ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant is Cairns Central Limited of Corner McLeod and Spence Streets, Cairns, Queensland 4870 Australia.
The Respondent is Matthew Wunderwald of 3 Bevans Road, Sydney, New South Wales, Australia.
The disputed domain name is <cairnscentral.com> and the Registrar is Melbourne IT.
2. Procedural History
The electronic version of the Complaint Form was filed on-line through eResolution's Website on October 15, 2001. The hardcopy of the Complaint Form was received on October 15, 2001. Payment was received on October 15, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
This inquiry led the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 2, 2001. The requested information was received on November 1, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on October 15, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the postmaster@ cairnscentral.com were returned 'undeliverable'. All the faxes were successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.
On November 5, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was never received.
On November 12, 2001, the Clerk's Office contacted Alan Lawrence Limbury, and requested that he act as panelist in this case.
On November 13, 2001, Mr. Limbury accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 13, 2001, the Clerk's Office forwarded a user name and a password to Mr. Limbury, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On November 13, 2001, the parties were notified that Mr. Limbury had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 27, 2001.
On November 21, 2001 the panel asked the Clerk's office to notify the parties that the Complainant would be given 3 business days to provide :
The Respondent was given 3 business days to respond to this material and the time for the decision was extended accordingly. The additional material was provided by the Complainant on November 27, 2001. No further response was received from the Respondent.
3. Factual Background
The Complainant is a related company of Perpetual Trustees Victoria Ltd, the registered proprietor of Australian registered trademark No. 834965 "CAIRNS CENTRAL SHOPPING CENTRE & DEVICE" which was registered on May 15, 2000 in the following international classes:
4. Parties' Contentions
The disputed domain name is confusingly similar to the registered trademark CAIRNS CENTRAL SHOPPING CENTRE. There is a likelihood of confusion with that mark as to the source, sponsorship, affiliation or endorsement of "www.cairnscentral.com" in the event that it is delegated to a server.
Complainant has no right to the disputed domain name. It has the trademark CAIRNS CENTRAL SHOPPING CENTRE AND DEVICE, which is completely different.
5. 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.
Identical or Confusingly Similar Trademark
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) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).
The disputed domain name <cairnscentral.com> is not identical to the registered trademark CAIRNS CENTRAL SHOPPING CENTRE & DEVICE. However, the supplementary material before the panel enables the panel to draw the conclusion that the Complainant has used CAIRNS CENTRAL as a trademark so as to give rise to common law trademark rights. The use in the Complaint of the expression "Cairns Central" as an abbreviation for Cairns Central Shopping Centre does not assist in this regard but the supplementary material filed by the Complainant includes web pages from its site at <cairnscentral.com.au> and print advertisements dating back to 1997 for the Complainant's services under the name and mark CAIRNS CENTRAL (Complainant's Supplementary Documents 3, 12, 13 and 14) and newspaper articles indicating that the services planned and eventually supplied by the Complainant have become widely associated with that mark (Complainant's Supplementary Documents 4, 5, 10 and 11). There is also a photograph showing the words CAIRNS CENTRAL (without more) prominently displayed over the entrance to the building (Complainant's Supplementary Document 6). The panel finds the disputed domain name to be identical to the trademark CAIRNS CENTRAL in which the Complainant has common law rights.
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a comparison of the disputed domain name and the trademark: Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195). See also Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC. (WIPO Case No. D2001-1121) and the cases there cited.
Although the registered trademark includes a device, examination of a copy of the certificate of registration of the trademark (Complainant's Supplementary Document 1) enables the panel to conclude that CAIRNS CENTRAL is the distinctive element in the Australian trademark registered by the Complainant's related company. The panel concludes that the disputed domain name is confusingly similar to the registered mark.
The Respondent is not known by the disputed domain name; is not authorised by the Complainant or its related company to register the disputed domain name nor to use the common law or registered marks in a domain name. It does not offer bona fide goods or services by use of the disputed domain name.
The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive: bad faith registration and use may be established in other ways. In
SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise
Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino
(eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com
(NAF case FA95037).
Under these circumstances the panel finds the disputed domain name was registered in bad faith.
The 'use' requirement has been found not to require positive action, inaction being within the concept: see Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barney's, Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468).
Here the panel takes into account the absence of any satisfactory explanation from the Respondent as to why the disputed domain name has not been used; the likelihood that Respondent could not make use of the disputed domain name to provide electronic commerce services without either infringing the registered trademark CAIRNS CENTRAL SHOPPING CENTRE AND DEVICE or committing the tort of passing off (or both), and the period of 11 months during which the disputed domain name remained inactive prior to the initiation of this proceeding. The panel finds the disputed domain name is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol (WIPO Case No. D2001-0489).
The Complainant has established this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <cairnscentral.com> be transferred to Complainant.