GE Capital Finance Australasia Pty Ltd v Dental Financial Services Pty Ltd

Nominet UK Dispute Resolution Service

DRS 02179

GE Capital Finance Australasia Pty Ltd -v- Dental Financial Services Pty Ltd

Decision of Independent Expert

1	Parties:

Complainant:	GE Capital Finance Australasia Pty Ltd

Respondent:	Dental Financial Services 

2	Domain Name:

  	The domain name in dispute is carecredit.co.uk ("the Domain Name").

3	Procedural Background:

3.1	The Complaint was received in full (including annexes) by Nominet on 23 November 2004. Nominet validated the Complaint and sent a copy to the Respondent on 26 November 2004, informing the Respondent that it had until 20 December 2004 to lodge a Response.  

3.2	Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 11 January 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service (“DRS”) Policy ("the Policy").

3.3	Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert on 18 January 2005. 

4	Additional Formal/Procedural Issues:

4.1	Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision, pursuant to paragraph 15(b) of the DRS Procedure (“the Procedure”). In particular, I have looked at the methods used to notify the Respondent of the Complaint.

4.2	The details in Nominet’s database entry for the Domain Name are inter alia as follows:

“Registrant
Contact:	Dental Financial Services

Admin Contact
Name:		Carl Burroughs

The address, fax and email details given for the “Admin Contact” are then exactly the same as those given for the Registrant. 

The same name (Dental Financial Services) and postal address are found in the WHOIS search result for the Domain Name.

4.3	From the Complaint file, it appears that Nominet attempted to notify the Respondent of the Complaint by several different means:

4.3.1	by e-mail to carl@dentalmarketing.com.au (the e-mail address in Nominet’s database entry for the Domain Name), to carl@communiquedirect.com.au (the e-mail address given by the Complainant in the Complaint), and to postmaster@carecredit.co.uk (in accordance with paragraph 2(a)(ii) of the Procedure); 

4.3.2	by fax to the fax number +61 292111477 (i.e. as per the number in Nominet’s database entry for the Domain Name), marked “FOR THE PERSONAL ATTENTION OF CARL BURROUGHS”;

4.3.3	by post to the contact address given for the Respondent and Mr Burroughs in Nominet’s database entry and to the address given by the Complainant in the Complaint.

These cover all of the various means of appropriate communication of the Complaint that are provided for in paragraph 2(a) of the Procedure.

4.4	The file reveals that a delivery delay report was received by Nominet in relation to the e-mail sent to postmaster@carecredit.co.uk, stating: “Delivery to [this recipient] has been delayed. You do not need to resend the message. The server will continue to attempt message delivery.” However, there is nothing on the file to suggest that the other e-mail, fax or postal copies were delayed or not delivered. I note in particular from the copy correspondence that is attached to the Complaint that the Respondent responded to an e-mail which was sent to carl@dentalmarketing.com.au on 22 October 2004, and that he used the e-mail carl@communiquedirect.com.au in his response. Therefore, I conclude that the Complaint was properly notified to the Respondent and is deemed to have been received on the date that the e-mail and fax transmissions were sent, 26 November 2004.

5	The Facts:

5.1	The Complainant is an Australian company called GE Capital Finance Australasia Pty Ltd. The Complaint states that it is a wholly owned subsidiary of the General Electric Company (“GE”) and carries on business in Australia and New Zealand under the name GE Money. The Complaint refers to a company search record (Annex 1) to substantiate this claim. This lists IGE USA Investments and GE Finance Australia Pty Ltd as the current shareholders of the Complainant. Whilst this does not directly establish the Complainant’s claim, in the light of the other material submitted and in the absence of any adverse comment from the Respondent, I accept the Complainant’s statement of the facts. 

5.2	One of the businesses conducted by GE through its subsidiaries is the provision of financial services in respect of healthcare under the name CARECREDIT. The dispute underlying this Complaint arises out of the plans to launch a similar business in Australia and New Zealand, also under the name CARECREDIT.

5.3	The Respondent’s name given in Nominet’s database entry for the Domain Name is Dental Financial Services, the full corporate name for which appears from the Complaint to be Dental Financial Services Pty Ltd. The Respondent was incorporated on 9 June 2004, with Carl Burroughs as a director and shareholder. No details are given of the Respondent’s business.

5.4	On 18 October 2004, the Respondent registered the Domain Name. Three days earlier, on 15 October 2004, it had registered the domain name carecredit.com.au. 

5.5	On 22 October 2004, the Complainant sent a letter to the Respondent, complaining about this and demanding that the Domain Name be transferred to the Complainant. The letter was acknowledged by Carl Burroughs (the Admin Contact for the Domain Name and a director and shareholder of the Respondent) by e-mail the same day, stating that the matter had been referred to his lawyers who would be in touch the following week. The Complaint does not refer to any subsequent correspondence.

