and

notified the parties of the projected decision date of July 19, 2001.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules; payment was properly made;

the panel agrees with the Center’s assessment concerning the Complaint’s compliance

with the formal requirements; the Complaint was properly notified to the Respondent

in accordance with paragraph 2(a) of the Rules; the Response was filed within

the time specified by the Rules and the administrative panel was properly constituted.

4. Factual Background

The Complainant is the largest department store group in Australia with over

65 stores operating nationally and employing approximately 29,000 people. It

forms part of Coles Myer Limited, the largest retailing organisation in Australasia

and one of the largest retailers in the world. The Myer name is very well known.

The Complainant is the owner of the registered trademark MYER in Australia,

and the owner of a total of 85 registered trademarks which incorporate the word

MYER either on its own or in conjunction with other words or images.

In addition, the Complainant became on July 3, 2001 the registered proprietor

of Australian trademark MYER ONLINE in respect of "online retailing services",

with effect from August 28, 2000 - the date the application was filed. The application

had been accepted by the Australian Trademarks Office before the Complaint was

filed.

The domain name <myeronline.com> was created on September 24, 1999. The

Complainant had not authorized the use of its trademarks nor the registration

of the disputed domain name.

The Respondent’s website at <myeronline.com> contains company information

and commentary on the financial performance of Coles Myer Limited and numerous

disclaimers denying any association between the website and the Complainant

or Coles Myer Limited.

The Respondent has registered other "dot com" domain names which

include well known trademarks registered in Australia with the same <online>

addition. These ("the additional domain names") include:

<ansettonline.com>

<davidjonesonline.com>

<macquarieonline.com>

<optusonline.com>

<qantasonline.com>

<telstraonline.com>

<westpaconline.com>

<woolworthsonline.com>

Each of the additional domain names relates to a website which contains material

similar to that at the <myeronline.com> website, namely commentary on

the financial performance of the company whose name is included in the domain

name.

5. Parties’ Contentions

A. Complainant

Identity/confusing similarity

The disputed domain name is identical to the MYER ONLINE trademark. Although

not identical to the MYER trademark, it includes the said trademark, "with

a simple web-descriptive addition": Estate Of Tupac Shakur V Bobby Grewal

& Al. (eResolution Case AF-0347). Therefore, the disputed domain name

is identical or confusingly similar to the Complainant’s trademark and the requirement

under section 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy has

been satisfied.

Legitimacy

The Respondent has no legitimate rights or interests in the disputed domain

name. The Respondent is not commonly known by the name, nor is the Respondent

using the site in connection with a bona fide offering of goods or services

or for a legitimate reason.

The disclaimers come too late. Although disclaimers at the <myeronline.com>

website are located both at the start and end of the page, they are not effective

in displacing assumptions likely to be made by Internet users. Internet users

accessing the <myeronline.com> website would have every reason to believe

that, until they actually arrived there, they were on their way to visiting

a website sponsored or authorized by the Complainant: E & J Gallo Winery

v Hanna Law Firm (WIPO Case D2000-0615).

In addition to the disputed domain name, the Respondent has no legitimate interest

in the additional domain names, each of which relates to the business of a major

Australian corporation which currently operates or is expected to want to operate

an online business. Accordingly, each of the additional domain names is likely

to be wanted by the respective corporation.

Given the enormous number of alternative domain names which are currently available,

the Respondent’s selection of the disputed domain name for use as a web address

for the establishment of a website which provides information about the Complainant

and Coles Myer Limited without sponsorship or approval from either of those

companies is not legitimate, is not fair use, and is designed to mislead and

divert the Complainants customers and potential customers to the website maintained

by the Respondent in order to tarnish the MYER trademarks: E & J Gallo

Winery v Hanna Law Firm (WIPO Case D2000-0615).

Bad faith

The disputed domain name was registered in order to prevent the Complainant

from reflecting its MYER mark in the corresponding top level domain name. The

Respondent has clearly engaged in a pattern of such conduct by registering the

additional domain names, a clear indication of the Respondent’s use of the disputed

domain name in bad faith.

