WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION John Kolenda v. 1300 Phonewords Pty Ltd Case No. DAU2009-0001 1. The Parties
The Complainant is John Kolenda of New South Wales, Australia, represented by Merthyr Law, Australia.
The Respondent is 1300 Phonewords Pty Ltd, Victoria, Australia, represented by WMB Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with TPP Domains Pty Ltd. dba TPP Internet. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2009. On March 17, 2009, the Center transmitted by email to TPP Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 18, 2009, TPP Domains Pty Ltd transmitted by two emails to the Center its verification response confirming that:
(i) it is the registrar for the disputed domain name;
(ii) the Respondent is listed as the current registrant and providing the contact details;
(iii) the .au Dispute Resolution Policy (“.au Policy”) applies to the disputed domain name; and
(iv) English is the specific language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of the Rules for the .au Policy (“Rules” or “auDRP Rules”).
In accordance with the auDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Response was filed with the Center on April 14, 2009.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 22, 2009. 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.
After reviewing the submissions, the Panel issued Procedural Order No. 1 on May 1, 2009 which is summarized below:
The Response states that the disputed domain name has resolved since September 2007 to a website operated by Fundz Pty Ltd which is part of a group of companies related to the Respondent. The Response does not identify the basis on which:
(1) the Respondent registered the domain name under paragraph 2 of Schedule C; or
(2) the Respondent continues to meet the eligibility requirements under Schedule C in accordance with paragraph 5 of Schedule A of the Domain Name Eligibility Rules.
Accordingly, pursuant to paragraph 12 of the Rules for .au Dispute Resolution Policy, the Panel invited the Respondent to submit further information or evidence, if any, relating to these two issues only. Provision was made for a Reply by the Complainant if the Respondent did submit any further information and the projected decision date was extended accordingly.
The Respondent provided a further Response with Annexes A to G on May 6, 2009 (further Response). The Complainant submitted written comments on May 8, 2009. The Respondent submitted a further, unsolicited document on May 12, 2009, seeking to correct some errors in the further Response. 4. Factual Background
The Respondent had a license from 1300 Australia Pty Ltd to use an EROU Number1 corresponding to the phoneword “1300homeloan” for the period from 6 May 2005 until on or about May 21, 2007.
According to the Australian Communications and Media Authority (“ACMA”), the regulatory body responsible for the telephone numbering system in Australia:
smartnumbers® are freephone (1800 numbers) and local rate (13 or 1300 numbers) telephone numbers that are allocated through an on-line auction system by the Australian Communications and Media Authority (ACMA) on behalf of the Government. A smartnumber®, or phone word, can be a valuable marketing tool if it is a highly patterned number, for example, 1800 222 222, or if it can be translated into a memorable phoneword, for example, 13 2287 (13 CATS). A caller dials a phoneword by pressing the letters on a telephone keypad. Phonewords are easier for callers to remember, particularly if they can be linked to an organization's name or function e g. 13 RSPCA.
The relationship (if any) between ACMA and 1300 Australia Pty Ltd, the entity which both the Complainant and Respondent have dealt with, is not disclosed by the evidence of record in the current proceedings.
The Respondent registered the disputed domain name on November 16, 2005.
The disputed domain name resolves to a website for BPD Homeloans, a business name of Fundz Pty Ltd which is said by the Respondent to be associated with it. The Respondent claims that the disputed domain name has resolved to BPD Homeloans' website since September 27, 2007.
The provided evidence does not disclose what use, if any, was made of the disputed domain name before that date. Both parties refer to some discussions taking place between them in 2006 about possible co-operation between them. The evidence does not elaborate on the discussions or their basis.
At some point after May 21, 2007, although the Complaint does not identify precisely when, the Complainant purchased from 1300 Australia Pty Ltd the phoneword “1300homeloan”. It will be necessary to discuss what that purchase entailed (including rights acquired thereby) further below. The Complainant paid AUD 1.2 million at auction for this purchase.
The Complainant purchased the phoneword with the intention of starting a business under the name “1300homeloan”.
The Complainant now brings this Complaint against the Respondent's registration of the disputed domain name. 5. Discussion and Findings
Under paragraph 4(a) of the .au Policy, the Complainant has the onus of proving that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.
These requirements are similar to those applicable under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). As discussed below, however, there are some important distinctions. The first distinction relates to paragraph 4(a)(i) in that a Complaint under the .au Policy may be founded on rights in a name, not just a trademark. The second principal distinction is that the bad faith requirement under paragraph 4(a)(iii) of the .au Policy is disjunctive rather than conjunctive. That is to say, it would be sufficient for a Complainant under the .au Policy to prove either registration or use in bad faith; but it would not be necessary to prove both.
