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Australia Domain Name Decisions |
The Complainant is Veneziano Coffee Pty Ltd of Victoria, Australia, represented by Magnum IP Legal Services, Australia.
The Respondent is Rick Caspersen of Queensland, Australia.
The disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2012. On April 5, 2012, the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On April 10, 2012, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. The Response was filed with the Center on May 2, 2012.
The Center appointed John Swinson as the sole panelist in this matter on May 10, 2012. 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.
The Complainant is Veneziano Coffee Pty Ltd (ACN 099 290 445), which trades as the trustee for the Veneziano Coffee Trust. The Complainant is a trading corporation duly incorporated under the laws of Australia. The Complainant’s principal place of business is Australia.
The Respondent is Rick Caspersen, an individual residing in Australia. The Respondent is the sole director and company secretary of RC Group Pty Ltd (ACN 116 552 946) (“RC Group”).
The Respondent registered the disputed domain name with Crazy Domains Pty Ltd on August 26, 2009 because at that time the Respondent sold the Complainant’s coffee in Queensland.
The Complainant makes the following submissions.
In relation to the business interests of the Respondent and his related parties, the Complainant submits the following:
- the RC Group carried on business under the Queensland registered business name “VENEZIANO COFFEE SUNSHINE COAST” (registered December 7, 2009) (“Business Name”);
- the RC Group is the registrant of the domain name
- the principal place of business of Queensland registered business “MAMBO COFFEE COMPANY” is the same as that of the RC Group and the business is being carried on by Jacqueline Caspersen.
The Complainant has traded continuously under the following names:
- Corporate name: Veneziano Coffee Pty Ltd (since January 16, 2002);
- Victorian business name: Veneziano Caffe First Pour (since August 14, 2006);
- Domain name: venezianocoffee.com.au (since May 2, 2002); and
- Trust name: The trustee for the Veneziano Coffee Trust (since July 1, 2006).
The Complainant has established a significant national reputation in the following unregistered trade and service marks:
- Veneziano Coffee;
- Veneziano Caffe (word and composite marks);
- Veneziano; and
- Veneziano Coffee Roasters (composite mark).
The above names and marks have been used extensively in relation to coffee goods and related services.
The Complainant submits that the word Veneziano is distinctive of coffee goods and related services and, as such, the Complainant does not need to produce strong evidence that its unregistered marks have become a distinctive identifier in association with the Complainant (cf. Informa Australia Pty Limited v. Reed Business Information Limited, LEADR Case No. auDA 02/09). Notwithstanding this, the Complainant has provided evidence of a substantial reputation in the names and marks Veneziano (the Complainant provided supporting evidence in a statutory declaration).
As outlined below, the Complainant is relying on the conduct of the Respondent following the termination of a distribution agreement. The Complainant submits that its reputation in the marks must be assessed as at that period of time.
The disputed domain name is identical to the names Veneziano and Veneziano Coffee (see Nehos Communications Pty Limited v. The trustee for The Penrose & Godfrey Family Trust, LEADR Case No. auDA 11/10).
Alternatively, the disputed domain name and the marks are confusingly similar. The predominant feature of all of the Complainant’s names and marks is the word “Veneziano”. Other words and suffixes (e.g. “coffee”, “caffe”, “Pty Ltd” and “.com.au”) are purely descriptive and should be ignored (see e.g. Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091, Uitgerverji Crux v. W. Frederic Isler, WIPO Case No. D2000-0575).
The Respondent was appointed to act as the Complainant’s Queensland distributor pursuant to an unwritten distribution agreement formed in 2009. The Complainant gave the Respondent its consent to register the Business Name and to register the disputed domain name.
Any rights of legitimate interests in respect of the disputed domain name were lost as a result of each of (or a combination of) the following:
- the transfer of the directorship and the Business Name from the Respondent to RC Group (December 7, 2009);
- the expiry of the Business Name (May 28, 2011); and
- the termination of the distribution agreement between the Respondent and RC Group (late December 2011) (see e.g. Ella’s Kitchen Group Limited and others v. Nourish Foods Pty Limited, WIPO Case No. DAU2011-0036).
Notwithstanding the above, if the Respondent is regarded as having some residual rights or interests in the disputed domain name by virtue of the distribution agreement, the Respondent’s subsequent use of the disputed domain name has extinguished those rights or interests (see e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Particularly:
- the Respondent is not offering Veneziano branded coffee for sale using the disputed domain name;
- the disputed domain name has been used by the Respondent to advertise the goods of the Complainant’s competitors, “Mambo Coffee” and “Coffee Supreme”; and
- the website at the disputed domain name does not disclose the Respondent’s former relationship with the Complainant.
The disputed domain name is being used in bad faith on the following grounds (the Complainant provided supporting evidence in a statutory declaration):
- the Respondent has continued to use the disputed domain name despite the fact that it is no longer a distributor of the Complainant;
- the Respondent has continued to use the disputed domain name despite the fact that it has had no interest in the Business Name since December 7, 2009;
- the Respondent has sought to transfer the disputed domain name to the Complainant for consideration of $14,143.82. This figure is in excess of out-of-pocket costs directly related to the disputed domain name;
- the Respondent has used the disputed domain name primarily for the purpose of disrupting the business or activities of the Complainant by advertising the websites of the Complainant’s competitors;
- the Respondent has intentionally attempted to attract, for commercial gain, users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s names and marks as to the source, sponsorship, affiliation, or endorsement of that website. The Respondent is likely to have benefited commercially by using the disputed domain name to advertise “Mambo Coffee”, and in any case a domain name holder may act in bad faith even if only unrelated third parties benefit from the Respondent’s use of the domain name; and
- the Respondent appears to have constructed an unrelated business, “Veneziano Digital”, to further disrupt and inconvenience the Complainant.
