Coles Myer Limited v. NetRegistry Pty Ltd; William Savage

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coles Myer Limited and Myer Stores Limited v. Dominic Main and Mr. William Savage t/a SAV. Trading

Case No: D2002-0124

1. The Parties

The Complainants are Coles Myer Limited and Myer Stores Limited, both

of 800 Toorak Road, Tooronga, Victoria 3146, Australia, represented

by Mr. John C. Gibbs of Phillips Ormonde & Fitzpatrick

of Melbourne.

The Respondents are Dominic Main of netregistry, P.O. Box 270,

Chippendale, New South Wales 2750, Australia and Mr. William Savage

t/a SAV. Trading of 80 Colemans Road, Dandenong 3175, Victoria,

Australia.

2. The Domain Name and Registrar

The disputed domain names are <colesmyer.info> and <myer.info>.

The Registrar of both domain names is Tucows, Inc., of Toronto, Canada.

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 February 7, 2002,

and in hard copy on February 12, 2002. It named as First Respondent

NetRegistry Pty Ltd and as Second Respondent Mr. William Savage / SAV. Trading.

It gave the address of NetRegistry Pty Ltd as PO Box 270, Broadway, NSW 2007,

Australia. Receipt of the Complaint was acknowledged by the Center on February 8, 2002.

On February 13, 2002 registration details were sought from the

Registrar, which replied on February 14, 2002, stating that it

had received a copy of the Complaint from the Complainant; that the disputed

domain names are registered with it; that neither is registered in the name

of NetRegistry Pty Ltd or of Mr. William Savage / SAV. Trading.

Rather, the Registrar stated that both disputed domain names are registered

in the name Dominic Main of netregistry, with the address PO Box 270, Chippendale,

NSW 2750 Australia and an email address of dmain@netregistry.au.com.

Dominic Main was also recorded as the Administrative, Billing and Technical

contact for both disputed domain names; the record of both names was created

on September 21, 2001, was last updated on February 11, 2002,

and will expire on September 21, 2003.

The Registrar did not provide any information in response to the Center’s

request as to the status of the domain names, whether the Policy applies,

the language of the registration agreements and whether the registrant had

submitted in his Registration Agreement to the jurisdiction of the principal

office of the Registrar for court adjudication of disputes concerning or

arising from the use of the domain names (Rules, para 1). It appears from

the exhibits to the Complaint, however, that the Policy applies (by virtue

of clause 7 of the Registration Agreements); the language of the Registration

Agreements is English and that the registrant submitted in the Registration

Agreements to the jurisdiction of the courts of Ontario but only for any

action relating to the Registration Agreements.

On February 18, 2002 the Center drew to the attention of the Complainant

the failure of the Complaint to nominate the registrant. On February 21, 2002,

the Complainant filed an Amended Complaint by email naming as First Respondent

"netregistry" rather than "NetRegistry Pty Ltd" and

specifying its contact details in accordance with the information provided

by the Registrar. As before, the Amended Complaint named Mr. Savage/

SAV. Trading as Second Respondent.

On February 21, 2002, the Center satisfied itself that the Amended Complaint

complied with all formal requirements (including payment of the prescribed

fee) and that day formally dispatched copies of the Amended Complaint by

post/courier (with enclosures) to netregistry and to Mr. Savage at the addresses

as recorded with the Registrar, including in particular by courier to "Dominic

Main, Netregistry" and by email (without attachments), including in

particular by email to dmain@netregistry.au.com.

The Center included with that material a letter dated February 21, 2002,

containing notification of the commencement of this administrative proceeding,

with copies (of the Amended Complaint without attachments) to the Complainant,

the Registrar and ICANN.

The last day specified by the Center for a Response was March 13, 2002.

No Response was filed. On March 22, 2002, the Center notified

the parties of the Respondents’ default.

The Complainant having requested a single-member panel, on April 11, 2002,

the Center formally notified the parties of the appointment of Alan L. Limbury

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 April 25, 2002.

By administrative order issued on April 23, 2002, the Panel invited

the Complainant to amend the Amended Complaint within 5 working days so

as to name as First Respondent Dominic Main instead of Netregistry; to add

Myer Stores Limited as Second Complainant and to make any necessary consequential

amendments to the body of the Amended Complaint. The Respondents were given

until May 3, 2002, to respond to the amendments but not to the

substance of the Further Amended Complaint. The time for a decision was

extended to May 11, 2002.

