Regal Removals v. Gary Bradshaw

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Regal Removals v. Gary Bradshaw

Case No. D2003-0832

1. The Parties

The Complainant is Regal Removals of Seaford, Victoria, Australia, represented by Matthew Matysik, Australia.

The Respondent is Gary Bradshaw of Web Dreams Computer Services, Frankston, Victoria, Australia.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 20, 2003.

On October 21, 2003, a Request for Registrar Verification was transmitted to eNom, which failed to submit a verification response. Therefore, the Center made a Whois printout on December 23, 2003, which showed that the disputed domain name was registered with eNom, and that the Respondent, Gary Bradshaw, was the current registrant of the disputed domain name. The Panel would like to remind the Registrar of the importance of providing a verification response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 12, 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 December 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2004.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 22, 2004. 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.

3.1 Other Legal Proceedings

The Complainant’s Representative sent a cease and desist letter to the Respondent requesting transfer of the disputed domain name, failing which the Complainant would take legal action. An undated, unsigned copy of the cease and desist letter has been submitted by the Complainant in evidence.

The Respondent replied on July 31, 2003, stating that he denied any claim of cybersquatting. The Respondent indicated that they had received "strong interest" from an English company to purchase the domain name as well as some interest from the US. Further, it was the Respondent’s belief that they had the right to sell the domain name to anyone.

No evidence is given of any formal legal proceedings having been commenced.

3.2 Multiple Respondents

Before turning to the merits of this case, the Panel notes that the Complainant

has improperly named two separate parties as Respondents, namely Mr. Michael

Custance as Respondent 1 and Mr. Gary Bradshaw of Web Dreams Computer Services,

the official Registrant of the Domain Name, as Respondent 2. Neither the Policy

nor the Rules provide for the naming of multiple Respondents. Rather, the Rules

are quite explicit that the Respondent in a UDRP proceeding is the Registrant

of the domain name at issue. Rule 1 states "Respondent means the holder

of a domain-name registration against which a complaint is initiated."

There is no provision for naming as additional respondents any third parties

[see e.g. Top Driver, Inc v. Benefits Benefits, WIPO

Case No. D2002-0972 (January 7, 2003)].

Here, only Mr. Gary Bradshaw, the Domain Name Registrant, is the proper Respondent. Accordingly, the Panel dismisses Mr. Michael Custance as Respondent. This ruling, however, has no practical effect as the only remedies available in a UDRP proceeding are the transfer or cancellation of the domain name registration, both of which are only available against the Registrant. [see Policy Paragraph 4(i); Rule 3(xiv) (specifying that the Complainant must agree "that its claims and remedies concerning the registration of the domain name . . . shall be solely against the domain name holder").]

4. Factual Background

The Complainant claims to have rights in the business/trading name, REGAL REMOVALS. The Complainant provides furniture removal services across Australia. Additionally the company sells cartons, and provides pre-packing and other removal related services.

The business name, REGAL REMOVALS is used in advertising, in particular in the Australian Yellow Pages, White Pages and several leading Australian newspapers. Further, the Complainant claims to own the domain name <regalremovals.com.au>, registered on June 23, 2003, which links to a website providing information and company services.

The Complainant alleges that the business name was first used by Tintern Lane Pty Ltd which sold it to Regal Logistics Pty Ltd in November 2002. The business name was then onsold to the Complainant on July 1, 2003.

The Respondent registered the disputed domain name <regalremovals.com> on June 23, 2003, allegedly on the instructions of Mr. Michael Custance, a director of Tintern Lane Pty Ltd.

The Complainant claims that the disputed domain name initially linked to a website displaying a black blank page. It is further claimed that the website then linked to a pornographic website "www.grubbys.com.au" for a period of two weeks. The Complainant’s website was finally displayed but after another two weeks, the website showed a black blank page again.

5. Parties’ Contentions

A. Complainant

The Complainant seeks the transfer of the domain names from the Respondent to the Complaint in accordance with paragraph 4 (i) of the Policy.

The Complainant contends that the domain name is identical or confusingly similar to the Complainant’s business/trading name, that the Respondent has no right or legitimate interest in the domain name and that the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent, sent an email to WIPO on January 15, 2004, stating that he had been on holidays and that the disputed domain name was owned by Mr. Michael Custance, who also owned Regal Removals. The Respondent stated that Mr. Custance sold the company without the domain name. The company was then onsold to the Complainant, without the disputed domain name. The Respondent alleges that the Complainant did not want to buy the domain name and it was therefore sold to a third party.

Mr. Michael Custance, cited by the Complainant as Respondent 1, sent an email on December 18, 2003, to the Complainant, WIPO and Registrar stating that he had retired and sold the website and no longer wished to be involved.

The Respondent (Gary Bradshaw) has not filed a formal Response replying to the Complainant’s contentions. The short electronic response from Mr. Bradshaw, filed via email only, is not in accordance with the Policy. Therefore the Respondent was in default and a Response has not been submitted.

