WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Trade Commission v. Matthew Reader
Case No: D2002-0786
1. The Parties
Complainant is the Australian Trade Commission, an agency of the Australian federal government represented by Mallesons Stephen Jacques, New South Wales, Sydney. Australia.
Respondent is Matthew Reader, New South Wales, Australia, appearing pro se.
2. The Domain Name and Registrar
The domain name at issue is <austrade.com> (the "Domain Name"). The Registrar is Key-Systems GmbH doing business as domaindiscounts24.com, Bexbach, Germany.
3. Procedural History
The Complainant initiated this proceeding by filing the Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 21, 2002. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondent formal notice of the commencement of this proceeding via post/courier and e-mail. Respondent filed a Response with the Center on September 17, 2002.
On October 9, 2002, after clearing for potential conflicts, the Center appointed Staniforth Ricketson and David Sorkin as panelists and David H. Bernstein as the Presiding Panelist in this matter.
On October 11, 2002, the Panel received a request from Complainant to submit an additional submission. In response, the Panel issued Procedural Order No. 1 providing in relevant part:
On October 10, 2002, the Center informed the Panel that Complainant had filed a reply. That reply has not yet been sent to the Panel, and the Panel directs the Center to hold it until further order. The Panel assumes that Complainant served the proposed reply on Respondent at the same time that it filed it with the Center.
Rule 12 unambiguously provides that only the Panel may request submissions beyond the Complaint and the Response. If a party nevertheless believes that a further submission is warranted, the appropriate procedure is to first seek consent from the Panel, with an explanation of why a supplemental submission is warranted. Thread.com, LLC v. Poploff, WIPO Case No. D2000-1470.
Accordingly, the Panel hereby requests that each party submit a short statement, of no more than three double-spaced pages, explaining its views on whether the Panel should accept Complainant's proposed reply and, if so, whether the Panel should grant Respondent time to submit a sur-reply. In addressing these questions, the parties should bear in mind the limited circumstances in which supplemental submissions are warranted, as outlined in cases like Thread.com, id., and Las Vegas Sands, Inc. v. Red Group, WIPO Case No. D2001-1057 (e.g., does it raise factual or legal arguments that were not available or reasonably foreseeable at the time of the Complaint). The parties should deliver their submissions to the Center via email by 3 p.m., Greenwich Mean Time, on October 18, 2002, with a simultaneous copy by email to the other party; each submission should be certified as provided in Rules 3(b)(xiv) and 5(b)(viii).
In light of the delay that will result from Complainant's request that the Panel consider its reply, the expected date for decision is hereby extended. A new date will be set, pursuant to Rule 10(c), after the Panel rules on Complainant's request.
Respondent filed a response to the order on October 18, 2000, however, no response was received from Complainant. Accordingly, on October 21, 2002, the Panel issued Procedural Order No. 2 providing in relevant part:
Respondent timely filed a submission explaining why it believes the Reply should not be accepted; Complainant has not filed any submission in response to the Panel's request. Accordingly, in the absence of any explanation from Complainant as to why its Reply is appropriate under the Rules or should otherwise be accepted by the Panel, the Panel declines to accept the Reply and directs the Center not to send the proposed Reply to the Panelists.
4. Factual Background
Complainant is the Australian federal governments export and outward investment facilitation agency. Since its inception in 1933, Complainant has operated to assist Australian businesses in identifying and exploiting investment opportunities outside Australia. Complainant has used the "Austrade" name to distinguish its goods and services since 1986 and currently maintains an official website located at <austrade.gov.au>.
Complainant holds three separate Australian trademark registrations incorporating the word "Austrade." In 1994 it registered the words "Aus" and "trade" interspersed with a kangaroo. In 1996, it registered the words "AUSTRADE ACCESS AMERICA" accompanied by a perched eagle and a crescent. And in 1998, Complainant registered the words "AUSTRADE WORLD DIRECT." The Australian Trademarks Regulations of 1995 preclude registration of the word "Austrade" as a trademark independently, but an exclusion is made for registered trademarks predating the law.