5.6	The Domain Name does not resolve to an active website.

6	The Parties’ Contentions:

Complainant

6.1	The Complainant states that the Domain Name is identical or similar to a name or mark in which it has Rights and that, in the hands of the Respondent, it is an Abusive Registration. The reasons given are as follows:

6.1.1	The Complainant, GE and related entities have a strong worldwide reputation including in the United States, Great Britain, Europe, Australia, New Zealand and Asia as a provider of commercial and personal financial services. Other subsidiaries of GE have carried on the business of providing financial services in respect of healthcare in the US for approximately 13 years and in Canada for approximately 3 years.

6.1.2	CareCredit LLC, another subsidiary of GE, is the registered proprietor of US trade mark registration no. 2021305 CARECREDIT in class 36 covering “providing financing for the practices of dentists, doctors and veterinarians and providing finances to patients through their doctors and dentists for care received”.

6.1.3	CareCredit LLC is the registrant of the domain names carecredit.com and carecredit.ca and operates internet websites at www.carecredit.com and www.carecredit.ca, in respect of its health, dentistry and veterinary financial services business in the United States and Canada respectively.

6.1.4	The Complainant has applied to register the trade mark CARECREDIT in Australia (application no. 1003531) and New Zealand (application no. 718796), each in respect of a variety of goods and services in Classes 9, 16 and 36, the latter including financial services. Both applications have been accepted for registration.

6.1.5	The Complainant is the registrant of the domain name carecredit.net.au.

6.1.6	From about May to October 2004, the Respondent’s director and shareholder, Mr Burroughs, was involved in confidential discussions and correspondence with officers and employees of the Complainant with the intention of forming a business relationship for the provision of marketing services to the Complainant by Mr Burroughs or another company, Integrated Dental Marketing Pty Ltd, of which Mr Burroughs claimed to be a director. These discussions related to the Complainant’s intention to commence business in Australia and New Zealand under the name CARECREDIT along the lines of the CareCredit businesses operated by GE’s subsidiaries in the US and Canada.

6.1.7	In fact, Mr Burroughs was not and never had been a director of Integrated Dental Marketing.

6.1.8	On 15 October 2004, the Complainant informed Mr Burroughs that it was progressing with the launch of the CareCredit business in Australia, but that it did not require the marketing services of Mr Burroughs, Integrated Dental Marketing Pty Ltd or the Respondent.

6.1.9	On 18 October 2004 the Respondent registered the Domain Name.

6.1.10	The Complainant’s Senior Corporate Counsel wrote to Mr Burroughs on 22 October 2004 demanding that the Respondent transfer the Domain Name to the Complainant.

6.1.11	To the best of the Complainant’s knowledge, at no time prior to, during or after the discussions with Mr Burroughs, did Mr Burroughs or the Respondent claim to have any rights or legitimate interest in respect of the CARECREDIT name.

6.2	The Complainant also asserts that the Domain Name is abusive in the hands of the Respondent because:

6.2.1	it was primarily registered to stop the Complainant or its related entities from registering it, despite their rights in the CARECREDIT name;

6.2.2	the Registrant also registered the domain name carecredit.com.au (in respect of which the Complainant has commenced proceedings before WIPO); and

6.2.3	the Domain Name and carecredit.com.au were both registered in the context of a confidential business relationship between the Complainant and Mr Burroughs having ended, and in breach of confidence.

6.3	The Complainant has produced extracts from company, trade mark and domain name records to support its claims, as well as copies of the correspondence referred to in 6.1.8 and 6.1.10 above. There is no documentary evidence of the negotiations which are said to have taken place between May and October 2004.
Respondent

6.4	The Respondent has not filed a Response.

7	Discussion and Findings:

General

7.1	Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

(i)	it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii)	the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

7.2	Under paragraph 1 of the Policy, “Rights includes, but is not limited to, rights enforceable under English law”. Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off and similar rights, in jurisdictions other than the United Kingdom.

7.3	The Complainant’s application to register CARECREDIT as a trade mark in Australia was filed on 26 May 2004, nearly 5 months before the Domain Name was registered, and at the start of the period when the Complainant asserts that it was in discussions with Mr Burroughs over the marketing of a new CareCredit business in Australia and New Zealand. The application to register the mark in New Zealand was filed on 21 September 2004, three days after the Domain Name was registered, but claiming priority from the Australian application. 

7.4	As at the date of registration of the Domain Name, the Complainant itself therefore had no registered trade mark rights. Although the Australian and New Zealand applications had been accepted by the national trade mark offices for registration, I cannot assume that registration is inevitable, since a third party could oppose either application. Further, the Policy is clear in requiring the Complainant itself to have “Rights” in the relevant name or mark, so I do not feel able to treat the US trade mark registration no. 2021305 for CARECREDIT owned by CareCredit LLC as being that of the Complainant.

7.5	I therefore turn to unregistered rights. As far as Australia and New Zealand are concerned, since the Complainant’s CareCredit business had not yet begun at the date of registration of the Domain Name, it is tolerably clear that the Complainant had not itself built up any local reputation in the name CARECREDIT which could be relied on to prevent third parties from adopting the name, by action through the courts. Although the Complainant had registered the domain name carecredit.net.au by the date of the Complaint, the date of registration is not apparent from the file, and there is no evidence of the domain name being used as the address for an active website. 

