Metrolink Victoria Pty Ltd. v. Simon Chang

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Metrolink Victoria Pty Ltd. v. Simon Chang

Case No. D2003-0259

1. The Parties

The Complainant is Metrolink Victoria Pty Ltd. (t/a Yarra Trams), C/O Boyd

Power, Melbourne, Victoria 3000, Australia, represented by Griffith Hack Patent

and Trademark Attorneys of Melbourne, Australia.

The Respondent is Simon Chang, of Sydney, 45001, Australia.

2. The Domain Name and Registrar

The disputed domain name <yarratrams.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

“Center”) on April 4, 2003. On April 4, 2003, the Center transmitted

by email to eNom a request for registrar verification in connection with the

domain name at issue. Reminders were sent to eNom on April 7, 10, and 16, 2003.

On April 16, 2003, eNom transmitted by email to the Center its verification

response confirming that the Respondent is listed as the registrant and providing

the contact details for the administrative, billing, and technical contact.

eNom confirmed that the domain name registration may have been transferred from

Mr. Alain Roe to the Respondent after the commencement of these proceedings

but before eNom received notification thereof. In response to a notification

by the Center that the Complaint was administratively deficient, the Complainant

filed an amendment to the Complaint on April 23, 2003. The Center verified that

the Complaint together with the amendment to the Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”),

the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on April

30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was May 20, 2003. The Respondent did not submit any response. Accordingly, the

Center notified the Respondent’s default on May 21, 2003.

The Center appointed Michael C. Pryles as the Sole Panelist in this matter

on June 4, 2003. The Panel finds that it was properly constituted. The Panel

has submitted the Statement of Acceptance and Declaration of Impartiality and

Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The Registrant at the time of filing of the original Complaint (April 4, 2003),

was Alain Roe of Bucuresti, Romania. The Complainant attaches to its Complaint

a copy of an email from Mr. Roe indicating that he was aware of the original

Complaint. After Mr. Roe received the Complaint, the disputed domain name was

transferred to a new registrant, the Respondent Simon Chang.

The Complainant operates a public transport system in Victoria, Australia,

trading under the name of “Yarra Trams.” The Complainant began trading

as Yarra Trams on August 28, 1999. It is licensed to operate the Australian

registered trademarks “Yarra Trams” (trademark no. 760583) and “Y

Yarra Trams” (trademark no. 747191). Both the mentioned trademarks are

held in the name of the Director of Public Transport of the State of Victoria.

The Complainant supplies services relating to the transportation of passengers

as well as infrastructure related thereto. The Complainant says that it operates

approximately half of the tram network in the city of Melbourne. The Complainant’s

trams bear the mark “Yarra Trams.” The Complainant advertises its

Yarra Trams services in brochures available on its trams, at tram stops, in

Tourist Information Centres and in daily newspapers. Further, it maintains a

website at “www.yarratrams.com.au.” The Panel inspected that website

and found that it was linked to other transportation and tourist related sites.

The Respondent has not filed a response. Apart from the name and address details

mentioned above no information is known about the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant states that the website “www.yarratrams.com” contains

sexually explicit pornographic material and attaches printouts of such material

obtained on different days. The Complainant further states that the website

contains “mouse traps” designed to trap users and direct them to

other sites, and links to sites such “www.hotporndownload.com” and

“www.mtreexxx.net.”

The Panel visited the site “www.yarrtrams.com” on June 5, 6, and

10, 2003. The result was an inactive site stating that “the website cannot

be found” and “the website you are looking for is unavailable due

to its identification configuration settings.”

The Complainant states that by transferring the domain name to another party

after receipt of the Complaint, Mr. Roe has engaged in “cyber flying,”

in a deliberate attempt to escape the jurisdiction of the Panel. The Complainant

cites decisions supporting the proposition that in cases such as this where

the initial holder of the disputed domain name has transferred the domain name

to another party the Panel’s inquiry should focus on the original registrant

(i.e. Mr. Roe) and not the subsequent registrant (the Respondent). Further,

the Complainant states that an order of the Panel may be made against the original

and subsequent registrants, so long as the requisite elements of the Policy

have been proved.

The Complainant also points out that the contact details for the Respondent

Mr. Chang are false. This falsity further supports its contention that Mr. Roe

was deliberately trying to avoid the effects of any Panel decision. The Complainant

points out that the Respondent’s address, Mayburn Street, Punchbowl, Sydney,

does not exist. Further, the postcode given as “45001” is not a

valid Australian postcode because it contains five numbers and in any case Sydney

postcodes commence with “2.” It further points out that the given

telephone numbers are invalid, and do not even begin with the correct prefix

for an Australian telephone number (i.e. the numbers begin with “63”

instead of “61”). Further, the code for a New South Wales telephone

number is incorrect (“3” instead of “2”).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the

following elements in order to obtain relief:

(i) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights;

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

domain name; and

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

The Complainant bears the burden of proof on each of these elements.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical to the Complainant's

registered trademark “Yarra Trams.” The addition of the designation

“.com” in the domain name does not render it non-identical. (See

e.g. The State of The Netherlands v. Gold Names Inc., WIPO Case No. D2001-0520).