Respondent acquired the Domain Name <austrade.com> on May 22, 2002. The Domain Name does not resolve to any active website. Among the other domain names in Respondents possession are <studyinaustralia.com>, <digeridoo.com>, <australianadventures.com>, <australianhoney.com>, and <studyinternational.com>. Of these, only the <studyinaustralia.com> and <digeridoo.com> domain names resolve to active websites.
On May 24, 2002, claiming to act on Respondents behalf, one of Complainants former employees, Mr. Rob Chard, contacted Complainant about the sale of the Domain Name. On May 27, Mr. Chard offered to sell Complainant the Domain Name for a sum of 200,000 Australian dollars. Mr. Chard contacted Complainant again twice in June. On July 1, Complainant sent a letter to Respondent putting forth its legal arguments under Australian Law and demanding transfer of the Domain Name. In response, Respondent initiated a meeting with Complainant. The meeting, held on August 1, failed to bring any resolution to the conflict between the parties.
5. Parties Allegations
Complainant alleges that the <austrade.com> domain name is either identical or confusingly similar to the logo it registered in 1994 as an Australian trademark. Alternatively, Complainant alleges that the Domain Name is identical or confusingly similar to the "Austrade" name in which Complainant has common law trademark rights. Complainant supports its claim to common law trademark protection, asserting that it has amassed significant goodwill in the "Austrade" name since 1986 through use of the name to distinguish its services from the goods and services of others.
Complainants services include supplying Australian businesses with general information and advice about exporting, assisting them in understanding and selecting export markets, and providing strategic advice to exporters for the maintenance or expansion of their overseas businesses. Specifically, Complainant coordinates local support for its clients in foreign markets and manages programs to assist them. Complainant spends substantial sums to advertise and raise awareness of its activities and publishes a number of brochures.
As an indication of the goodwill amassed, the Complaint cites, among other things, the substantial resources Complainant has invested in raising awareness of its services, the revenue earned from its services, the number of overseas customer inquiries, community awareness of Complainants activities, and media mentions. Additionally, Complainant states that its official website, located at <austrade.gov.au>, recorded more than 1 million user sessions in the 2000-2001 financial year.
Complainant also alleges that Respondent has no rights or legitimate interests to the Domain Name. Complainant states that he has failed to offer any goods or services through the site, nor has he made any noncommercial use of the Domain Name since its acquisition. Complainant argues that the speculative registration of domain names suggestive of Australia, but which have not been used to conduct business, does not constitute demonstrable preparation to use the Domain Names. Additionally Complainant suggests that Respondents offer to sell the Domain Name for an amount far in excess of Respondents out of pocket expenses along with his threat to sell the Domain Name to a third party objectively demonstrates the absence of any rights or legitimate interest in <austrade.com>.
Finally, Complainant alleges that the Domain Name was registered and used in bad faith. Based upon Respondents Australian residency, his involvement in the education sector, and his offer to sell the Domain Name to Complainant through one of Complainants former employees, Complainant alleges that Respondent must have known of Complainant, its activities, and its renown. Complainant argues that these facts demonstrate Respondents registration and use of the Domain Name for the purpose of selling it, thus establishing Respondents bad faith.
Respondent alleges that the <austrade.com> domain name is neither identical nor confusingly similar to a trademark or service mark in which Complainant has rights. Respondent first argues that "austrade" is not a registered trademark and alternatively, that Complainants goodwill is insufficient to establish common law trademark rights in the word. Respondent asserts that Complainants goodwill and reputation within Australia lacks relevance because Respondent is targeting an international market and Complainant has not received worldwide public acceptance and recognition. Alternatively, Respondent claims that the words "aus" and "trade" have an intuitive and generic meaning widely used by other businesses, domain names, and foreign trademarks. Respondent asserts that his intuitive and generic use of the Domain Name, targeting the international market, prevents any identity or confusing similarity between the Domain Name and Complainants Australian statutory or common law trademarks.
Respondent claims to have legitimate rights and interests with respect to the Domain Name because he has made demonstrable preparations to use it in connection with a bona fide offering of goods or services. Respondent alleges that he has been pursuing the business development of inter-related trade oriented domain names for over four years. Respondent demonstrates preparations through his acquisition of a number of domain names related to Australian trade, the existence of a business plan, and the employment of a consultant to advise him on the architecture of his network of websites. Additionally, Respondent claims to be currently developing sites along the same lines as the operational site he holds at <studyinaustralia.com>.