On April 24, 2002 the Amended Complaint was further amended in accordance

with the administrative order. By May 6, 2002, no response to

the amendments had been filed by the Respondents.

The Panel is satisfied that the Further Amended Complaint was filed in

accordance with the requirements of the Rules and Supplemental Rules; payment

was properly made; the Panel considers the Further Amended Complaint complies

with the formal requirements; the Center discharged its responsibility under

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

to achieve actual notice to the Respondents of the Amended Complaint and

Further Amended Complaint; no Response was filed within the time specified

in the Rules and the Panel was properly constituted.

The language of the proceedings is English, being the language of the Registration

Agreement.

4. Factual Background

The First Complainant, Coles Myer Limited, is the largest retailing organization

in Australasia and one of the largest retailers in the world. It has over

2000 stores in Australia and New Zealand and had annual sales of over $23.8

billion in the 2001 Australian financial year. It employs over 162,000 staff.

The First Complainant is the owner of the registered trade mark COLES MYER

in Australia and elsewhere. The First Complainant is the owner of the Second

Complainant, Myer Stores Limited, which is itself the owner of the registered

trade marks @MYER, //MYER@, MYER@ and MYER (logo).

The Second Complainant has a history which dates back to 1900 when the

first Myer store was opened. In 1989, Myer merged with Grace Bros to form

Myer Grace Bros, the largest department store retailer with 73 sites throughout

Australia, 43 of which are Myer stores including "Megamart by Myer".

The Second Respondent is the owner of the registered business name "SAV.

TRADING" in the state of Victoria, registration no. 1130848V. This

business name was first registered on November 9, 1993. The nature

of the business "SAV. TRADING" is registered as "Auction

Buyers Stock Placement".

Both disputed domain names were registered in the name of the First Respondent,

of NetRegistry Pty Ltd, on September 21, 2001. The First

Respondent is also the Administrative, Billing and Technical Contact for

both domain names.

In a telephone conversation with an employee of the First Complainant in

late November 2001, the Second Respondent offered to transfer the domain

name <colesmyer.info> to the First Complainant and suggested that,

for an undisclosed fee, he may be willing to transfer the domain name <myer.info>.

On December 10, 2001, the Complainants’ representative asked NetRegistry

Pty Ltd to confirm the name and contact details of the owner of the disputed

domain names. On December 13, 2001, NetRegistry Pty Ltd named the Second

Respondent as the registrant of the disputed domain names.

On December 19, 2001, the Complainants’ representative asked the Second

Respondent to assign the domain name <colesmyer.info> to the First

Complainant and to indicate what he had in mind in relation to a fee for

the transfer of <myer.info>.

On January 15, 2002, Second Respondent stated that he had not perused the

request to transfer the domain name <colesmyer.info> because it was

the Christmas Holiday period, and that:

"[t]ransfer of Domain "myer.info" is open to offer. Please

respond at your earliest convenience".

On January 30, 2002, the Complainants’ representative asked the Second

Respondent to complete a Deed of Assignment for the transfer of both disputed

domain names to the First Complainant. On February 1, 2002, the

Second Respondent said:

"…myer.info" domain may go offshore shortly. Please respond

if your client still has any interest".

On February 14, 2002, (after the commencement of this proceeding) the Center

received an email from the Second Respondent, saying:

"I have agreed to transfer "myer.info" to the dot com

registered owner. This agreement was in place prior to receiving notice

of complaint from "coles myer", who are NOT the dot com holders.

What happens now?

"colesmyer.info" will probably be transferred to coles myer soon."

5. Parties’ Contentions

A. Complainants

Both Respondents are joined in this Complaint because the General Manager

of NetRegistry Pty Ltd informed the First Complainant that despite various

Whois databases listing the NetRegistry Pty Ltd as the registrant of the

disputed domain names, the actual registrant is the Second Respondent.

The Complainants request the Panel to direct that the domain names <colesmyer.info>

and <myer.info> be transferred to the First and Second Complainants

respectively upon the following legal grounds:

Identity/Confusing Similarity

The domain name <colesmyer.info> is identical to two registered trade

marks which are owned by the First Complainant. The domain name <myer.info>

is identical to over 30 registered trade marks which are owned by the

Second Complainant.

Legitimacy

The Respondents have no rights or legitimate interests in respect of the

disputed domain names. Neither of the Respondents is commonly known by the

names Colesmyer or Myer. Neither of the Respondents has used or made preparations

to use the websites www.colesmyer.info or www.myer.info in connection with

a bona fide offering of goods or services or for any other legitimate reason.

