Messages On Hold (Australia) Pty Ltd v. Brian Murray and BTC Direct
Claim Number: FA1209001464383
Complainant is Messages On Hold (Australia) Pty Ltd (“Complainant”), represented by Wayne Zappia of Lavan Legal, Australia. Respondent is Brian Murray and BTC Direct (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name <messagesonholdaustralia.com>, is registered with Fastdomain, Inc. (“Fastdomain”).
The undersigned, Mr. David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 26, 2012; the Forum received payment on September 26, 2012.
On September 26, 2012, Fastdomain confirmed by e-mail to the Forum that the disputed domain name is registered with it and that Respondent is the current registrant of the name. Fastdomain has also verified that Respondent is bound by its registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”).
On September 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to postmaster@messagesonholdaustralia.com as well as to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
Also on September 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 2, 2012.
On October 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the UDRP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the proprietor of three Australian trademark registrations, one for MESSAGES ON HOLD AUSTRALIA and two for MESSAGES ON HOLD. Each of them is in the form of a logo.
Complainant contends that the disputed domain name is identical to the first of these trademarks and confusingly similar to the others. The MESSAGE ON HOLD logo appears prominently on its website at the domain name <messagesonholdaustralia.com> while its company name Messages On Hold (Australia) Pty. Ltd. appears at the bottom of every page. Thus an objective bystander would probably conclude that the disputed domain name referred to Complainant’s trademarks and its business.
Complainant states that it has provided on-hold message services under the name ‘Messages On Hold’ for 20 years and has become the largest on-hold provider in Australia and South East Asia. It has a substantial and identifiable reputation in its name and trademarks.
Complainant also supports charities and is an active sponsor of, among others, the West Coast Eagles which is one of the top clubs in Australia playing Australian Rules football. Complainant has also featured in numerous television shows, and has twice won The Telstra Business Award which is Australia’s most prestigious business award.
Complainant asserts that Respondent trades under the name BTC Direct and that there is no evidence to suggest that Respondent is commonly known by the disputed domain name. Furthermore, Complainant has not given Respondent permission to use the disputed domain name, which includes one of its registered trademarks in its entirety. Indeed, when entering the disputed domain name onto a web browser, the resulting page displays only the name BTC Direct.
Complainant concludes that Respondent registered the disputed domain name in order to direct traffic towards it own website and to drive potential customers away from Complainant.
Complainant further contends that Respondent cannot establish that it has any rights or legitimate interests in the disputed domain name in view of the fact that Complainant is the registered owner of the identical trademark.
With regard to Bad Faith, Complainant contends that it is unlikely that Respondent was not aware of Complainant and that the registration of the disputed domain name, in August 2012, with no prior or concurrent use of the words ‘messages on hold Australia’, is proof of bad faith. Through this registration, Respondent is misrepresenting to consumers that it is connected in some way with Complainant, something which is likely to damage Complainant’s reputation.
In addition, through the registration of the disputed domain name, Respondent is preventing Complainant from reflecting its own trademark in a corresponding domain name. The two companies are in direct competition with each other and both rely on their websites to attract potential customers and to inform them of their respective goods or services
B. Respondent
Respondent’s Response was contained in a single page letter. In it, Respondent makes the following points –
Complainant is a well established Australian business providing on-hold messages for its customers for the last 20 years in Australia and South East Asia, as well as in the United Kingdom, the USA, and parts of Africa.
Respondent’s main business is the supply of telephone headsets in Australia, but it has recently developed an on-hold messaging service.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In the Complaint, the following statement appears: “The Complainant’s trade mark comprising a logo bearing the words MESSAGES ON HOLD is featured on its website at <messagesonholdaustralia.com>.” This is clearly a mistake – as Respondent has pointed out – since Complainant’s website is at the domain name <www.messagesonhold.com.au> i.e. it does not include the word “australia”.