In his defense, Respondent notes that the services he plans to provide are not competitive with Complainants services, nor does his proposed site rely on the Domain Names ability to generate traffic, misleadingly divert consumers, or tarnish Complainants trademarks or service marks.
Respondent also claims that he neither registered nor used the Domain Name in bad faith. Respondent argues that <austrade.com> was not registered primarily for the purpose of sale and that Mr. Chard was not acting as Respondents agent when he offered to sell the Domain Name to Complainant. Additionally, Respondent asserts that the mere offering of the Domain Name for sale does not support a finding that this was his primary purpose in acquiring the Domain Name. Furthermore, Respondent claims that the extensive preparation and development of his business plan indicates his intention not to sell the name. Respondent also notes in his defense that his acquisition of the Domain Name was not an attempt to attract commercial gain, trade off Complainants reputation, or compete with Complainant and that he has never engaged in a pattern of such conduct.
Finally, Respondent alleges that the Complaint was brought in bad faith and that Complainant has engaged in reverse domain name hijacking. In support of his claim, Respondent argues that Complainant was aware of the wide use of the word "Austrade" by a variety of entities, that Complainants first correspondence with Respondent was threatening and hostile, and that Complainant has engaged in a campaign of intimidation to dispossess Respondent of the Domain Name.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy have been satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. Respondent has no rights or legitimate interests with respect to the Domain Name; and,
3. The Domain Name has been registered and used in bad faith.
A. The Domain Name is Identical or Confusingly Similar to Complainants Mark
1. Complainant Has Rights in a Service Mark
The Panel finds that Complainant has rights in both relevant registered and unregistered trademarks.
Under the Auastralian Trademarks Act 1995 (Cth), the Complainant cannot register the word "Austrade" as a mark. S 18 and Schedule 5 of the Act (Annex 8, Complaint). However, the Complainant has three registered service marks that contain the word "Austrade" or its components as part of each of these marks. These are the 1994 logo registration of the kangaroo device interspersed between the syllables "aus" and "trade", the 1996 registration of the words "AUSTRADE ACCESS AMERICA" and the 1998 registration of the words "AUSTRADE WORLD DIRECT". The Respondent does not dispute the Complainants ownership and rights in these marks: the only question, then, is whether the domain name is identical or confusingly similar to one or more of these marks.
Moreover, Complainant also has made a prima facie showing of common law trademark rights in the word "Austrade" on its own. To establish such rights, Complainant must show that the name "Austrade" has achieved secondary meaning or association with Complainant. Universal City Studios Inc. v. Burns, Case No. D2001-0784 (WIPO October 1, 2000). It is undisputed that Complainant has been identifying itself and its services with the "Austrade" mark since 1986. Also undisputed are Complainants claims that, in recent fiscal years, it has invested over 10 million Australian dollars to raise awareness of its services, and raised as much in annual revenue for services provided, all in conjunction with its use of the "Austrade" identifier. Additionally, the name has appeared in brochures and other written materials published by Complainant for a wide audience. Complainant also demonstrates awareness of its name and services both within and outside of Australia.
In light of the undisputed evidence provided by Complainant, the Panel is satisfied that the identifier "Austrade" has achieved sufficient secondary meaning in association with Complainant and Complainants services to establish common law trademark rights. Respondent argues that the goodwill amassed by Complainant through its activities under the Austrade name is insufficient because Complainant has not received worldwide public acceptance and recognition. The Panel disagrees with Respondent. Even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights within the meaning of Paragraph 1(a)(i) of the Policy. The Policy makes no distinction between localized and widespread trademark rights, and there is no requirement that a Complainant own a famous mark to invoke the protections of the Policy. UEFA v. Fuzi Furniture, Case No. D2000-0710 (WIPO October 22, 2000) (complainant need not establish exclusive rights across all territorial boundaries, only a bona fide basis for making the complaint).
