Sydney-based CAD Australia has lost the right to use its domain name after the US vendor it represented filed complaints with the World Intellectual Property Organisation (WIPO).
CAD Australia, based in the peninsula suburb of Avalon, lost its right to use the chiefarchitect.com.au domain name according to a decision handed down by WIPO’s Arbitration and Mediation Center.
The decision followed US-based Chief Architect's objection to CAD Australia’s continued use of the domain, after the expiry of a reseller agreement between the two firms.
Chief Architect argued that it had been engaged in the business of creating architectural computer aided design (“CAD”) software products and services related to home design for over 20 years. It had registered CHIEF ARCHITECT as a business name in Australia in April 1999.
On July 1, 2004, Nigel Varley of CAD Australia had entered into a Dealer Agreement with the U.S. company to sell Chief Architect’s software products in Australia. This was terminated on February 7, 2005.
The agreement between the two firms included a provision that CAD Australia should immediately cease using the vendor's trademarks and all representation upon termination.
On April 19, 2008, and again on April 24, 2008, Chief Architect sent by email a “cease and desist” notice regarding the Avalon-based company's use of the disputed domain name.
On March 2, 2010, it transmitted by email to CAD Australia an enquiry about transferring the disputed domain name to the Complainant. In early February of this year, the vendor emailed an offer to purchase the disputed domain name for $US500.
According to publicly available WhoIs information, Nigel Varley was the registrant and tech contact for the disputed domain name.
The domain was first registered on September 30, 2002. It resolves to a website with the title “Chief Architectural Software a business servicing Australian/New Zealand architectural/building industry”.
The website also contains the statement “If you are looking for specific software from the makers of 'Chief Architect' you will be able to find their most popular range of retail software sold in Australia here”, with a link to a website at “www.cad.com.au”, which sells a range of CAD software for the building, design and architecture industries.
WIPO found the disputed domain name was identical to a trademark in which Chief Architect had rights and that CAD Australia had no rights or legitimate interests in respect of the disputed domain name.
It concluded that CAD Australia was attempting to attract, for commercial gain, internet users to a website by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website.
"Accordingly, this Panel finds, pursuant to paragraph 4(b)(iv) of the Policy, that the Respondent has used the disputed domain name in bad faith," the WIPO judgment said.
On April 1 the panel ordered that chiefarchitect.com.au be transferred to the US vendor.
CAD Australia lost a similar case on 29 October 2008 against a home design software CAD company - OzCAD. Neither CAD Australia or Nigel Varley replied to Chief Architect’s contentions or to WIPO's mediation panel.
A representative from CAD Australia told ITnews that the company accepted the decision.
A MelbourneIT spokesperson informed ITnews that a decision to transfer a domain name to the company that won it back in a dispute takes 10 working days from the date a decision is received by the domain name registrar.
The chiefarchitect.com.au domain would thus be revoked on 3 May 2011.