Although the Complainant itself is not the owner of the trademark, the Complainant

provides proof, in the form of a letter from the Director of Public Transport

of Victoria, that it is licensed to use the said trademark. Accordingly, the

first element of paragraph 4(a) of the Policy has been met by the Complainant.

The Complainant also alleges that the disputed domain name is confusingly similar

to the other trademark with which the Complainant is associated (“Y Yarra

Trams”). Although the Panel finds it unnecessary to decide that issue,

it accepts that Y Yarra Trams is confusingly similar to the disputed domain

name <yarratrams.com>.

B. Rights or Legitimate Interests

The Complainant affirms that the Respondent is not licensed by the Complainant

and has not obtained express or implied permission from the Complainant to use

the Yarra Trams mark, or any domain name incorporating such mark. The Panel

accepts this statement.

Neither the Respondent nor Mr. Roe, who was initially named as the Respondent,

has submitted a response or any evidence of a legitimate interest in the disputed

domain name. Pursuant to paragraph 14(b) of the Rules, the Panel is entitled

to draw, and does draw, an inference that no such evidence exists. Notwithstanding

that that inference alone is sufficient to find in the Complainant's favor on

this point, the merits will be discussed briefly.

From the information presented to the Panel, and based on the Panel’s

own investigations of the disputed domain name website, there is no suggestion

that the Respondent or Mr. Roe used the domain name in connection with any bona

fide offering of goods or services.

The Panel accepts the evidence provided by the Complainant that Mr. Roe used

the domain name <yarratrams.com> for the purpose of directing users to

commercial pornographic sites. It might be argued that this provides a connection

between the use of the domain name and the provision of goods or services over

the Internet. However, it is difficult to see what connection might exist between

the phrase “Yarra Trams” and pornography. The Complainant asserts

and the Panel accepts that the word “Yarra” is an aboriginal word

and is also the name of the main river which flows through the city of Melbourne.

Similarly the word “tram” refers to an electronically powered passenger

vehicle that runs on rails on a public road. There is no connection between

the word tram, the word Yarra or the phrase Yarra trams and the provision of

pornographic Internet services.

The Complainant provides a copy of an email dated April 5, 2003, from Mr. Roe

offering to sell to the Complainant the <yarratrams.com> domain name.

According to this email, Mr. Roe, upon learning of the Complaint filed against

him offered:

“If you're interested in the yarratrams.com domain name, we would

certainly be prepared to sell it, and would be willing to accept US$ 100 for

it. Resolution through WIPO is unnecessary.”

Mr. Roe went on to state how payment could be made. Mr. Roe made no suggestion

that the payment would constitute no more than reimbursement of expenses reasonably

constituted in obtaining the domain name. Selling domain names to people with

legitimate interests in them does not constitute the provision of bona fide

goods or services. This conduct effectively frustrates the policy behind the

Policy.

The fact the website is currently inactive and results in the statement “site

not found” etc, simply confirms that there is no connection between the

use of the domain name and the bona fide offering of any goods or services.

Finally, there was no information put before the Panel, or found through the

Panel’s own investigations, suggesting that the Respondent or Mr. Roe

has some legitimate non-commercial use for the domain name. The pornographic

sites to which it previously diverted were in fact invitations to obtain Internet

pornography for payment. This is clearly not non-commercial.

Accordingly, the Panel finds that neither the Respondent nor Mr. Roe has or

had a legitimate interest in the domain name.

C. Registered and Used in Bad Faith

From the facts and conclusions already set out above, the Panel considers that

Mr. Roe acted in bad faith in registering and using the domain name. In particular,

it was used deliberately in the expectation of receiving internet traffic intended

for the Complainant and the Complainant's official site (see paragraph 4(b)(iv)

of the Policy) and in an attempt to profit by selling the domain name to the

Complainant (paragraph 4(b)(i) of the Policy).

A further indication of that bad faith was the immediate transfer of the domain

name to Mr. Simon Chang at a false address upon Mr. Roe learning that the Complainant

had lodged a Complaint and would not pay the requested US$ 100.

Mr. Roe is no longer the Respondent. It is therefore necessary to consider

whether Mr. Chang, the present Respondent, registered and used the domain name

in bad faith. Mr. Chang did not respond to the notification of the Complaint.

His address is manifestly false. This fact when taken together with the circumstances

of his registration, after a Complaint had been filed against the previous registrant

Mr. Roe, clearly indicates registration and use in bad faith.

Combining the above with the fact that (a) Yarra Trams is a registered trademark

of the Complainant, (b) the domain name resolves to a non-existent website,

and previously to pornographic websites, and (c) no response has been submitted

by the Respondent, the Panel concludes that the Respondent registered and used

the domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <yarratrams.com>

be transferred to the Complainant.

Michael C. Pryles

Sole Panelist

Dated: June 11, 2003