The Panel discusses each element in turn.
Before doing so, however, the Panel notes that the further Response dated May 6, 2009 and the Complainant's Reply dated May 8, 2009, both of which were submitted pursuant to and within the time stipulated in Procedural Order No. 1 formally form part of the record in this proceeding. To the extent that the unsolicited document of May 12, 2009 filed and served by the Respondent seeks to clarify some apparently inadvertent inaccuracies in the further Response, the Panel will admit that document into the record as well. A. Identical or Confusingly Similar
There are two elements to this requirement under the .au Policy. First, the Complainant must show that he has rights in a “name, trademark or servicemark”. As the .au Policy does not apply to rights in a phoneword as such, a question arises in the present case as to whether the Complainant has established that the phoneword relied upon is in the nature of a “name, trademark or servicemark”. Secondly, the Complainant must show that the disputed domain name is identical or confusingly similar to the rights established.
It is important to note in the present context that this is a different inquiry to that prescribed by trademark law. It requires only the comparison of any relevant rights proved by the Complainant to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the .au Policy, but may arise under the other paragraphs. See e.g., Facebook, Inc. v. Callverse Pty Ltd,WIPO Case No. DAU2008-0007.
The Complainant relies on his payment of AUD 1.2million to purchase the phoneword, “1300homeloan”, at auction as the foundation of his claimed rights.
The Complaint does not claim that a business is currently operating under or by reference to “1300homeloan”. Rather, the Complaint states, for example, that:
The Complainant wishes to establish his business services under the name of 1300homeloan and promote them through the use of the phone word 1300homeloan.
It is therefore unlikely that the Complainant would have common law rights in “1300homeloan” in the nature of an unregistered trademark as such rights arise through the reputation developed by public use of the propounded indicium. See for example Hansen Beverage Co. v. Bickfords (Australia) Pty Ltd (2008) 75 IPR 505 at [245-258], the reasoning and findings of which do not appear to have been affected by the Full Court's subsequent allowance of Hansen Beverage Company's appeal reported at (2008) 171 FCR 579. The case on which the Complainant relies, The Architects (Australia) Pty Ltd t/a Architects v. Witty Consultants Pty Ltd, [2002] QSC 139, is distinguishable as Chesterman J found that plaintiff, while it had not advertised extensively, had acquired a substantial market reputation through more than 20 years' trading.
That is not the end of the matter, however, as the .au Policy permits a complainant to rely on rights in a name.
The footnote to paragraph 4(a)(i) relevantly states:
For the purposes of this policy, auDA has determined that a “name in which the complainant has rights” refers to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant's personal name
The question of the application of the .au Policy to rights claimed in phonewords arose in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd ,WIPO Case No. DAU2008-0021, but at that time it was not necessary for the learned panelist to deal with the substantive questions.
In the present case, the term “1300homeloan” is not the Complainant's personal name nor, so far as the available evidence goes, any company or business name registered by him. If “1300homeloan” is to be found to confer rights on the Complainant for the purpose of the present proceedings, therefore, it must be as an “other legal or trading name”. This is a potentially wide category. No doubt it covers other types of names recognized by Australian law such as (but not limited to) the names of incorporated associations. It does not appear to require, however, that the name has been publicly used to develop reputation or goodwill as the inclusion of “name” within the criteria under paragraph 4(a)(i) of the Policy was adopted deliberately to broaden the scope of protection compared to that available under the UDRP. In these circumstances, the Panel is prepared to find that the purchase of the phoneword “1300homeloan” at auction by the Complainant, having regard also to his stated plans for use of same in connection with business services, qualifies as a “name” (specifically as an “other legal or trading name”) for the purpose of the present proceedings under the .au Policy. To the extent that registration or licensing with a relevant government authority may be required, that appears to be supplied in this case by the role of ACMA under whose auspices the phoneword is directly or indirectly licensed for use.
The second requirement is that the disputed domain name be identical or confusingly similar to the relevant rights proved by the Complainant.
That requirement is satisfied here as the disputed domain name is identical to the Complainant's name, but with the second level domain (2LD), “.”, added. The addition of the 2LD, however, may be disregarded for this purpose as it is a functional requirement of the domain name system. See for example Nemetschek North America, Inc., OzCAD Pty Limited v. CAD Australia Pty Limited,WIPO Case No. DAU2008-0014. B. Rights or Legitimate Interests
Having satisfied the first requirement of the .au Policy, the Complainant must next demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. It is now well established that, in view of the difficulties of proving the negative, the Complainant must show at least a prima facie case that the Respondent does not have rights or legitimate interests in the domain name and, if so, it will fall to the Respondent to rebut this showing.
