The Complainant is City of Parramatta Council, Australia, represented by Anisimoff Legal, Australia.
The Respondent is Hayden Quarman, Australia, represented by Ms Toni Quarman, power of attorney. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2021. On March 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. A number of communications were received from the Respondent’s relatives over the first half of April 2021, with a formal response being submitted on April 20, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 28, 2021. 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. 4. Factual Background The Complainant is the local government body governing the City of Parramatta local government area in New South Wales, Australia. It is located on the Parramatta River about 24 kilometres from the Sydney central business district. According to the Complaint, the city was founded in 1788, several months after Sydney. It is therefore the second oldest city in Australia. It was incorporated as the Municipality of Parramatta in 1861. It became the City of Parramatta by proclamation in 1938 under the Local Government (City of Parramatta) Act 1938. The Complainant was formally constituted under its present name pursuant to the Local Government (City of Parramatta and Cumberland) Proclamation 2016. The Complainant is the holder of the registered business name, City of Parramatta Council, ABN 49 907 174 773. The Complaint also includes evidence that the Complainant has registered a number of trademarks: (a) Australian Trade Mark No. 387468, which has been registered from February 15, 1983 in respect of services in International Class 42 rendered by local council including services to council rate payers; tourist promotional services in this class; (b) Australian Trade Mark No. 1936396 for a figurative presentation of PARRAMATTA LANES, which has been registered since 25 June 2018 in respect of arranging for entertainment, cultural, art, and musical festivals and events; provision of education, training, entertainment, sporting and cultural activities in International Class 41; and (c) Australian Trade Mark No. 1936400 for a fancy representation of RIVERSIDE NATIONAL THEATRE OF PARRAMATTA, which has been registered also since 25 June 2018 in respect of Management of theatres and cinemas; provision of theatre and cinema facilities; organisation and conducting of dance, music and other entertainment activities, shows and festivals; dance hall services; organisation of entertainment competitions and dancing competitions; providing dancing facilities; theatre restaurants; provision of education, training, entertainment, sporting and cultural activities in International Class 41. Australian Trade Mark No. 387468 is for a device in the following form: It was registered with the following endorsement “Registration of this trade mark shall give no right to the exclusive use of the geographical name PARRAMATTA NSW.” The Complaint also includes evidence that the Complainant has three pending trademark applications: (a) Application No. 1936395, PARRAMATTA LANES, which was filed on June 25, 2018 in respect of the same services as Australian Trade Mark No. 1936396; (b) Application Nos 2074682 and 2074684 which are both for stylized versions of PARRAMATTA and were both filed on March 10, 2020 in respect of a range of services in International Classes 35, 39, and 41; and (c) Application No. 2074685, WHERE IT’S PARRAMATTA in a stylized form. This application was also filed on March 10, 2020 and registration is being sought in respect of the International Class 35, 39, and 41 services. In light of some concerns expressed in the Response, it is worth noting that the Complainant’s representatives in this proceeding are also the legal representatives handling the pending trademark applications for the Complainant. According to the Response, the Complainant uses the domain names Although the disputed domain name was first registered in 2004, evidence submitted with the Response shows that the Respondent purchased the licence for the disputed domain name in March 2012. The Respondent is a disability pensioner. Through his enduring power of attorney, medical evidence has been submitted of a recent discharge from hospital and which also indicates prior instances of hospitalization as well as health issues. According to the Response, the Respondent purchased the disputed domain name to develop a website promoting Parramatta. The Response states that the Respondent’s sister, a journalist, prepared some materials for this website. The Response also states that the website was live for a time. No evidence to support this claim has been submitted. Shortly before the Complaint was filed, however, the disputed domain name resolved to a parking page provided by Sedo Domain Parking. The pay-per-click (PPC) links provided at this page included a link to the “Parramatta Eels”, a rugby league club, “Sales”, “restaurant store”, “used cars”, “used car sales” and “Australian”. Captures by the Wayback Machine at Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. Given the earlier emails from the Respondent’s relative, the Center had raised with the parties the possibility of settlement negotiations. Following receipt of the Response, however, the Complainant confirmed it did not consider a settlement was likely. The Complainant pressed therefore for the appointment of the Panel and determination of the dispute. The Response was submitted late. The time involved in the late filing is slightly more than a week. The Response was received before the Panel’s appointment. The late filing has not held up resolution of the dispute in any significant way particularly bearing in mind that the disputed domain name has been held by the Respondent since 2012. The Complainant has not identified any relevant prejudice it would suffer if the Response were taken into account. In these circumstances, the Panel considers it appropriate to admit the Response into the record notwithstanding its late filing. