On 9 March 2016, North Sydney-based mortgage lender Pepper Group Limited (Complainant) filed a domain name complaint with the World Intellectual Property Organisation against 1075 First Global Associates, LLC (Respondent) with respect to the domain name Peppermoney.com (Disputed Domain). The Complainant has been using the mark “PEPPER” in Australia since 2000, and has a number of registered trade marks in which “PEPPER” is the essential element, including ‘Pepper A’, ‘Pepper B’ and the logo (Pepper Marks).
In August 2015, the Complainant filed a trade mark application for PEPPER MONEY in classes 9 and 36 (Pepper Money Mark).
The Respondent is the new owner of the marketing solutions network PepperJam.
PepperJam was purchased by eBay in 2012 and rebranded as the “eBay Affiliate Network.”. However, upon the Respondent’s purchase of the company assets, it decided to relaunch the network under the original PepperJam brand.
The Complainant argued that the domain was similar to their trade marks, submitting that they are the owner or joint owner of the Pepper Marks in various countries, and that the Pepper Marks had acquired a valuable reputation and goodwill in Australia. The Complainant also stated that they had commenced a rebranding exercise in 2015 by adopting the more consumer-friendly name Pepper Money Mark and registering the domain PepperMoney.com.au.
The Panel agreed with the Complainant on the grounds of identical or confusing similarity, noting (with respect to the fact that the priority date for the Pepper Money Mark occurred after the registration of the Disputed Domain) the date in which the Complainant acquires its rights is not relevant when assessing whether the Complainant has rights to the Pepper Money Mark.
Additionally, as gTLDs are disregarded when assessing similarities between a domain names and a trade marks, the Disputed Domain consists only of the words ‘PEPPERMONEY’, making it identical to the Complainant’s trade mark.
The Complainant also argued that the Respondent had no rights or legitimate interests in the disputed domain name, as it had not authorised the Respondent to use the Pepper Marks or the Pepper Money Mark.
The Respondent is not known by the Disputed Domain, or operating under it. This, coupled with the Complainant establishing similarity to their trade mark, the onus shifts to the Respondent to show that it has no rights or legitimate interests to the Disputed Domain.
As the Disputed Domain has never resolved to an active website since its registration in 2011, the panel agreed with the Complainant and was satisfied that the Respondent has no rights or legitimate interests to the Disputed Domain.
However, with respect to use of the Disputed Domain in bad faith, the Complainant argued that the Respondent had no obvious connection with the Pepper Money Mark, but the Disputed Domain was likely to confuse consumers into thinking that the Respondent owned the Pepper Money Mark, or had a connection to it. The Complainant also argued that the Respondent’s registration of the Disputed Domain would prevent the Complainant from obtaining the Disputed Domain for its legitimate use.
The panel disagreed. The Complainant commenced its rebranding to Pepper Money in July 2015, four years after the Disputed Domain was registered. The Panel concluded that the registration could not have been made in bad faith when, at the time of the registration, the Complainant had no plans to use the Pepper Money Mark.
Additionally, the panel commented that bad faith use cannot be established as the Complainant and Respondent operate in completely separate industries and territories: the US-based Respondent gains nothing from web traffic that would normally be intended for an Australian moneylender. The panel found no reason to believe that the Respondent registered the domain name in order to co-opt goodwill built by the Complainant’s brand.
The Complaint was denied.
Having regard to the panel’s reasoning, complainants should carefully consider whether they have a legitimate right to acquire a domain from a registrant that does not operate in the same area – either geographically or commercially – and is not using the domain in a way which effects the complainant.