Stellar Call Centres Pty Limited v. Jonathan
Bahr, t/a AnabolicAces
Claim Number: FA0511000595972
PARTIES
Complainant is Stellar Call
Centres Pty Limited (“Complainant”), represented by Lisa Ritson, of Blake Dawson Waldron, Level 37 Grosvenor Place, 225 George
Street, Sydney, New South Wales 2000.
Respondent is Jonathan Bahr, t/a AnabolicAces (“Respondent”), 43 Beveridge Street, Albion Park, New
South Wales 2527.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stellarcallcentres.com>,
registered with Wild West Domains, Inc.
PANEL
The undersigned 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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 13, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 21, 2005.
On November 14, 2005, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <stellarcallcentres.com>
domain name is registered with Wild West Domains, Inc. and that the Respondent
is the current registrant of the name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West
Domains, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 13, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@stellarcallcentres.com
by e-mail.
Respondent submitted an electronic
Response on November 25, 2005. The
National Arbitration Forum did not receive a hard copy format of the response
by the response submission deadline of December 13, 2005, pursuant to ICANN
Supplemental Rule #5(a). Panel accepts
Response as filed.
On December 6, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.),
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The domain name <stellarcallcentres.com>
is identical to, or confusingly similar to, the STELLAR CALL CENTRES mark. Complainant has established a significant
reputation and goodwill in the STELLAR CALL CENTRES mark, in the Asia-Pacific
region, particularly in Australia.
Complainant has operated under the company name Stellar Call Centres
Pty Ltd since 1998 and has expanded from one office in Sydney to 9 contact
centres throughout Australia, employing over 2,800 staff and handling in excess
of 150 million contacts per year.
Complainant is Australia’s leading customer contact solutions provider
and has proven experience across a variety of industries including
telecommunications, finance and insurance, government and administration,
retail, manufacturing and transport and storage.
The extent and success of Complainant’s business is reflected in the
revenue generated from Complainant’s services.
Revenue for Complainant in the past two years exceeded A$250,000,000.
Complainant has invested substantial resources in marketing and
promoting its services and has spent more than A$200,000 on marketing and
promotional activities.
Complainant has registered, among others, the domain names
<stellarcallcentres.com.au> and <stellarcallcentres.net.au>.
Complainant operates a website at <www.stellarcallcentres.com.au>.
This website receives in excess of 100 “hits” per month.
Internet searches conducted at <yahoo.com> and <google.com> demonstrate Complainant’s appreciable
online presence.
As is clear from the information provided above, Complainant has
significant rights and interests in the name Stellar Call Centres as well as in
the trade mark STELLAR CALL CENTRES.
It is also clear that the STELLAR CALL CENTRES mark is identical to
Respondent’s domain name <stellarcallcentres.com>. The disputed domain name is also identical
to the name Stellar Call Centres, which is Complainant’s company name.
Respondent is not trading as Stellar Call Centres nor is Repsondent the
owner of the Stellar Call Centres name, nor a similar name or trade mark, in
Australia or elsewhere and it is therefore submitted that the Respondent has no
legitimate interest in respect of the domain name stellarcallcentres.com.
Respondent registered the domain name <stellarcallcentres.com>
on 19 August 2003. The administrative
and technical contact of <stellarcallcentres.com> is Mr. Jonathan
Bahr.
Mr. Bahr was employed by Complainant until 23 August 2004, at which
time his employment was terminated.
In February 2005 Complainant learned that Respondent had placed
material on his website which appeared to be a copy of Complainant’s website
but which had been altered to include foul language and defamatory statements
concerning Complainant. This material
also infringed Complainant’s copyright rights.
A copy of a sample page from the website is attached together with a
copy of the corresponding page from Complainant’s website at
<stellarcallcentres.com.au>. This material was obviously published on
Respondent’s website to embarrass and harass Complainant and to detrimentally
effect Complainant’s business.
In February 2005, Complainant,
through its legal representatives, wrote to Respondent demanding that the
offensive and infringing material be removed and that he transfer ownership of
the domain name to Complainant.
Respondent agreed to remove the offensive and infringing material but
did not agree to transfer ownership of the domain name to Complainant.
In October 2005, Complainant learned that Respondent had posted a
pornographic photograph on his website.
The posting of such material is further evidence that Respondent’s only
purpose in using the domain name is to harass Complainant and to damage the
business and reputation of Complainant.
Complainant, through its legal representative, wrote to Respondent’s
Registrar, Wild West Domains, Inc. on 20 October 2005 demanding that the
website be shut down, but no response has been received. The website is still operating and the
photograph is still posted on it.
Respondent is using the <stellarcallcentres.com> website
to direct Internet users to a website that features offensive material. The presence of such offensive material is
damaging to the reputation and commercial interests of Complainant.
