The Complainant is Prom Night Events of New South Wales, Australia, internally represented.
The Respondent is YourFormal Pty Ltd / Your Formal Australia Pty Ltd, Samir Kapoor of New South Wales, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with TPP Domains Pty Ltd. dba TPP Internet (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011, against Your Formal Australia Pty Ltd, Samir Kapoor.
On October 6, 2011, the Center sent an email communication to the Complainant stating: “The UDRP Policy and Rules require that the complainant have actual rights in a trademark or service mark and that mark be identical or similar to the domain name at issue. Panel’s [sic] have long-recognized that a trademark or service mark right can include an unregistered right, but a mere application for a registration would generally not be sufficient. It is up to the complainant to demonstrate sufficient usage of the mark, where it is not registered, to convince the fact finder that a common law or unregistered mark exists. Accordingly, the Center shall not be taking any action on your submission.”
On October 7, 2011, the Complainant sent an email communication to the Center asserting that it could demonstrate “a trademark covering the words” and “usage of the mark and/or similar wording”. The Center responded to the Complainant by email on October 7, 2011, stating that it would “accept the Complaint provisionally subject to independent Panel determination in due course of your submission to the effect that a pending trademark in Australia should be considered as if it were a trademark, and not a mere application”.
On October 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2011, the Registrar transmitted by email to the Center its verification response indicating that YourFormal Pty Ltd is listed as the registrant and providing the contact details for the disputed domain names. The Center sent an email communication to the Complainant on October 20, 2011, informing that the Registrar had indicated that YourFormal Pty Ltd was the registrant of the disputed domain names, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email communication in this regard on October 21, 2011.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011.
On October 27, 2011, the Center received an email from the email address “support@”, which stated: “This Domain has it been locked, and the domain has nothing to do with the person who has put the complaint in. How long until our domain gets resolved we also have and . This is infringing in our brand. He does not own the world sydney, melbourne, brisbane nor does he own the word prom or event. He registered .au domain 6 weeks after we registered the .com's We have not idea show this Samir Kapoor guy is, you have the wrong company. Granted your formal pty ltd is written on the whois, how ever this is a typo, its your formal australia.”
On November 1, 2011, the Center responded to this email communication asking that the sender “identify yourself, explaining your relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of your submission in the context of the current proceedings”. On November 3, 2011, the Center received a second email communication from the email address “support@”, which made various assertions about its business and that of the Complainant, but which did not provide the information requested by the Center.
During the course of the proceedings, the Complainant filed several unsolicited Supplemental Filings in the form of emails to the Center, the contents of which concerned: (i) the Complainant’s beliefs as to the true identity of the Respondent; (ii) other current or former “prom night”-related entities the Complainant believes the Respondent is associated with; (iii) information about a prior dispute brought by the Complainant before .au Domain Administration Ltd in relation to the “.au” versions of the disputed domain names; and (iv) alleged bad business dealings by the Respondent being investigated by the NSW Police, Trade Practices Commission and Australian Tax Office. In each case, the Center acknowledged receipt of these communications and stated that the Panel, when appointed, would be informed of their existence.
The Respondent for its part did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2011.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 25, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 2, 2011, the Panel issued a Procedural Order requesting the Complainant to provide: “a. evidence of the legal status of the Complainant (i.e. whether it is a company, a sole trader, or some other entity); and b. evidence of the use by the Complainant of the words “prom night events” such as to give rise to unregistered trademark rights in those words for the purposes of the Uniform Domain Name Dispute Resolution Policy”. On December 4, 2011, the Complainant submitted its response to the Panel’s Procedural Order. 4. Factual Background
The Complainant is a business name registered in New South Wales, Australia. This business name is alleged (although not proven) by the Complainant to be owned by an Australian company called The School Formal Show Pty Ltd. On September 5, 2011, the School Formal Show Pty Ltd lodged two applications with IP Australia for registration of an Australian trademark: one for PROM NIGHT EVENTS (words), and the other for PROM NIGHT EVENTS (logo). Both applications were pending at the date of commencement of these proceedings.
The disputed domain names were registered on June 7, 2010. The screenshots of the websites to which the disputed domain names , and resolved on October 24, 2010 showed websites advertising “American PROM NIGHTS in Melbourne Australia!” and “American PROM NIGHTS in Sydney Australia!”. 5. Parties’ Contentions A. Complainant
With respect to whether or not the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that: (i) it has applied for Australian trademark registration of PROM NIGHT EVENTS; (ii) under Australian law, “a pending trademark enjoys all of the rights and privileges of a fully granted trademark during the interim period until the trademark is granted”; and (iii) “no other company registered under Australian law may use any combination of the words in the name, in whole or part, where it relates to the same industry”.