6. Discussion and Findings

Since the Respondent has not submitted a Response, the Panel has no alternative

but to accept as true all the factual contentions made by the Complainant in

accordance with the Rules, paragraph 5(e):

"If a Respondent does not submit a response, in the absence of exceptional

circumstances, the Panel shall decide the dispute based upon the Complaint."

Even though there has been no response the Panel must, under the Rules, paragraph

14 (a) "proceed to a decision on the complaint".

For the Complainant to succeed, it must show that the Respondent meets each

of the criteria in the Policy, paragraph 4(a):

"(i) your domain name is identical or confusingly similar to a trade mark

or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name;

and

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant has "rights"

in a trade mark or service mark and does not specify whether these should be

registered or unregistered rights.

The Complainant does not rely on any registered rights. The Panel made an online

search of Australian trade mark records but did not identify any trade mark

registrations or applications for REGAL REMOVALS.

The Complainant claims instead to have rights in the business or trading name,

REGAL REMOVALS.

A business or trading name may over time and through use give rise to common

law or unregistered trade mark rights. Rights in a common law or unregistered

trade mark may be shown by evidence of reputation and goodwill acquired in the

mark over a period of time. It is important to show that the mark is distinctive

of the goods/services of the Complainant and that the relevant consumer public

recognizes the mark as identifying the source of the goods/services as those

of the Complainant.

The business name was first used (from an undisclosed date) by Tintern Lane

Pty Ltd which sold it to Regal Logistics Pty Ltd in November 2002. The business

name was then onsold to Melbourne Removals Pty Ltd on July 1, 2003. No evidence

was submitted by the Complainant to show this chain of title in the business

name.

The Panel made an online search of the Victorian Names Register and notes that

REGAL REMOVALS is a registered business name of a company located in Seaford,

VIC, 3198. The Panel notes from the search that the business name was registered

in 1992. Details of the company owning this business name were not provided.

Whilst the Panel notes that this information indicates that the business name

exists and that there is a likely link with the Complainant, of itself the information

does not provide proof of use or reputation in REGAL REMOVALS.

The Complainant indicates that REGAL REMOVALS is used in advertising, in particular

in the Australian Yellow Pages, White Pages and several leading Australian newspapers.

No examples of REGAL REMOVALS in use are provided at all by the Complainant.

The Panel has checked <yellowpages.com.au> and sees an entry for "Regal

Removals" at the Complainant’s address. Again, the Panel notes that whilst

this information may show the existence of a business operating under the name,

REGAL REMOVALS, it does not provide evidence of reputation or the level and

time of exposure of the name to the Australian public.

The Complainant contends that Regal Removal Services Pty Ltd (sic) outlays

$100,000 per annum on advertising. No evidence is given to substantiate this

figure or the number of years over which the advertising extended.

The Complainant also claims to own the domain name <regalremovals.com.au>

which links to a website providing online booking and information about the

Complainant’s services. The Complainant does not provide any printouts of this

website or a Whois search to show that it is the registrant of this domain name.

The Panel has made a Whois search of AusRegistry and sees that in actual fact,

the registrant of <regalremovals.com.au> is Regal Logistics Pty Ltd. The

Complainant’s contention that this domain name was duly transferred to it is

not substantiated. Whilst, the Panel notes that the registrant contact is given

as Matthew Matysik, who is the Complainant’s Representative, this fact alone

is not enough to support the Complainant’s contentions.

The Panel considers that in order to show that the Complainant has rights in

a unregistered trade mark, e.g. a business name, substantial evidence must be

submitted showing the mark in use, for instance, examples of advertisements,

brochures, invoices, packaging (where available for goods such as cartons) and

website printouts to name but a few. Further evidence of annual turnover under

the name must be submitted. All this is required to show that the Complainant

has goodwill and reputation in an unregistered trade mark.

Therefore for all the reasons set out above the Panel finds that the Complainant

has not provided sufficient evidence to show that it has rights in a trade mark

in order to satisfy the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As the Complainant has not proven that it has rights in a trade mark or service

mark that is identical or confusingly similar to the domain name it is unnecessary

to discuss this limb of the Policy.

C. Registered and Used in Bad Faith

As the Complainant has not proven that it has rights in a trade mark or service

mark that are identical or confusingly similar to the domain name it is unnecessary

to discuss this limb of the Policy.

7. Additional Discussion

The Panel has determined this case on the basis of the Policy and the evidence

before him. Although it has no influence on this decision or the reasons given,

the papers suggest unresolved issues between the parties regarding the true

proprietorship of the trade mark which are outside the scope and intention of

the Policy. Those issues might more properly be explored in a court or another

forum.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Debrett G. Lyons

Sole Panelist

Dated: February 5, 2004