Complainant is the proprietor of the following three pictorial trademarks all of which are registered in Australia –
Messages
On Hold
AUSTRALIA
No. 952389, dated May 2, 2003 for goods and services in Classes 9 and 35
Messages
On Hold
No. 952462 dated May 2, 2003 for goods and services in Classes 9 and 35
Messages
On Hold
No. 1202729 dated October 4, 2007 for goods and services in Classes 9, 38, and 41
The first of these, whilst in a logo format, nevertheless reads as a single phrase – “Messages On Hold Australia”. This is identical to the disputed domain name – apart from the gTLD suffix. However this is traditionally disregarded when considering the question of similarity between a trademark and a disputed domain name for, as is said in the WIPO Overview of Panel Views on Selected UDRP Questions, “The applicable top-level suffix in the domain name (e.g. ‘com’) would usually be disregarded under the confusing similarity test as it is a technical requirement.”
Given that the disputed domain name and Complainant’s registered trademark are identical, the Panel finds that paragraph 4(a)(i) of the Policy is proved.
It is well established that once a Complainant has made out a prima facie case that a Respondent has no rights or legitimate interests in a domain name, then the burden shifts to the Respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006) in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In the present case, the Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interest in the disputed domain name, and
However it is hard to find that Respondent could have any rights or a legitimate interest in a domain name which is identical to the name of a competitor, and identical to a trademark in which that competitor has registered rights dating from 2003.
Respondent claims it only registered the disputed domain name because it was “available” and it is true that although Complainant’s name is Messages On Hold (Australia) Pty Limited, its main domain name does not contain the word “Australia” i.e. <messagesonhold.com.au>. Nevertheless, Respondent who claims to be just entering the on-hold messaging business in Australia could hardly have been unaware of a major player in this field, who has been active in Australia for the past 20 years.
The Panel finds Respondent’s explanation as to why it registered the disputed domain name totally unconvincing, and the reference to the very similar domain name <www.messageonhold.com.au> not relevant as it is not unknown for very similar domain names to co-exist. There were no additional submissions by either party so the Panel is in ignorance as to whether Complainant has objected to this domain name, which appears to be quite similar to its trademarks, or whether it might be considering doing so.
The Panel finds that the registration of the disputed domain name was an obvious attempt to direct legitimate traffic away from Complainant and into the arms of Respondent. The fact that, as Complainant points out, anyone entering the disputed domain name is directed instantly to Respondent’s own website is further proof of this.
As a consequence, the Panel finds that Respondent has no rights or a legitimate interest in the disputed domain name and that paragraph 4(a)(ii) of the Policy is also proved.
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that a Respondent has registered and is using the disputed domain name in bad faith. In this case, the Panel believes that Respondent is in contravention of two of the provisions under this paragraph.
For example, the registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” Complainant’s business [paragraph 4(b)(iii)]. It is also, in this Panel’s opinion, an intentional attempt “to attract, for commercial gain, Internet users to” Respondent’s website [paragraph 4(b)(iv)].
Additionally, both companies are in the same business. This business is one which Respondent is just entering and so it must have done some research beforehand during which the name of Complainant must have appeared. Consequently Respondent must have been aware of the Complainants’ name and trade mark at the time of registering the disputed domain name.
This suggests opportunistic bad faith on the part of Complainant. See Nintendo of Am. Inc. v. Beijen, Beijen Consulting, Pokemon Fan Clubs Org., & Pokemon Fans Unite, D2001‑1070 (WIPO Nov. 8, 2001), where the word “pokémon” was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith. See also BellSouth Intellectual Prop. Corp. v. Serena, Axel, D2006-0007 (WIPO Feb. 21, 2006), where it was held that the respondent acted in bad faith when registering the disputed domain name, because of the widespread and long-standing advertising and marketing of goods and services under the trademarks in question, because of the inclusion of the entire trademark in the disputed domain name, and because of the similarity of products implied by addition of telecommunications services suffix. All of which suggest a knowledge of the Complainant’s rights in the trade marks.
As a consequence, the Panel finds that Respondent has acted in bad faith and that paragraph 4(a)(iii) of the Policy is also proved.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <messagesonholdaustralia.com> domain name be TRANSFERRED from Respondent to Complainant
David H Tatham, Panelist
Dated: October 19, 2012
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