Bad Faith

The Respondents have registered the disputed domain names in bad faith. The

Second Respondent’s intention to benefit financially from the registration of

the domain name <myer.info> is demonstrated in his correspondence. Further,

it is clear from the tone in the Second Respondent’s correspondence that it

was his intention to register the domain name <colesmyer.info> for the

purpose of commercial gain, having full knowledge of the Complainants’ statutory

and common law rights in the names COLES MYER and MYER. The Second Respondent’s

willingness to communicate with the Complainants without agreeing to transfer

the disputed domain names and the failure of the Second Respondent to provide

a reason for initially registering the disputed domain names supports the contention

that the domain names were registered in bad faith: EFG Bank European Financial

Group SA v Jacob Foundation, WIPO Case

No. D2000-0036.

The First Respondent appears to have collaborated with the Second Respondent,

acting as the Second Respondent’s agent by providing its own address in

the Registrant details which were then listed in various whois databases.

The First Respondent has on the NetRegistry website, <www.netregistry.com>,

a webpage which contains answers to the question "What are the domain

name rules and restrictions?" In answer to this question, the First

Respondent has published the following statement in relation to the registration

of international domain names including .com, .biz, .net, .info and .org:

"..anyone can register any domain name, regardless of their rights

to that domain name. If you own a company name, or a trade mark, it does

not prevent someone registering that name."

This statement is misleading, and is against the Policy, para 2b:

" to [the applicant’s] knowledge,

the registration of the domain name will not infringe upon or otherwise

violate the rights of any third party;…"

Accordingly, the First Respondent has acted in bad faith by promoting registration

of generic top level domain names against ICANN’s UDRP. Further, the First

Respondent has registered the disputed domain names in bad faith, or is

holding them on behalf of the Second Respondent who has registered the disputed

domain names in bad faith.

B. The Respondents

No Response was filed.

6. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint

on the basis of the statements and documents submitted and in accordance

with the Policy, the Rules and any rules and principles of law that it deems

applicable.

Consolidation

Nominally, these proceedings involve two separate disputes between two

different sets of parties, over two different trade marks and two different

domain names. However, the two Complainants are parent and wholly-owned

subsidiary and both disputed domain names are effectively under the control

of the Second Respondent. The Panel considers it appropriate to treat the

two proceedings as consolidated under paragraph 4(f) of the Policy, treating

the two Complainants as one economic entity. There can be no prejudice to

the First Respondent, since his organization has asserted that the registrant

of the disputed domain names is the Second Respondent. Nor can there be

prejudice to the Second Respondent since he has been content to deal with

the First Complainant in communications concerning both domain names, over

which he asserts control.

Substantive issues

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.

Failure to file a Response

The Panel draws two inferences where the Respondent has failed to submit a

Response: (a) the Respondent does not deny the facts which the Complainant asserts

and (b) the Respondent does not deny the conclusions which the Complainant asserts

can be drawn from those facts: Reuters Limited v. Global Net 2000, Inc.,

WIPO Case No. D2000-0441. See also Hewlett-Packard

Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This

Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and

Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Rights in a trademark

From an examination of the trade mark registration certificates exhibited

to the Further Amended Complaint, the Panel is satisfied that the First

Complainant is and has been since October 28, 1998, the proprietor

in Australia of the registered trade mark COLES MYER and that the Second

Complainant is the proprietor of the registered trade marks @MYER (since

September 28, 1995), //MYER@ and MYER@ (both since October 30, 1998)

and MYER (logo) (since October 28, 1998). Numerous registrations

of the trade mark MYER in the name of Myer Emporium Limited dating from

1970 are not shown by any evidence before the Panel to have come under the

ownership of the Second Complainant, either by change of name or by assignment.

Identity or Confusing Similarity

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

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;

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

Case No. D2000-0102 and Blue Sky Software Corp. v. Digital Sierra Inc.,

WIPO Case No. D2000-0165.

The test of confusing similarity under the Policy is confined to a comparison

of the disputed domain name and the trademark alone, independent of the other

marketing and use factors usually considered in trademark infringement or unfair

competition cases: BWT Brands, Inc and British American Tobacco (Brands),

Inc v. NABR, WIPO Case No. D2001-1480;

Koninklijke Philips Electronics N.V. v. In Seo Kim. WIPO

Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF

Case No. FA101000096364; Vivendi Universal v. Mr. Jay David Sallen and

GO247.COM, Inc. ,WIPO Case No. D2001-1121

and the cases there cited.