B. Respondent

Applicable law

The United States laws governing trademarks or service marks are applicable,

as is the policy used to decide this dispute. The registration agreement was

also issued in the United States of America.

Rights

The Complainant does not have a trademark or service mark registration in the

United States for MYER or MYER ONLINE. At the time of submission of the Complaint,

MYER ONLINE was not even registered in Australia. It is questionable if an application

for a trademark constitutes a right to a trademark.

Identity/ confusing similarity

The disputed domain name is neither identical nor confusingly similar to a

trademark or service mark in which the Complainant has rights.

The name "myer" is neither identical nor confusingly similar to the disputed

domain name. No confusion exists related to the domain name and the trademark

"myer" due to the "online" extension. The average internet user would be foolish

to associate the "myer" trademark with my domain, since my website has numerous

disclaimers stating that there is no connection between the website and the

Complainant.

Legitimacy

I have rights or legitimate interests in respect of the disputed domain name.

The disputed domain name was chosen in order to inform the public, potential

and current stock holders of the parent company of the Complainant. A substantial

portion of the public is unaware the Complainant is a subsidiary of another

company, particularly young members of the public, who have a high propensity

to use the Internet. Hence, this website linked to the domain name aims at providing

information to anyone who has an interest as I have, in the Complainant and

its parent company.

This site is noncommercial as it is not used or intended to be used in the

course of any commercial activities. Consumers are not misled or diverted due

to the numerous disclaimers stating that there is no connection in any way whatsoever

between the Complainant and the Respondent or the website.

There is no intent for commercial gain to misleadingly divert consumers because

I do not have links or any facility whatsoever on my website where consumers

can take part in commerce.

The trademark or service mark at issue is certainly not tarnished by the website

linked to the domain name due to the lack of any negative comments or negative

material related to the trademark or the Complainant. Hence, I am 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.

E&J Gallo Winery v Hanna Law Firm (WIPO

Case D2000-0615) is not even remotely applicable here. Firstly, the Respondent

in that case was using two <trademark.com> and <trademark.net> domain

names each linked to a different complaint site regarding Complainant. The use

of two domain names linked to complaint sites about the Complainant was judged

to tarnish the trademark and hence be proof of bad faith. Here there is just

one domain name which is not <trademark.com> and certainly does not tarnish

the trademark in any way whatsoever.

Bad faith

My domain name has not been registered and is not being used in bad faith.

There are no circumstances falling within sub-paragraphs 4(b)(i) to (iv) of

the Policy.

The disputed domain name was registered with the purpose of setting up a website

containing company information concerning Coles Myer Limited, the parent company

of the Complainant. The general public and potential and current investors in

Coles Myer Limited have the right to obtain information as to the business description,

financial performance and stock performance, free of any type of advertising,

commercial gain for me or any other party, in a concise, straight-to-the-point

manner at this noncommercial website linked to the disputed domain name.

I have not registered the disputed domain name in order to prevent the owner

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

domain name, and I have not engaged in a pattern of such conduct.

I registered the disputed domain name and the additional domain names in order

to create noncommercial websites providing information to the general public

and potential and current investors The domain names I chose were related to

either the subsidiary or the parent company, followed by an "online" extension.

In each case, including the disputed domain name, I have not prevented the

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

domain name.

The Complainant owns the domain <myeronline.com.au> and <myer.com.au>.

Neither the Complainant nor the Respondent own the <myer.com> website.

Reverse domain name hijacking

All the additional domain names are of companies or parents of these companies

whose shares are listed on the Australian Stock Exchange. Hence, this was clearly

my reason behind such a choice of names. Each of those companies has a domain

name registration under their <trademark.com>. However, Myer does not,

because the trademark in the United States of America is owned by another individual,

as is the <myer.com> domain.

