The Complainant is the Department of Social Services of the Australian Commonwealth Government, of Greenway, Australian Capital Territory, Australia, represented by Ashurst Australia, Australia.
The Respondent is Kayla Rogalewski, Kelso Lawyers of Newcastle West, New South Wales, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain names and are registered with NetRegistryPty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on October 1, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amended Complaint on October 5, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2018. The Response was filed with the Center on October 30, 2018.
On October 31, 2018, the Complainant filed with the Center a supplemental filing.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 19, 2018. 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 5, 2018, the Panel issued Procedural Order No. 1, notifying the Parties that the Panel had decided to accept the Complainant’s supplemental filing; providing the Respondent with the opportunity to submit a response to the Complainant’s supplemental filing on or before December 10, 2018; and advising that the due date for this Decision had been extended until December 15, 2018.
On December 6, 2018 the Respondent filed submissions in reply to the Complainant’s supplemental filing. 4. Factual Background A. Complainant
The Complainant is the Department of Social Services, a department of the Australian Commonwealth Government.
The Complainant is responsible for the administration and operation of the National Redress Scheme, which was established in response to recommendations made by the Australian Royal Commission into Institutional Responses to Child Sexual Abuse held between 2013 and 2017 (the “Royal Commission”).
The National Redress Scheme was first announced by the Australian Commonwealth Government in a joint media release dated November 4, 2016, under the name “Commonwealth Redress Scheme” (the “Press Release”).
The Complainant is the applicant for registration in Australia of the trade mark NATIONAL REDRESS SCHEME, under application No. 1936923 filed on June 27, 2018.
The Complainant is the owner of the domain name and offers access to the National Redress Scheme through its website at .
The National Redress Scheme was officially launched on July 1, 2018. B. Respondent
The Respondent is an Australian law firm specialising in institutional child abuse compensation.
In addition to the disputed domain names under complaint herein, the Respondent also registered the domain names and on the same date, November 9, 2016 (the “. Domain Names”) – one day before the date of registration of the disputed domain names subject to the Complaint in this proceeding.
The Domain Names were the subject of proceedings filed by the Complainant under the .au Dispute Resolution Policy (“auDRP”) and in respect of which a decision was handed down on December 5, 2018 (the “auDRP Decision”). The panelist in the auDRP Decision dismissed the Complainant’s complaint therein on the grounds the Complainant had not demonstrated it had rights in a trade mark and had therefore failed to prove that it had standing to pursue its claim under the auDRP.
On the date of this decision, the . Domain Names resolve to parking pages. C. The Disputed Domain Names
The disputed domain names were both registered on the same date, November 10, 2016, and do not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered and are being used in bad faith. B. Respondent
The Respondent contends as follows.
The Complainant has no trade mark or common law rights in the Trade Mark. Accordingly, the Complainant is unable to establish that the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights.
The Respondent has rights or legitimate interests in respect of the disputed domain names as a leading advocate for survivors’ rights. The Respondent has a clear track record of using the Internet to provide information to survivors of abuse about their rights. With the Complainant’s scheme now established, it would be entirely legitimate for the Respondent to use the disputed domain names to create a website to assist survivors with information about their rights under the National Redress Scheme. It would also have been entirely legitimate for the Respondent to register the disputed domain names with the intention of creating a website to campaign for the establishment of a national redress scheme.
It is impossible for the Respondent to have registered the disputed domain names in bad faith, as the Complainant previously referred to its National Redress Scheme as the Commonwealth Redress Scheme; until March 2018 the phrase National Redress Scheme was only ever used to describe the type of redress scheme that the Complainant intended to establish, not as the name for its proposed redress scheme; and the term “redress scheme” has always been used in a descriptive sense to refer to a type of scheme.
The Respondent has not used the disputed domain names in bad faith, as they have not been pointed to any website, and the Respondent has an established track record of using its domain names responsibly.
