Bad faith versus first in, best dressed
According to the case documents, the US owners of 1SaleADay contended that the domain name 1saleaday.com.au and onesaleaday.com.au was "identical or confusingly similar".
Mochkin and Feigli conceded that the domain names were "identical". However, they "contended that the complainants had not established trademark rights in Australia prior to the registration".
Further, Benyamin Federman contended that the respondents Mochkin and Feigli formed a company using his company's trade name without his consent. He also contended "that they failed to use the disputed domain names in connection with a bona fide offering of goods and services".
"Instead they tried to profit off [1SaleADay's] intellectual property and goodwill," he said.
Finally, Federman contended that the domain names were registered and used in bad faith.
According to the documents, the respondents said their business agreement gave them "legitimate rights in the disputed domain names". Further, the domains were registered for a legitimate business purpose. They argued that the complainants had not "supplied evidence to support their claim that they sought to trade on the complainants' reputation".
The respondents contended that before they received any notice of this dispute, they used the disputed domain names in connection with a bona fide offering of goods or services.
Discussion and Findings
Sole WIPO panelist Andrew F. Christie concluded that Australian respondents registered the disputed domain names so as to benefit from the reputation and goodwill of the U.S. business because the disputed domain names were either identical or confusingly similar to the complainant's trademark. No other reason for registering the disputed domain names was proffered, the case documents showed.
WIPO also found that the respondents had "no rights or legitimate interests" in the disputed domain names.
"The complainants have made out a prima facie case of the respondents having no right or legitimate interest in the disputed domain names, and the respondents have not rebutted this prima facie case.
"This panel finds that the respondents registered the disputed domain names so as to benefit, without first obtaining consent, from the goodwill and reputation of the complainants' trademark - which, in this panel's opinion, constitutes registration of the disputed domain names in bad faith," the case documents showed.