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Respondent's Long Use of JACUZZI in Australia Prevails in Domain Name Dispute

Mark Partridge

Jacuzzi, Inc., owner of rights in the mark JACUZZI, challenged the domain name jacuzzi.net.au in this first WIPO decision involving the .au domain.  The Australian respondent had used the JACUZZI name for nearly 15 years.

Jacuzzi, Inc. v. Wangra Pty Ltd, Case No. DAU2005-0001

A three-member Panel denied relief, stating:

In its Amended Response, the Respondent answers, first, that a company related to the sole director and shareholder of the Respondent started to carry on business under the name Jacuzzi from the Hallam store in October 1991. It also registered the business name Jacuzzi in the Victorian Register of Business Names on October 18, 1991. Since that date, that company or other companies associated with the Respondent have continuously carried on business under the name JACUZZI from that site. A copy of the Registration of Business Name is not in evidence. The allegation is verified, however, in a statutory declaration of Graham Ritchie made on August 4, 2005, which forms Annexure B to the Amended Response. Some additional support for the allegation can be found in the Amended Complaint which relies on the sending of the letter of demand in July 1996, in relation to the activities at the Hallam store.

* * *

In summary, then, the Complainant has raised grounds which are usually sufficient to shift the evidential onus to the Respondent. The Respondent has countered with claims which, if established, would provide it with rights or legitimate interests to use the Disputed Domain Name in Australia. To a considerable extent, the Respondent's claims are just that. This is not just a case of bare, incredible assertion, however. The Respondent has provided verifying support by way of statutory declaration (albeit this is balanced by statutory declarations on the part of the Complainant). In addition, it is common ground between the parties that the Respondent, or parties associated with it, has been using the name Jacuzzi since prior to July 1996, and there has been a very long delay in the Complainant taking any further action against the Respondent or any of its associated parties. While the Complaint did seek to rely on the letter of demand in July 1996, it has not sought to explain the delay in following up that demand a delay of eight years. In the special circumstances of this administrative proceeding, therefore, the Respondent's claims have some objective support and cannot simply be dismissed as untenable.

The Panel has noted that the matters claimed by the Respondent are possible defences that may be available to the Respondent. They are not easy defences to make out, however, and the Respondent may not be able to establish them. A proper assessment of them requires much wider evidence gathering powers, including discovery and cross-examination of witnesses, than is available in an administrative proceeding of this kind. In view of the limited nature of these administrative proceedings as proceedings on the papers, therefore, the Panel's finding cannot, and should not, be taken as a final endorsement of the Respondent's claims.

Accordingly, on the record in this administrative proceeding, the Panel finds that the Complainant has not discharged its onus under this head. The Panel finds, therefore, that on the record in this administrative proceeding the Complainant has been unable to prove that the Respondent has no rights or legitimate interests in the domain name.

By Mark Partridge, Managing Partner at Partridge IP Law
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