The Respondent further contends that the Complaint was clearly filed in bad faith and is an attempt to abuse the Policy for the Complainant’s improper purposes. Amongst other things, the Respondent asserts that:
(i) The Complainant publicly called its scheme the Commonwealth Redress Scheme for Institutional Child Sexual Abuse from November 4, 2016, until March 9, 2018;
(ii) The Complainant chose to change the name of its scheme to the National Redress Scheme for Institutional Child Sexual Abuse in March 2018;
(iii) The Complainant chose to register the domain name in 2018, despite the Respondent having registered the disputed domain names and in 2016;
(iv) A simple Internet search would have revealed to the Complainant, before it decided to change its name, and before it decided to register its domain name, that the disputed domain names and were already owned by the Respondent;
(v) The Complainant only applied to register the Trade Mark four days before its redress scheme was established in 2018. The Complainant must be taken to know that its trade mark application is likely to fail, but it has done this to give a veneer of legitimacy to its claim; and
(vi) The Complaint’s annexures demonstrate that the Complainant is aware that the Respondent has been publically critical of the Complainant’s redress scheme. The Complainant also knows that the Respondent has significant reach and influence in this area (including running a Facebook page with over 32,000 followers). The Complaint is merely an attempt to suppress criticism of the National Redress Scheme for Institutional Child Sexual Abuse. 6. Discussion and Findings 6.1 Supplemental Filings
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response.
The Complainant’s supplemental filing addresses specifically the Respondent’s submissions in the Response that:
(i) Prior to March 2018, the Complainant did not use the Trade Mark; and
(ii) It would be entirely legitimate for the Respondent to use the disputed domain names to create a website to assist survivors with information about their rights under the National Redress Scheme, or to campaign for the establishment of a national redress scheme.
In reply to the above submissions, the Complainant seeks to adduce:
(i) Further evidence of its use of the Trade Mark over the years; and
(ii) A radio interview given by the principal of the Respondent, Mr. Peter Kelso, to Australia’s AM radio station ABC AM on October 3, 2018 (after the date of filing of the Complaint) explaining his reasons for registering the . Domain Names, which reasons apparently contradict or are inconsistent with the Respondent’s stated reasons for registering the disputed domain names in the Response filed herein (the “Radio Interview”).
Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.
Whilst it would have been preferable for the Complainant’s representatives to file with the Complaint evidence of the Complainant’s use of the Trade Mark which pre-dates the date of registration of the disputed domain names, the additional evidence has been filed by the Complainant in order to specifically address the assertion in the Response that the Complainant lacks relevant common law rights in the Trade Mark and, in particular, that the Complainant made no use of the Trade Mark prior to March 2018 and in any event prior to the date of registration of the disputed domain names.
The Radio Interview was given by Mr. Kelso after the Complaint had been filed. The assertions made by Mr. Kelso are directly relevant to the issues herein, in particular the Respondent’s assertions in the Response as to the Respondent’s rights or legitimate interests in the disputed domain names.
The Respondent’s submissions in reply address specifically the Complainant’s supplemental filing, and also provide a copy of the (publicly available) auDRP Decision issued on December 5, 2018. In light of the above, and also bearing in mind the need to ensure procedural fairness, the Panel will accept the Parties’ supplemental filings. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Respondent asserts, correctly, that the Complainant possesses no registered trade mark rights in respect of the Trade Mark. The Respondent further contends, in its submissions in reply, as follows:
“The Panel should also be aware that IP Australia has informed us that both of the Complainant’s trade mark applications [‘NATIONAL REDRESS SCHEME’ (application 1936923) and ‘NATIONAL REDRESS SCHEME FOR PEOPLE WHO HAVE EXPERIENCED INSTITUTIONAL CHILD SEXUAL ABUSE’ (application 1936924)] have been examined by the Registrar and rejected as failing to meet the requirements of the Trade Marks Act 1995 (Cth).”
The Respondent has not furnished the Panel with any evidence in support of this assertion.
From the publicly available online search records maintained by IP Australia, it would appear that (1) both of these trade mark applications are still under examination; (2) the acceptance date for both of the applications is March 2, 2020; and (3) first reports were issued in respect of both applications on December 2, 2018.
In light of the above, it would appear that both of the applications are still pending.
As to unregistered or common law rights, Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides relevantly as follows:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.
Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.”
The Complainant asserts that it is the first person in Australia to use the Trade Mark in connection with institutional child sexual abuse. The Respondent has not challenged this assertion in the Response or in its submissions in reply.
The Complainant has furnished evidence with its supplementary submissions of the first use in Australia of the Trade Mark in September 2015, in two reports entitled “Redress and Civil Litigation Report” and “National Redress Scheme Participant and Cost Estimates” released by the Royal Commission, and referring in the body of the reports to the scheme as the National Redress Scheme.
The Respondent submits in its submissions in reply that these reports were produced not by the Complainant, but by the Royal Commission. Whilst this is, strictly speaking, correct, the Panel notes that the Royal Commission was established at the behest of the Government of the Commonwealth of Australia, and furthermore that the copyright in all of the reports issued by or on behalf of the Royal Commission is claimed by the Commonwealth of Australia.