The Complainant correctly points out that the registration of the disputed domain name does not of itself confer a right or legitimate interest therein. Whether or not that is the case falls to be determined by consideration of the relevant criteria and the available evidence of record.
The Complainant contends that the Respondent no longer holds any rights in the phoneword, or its use as a business name, and consequently its use by the Respondent is misleading and may divert customers from the Complainant's services. It is implicit in the Complaint that the Complainant has not authorized the Respondent to use the disputed domain name.
The Respondent does not contest the latter point. It contends it does not need a licence.
As noted above, the Respondent itself purchased the rights to use the EROU Number corresponding to the phoneword “1300homeloan” on May 6, 2005. It also registered the disputed domain name while it held that license. If matters had stood there, the Respondent would have demonstrated rights or a legitimate interest in the disputed domain name.
However, the Respondent voluntarily terminated the license of the EROU Number on May 27, 2007. Subsequently, on September 27, 2007, it permitted Fundz Pty Ltd (Fundz) to use the disputed domain name to resolve to the website which Fundz operates its business BPD Homeloans. The disputed domain name resolves to that website as at the date of preparing this decision.
The domain name eligibility requirements for the “.” 2LD were substantially established in 2002. In establishing those policies auDA was concerned to ensure data integrity and expressed concern to avoid the problems seen in other “open slather” top level domains.2
For these purposes, the domain name license period is fixed at 2 years. The registrant must continue to meet the eligibility rules when the domain name license falls for renewal and also at all times during the period of registration.
For present purposes, the relevant eligibility criteria are:
Domain names in the ‘' 2LD must be:
(a) an exact match, abbreviation or acronym of the registrant's name or trademark; or
(b) otherwise closely and substantially connected to the registrant.
Having relinquished the EROU number, the Respondent relies on a number of bases to satisfy this obligation.
First, in its further Reply, it points out that one of its directors (and the holder of 6 of the 12 issued shares in the Respondent) is the sole director and shareholder in 1300 Homeloan Pty Ltd. However, that company changed its name from 1300 Homeloan Pty Ltd to Acume Pty Ltd on June 4, 2007. It is now known as 13 Real Estate Pty Ltd. It has not been known as 1300 Homeloan Pty Ltd since its name was changed to Acume Pty Ltd. This basis may therefore be disregarded.
Secondly, the second director of the Respondent is the sole director and shareholder of the company “www.1300Homeloan.” Pty Ltd. This company was known as White Tiger Investments Pty Ltd from July 1998 to April 6, 2009. That is, it changed its name to a name which includes the disputed domain name well after the present dispute was on foot. It cannot therefore found a basis for legitimacy under paragraphs 4(c)(i) or (ii) of the .au Policy.
Thirdly, yet another company related to the Respondent applied to register the trademark “www.” on March 11, 2009. A trademark application can provide a basis for eligibility. The application in this case was filed immediately before the Complaint was filed and served. However, it was filed some three months after the Respondent was in receipt of a letter of demand from the Complainant contesting the registration of the disputed domain name. As with the change of name of “www.1300Homeloan.” Pty Ltd, therefore, this basis for qualification can be disregarded.
Fourthly, the Respondent contends that its business is the licensing of phonewords and consequently the disputed domain name is closely connected to it in this way. The policy documents published by auDA do acknowledge that a “name” permissible under the Name Policy may be the name of a product or service that the registrant provides. Thus, the guidelines state:
10.5 In ‘' and ‘', the categories of close and substantial connection are:
(a) a product that the registrant manufactures or sells; or
(b) a service that the registrant provides; or
(c) an event that the registrant organises or sponsors; or
(d) an activity that the registrant facilitates, teaches or trains; or
(e) a venue that the registrant operates; or
(f) a profession that the registrant's employees practice.
There is some scope for interpretation of these criteria. It would appear, however, that the product or service is one that the registrant themselves provides rather than licenses out to others. Some support for this may be found in the clarification that domain name monetization activities are acceptable under the eligibility criteria where the registrant establishes and operates their own website providing information or products or other services.
The licensing of phonewords would not satisfy this requirement as the product or service being supplied by the Respondent is the disputed domain name or phoneword and not home loans or information about home loans.
