The WIPO Arbitration and Mediation Centre Administrative Panel has decided in favour of Woolworths Limited (Woolworths), finding that the domain name wooliesonline.com.au (the Domain Name) is confusingly similar to Woolworths' trade mark WOOLLIES.
Background to the Dispute
In 2008, Woolworths obtained registration in Australia of the WOOLLIES trade mark (the Mark) for a variety of goods and services, including online wholesaling and retailing of products. The Mark is known as a colloquialism to the supermarket trade name, Woolworths.
In March 2011, Save Cash Pty Ltd (Save Cash) registered the Domain Name. In July 2011, the Domain Name linked to a web page containing sponsored advertising links, including links to Woolworths and its competitor, Coles.
Woolworths subsequently filed a complaint to the Arbitration and Mediation Centre.
Parties' Arguments
To succeed in its claim under the .au Dispute Resolution Policy and the Rules for .au Dispute Resolution Policy, Woolworths had to establish that:
(i) the Domain Name was identical or confusingly similar to its Mark;
(ii) Save Cash had no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered or subsequently used in bad faith.
In arguing satisfaction of the second limb (which went to legitimacy), Woolworths argued that Save Cash is not known by the Domain Name, appeared to be running a car sales business and the Domain Name was not being used in good faith in the offer of goods and services.
In respect of the third limb (bad faith), Woolworths asserted that the Domain Name had clearly been registered in bad faith, as Save Cash had no rights or legitimate interests in the Domain Name and Woolworths had not consented to its use of the WOOLLIES mark. Further, Woolworths' strong reputation was such that Save Cash must have been aware of Woolworths and its mark or must have known that the Domain Name would have benefited from being so similar to the Mark.
Save Cash in turn argued that it intended to develop the Domain Name to market goods and services that incorporate woollen products and other associated lines, and not to sell food or other items which Woolworths sells. They further claimed that the Domain Name did not infringe the Mark as it was not offering or selling food or anything that would fall within the goods or services in respect of which the Mark was registered. Save Cash also argued that it was lawful to use a trade mark within a domain name provided the website contained a disclaimer dissociating it from the trade mark owner or offered a completely different product or service.
Panel Findings
The Panel considered that the Domain Name comprises the WOOLLIES Mark together with the word 'online', which describes one of the services for which the Mark is registered. In that respect, the Domain Name did not detract from the distinctiveness of Woolworths' well-known Mark and was found to be confusingly similar.
In finding that Save Cash had no rights or legitimate interests in the Domain Name, the Panel stated that:
(i) Save Cash failed to provide evidence of its plans to use the Domain Name in any of the ways it claimed;
(ii) Save Cash was not commonly known by the Domain Name or the word Woollies; and
(iii) the Mark is so well-known that it is inconceivable that the Domain Name could be used in a way that would not mislead Internet users.
The Panel also found that Save Cash had registered and subsequently used the Domain Name in bad faith. The Panel considered that, as the Domain Name contains the distinctive Mark with a descriptive word, it gave an impression that users would be led to a website where Woolworths' products were available to buy online and created a likelihood of confusion that the Domain Name was endorsed by or affiliated with Woolworths. The Panel held that Save Cash must have been fully aware of this potential affiliation and used the Domain Name in an attempt to attract Internet users for commercial gain.
Impact of the Decision
As Woolworths had satisfied all the elements, the Panel ordered the Domain Name to be transferred to Woolworths. The decision is confirmation that domain name dispute resolution policies can be effectively utilised to prevent trade mark misuse within domain names and that the addition of certain words to a trade mark ('online' in this case) may not obviate the likelihood of confusion.
Partner: Lynne Peach
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