The Respondent makes the following submissions.
There was no distributor agreement signed or agreed to, the relationship between the Complainant and the Respondent was that of coffee supplier and wholesale customer only.
The Respondent made no submissions on this point.
The Respondent is the legal owner of Veneziano Digital which is registered in Queensland. Veneziano Digital is a legitimate business which promotes and organizes art and gallery exhibitions in Queensland.
There was no consent given (and was not needed) for the Respondent to register the disputed domain name, as the Complainant did not have any rights over such a domain. The Complainant was not aware that the Respondent had registered the disputed domain name until a few months after registration when the Respondent changed its email address to those associated with the disputed domain name.
Mambo Coffee was roasted and supplied by the Complainant, therefore, any promotion of Mambo Coffee and increase in sales would benefit the Complainant.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
This requirement under the auDRP is considerably broader than the corresponding requirement under the UDRP in that the auDRP extends to a “name”, not just trade marks. The footnote to the paragraph relevantly states:
“For the purposes of this policy, auDA has determined that a ‘name … in which the complainant has rights’ refers to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant's personal name.”
Thus, the term “name” includes a registered company name or a registered business name.
The Complainant has rights in the following names (as company, business or other legal or trading names as registered with the relevant Australian government authority):
- the registered company name “Veneziano Coffee Pty Ltd”; and
- the Victorian business name “Veneziano Caffe First Pour”.
The Complainant also appears to suggest that it has acquired common law trade mark rights in relation to “Veneziano” given its extensive use of that term as a trade mark. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services (see generally, Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123). Here, the Complainant has submitted evidence in support of common law rights in a statutory declaration.
The Panel does not need to determine whether the Complainant has provided sufficient evidence of its common law rights, as the Complainant has rights in relation to the registered company and business names listed above.
Therefore, in order for the Complainant to succeed on this point it must show that the disputed domain name is identical or confusingly similar to these names.
Here, the Complainant’s names all contain the term “Veneziano”. This term is a dominant feature of each of the
names. The disputed domain name is
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate its rights or legitimate interests in the disputed domain name.
Although the exact business relationship between the parties is in dispute (and does not need to be characterized for the purposes of this decision), it is clear that the Complainant sold Veneziano branded coffee to the Respondent and the Respondent resold that coffee under the Veneziano name.
At the time the disputed domain name was registered, it is possible that the Respondent had rights or legitimate interests in the disputed domain name, as the registered owner of the Business Name. Since the expiry of the Business Name and the cessation of the business relationship between the Complainant and the Respondent, the Respondent does not have rights or legitimate interests in the disputed domain name.
The Pay Per Click page, to which the disputed domain name currently resolves, shows advertisements for blinds and curtains, and does not give rise to rights or legitimate interests on the part of the Respondent (see Ella’s Kitchen Group Limited and others v. Nourish Foods Pty Limited, WIPO Case No. DAU2011-0036).
In light of the above, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The onus of proof shifts to the Respondent to show that he has such rights or legitimate interests (see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624).
The Respondent has not provided evidence to demonstrate its rights or legitimate interests in the disputed domain name.
The ownership of the registered business name “Veneziano Digital” by the Respondent is insufficient in these circumstances, given the absence of evidence of the disputed domain name being used for a bona fide offering of goods or services under that name. There is nothing before the Panel to indicate that the Respondent is commonly known by the disputed domain name. As discussed in more detail below, the Panel concludes that the Respondent registered the “Veneziano Digital” business name for the purposes for attempting to demonstrate rights or a legitimate interest, and for no real business purpose.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second element of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the disputed domain name has been registered or subsequently used in bad faith. While the Policy sets out instances of bad faith registration and use, these circumstances are not exhaustive.
At the time the disputed domain name was registered, the Complainant and the Respondent had some type of business arrangement, and the Respondent was trading under the Business Name. The Panel finds that the disputed domain name was not registered in bad faith.
Therefore, the Complainant bears the onus of proving that the disputed domain name has been subsequently used in bad faith. The Panel finds that the following are evidence of bad faith use of the disputed domain name:
- the Respondent has used the disputed domain name to disrupt the Complainant’s business activities, through advertising the products of the Complainant’s competitors on the website at the disputed domain name; and
- the Respondent has attempted to use the disputed domain name as leverage in commercial negotiations, by offering to transfer the disputed domain name to the Complainant in return for the clearing of a debt (the sum of which is in excess of out-of-pocket costs directly related to the disputed domain name).
The Panel notes that the Respondent never mentioned the existence of “Veneziano Digital” in his communications with the Complainant, and only registered the business name “Veneziano Digital” on March 5, 2012, five weeks after he was first contacted by the Complainant regarding the disputed domain name. This is a factor that the Panel can take into account. It demonstrates that the Respondent was attempting to shore up its position after the fact that the Respondent was using the disputed domain name in bad faith, which the Panel finds to be further suggestive evidence that the Respondent was using the disputed domain name in bad faith.
In light of the above, the Panel finds that the disputed domain name has been used in bad faith. The third element of the Policy is satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed
domain name,
John Swinson
Sole Panelist
Dated: May 22, 2012
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URL: http://www.austlii.edu.au/au/cases/cth/AUDND/2012/15.html