The Panel finds the domain name <colesmyer.info> to be virtually

identical to the First Complainant’s trade mark COLES MYER and the domain

name <myer.info> to be confusingly similar to the Second Complainant’s

trade marks @MYER, //MYER@, MYER@ and MYER (logo).

Each Complainant has established this element of its case.

Illegitimacy

The Respondents must be taken to accept the Complainants’ assertions that

they are not licensees of either Complainant, nor otherwise authorized to

use either Complainant’s trade mark; that they are not known by and have

no connection with the name "Coles Myer" or "Myer"

and are not using the disputed domain names in connection with a bona fide

offering of goods or services.

These circumstances are sufficient to constitute a prima facie showing

by the Complainants of absence of rights or legitimate interests in the disputed

domain names on the part of the Respondents. The evidentiary burden, therefore,

shifts to the Respondents to show that at least one of them does have rights

or legitimate interests in the domain names whether by reference to the examples

set out in paragraph 4(c) of the Policy or otherwise: Do The Hustle, LLC

v. Tropic Web, WIPO Case No. D2000-0624

and the cases there cited. The Respondents have made no such showing and accordingly,

the Panel finds the Respondents have no rights or legitimate interests in respect

of either of the disputed domain names.

Each Complainant has established this element of its case.

Bad faith registration and use

Although both disputed domain names are registered in the name of the First

Respondent, it is clear that the First Respondent, an employee or officer

of NetRegistry Pty Ltd, is holding those registrations on behalf

of the Second Respondent. The Registration Agreement contemplates such a

situation arising and provides in paragraph 10:

"AGENCY. Should you intend to license use of a domain name to a

third party you shall nonetheless be the domain name holder of record…

You shall accept liability for harm caused by wrongful use of the domain

name. You represent that you have provided notice of the terms and conditions

in this agreement to a third party licensee and that the third party agrees

to the terms hereof"

The panel concludes from the email from NetRegistry Pty Ltd to the First

Complainant of December 13, 2001, that the First Respondent acted

as mere agent of the Second Respondent in registering the disputed domain

names and that the issue of bad faith registration and use is to be determined

on the basis that it is the Second Respondent’s conduct that needs to be

considered.

The Panel accepts the Complainants’ uncontradicted assertions that the Second

Respondent’s intention to benefit financially from the registration of the domain

name <myer.info> is demonstrated in his correspondence and that he also

registered the domain name <colesmyer.info> for the purpose of commercial

gain, having full knowledge of the Complainants’ rights in the trade marks COLES

MYER and MYER. The Second Respondent’s failure to offer a plausible explanation

for registering the disputed domain names supports the contention that they

were registered in bad faith: EFG Bank European Financial Group SA v Jacob

Foundation, WIPO Case No. D2000-0036.

Following registration of the disputed domain names, the Complainants had

no way of knowing of the connection between the Second Respondent and those

domain names, since they were registered in the name of the First Respondent.

The Panel therefore concludes that it was the Second Respondent who approached

the First Complainant in November 2001, only two months after registration

of the domain names, offering to transfer the domain name <colesmyer.info>

to the First Complainant and indicating a willingness, for an undisclosed

fee, to transfer the domain name <myer.info>. In these circumstances

the Panel finds that the Second Respondent (by his agent, the First Respondent)

registered the domain name <myer.info> primarily for the purpose of

selling that domain name to the owner of the trade mark MYER (or marks incorporating

the word MYER) for valuable consideration in excess of his documented out-of-pocket

costs directly related to the domain name.

Because the Second Respondent (by his agent, the First Respondent) registered

both domain names on the same day and himself mentioned both domain names

in the same conversation in which he indicated a willingness to transfer

<myer.info> for a fee, the Panel comfortably draws the conclusion

that the Second Respondent also registered the domain name <colesmyer.info>

primarily for the purpose of selling that domain name to the owner of the

trade mark COLES MYER for valuable consideration in excess of his documented

out-of-pocket costs directly related to the domain name.

Accordingly, pursuant to paragraph 4(b)(i) of the Policy, the Panel concludes

that the Respondent has registered and is using the disputed domain names

in bad faith.

Each Complainant has established this element of its case.

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel

directs that the domain name <colesmyer.info> be transferred to the

First Complainant, Coles Myer Limited and that the domain name

<myer.info> be transferred to the Second Complainant, Myer Stores

Limited.

Alan L. Limbury Esq.

Sole Panelist

Dated: May 6, 2002

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