The panelist in the auDRP Decision has, helpfully, set out the instances of use of the Trade Mark which predate the date of registration of the disputed domain names, namely:
“(a) Consultation Paper: Redress and Civil Litigation, early 2015 (306 pages): The expression predominately used is ‘a national redress scheme’, appearing approximately 32 times. At page 144 is a reference to ‘the Government of Ireland established a national redress scheme under the Residential Institutions Redress Act 2002.’
(b) Participant Cost Estimates (Finity) Report, July 2015 (76 pages): In introductory comment, the report refers to provisions cost estimates for an ‘Australian National Redress Scheme’. At pages 4 and 10, footnotes 1 and 3 respectively, the report qualifies the use of the expression, stating: ‘Our estimate are for a single national redress scheme or the combination of separate nationally consistent schemes in each State and Territory.’ Otherwise, the expressions used are ‘a National Redress Scheme’, ‘a theoretical National Redress Scheme’ and a few ‘the National Redress Scheme’. A total of 120 usages, predominately ‘a National Redress Scheme’.
(c) Redress & Civil Litigation Report, 2015 (659 pages): There were many 100s of references to a redress scheme, but overwhelming usage is the expression ‘a single national redress scheme’ and to a lesser degree, ‘the national redress scheme’.
(e) Joint media release, 4 November 2016: The expression used is ‘Commonwealth redress scheme for survivors of institutional child sexual abuse’. The web site referred to for seeking assistance is www.childabuse .”
The Respondent asserts, correctly, that the phrase “National Redress Scheme” is not used in the Press Release. The introductory paragraph of the Press Release states as follows:
“The Turnbull Government is today announcing a Commonwealth Redress Scheme for survivors of institutional child sexual abuse and is inviting states, territories and other non-government institutions to join in the Commonwealth scheme to deliver redress to the survivors of these wrongs.”
There is however reference to a “national scheme” and to a “truly national scheme” in paragraph 7 of the Press Release.
The panel in the auDRP Decision concluded, on the facts before the Panel in that proceeding, that:
(i) The use of the Trade Mark prior to the date of registration of the “.” domain names (November 9, 2016) was generic or descriptive in nature; and
(ii) The use by the Complainant of the Trade Mark did not commence until March 9, 2018 when the expression “National Redress Scheme” was used in a media release published by the then Prime Minister of Australia, Malcolm Turnbull.
It is noteworthy that the panelist in the auDRP Decision considered that, in light of his findings as to lack of standing under the first limb of paragraph 4(a) of the auDRP, it was not necessary to address the second and third limbs under paragraph 4(a) of the auDRP (which mirror the second and third limb under paragraph 4(a) of the UDRP).
The Panel notes that the date of first use of a complainant’s unregistered trade mark is not considered relevant to the first limb test under the UDRP. Section 1.7 of WIPO Overview 3.0 provides as follows:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name.”
The filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test, although these factors may however bear on a panel’s further substantive determination under the second and third elements (see WIPO Overview 3.0, section 1.1.2).
The Panel therefore finds that the Complainant has rights in the Trade Mark acquired through use. There can be no question that the Complainant has made substantial use of the Trade Mark, at the very least, following the establishment of the National Redress Scheme in July 2018.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7). Excluding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name is identical to the Trade Mark.
A dominant feature of the Trade Mark, the words “national dress”, is recognisable in the disputed domain name (see WIPO Overview 3.0, section 1.7).
The Panel therefore finds that the disputed domain names are confusingly similar or identical to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Panel accepts that the Respondent and its principal, Mr. Kelso, provide invaluable services and assistance to victims of institutional child sexual abuse.
In light of the above and the passive use of the disputed domain names, the Panel is unable to conclude that the Respondent has rights or legitimate interests in respect of the disputed domain names. The Respondent asserts that it has a proven track record of using other domain names responsibly, but has not submitted evidence of its intended use of the disputed domain names. The Panel is therefore unable to conclude, on the evidence, that it would be entirely legitimate for the Respondent to use the disputed domain names to create a website to assist survivors with information about their rights under the National Redress Scheme, or to campaign for the establishment of a national redress scheme, as asserted by the Respondent in the Response.
The Panel further considers that Mr. Kelso’s stated reasons, in the Radio Interview, for the Respondent’s registration of the “.” domain names (see discussion under Section 6.2.C. below) are inconsistent with rights or legitimate interests for the purposes of the Policy, in particular in light of the Complainant’s prior rights in the Trade Mark.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
For the foregoing reasons, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Respondent’s website promotes the Respondent as specialist institutional child abuse compensation lawyers. The first linked page under the drop-down menu “Our Work” on the Respondent’s website is “National Redress Scheme Payments”. The Respondent actively and prominently promotes its legal services relating to the National Redress Scheme on its website.