7.6	However, it is clear that the Complainant’s ‘sister’ company, CareCredit LLC, owns both registered and unregistered trade mark rights in the name CARECREDIT, through its US trade mark registration no. 2021305 and its operation of a business involving the provision of health, dentistry and veterinary financial services in the United States and Canada and through its websites found at www.carecredit.com and www.carecredit.ca. Although targeting consumers in the US and Canada, these websites are available to users of the internet throughout the world. 

7.7	Given that CareCredit LLC and the Complainant are both subsidiaries of GE, it is reasonable to assume that the activities of each of them are ultimately determined and controlled by GE. In particular, the plan to extend the CareCredit business from the US and Canada into the Australian market was no doubt authorised by GE.

7.8	While some international groups of companies hold their trade marks and domain names through their parent company or a specific intellectual property holding company, others do so through local trading companies. It appears that this is the case in the GE group. On a strict analysis of where the GE group’s ‘legal rights’ in the CARECREDIT name and mark lie, a court might require CareCredit LLC and/or GE itself to be parties if this were a trade mark or passing off action. However, I have concluded that the Complainant’s ownership of the Australian and New Zealand trade mark applications, together with its preparations to launch a business under the name CARECREDIT, with the authorisation from GE to extend the CareCredit business already operated elsewhere in the world by a sister company of the Complainant (which itself has registered and unregistered rights in the name CARECREDIT), is sufficient to amount to “Rights” in the name and mark CARECREDIT for the purpose of the Policy.

7.9	I should mention that I have considered the provision in paragraph 1 of the Policy which excludes from the definition of “Rights”, any “rights in a name or term which is wholly descriptive of the Complainant’s business”. Although the term CARECREDIT can certainly be said to allude to financial services involved in caring for individuals, it is an invented word which is not wholly descriptive of the services which the Complainant intends to provide under the name.

Abusive Registration

7.10	Paragraph 1 of the Policy defines an "Abusive Registration" as:

	"a Domain Name which either:

(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(ii)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.”

7.11	I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.12	Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

 	“3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

	(A) …
	
	(B) as a blocking registration against a name or mark in which the Complainant has Rights; or

	(C) for the purpose of unfairly disrupting the business of the Complainant.

(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern".

7.13	On the other hand, I must bear in mind the terms of paragraph 3(b) of the Policy to the effect that “failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration”.

7.14	It is clear that the Respondent, through Mr Burroughs, was aware of the Complainant’s plans to launch a CareCredit business in Australia, New Zealand and (according to the letter of complaint of 22 October 2004) the UK, akin to that operated by the GE group in the United States and Canada. Business discussions concerning plans to launch a new business are usually by their nature confidential, and there is nothing to suggest that the discussions which took place between the parties from May to October 2004 were any different from the norm. Mr Burroughs - and, through him, the Respondent – ought to have been well aware of the confidentiality involved.

7.15	In registering the Domain Name, the Respondent must have used its knowledge of the Complainant’s plans to extend GE’s CareCredit business. I agree with the Complainant’s assertion that this was in breach of a duty of confidence owed by Mr Burroughs and the Respondent to the Complainant.

7.16	The timing of the Respondent’s registration of the Domain Name in itself indicates that this was a response to the news from the Complainant only three days beforehand that Mr Burroughs’ services were not required by the Complainant in its proposed CareCredit launch.

7.17	On the balance of probabilities, it is likely that Mr Burroughs was aware that GE’s existing CareCredit businesses were conducted in part by advertising and promotional activity through the internet, and that relevant websites were located at web addresses which incorporated the CARECREDIT name. He therefore would also have been aware of the likelihood that www.carecredit.com.au would have been a useful web address for the Australian market and www.carecredit.co.uk for the UK market. The circumstances of the case point to Mr Burroughs having caused the Respondent to register the two domain names which would enable these addresses to be used, with the primary purpose of preventing the Complainant from registering them or using them in its proposed business. Therefore the provisions of paragraph 3(a)(i)(B) and (C) are satisfied.

7.18	I believe that paragraph 3(a)(iii) of the Policy is aimed at respondents who register multiple domain names in relation to more than one person’s rights in names or marks, rather than at a respondent who has registered more than one domain name in relation to a single underlying complaint. The idea is that someone who registers more than one domain name in respect of which different third parties have rights (or possibly, the same third party has different rights) and he does not, is unlikely to have a legitimate excuse for doing so. In this case, the ‘legitimacy’ or otherwise of the Respondent’s registration of the Domain Name and carecredit.com.au will be the same in each case. Therefore, the Complainant has not established a relevant pattern of registrations.

7.19	Having said this, the Respondent has not provided any reason for having adopted the CARECREDIT name in the Domain Name or carecredit.com.au which might persuade me that my conclusion in paragraph 7.17 is wrong.

7.20	I have therefore concluded that the Complainant has established to the necessary level of proof that the Domain Name was registered in a manner which took unfair advantage of and was unfairly detrimental to the Complainant’s Rights.

8	Decision:

I find that the Complainant has Rights in respect of a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name carecredit.co.uk should be transferred to the Complainant.

______________________________				
Anna Carboni						

Date: 21st February 2005