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Recent Case Notes & Commentary

Bad Faith; Evidence; Inferences From the Evidence

Asos Plc v Ceravolo Premium Wines Pty Ltd, (WIPO Case No. DAU2012-0016).

In a defended domain name case, it is often difficult to prove bad faith registration or use. Under the UDRP, both bad faith registration and use must be established and this can be doubly difficult. Even in the case where a domain name policy requires proof only of bad faith registration or use, it can still be difficult. The Australian Policy is one such policy and the recent case of Asos PIc v. Ceravolo Premium Wines Pty Ltd, (WIPO Case No. DAU2012-0016), concerning the Australian domain name , shows how difficult it can be and also how a Panel can work its way to finding bad faith where there does not seem to be much hard evidence one way or the other and the panel is left to draw inferences from the limited evidence that is available.

The Australian Policy

The Australian Policy is the .au Dispute Resolution Policy (or “.auDRP”) which is largely based on the UDRP, with a few notable changes, one of which is that the requirement for proof of bad faith is expressed to be “… (iii) the domain name has been registered or subsequently used in bad faith.” (emphasis added).

Bad Faith by Interference

In the Asos case (supra), the Panel found that the domain name was registered and subsequently used in bad faith, but not on the basis of the more frequent sort of evidence of obvious deception and redirecting internet hits to competitors or colourable attempts to force the trademark owner to buy the domain name, but more on the basis of inference from limited facts and inference drawn from the absence of direct evidence.

There were 7 bases on which the three person panel unanimously found that bad faith had been established.

The first was that there was a likelihood that the Respondent knew of the UK Complainant company’s trademark in the UK. This was explained as follows:

“The Panel notes the likelihood that Mr. Ceravolo was familiar with Complainant’s trademark from his time working in the United Kingdom. In this regard, as an investment banker with involvement in media and online companies, it is likely that Mr. Ceravolo would have been aware of the activities of a listed company such as Complainant. It is also likely that he would have been conscious of the likelihood that such a successful business might want to reflect its trademark in a corresponding Australian domain name in due course.”

The Mr. Ceravolo referred to was the son of the directors of the Respondent and he had been the registrant contact for the domain name for some time before the registrant became the Respondent itself. Some readers might think it was taking the balance of probabilities too far, but the view of the Panel is clearly that it is likely that Mr Ceravolo knew of the Complainant’s trademark, likely that he would have been aware of the activities of the Complainant, likely it would want a domain name in Australia and likely that he, Mr Caravolo, would have been conscious of this. Although more direct evidence is preferable, the case shows that a limited factual basis may be extrapolated and by inference give rise to bad faith.

Other Reasons for finding bad faith:

The Panel also relied on:

  1. The delay in entering the domain name in the name of the Respondent itself; rather than the son;

  2. Delay in the Respondent’s applying for an Australian trademark ;

  3. The use of ASOS on the Ceravolo website only after notice of a dispute with Complainant;

  4. The lack of evidence of any actual product bearing the trademark;

  5. Actual sales of ASOS branded olive oil or plans aside from the reference on its website after almost two years, which the Panel found to be “suspicious”;( the Respondent claimed that it conceived the name ASOS to use on a new line of olive oil it was proposing to launch);

  6. The fact that the explanation for Respondent ‘s adoption of the name ASOS for its olive oil was “somewhat unconvincing”;( it claimed that the ASOS name was different from its current brands and that it “sounds Mediterranean”).

Use of this decision

Each of these factors standing alone might be thought to be somewhat weak, especially those factors that really amount to lack of evidence that a panel might expect to find, rather than evidence of facts that have actually occurred. But together they form a persuasive basis for the Panel to draw inferences that eventually were the Respondent’s undoing.

We have often commented on the importance of evidence to make out the elements of the UDRP and analogous policies. Perhaps this case also shows the importance of making submissions in the Complaint and Response that will assist the Panel in coming to the desired result on somewhat limited evidence.

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