The Panel also rejects Respondents claim that the alleged intuitive and generic nature of the component word parts "aus" and "trade," as well their widespread foreign and business-related use, somehow precludes common law trademark rights in the disputed mark. The generic nature of the component word parts does not bear on the specific secondary meaning acquired for the word created by their combination. Eurobet UK Ltd. v. Intergate, Case No. D2001-1270 (WIPO December 12, 2001). Furthermore, the use of the word or word parts by other foreign businesses does not undermine Complainants claim to trademark rights in this particular combination of words. Nor, in any event, is this case on all four with those that have found a geographic indicator to be generic or unprotectible. The "Austrade" name is not itself a geographic indicator, but rather is a fanciful mark derived from the word "Australia." The name may or may not be intuitive for Australian trade-related services, but, under Australian law, it is not generic given its long association with a collection of specific services and their provider. To the contrary, an Australian court would likely find that Complainant has prima facie rights that could be protected under the common law action of passing off and/or an action for misleading or deceptive conduct under the provisions of Part V of the Trade Practices Act 1974.
The Panel recognizes that the question of trademark rights turns on Australian law. Although the Panel believes its decision is correct under Australian law, only one panelist is intimately familiar with its provisions. If Respondent disagrees with the Panels conclusions, he is free to pursue the matter in the Australian courts, as permitted under Paragraph 4(k) of the ICANN Policy.
2. The Domain Name is Identical or Confusingly Similar To Complainants Mark
There is no question but that the Domain Name is identical or confusingly similar to all three of Complainants registered trademarks as well as Complainants common law trademark in the word "Austrade." Excluding the gTLD identifier ".com", which is not to be taken into consideration when judging identity or confusing similarity, the Domain Name either replicates the entirety of the distinctive part of each and every one of the marks in which the Complainant has rights.
The sole dissimilarity between the Domain Name and Complainants 1994 registration is the kangaroo graphic intervening between the components of the word in the latter mark, and the specific font used for the letters. Design elements cannot be replicated in domain names and are thus not included in comparing the similarity between the alphanumeric sequence portions of the mark and Domain Name. General Machine Prods. Co., v. Prime Domains, Case No. FA0092531 (NAF March 16, 2000). With regard to Complainants 1996 and 1998 registration of the phrases "Austrade Access America" and "Austrade World Direct," the Domain Names incorporation of the distinctive part of Complainants trademarks, here the word "Austrade," also establishes confusing similarity. Christian Dior Couture SA v. Liage Intl Inc., Case No. D2000-0098 (WIPO March 24, 2000) (where consumers keep in memory the name "Dior" although "Christian Dior" is trademarked, domain name <babydior.com> is confusingly similar to the trademark); IMAX Corp. v. 1st Net 2000 Production, Case No. D2001-0037 (WIPO March 1, 2001).
As both parties to this dispute are based in Australia, the Panel has also taken note of Australian law on the question of similarity of trademarks. ESAT Digiphone Ltd. v. Michael Fitzgerald, Case No. D2000-0602 (WIPO August 2, 2000) (referring to Irish law where both parties were based in Ireland); Kesko Oyj v. Jessimet Oy, Case No. D2001-0199 (WIPO March 24, 2001) (referring to Finnish Law where both parties are Finnish companies). Australian trademark law provides that infringement occurs where a mark is "substantially identical" or "deceptively similar" to anothers registered trademark. A mark is taken to be "deceptively similar" for the purposes of Australian trademark law if it "so resembles that other trademark that it is likely to deceive or cause confusion." Trademarks Act 1995, s 10. The Panel finds the Australian concept of "deceptive similarity" is equivalent to the ICANN Policy requirement of "confusing similarity" such that our analysis here is consistent with Australian law.
In the case of the unregistered service mark "Austrade", the Panel finds that there is no need to consider the issue of confusing similarity, as the domain name is identical to this mark.
B. Respondent Does Not Have Rights or a Legitimate Interest in the Domain Name
It is undisputed that Respondent has not made any use, commercial or noncommercial, of the Domain Name in a way that establishes a legitimate interest in the Domain Name. Under the Policy a legitimate interest may nevertheless be established if, before notice of the dispute, Respondent made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. Policy 4(c)(i). Respondent claims to have made such preparations for several years. The preparations alleged by Respondent include the development of a business plan, the employment of a network consultant, and the registration of other domain names related to Australian trade.