Fifthly, the Respondent relies on its own corporate name. That name contains the element “1300” but not, obviously, “homeloan”. The eligibility criteria for “.” 2LD domain names display further ambiguity on this point. On the one hand, the Guidelines envisage that “Jane's Cake Shop” would be eligible to register both and. The direct analogue to these illustrations would permit registration of or The Panel is concerned by the generality of the relationship between 1300homeloan and the Respondent's own name. It is true both the disputed domain name and the Respondent's name contain “1300”. However, acceptance of the sufficiency of that relationship would permit the Respondent to register any name containing or based on “1300”. The addition of “homeloan” to “1300” while a phoneword appears insufficiently related to a phonewords licensing business and more like the rejected example. In these circumstances, the Panel finds that the Respondent's corporate name would not appear to support a finding of eligibility under the Name Policy. Finally, the Respondent relies on the use of the disputed domain name by Fundz pursuant to some sort of license from the Respondent since September 2007. The Name Policy and the .au Policy are not clear on the extent to which, if at all, a registrant may legitimately license the use of a domain name it has registered. The example given in the various policy documents, reports and clarifications appear to relate to use by the registrant itself. That would arguably be consistent with the perception when the policies were being formulated about the problems of “open slather” TLDs. However, it would equally seem to be highly formalistic and most unlikely to provide any serious obstacle. The Panel would not be willing to find in general, therefore, that the licensing of the disputed domain name to a related body corporate would fall outside the eligibility criteria of the Name Policy. This may in some cases be sufficient for a finding that the Respondent does have rights or legitimate interests in the disputed domain name. The difficulty in the present case is that the disputed domain name is admittedly comprised of a phoneword which, in the final analysis is likely to be recognized by members of the public as such and, as the Complainant contends, its use by the Respondent would therefore be misleading. The Complainant does not provide much evidence to support this allegation. However, the Panel is aware that phonewords are increasingly common. Indeed, the Respondent's business appears in large part to be predicated on public recognition of phonewords as it claims to license rights to more than 50 such phonewords. Thus, there is a real likelihood or potential for those members of the public who do appreciate the domain name is a phoneword to assume that the disputed domain name is held by a person who holds the phoneword. The Respondent, however, does not hold the phoneword. To the contrary, it voluntarily relinquished it several months before it purported to license the disputed domain name to Fundz. In these circumstances, the Panel considers it is likely that a section of the public would be misled by the Respondent's use of the disputed domain name. In such cases, as that occurs in trade or commerce, the Respondent's use of the disputed domain name would appear inter alia to contravene section 52 of the Trade Practices Act 1974 (Cth). See for example CSR Ltd v. Resource Capital Australia Pty Ltd, [2003] FCA 279 at [38]. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered or Used in Bad Faith The Respondent held the phoneword when it registered the disputed domain name, so its registration at that time was not in bad faith. Under the .au Policy, however, the Complainant can still succeed if he can show that the disputed domain name is being used in bad faith even though it was not registered in bad faith. The Complainant contends that this requirement is satisfied because the Respondent has relinquished the phoneword and has no current rights in the phoneword/business name, “1300homeloan”. The Respondent points out that it can hardly be found to have an intention to take advantage of the Complainant's reputation or goodwill as the Respondent started using (at least in the sense of licensing) the disputed domain name well before the Complainant has actually started to use the phoneword. Ordinarily, that would be a compelling answer, at least in so far as the registration of the disputed domain name is concerned. In this case, however, the Respondent's contention overlooks the character of the disputed domain name as a phoneword, and the use contemplated for it by the Respondent (or Fundz). Particularly to those members of the public who recognize the disputed domain name as a phoneword, the Respondent's (or Fundz') use has the potential to misrepresent that the services being offered through the disputed domain name are services being offered by the holder of the phoneword. In such circumstances, any such use by the Respondent (or Fundz) of the disputed domain name may be seen to be inconsistent with the phoneword licensing system. Furthermore, even if the Respondent had been able to demonstrate rights of a common law nature in the disputed domain name (e.g. if the domain name had been shown to have acquired secondary meaning as representing Respondent's services), it is by no means clear that such common law rights would have enabled the Respondent to prevail here given the statutory nature of the phoneword licensing system. It is also noteworthy that those responsible for the .au Policy deliberately made it much wider than the UDRP and consciously chose to extend its protection to rights in “names”, not just trademark rights. If (as the Panel has found) the .au Policy recognizes protection for names, which may include phonewords where in the nature of a name, it must follow that the Respondent's use of a phoneword for which it has relinquished the statutory licence, in circumstances where use of the disputed domain name by the Respondent is likely to represent a misleading association to the holder of the phoneword license, is use of the disputed domain name in bad faith. Bearing in mind that the .au Policy extends protection wider than the UDRP, not just to those who have trademark rights but also those with rights in names, therefore, the Panel concludes that the use of the disputed domain name is in bad faith in the broad sense of the .au Policy. 6. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant. Warwick A. Rothnie Dated: May 18, 2009
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