Any customers or potential customers of Complainant who type <stellarcallcentres.com>
into a search engine anticipating they will arrive at Complainant’s website,
will instead be directed to Respondent’s website and view the offensive
material posted there. Complainant
asserts that the presence of such offensive material has caused damage to its
reputation and goodwill and will continue to do so.
Respondent is not using the <stellarcallcentres.com>
website for anything but posting offensive material.
In an email dated 12 July 2005 from Respondent to an employee of
Complainant, Respondent attempted to taunt and provoke Complainant by noting
that, though Complainant had recently registered the domain name
<stellarcallcentres.net.au>,
Respondent had renewed the <stellarcallcentres.com> domain name
for a further 2 years. This email was
sent from the email address realadxm@gmail.
This is the email address for Respondent. Clearly, this is strong evidence that Respondent’s only interest
in maintaining and using the website is to harass and annoy Complainant and to
injure Complainant’s business and reputation.
B. Respondent
Complainant only registered domains
other then the .com.au after becoming aware of myself owning the .com prefix.
My own website does not affect Complainants website in all of the search engine
searches. It is obvious to any person visiting my website that it is not the
site of Stellar Call Centres but a site that is parody. After removing my first
parody upon their request, I updated my website with a picture which is a
parody of their employees, myself having been one in the past. I also
registered the domain name while I was employed by their business.
The site is one of parody, and as a former employee who owned the website while
I was employed with Stellar Call Centres, I am entitled to make a website that
is a parody of my experiences while working there.
The website was registered initially while I was employed by Stellar. At the
time of registration my idea was to start a forum for work mates where we could
share ideas. The domain name was not registered in bad will. What they are
claiming as defamatory was not. It was a parody. It was obvious to any visitor
it was not the website of Stellar Call Centres the business. I removed the
copyright material upon their request but have continued my parody on the
website. To suggest it was registered in bad faith while I was an employee is
misleading on their part.
The picture currently hosted on my website is not pornographic but an artistic
view on my own experiences while working there and therefore is a parody. This
makes it even more obvious to anyone that comes across the website that it
isn't the website of stellarcallcentres. It does not rank on the first page in
a search for their business and from my knowledge the website is only shared
among friends and employees who still work there.
The email I sent their website administrator was not a taunt, but a mere
observation of them registering more domains after becoming aware of myself
running the .com prefix. Seeing Stellarcallcentres operates in Australia a
customer would assume the .com.au prefix and would then visit their website. I
should be free to express my parody in any artistic fashion I perceive myself
capable of.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
FINDINGS
Complainant asserts that it has operated under the STELLAR CALL CENTRES mark since 1998 and has expanded from one office in Sydney to nine contact centres throughout Australia, employing over 2,800 staff and handling in excess of 150 million contacts per year. Complainant further contends that it has invested substantial resources in marketing and promoting its services and has spent more than A$200,000 on marketing and promotional activities. The Panel finds that Complainant has established common law rights in the STELLAR CALL CENTRES mark because Complainant has demonstrated that its mark has acquired secondary meaning. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
The Panel finds that the addition
of the generic top-level domain “.com” does not distinguish Respondent’s domain
name from Complainant’s STELLAR CALL CENTRES mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127
(WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance
since use of a gTLD is required of domain name registrants . . . ."); see
also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level
domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (finding that hyphens and top-level domains are irrelevant for
purposes of the Policy).
The Panel notes that once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
The Panel finds that Respondent is not commonly known by the <stellarcallcentres.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name, and the Panel concludes that Respondent does not have rights or legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, Complainant claims, in various places in its Complaint, that Respondent has used the disputed domain name to operate a general forum for workmates to communicate and also to post adult-oriented images. The Panel concludes that Respondent’s various uses do not constitute bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
Respondent is using the <stellarcallcentres.com>
domain name to redirect Internet users to a website where Respondent displayed
a replica of Complainant’s website, including Complainant’s mark. Furthermore, Respondent was formerly an
employee of Complainant. The Panel
finds that Respondent registered the disputed domain name with actual knowledge
of Complainant’s rights in the mark, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Arab Bank for Inv. & Foreign Trade v.
Sabah Mahmoud Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith
registration and use where the respondent was employed by the complainant’s
business for over 17 years, was fully aware of the name of her employer,
confessed in her response that she had “unclear past grudges” with the
complainant, and made no use of the infringing domain name).
Moreover, Respondent has also begun posting pornographic and offensive material on its website at the <stellarcallcentres.com> domain name. The Panel finds that Respondent’s use of the disputed domain name to post pornographic and offensive material is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stellarcallcentres.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: December 19, 2005
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