Hence, the Complaint is nothing but an attempt by the Complainant to gain a

foothold into the <.com> domains. This is clearly an element of bad faith

by the Complainant which should be closely examined. None of the other companies

or their parent companies have complained due to the fact they all have a presence

in the <.com> domain. Hence, the motivation behind the Complaint is clearly

disturbing. It is absurd to suggest that the other companies or parent companies

will want their domains, due to the fact that they all have this <.com>

presence. However, note that the Complainant does not. Hence, this is a clear

attempt at a manipulation of the Policy by the Complainant for its own gain.

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed 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 disputed domain name has been registered and is being used in bad

faith.

Applicable law

The Complainant is incorporated and carries on business in Australia. The

Respondent resides in Australia. The trademarks on which the Complainant relies

are registered in Australia. The Registrar is in the United States. The website

reached by means of the disputed domain name is accessible to Internet users

worldwide. In the Complaint, the Complainant agreed to submit, only with respect

to any challenge that may be made by the Respondent to a decision by the panel

to transfer or cancel the disputed domain name, to the jurisdiction of the courts

where the Respondent is located, as shown by the address given for the domain

name holder in the Registrar’s Whois database at the time of the submission

of the Complaint to the Center.

In these circumstances the panel finds that, in addition to the Policy, the

Rules and Supplemental Rules, the applicable law is the law of the State of

New South Wales, Australia, including Australian Federal law.

Rights

The Policy applies where a Complainant establishes rights in a trademark, regardless

of the territory in which those rights are recognized. Accordingly it is irrelevant

that the Complainant may not have trademark rights in the United States.

There is no dispute that the Complainant has rights in the Australian registered

trademark MYER. The trademark MYER ONLINE was not registered until after the

Complaint was lodged with the Center. The application to register that mark

was filed after the disputed domain name was registered. There is no evidence

of common law rights in that mark acquired through use. Since the panel finds

that the Complaint succeeds by reason of the Complainant’s rights in the trademark

MYER, it is unnecessary to decide whether an application to register a trademark

in Australia confers rights in a trademark of the kind contemplated in the Policy.

Identity or confusing similarity

Essential or virtual identity is sufficient for the purposes of the Policy

(Footnote 1). The disputed domain name is identical

to the Complainant’s registered trademark MYER ONLINE. Given the date of the

application for registration, the date of registration, the date of the Complaint

and the absence of evidence of common law rights, no reliance is placed by the

panel on this finding for the purposes of this decision.

The test of confusing similarity under the Policy, unlike trademark infringement

or unfair competition cases, is confined to a consideration of the disputed

domain name and the trademark (Footnote

2). Accordingly, disclaimers placed on the website are irrelevant. Here

the disputed domain name incorporates the whole of the Complainant’s well-known

trademark MYER and is followed by a descriptive word denoting a modern form

of communication and trading with which customers and others familiar with the

Complainant would expect the MYER mark to be or to become associated. Thus the

disputed domain name is likely falsely to convey to Internet users an association

with the Complainant that does not exist.

The panel finds the disputed domain name is confusingly similar to the Complainant’s

trademark MYER. The Complainant has established this element.

Illegitimacy

The Complainant has not authorized the Respondent to use its trademark nor

to register the disputed domain name. The name of the Respondent is not and

does not include any part of the disputed domain name.

The trademark MYER is well-known and used in Australia to denote the goods

and services of the Complainant. Before registering the disputed domain name,

the Respondent clearly knew of the trademark MYER because he chose the disputed

domain name in order to provide information about the Complainant’s parent company.

It is, of course, legitimate to provide information about the Complainant or

its parent to Internet users. The issue, however, is whether the Respondent

has a legitimate interest in the disputed domain name.

In Monty & Pat Roberts Inc. v.J.Bartell (WIPO

Case D2000-0300), the learned panelist, considering the domain name <montyroberts.org>,

which led to a website containing criticisms of the Complainant, Mr. Monty Roberts,

said:

"Respondent’s claim to use of Complainant’s mark for legitimate news dissemination

purposes is a serious one, since the Panel is greatly concerned to assure that

rights of the public to freely communicate their views on the Internet are protected

and preserved. However, in balancing the rights of Complainant in its mark,

and the rights of Respondent to freely express its views about Complainant’s

services, the Panel concludes that Respondent has impermissibly taken advantage

of Complainant’s commercial interests in the mark.