In all the circumstances, and in light of the Respondent’s acknowledged expertise in the area of institutional child sexual abuse, the Panel finds that the Respondent registered the disputed domain names opportunistically and in bad faith, just days after the Press Release, and with prior knowledge of the Complainant’s use of the Trade Mark (and irrespective of whether such prior use amounted to use in a trade mark sense).
Under paragraph 4(b)(ii) of the Rules, the following circumstances amount to evidence of registration and use of a domain name in bad faith:
“you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
Mr. Kelso asserts in the Radio Interview as follows:
(i) The Respondent registered the . Domain Names “just to park it there so that nobody else could use it or misuse it”;
(ii) “I regard myself as a proper custodian of that name and I make it my business to make sure that the name is never misused”; and
(iii) “It could be misused by people who want to confuse people that they are the redress scheme themselves or whatever”.
Although the above comments were made in respect of the “.” domain names and not the disputed domain names under the Complaint herein, the Panel notes that (1) the “.” domain names and the disputed domain names are, excluding the country code Top-Level Domains, identical; (2) the “.” domain names and the disputed domain names have not been used; and (3) the “.” domain names and the disputed domain names were registered at the same time: 5-6 days after the Complainant’s Press Release on November 4, 2016. The Panel therefore considers it is appropriate to take into account the content of the Radio Interview in determining the question of bad faith herein.
The Panel notes that the comments made by Mr. Kelso in the Radio Interview apparently contradict the submissions in the Response herein, that it would be entirely legitimate for the Respondent to use the disputed domain names to create a website to assist survivors with information about their rights under the National Redress Scheme; and that it would also have been entirely legitimate for the Respondent to register the disputed domain names with the intention of creating a website to campaign for the establishment of a national redress scheme.
Irrespective of the above apparent contradiction, the Panel considers that the assertions made in the Radio Interview provide evidence of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
The Panel considers that the proper custodian of the disputed domain names is the Complainant.
The undisputed evidence demonstrates that Mr. Kelso, an acknowledged specialist lawyer and lobbyist in the field of institutional child abuse compensation:
(i) Was aware of the numerous references to a proposed or potential “National Redress Scheme” in the various papers released by or on behalf of the Royal Commission prior to the date of registration of the disputed domain names;
(ii) Was aware of the Press Release dated November 4, 2016 announcing the establishment of a “Commonwealth Redress Scheme” and making reference to a “national scheme” and a “truly national scheme”;
(iii) Arranged for the registration by the Respondent of the . Domain Names on November 9, 2016 and of the disputed domain names on November 10, 2016; and
(iv) Made no use of the “.” domain names or the disputed domain names.
In all the circumstances, it is not necessary for the Panel in the present proceeding to determine definitively whether the Complainant did possess any relevant common law or unregistered trade mark rights in the Trade Mark prior to the date of registration of the disputed domain names.
Even assuming that the Trade Mark did not acquire secondary meaning until after the Press Release and until after the date of registration of the disputed domain names, the Panel finds that, in all the circumstances, the disputed domain names were registered, opportunistically, by the Respondent in order to unfairly capitalise on the Complainant’s nascent trade mark rights. In this regard the Panel relies upon WIPO Overview 3.0, Section 3.8.2, which provides as follows:
“3.8.2 Domain names registered in anticipation of trademark rights
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Although the disputed domain names have not been used, in light of the Respondent’s provision of legal services relating to the National Redress Scheme, and in light of the apparent contradictions between the submissions in the Response and the assertions made by Mr. Kelso in the Radio Interview, the Panel finds that the disputed domain names were registered in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith. 6.3 Reverse Domain Name Hijacking
The Respondent does not specifically request a finding of Reverse Domain Name Hijacking (“RDNH”), but asserts that the Complaint was filed in bad faith and is an attempt to abuse the Policy for the Complainant’s improper purposes.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
RDNH is further defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name” (see WIPO Overview 3.0, section 4.16).
The Complainant has prevailed in this proceeding. The Panel is unable to find any grounds in support of a finding of RDNH.
In all the circumstances, the Panel declines to make any finding of RDNH against the Complainant, or to make any finding that the Complaint was otherwise filed in bad faith or for improper purposes. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 13, 2018
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