With respect to whether or not the Respondent has rights or legitimate interests in respect of the disputed domain names, the Complainant contends the Respondent “has no similar registered company or trademark, pending or otherwise, that entitles them to use any combination of the words “Prom, Night or Events” in part or combined, for use in any activity such as domain name acquisition or marketing material under Australian Law”.
With respect to whether or not the disputed domain names were registered and are being used in bad faith, the Complainant contends that: (i) the disputed domain names “are directing web traffic to web sites that have been posted claiming status that the respondent does not have in the market” and which are actually those of the Complainant; and (ii) that these websites contain phrases, materials, names and words that have been copied directly from the Complainant’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Procedural Issue – Request to Add a Disputed Domain Name
In one of its unsolicited Supplemental Filings the Complainant requested that the domain name be added to the Complaint as a disputed domain name. While the registrant of record for this domain name is not identical in name to the registrant of record for the disputed domain names that are the subject of the Complaint as originally filed, the Complainant did provide evidence from which it might be possible to infer that the registrant of record for is in fact the same as the registrant of record for the disputed domain names that are the subject of the Complaint as originally filed. Given this Panel’s finding on the issue of whether or not the disputed domain names subject of the Complaint as originally filed are identical or confusingly similar to a trademark in which the Complainant has rights, as discussed below, this Panel does not find it necessary to reach a conclusion on the issue of whether or not the Complainant is entitled to have the domain name added to the Complaint as a disputed domain name. 7. Discussion and Findings A. Identical or Confusingly Similar
The Complainant asserted that it is “Australia's market leader in the High School Prom Event Management industry and has been for the last 18 years”. However, in response to the Panel’s Procedural Order requesting evidence of use by the Complainant of the words “prom night events” such as to give rise to unregistered trademark rights in those words for the purposes of the Policy, the Complainant merely supplied a copy of a communication from its trademark agent providing details of the trademark applications filed on September 5, 2011.
In the Panel’s view, the Complainant has failed to establish that it has a trademark to which the Policy applies. The Complainant does not have a trademark registration for “prom night events”. According to the case record before this Panel, all that the Complainant has is an Australian trademark application for registration of PROM NIGHT EVENTS. Contrary to the Complainant’s contention, under Australian law a trademark application, of itself, does not give rise to any trademark rights in respect of the subject matter of the application. Section 20 of the Australian trademarks legislation, the Trade Marks Act 1995 (Cth), sets out the rights given by registration of a trademark. Section 20(1) states that: “If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights: (a) to use the trade mark; and (b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered”. The important part of this subsection is the preliminary word “If”. Rights arise under the legislation only if the trademark is actually registered. Where the trademark is not registered – which is the case where, for example, an application for registration has been filed but is pending – then no trademark rights arise under the Australian legislation.
It is well established that the Policy can apply to a name that is not a registered trademark, so long as it is indeed a trademark – that is, so long as the name has a secondary meaning such that it “has become a distinctive identifier associated with the complainant or its goods or services” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7). According to the WIPO Overview 2.0, paragraph 1.7, relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. Despite being expressly requested to do so in the Procedural Order, the Complainant failed to provide any evidence that establishes that the name “prom night events” has become a distinctive identifier of the Complainant or its goods or services.
The burden on a complainant to establish that a name that is not registered as a trademark has the requisite secondary meaning is not insubstantial. As the WIPO Overview 2.0, paragraph 1.7, makes clear, a mere allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. This is especially so in the situation – of which this case appears to be an example – where the name in respect of which the complainant asserts unregistered trademark rights consists of descriptive words. As the WIPO Overview 2.0, paragraph 1.7, states, “in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness”.
The name in which the Complainant contends unregistered trademark rights – “prom night events” – is highly descriptive. Each of the words making up the name is a dictionary word, and the combination of those words is a descriptive phrase. Given the complete absence of evidence demonstrating that this descriptive phrase has acquired a secondary meaning such that it is a distinctive identifier of the Complainant or its goods or services, the case record before it does not permit this Panel to conclude that the Complainant has discharged its burden of showing that it has a trademark to which the disputed domain names are identical or confusingly similar. B. Rights or Legitimate Interests
Given this Panel’s findings on the issue of whether or not the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, discussed above, this Panel does not find it necessary to reach a conclusion on the issue of whether or not the Respondent has rights or legitimate interests in either of the disputed domain names. C. Registered and Used in Bad Faith
Given this Panel’s findings on the issue of whether or not the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, discussed above, this Panel does not find it necessary to reach a conclusion on the issue of whether or not either of the disputed domain names has been registered or is being used in bad faith. 8. Decision
For the foregoing reasons, the Complaint is denied.
Andrew Christie
Sole Panelist
Dated: December 16, 2011
Full & Egal Universal Law Academy