….. the right to express one’s views is not the same as the right to use another’s

name to identify one’s self as the source of those views. One may be perfectly

free to express his or her views about the quality or characteristics of the

reporting of the New York Times or Time Magazine. That does not, however, translate

into a right to identify one’s self as the New York Times or Time Magazine."

Here the Respondent is using a domain name which falsely conveys an association

with the Complainant to lead Internet users to his website. He is thus illegitimately

identifying himself as the Complainant and attracting visitors to his site by

trading off the Complainant’s goodwill in its MYER trademark. By the time users

reach the disclaimers on the website they have already been exposed to the misrepresentation

inherent in the disputed domain name.

The panel finds the Complainant has established this element. The Respondent

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

Bad faith registration and use

The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive.

A finding of bad faith may be made where the Respondent "knew or should

have known" of the registration and/or use of the trademark prior to registering

the domain name (Footnote 3). Here

the fame of the trademark MYER in Australia is such that the Respondent, an

Australian resident, must have known of the mark before registering the domain

name (Footnote 4) and cannot use it

without infringing the Complainant’s rights (Footnote

5). Indeed, the Respondent’s explanation as to why he chose the disputed

domain name demonstrates that he did so with the Complainant’s name and trademark

MYER in mind.

Registration of a domain name which incorporates the trademark of another prevents

the trademark owner from reflecting that mark in a corresponding domain name.

Under paragraph 4(b)(ii) of the Policy, registering a domain name for such a

purpose is evidence of both bad faith registration and bad faith use provided

there has been a pattern of such conduct. It is irrelevant that a Complainant

may have other domain names.

The Respondent has registered eight additional <[name]online.com> domain

names incorporating the well-known trademarks of Australian companies in identical

circumstances. The panel concludes that in each case the Respondent had, as

at least one of his purposes, to prevent the trademark owners from reflecting

their marks in <online.com> domain names, so that he might gain the benefit

of greater traffic to his sites than would otherwise be the case. This pattern

of conduct is evidence of bad faith registration and use of the disputed domain

name within paragraph 4(b)(ii) of the Policy.

Accordingly the Complainant has established that the disputed domain name was

registered and is being used in bad faith.

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines reverse domain name hijacking as "using

the Policy in bad faith to attempt to deprive a registered domain-name holder

of a domain name." See also Paragraph 15(e). To prevail on such

a claim, a Respondent must show that the Complainant knew of the Respondent’s

unassailable right or legitimate interest in the disputed domain name or the

clear lack of bad faith registration and use, and nevertheless brought the Complaint

in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd.

(WIPO Case No. D2000-1224) and Goldline

International, Inc. v. Gold Line (WIPO

Case No. D2000-1151). Since the complainant has succeeded in establishing

the elements entitling it to relief under the Policy, this claim must be rejected.

7. Decision

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs

that the domain name <myeronline.com> be transferred to the Complainant.

Alan L. Limbury

Sole Panelist

Dated: July 10, 2001

Footnotes:

1. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co.,

Inc. (WIPO Case No. D2000-0113), Toyota

Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises

Ltd. (WIPO Case No. D2000-0802) and

Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO

Case No. D2000-0102). (back to text)

2. AltaVista Company v. S.M.A., Inc. (WIPO

Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly

Gateway Media Productions, Inc.) (WIPO

Case No. D2000-0109). See also General Mills, Inc. v. John Zuccarini

(NAF Case FA 104000097050). (back to text)

3. SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case

FA94956). Likewise Marriott International, Inc. v. John Marriot (NAF

case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211)

and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

(back to text)

4. Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group

Co., (WIPO Case No. D2000-0163); Empresa

Brasileira de Telecomunicacoes S.A. – Embratel v. Kevin McCarthy (WIPO

Case No. D2000-0164). (back to text)

5. See Cellular One Group v. Paul Brien (WIPO

Case No. D2000-0028). (back to text)