The primary evidence Respondent has submitted to substantiate this claim is a copy of his business plan. That plan focuses on international educational exchange and, to a somewhat lesser extent, on general trade and promotion of Australian goods and services. Although it mentions the <austrade.com> Domain Name as an allegedly ideal name to encompass Respondents other domain names as an umbrella site for his Australian-related services, it falls short of demonstrating a legitimate interest. Respondents business plan may establish Respondents interest in a generic domain name that successfully and intuitively indicates Australian educational institutions, industries, and products but it does not establish a legitimate interest in the <austrade.com> domain name in particular. See VZ VermögensZentrum AG v. Anthing.com, Case No. D2000-0527 (WIPO August 22, 2000) (the mere speculative idea for a bona fide business application of a generic domain name does not constitute evidence of legitimate interest); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case No. D2000-1306 (WIPO January 24, 2001).
In any event, the business plan submitted by Respondent does not appear to have been created before this conflict. To the contrary, it contains pages of argument directed to this very dispute, attempting to explain why Respondent is not cybersquatting under the Policy. As such, this document is no evidence of the existence of a business plan prior to notice of the dispute.
Nor is the Panel persuaded by Respondents reliance on Shirmax Retail LTD v. CES Marketing Group Inc., Case No. AF-0104 (eRes March 20, 2000), in support of his contention that the registration and development of other websites with the intention to develop them in conjunction with the disputed Domain Name constitutes demonstrable preparations. That case concerned a truly generic domain name, <thyme.com>, which had no distinctive association, nor statutory or common law trademark protection, as <austrade.com> has. Banco de Chile S.A. v. Eric S. Bord, Esq., Case No. D2001-0695 (WIPO August 14, 2001) (Shirmax best applies where the domain name in question and the trademark are generic). Given the specificity of the Domain Name and the general nature of Respondents professional objectives, the Panel finds that Respondents claimed preparations are insufficient to establish a legitimate interest in the <austrade.com> Domain Name.
C. The Respondent Registered and Used the Domain Names in Bad Faith
Complainants principal allegation of bad faith centers on the offer of sale made by Mr. Chard. Respondent, however, claims that Mr. Chards offer was unauthorized. It can be difficult for Panels operating under the Policy to resolve disputed facts of this nature. There is no discovery in these proceedings and no live hearing at which the Panel can make credibility determinations. The Panel must nevertheless resolve the disputed facts as best it can, on the paper record provided, under a preponderance of the evidence standard.
Here, on balance the Panel finds the Respondent's contentions not credible. Respondent has failed to present any credible evidence to suggest that Mr. Chard was not acting with Respondent's knowledge and consent when he offered to sell the Domain Name to Complainant. To the contrary, Respondent admits in Annex S to the Response that Mr. Chard informed him that he had offered the name to the Australian Trade Commission, and that Respondent thereafter "decided to let [Mr. Chard] continue to explore the opportunity he initiated." Furthermore, the excessive price sought for the Domain Name appears to be an attempt to capitalize on the value of Complainant's trademark. Educational Testing Service v. TOEFEL, Case No. D2000-0044 (WIPO March 16, 2000) (general offer to sell constitutes use and registration in bad faith where the value sought to secure the sale was based on the value of the Complainant's trademark). Accordingly, the Panel finds bad faith registration and use.
D. Reverse Domain Name Hijacking
Because Complainant has satisfied the elements of the Policy, Respondents allegation of reverse domain name hijacking must fail.
Complainant has proven each of the three elements in paragraph 4(a) of the ICANN Policy in relation to the Domain Name: to wit, that the Domain Name is confusingly similar to a mark in which Complainant has rights, that Respondent lacks a legitimate interest in the Domain Name, and that Respondent registered and used the Domain Name in bad faith. Accordingly, the Panel orders that the Domain Name be transferred to Complainant.
David H. Bernstein
Dated: November 12, 2002