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks identified in section 4 above. In Australian Trade Mark No. 387468, however, the Complainant was required to disclaim exclusive rights over the name “Parramatta” as it is the name of a place. Given that disclaimer, Australian Trade Mark No. 387468 cannot be relied on to provide rights over “Parramatta” alone. The other registered trademarks include significant additional verbal elements which distinguish them from the word “Parramatta” alone. See Brisbane City Council v. Joyce Russ Advertising Pty Limited,WIPO Case No. D2001-0069. The Complainant has also provided evidence of several pending trademark applications identified in section 4 above. It is well established, however, that trademark applications do not qualify as trademark rights under the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.1.4. In addition to the registered trademarks and pending applications, the Complainant also claims it has unregistered rights to the name PARRAMATTA and to: “our client’s conduct clearly supported by the Complainant being the local government authority for the area with the right to use the name PARRAMATTA. There is no other entity or person that has the right to call them or refer to themselves as PARRAMATTA.” Further, the Complainant contends that the Complainant operates under the name PARRAMATTA and: “is authorised and has the sole right, as a result of being the government entity in this area, to use and be known by the word ‘PARRAMATTA’. No other entity has the right to be known by the name ‘PARRAMATTA’ on its own.” Decisions under the Policy have held that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right over the name of that geographical area. See e.g., Brisbane City Council v. Warren Bolton Consulting Pty Ltd.,WIPO Case No. D2001-0047 and Einwohnergemeinde Solothurn, Verein “Region Solothurn Tourismus”, Verein “Kanton Solothurn Tourismus” v. M.A. Stenzel,WIPO Case No. D2019-1164. Those decisions do recognise that it is possible that such a governing body might have rights in the name of the geographic area if it submits evidence demonstrating the term has acquired secondary meaning distinguishing the entity as the trade source of goods or services. Where the term is truly the recognised name of a geographic area, cogent (if not compelling) evidence is required to establish this. As the distinguished panel in Brisbane City Council v. Joyce Russ Advertising Pty Limited,WIPO Case No. D2001-0069 pointed out, this is necessary because there are likely any number of businesses and entities who will need and can quite legitimately wish to use the word – in this case the name of the place, Parramatta – in the normal course of trade without wishing to take improper advantage of the complainant’s rights or reputation. The evidence in this proceeding does not demonstrate that “Parramatta” by itself has acquired a secondary meaning designating the Complainant or its goods and services. There is no evidence that the Complainant has used the term “Parramatta” alone as a trade mark. As already noted, the registered trademarks use the name in combination with other elements. The Panel also observes that the website to which A similar logo appears in the header of the website to which Given this state of the evidence, the present case is distinguishable from those cases where a legal authority (or similar) has demonstrated rights over a geographic term including the Panel’s own prior decision in Town of Secaucus, New Jersey v. Martina Zammit, Oring Ltd.,WIPO Case No. D2020-0509, where the complainant had demonstrated use of the domain name in dispute for over a decade including on letterhead and Council vehicles. Accordingly, the Panel finds that the Complainant has not established secondary meaning through use or other means over the term PARRAMATTA. Disregarding the “.com” generic Top-Level Domain element of the disputed domain name (see WIPO Overview 3.0, section 1.11), therefore, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s registered trademarks. As already noted, Australian Registered Trade Mark No. 387468 disclaims exclusivity over the name PARRAMATTA. Consequently the exception to the approach indicated in WIPO Overview 3.0, section 1.10 operates so that the place name alone cannot be the basis of the comparison. Bearing in mind that PARRAMATTA is the name of a place, the verbal differences of each of the registered trademarks to the word PARRAMATTA alone are sufficient for a finding that the disputed domain name is not confusingly similar to them. See e.g., Brisbane City Council v. Joyce Russ Advertising Pty Limited,WIPO Case No. D2001-0069. Accordingly, the Complainant has failed to establish the first requirement under the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith In view of the Complainant’s failure under the first requirement, the Complaint cannot succeed so it is unnecessary to consider the remaining requirements. The Panel notes, however, that, if the claimed purpose for the Respondent's registration of the disputed domain name were accepted, the Complainant would not succeed in establishing either the second or third requirements in the absence of evidence that the Respondent had targeted the Complainant or its trade mark or any use or was merely colourable. 6. Decision For the foregoing reasons, the Complaint is denied. Warwick A. Rothnie
Sole Panelist
Date: May 12, 2021
Full & Egal Universal Law Academy