The Complainant is Cairns Airport Pty Ltd of Cairns, Queensland, Australia, represented by McCullough Robertson Lawyers, Australia.
The Respondents are Chris Ford (Christopher William Ford) (the “First Respondent”) and the C and C Family Discretionary Trust (the “Second Respondent”) of Cairns North, Queensland, Australia. 2. The Domain Names and Registrar
The disputed domain names (the “First Domain Name”) and (the “Second Domain Name”) are registered with NetRegistryPty Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2013 against the First Respondent. On August 15, 2013, the Center transmitted by email to NetRegistry Pty Limited a request for registrar verification in connection with the disputed domain names. On August 20, 2013, NetRegistry Pty Limited transmitted by email to the Center its verification responses confirming that the First Respondent is listed as the registrant of the disputed domain names and providing the contact details1.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for a Response was September 9, 2013. The Response was filed with the Center on September 9, 2013. Supplemental filings were received by the Center by email from the Complainant on September 16, 2013 and September 17, 2013. Supplemental filings were received from the Respondents by the Center by email on September 17, 2013 and September 19, 2013.
The Center appointed Desmond J. Ryan AM, William P. Knight and The Hon Neil Brown Q.C. as panelists in this matter on October 11, 2013. The Panel finds that it was properly constituted. Each member of 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 factual matrix forms a large part of the dispute in this instance, and so many of the facts are either contested or not explicitly agreed upon. However, within the Complaint and Response it is undisputed that:
- The Complainant and its predecessors in title have operated an airport (or “aerodrome” as it was once known) at the same location serving the city of Cairns in North Queensland since 1928.
- The First Respondent commenced a business providing “off-airport” parking facilities and related services early in 2008, at a location not far distant from the location of the Complainant’s airport.
- On April 28, 2008, the Respondent registered the Business Name ‘Cairns Airport Parking’.
- The First Respondent registered the First Domain Name on April 30 2008 and the Second Respondent registered the Second Domain Name on May 19 2010 (together “the Domain Names”). The First Respondent has used the First Domain Name to promote his Cairns Airport Parking business since April 30, 2008 or thereabouts, but the Second Disputed Domain Name has not been used in connection with an active website.
- On September 11, 2009, the Complainant lodged an application for registration under the Trade Marks Act 1995 (Cth) of the trade mark CAIRNS AIRPORT including in class 39, which extends to car parking services and the provision of car parking facilities. This application was eventually accepted and was entered in the Register of Trade Marks in October, 2011 with number 1320216. The Complainant also is the owner of later filed trademarks including the words CAIRNS AIRPORT with graphics.
- On September 22 2009, the Complainant sent to the First Respondent a letter asserting that the Complainant alone was entitled to use the name “Cairns Airport Parking” and that the First Respondent’s Business Name was misleading or deceptive in breach of the Trade Practices Act 1974(Cth) and proposed that the First Respondent change the name of his business to ‘Cairns Off-Airport Parking’.
- After a long period of inactivity with respect to legal issues, some time after its trade mark no. 1320216 was entered on the Register of Trade Marks, the Complainant in a meeting again sought to have the First Respondent agree to change the name of his business. Later, on April 26, 2012, the Complainant’s solicitors sent a letter to the First Respondent to demand that he cease using the “Cairns Airport Parking” name, and referring specifically to the First Respondent’s use of the First Domain Name, a demand relying on the alleged infringement of the Complainant’s registered trademarks and alleging a breach of consumer law.
- On September 5, 2012, the First Respondent sent a letter to the Complainant informing it that, in order to avoid the costs of a legal dispute, he had changed the name of his business to “Betta Airport Parking – Cairns”, had registered the domain name and redirected the First Domain Name to that site.
- Following further discussions and correspondence in October 2012, the First Respondent removed the redirection of the First Domain Name but the redirection was subsequently restored.
- On November 14, 2012 the First Respondent sent a letter to the Complainant requesting it to withdraw its threats of legal action against the First Respondent.
- On April 18, 2013 the Complainant sent a letter to the First Respondent demanding that he abandon use of the First Domain Name and undertake not to use it in future.
- The First Respondent presently uses the First Domain Name so as to invite Internet users to proceed to his new website under the “Betta Airport Parking” name or to go to the Complainant’s website, with a very prominent disclaimer making clear that the First Respondent’s business has no connection of any kind to the Complainant.
- The Second Domain Name is not in use. 5. Parties’ Contentions A. Complainant
The Complainant asserts that, as a consequence of a long period of use by it and its predecessors in title and an established reputation in the name “Cairns Airport”, as well as its registered trademarks, the Domain Names be identical or confusingly similar to a trade or service mark in which the Complainant has rights.
The Complainant asserts that the First Domain Name is identical to the Complainant’s own name and its registered trade mark number 1320216, for example, but for the word “parking”, which is merely descriptive, and the suffix “.”, which is routinely disregarded in these cases.
The Complainant argues that the Second Domain Name is confusingly similar to its registered mark and to its company name, asserting that the mere changing of the order of words does not take away from the obvious sense conveyed by their meaning.
As to the requirement under para 4(a)(ii) of the Policy that the Respondents have no rights or legitimate interests in respect of the Domain Names, the Complainant notes that the First Respondent ceased operating as ‘Cairns Airport Parking’ in June 2012 and argues that, as a consequence, he has no remaining rights or legitimate interests in either of the Domain Names. The Complainant also states that its CAIRNS AIRPORT’ trademarks and the fact that the Complainant has not authorised either of the Respondents to use the Complainant’s registered trademarks effectively removes any ground for the Respondents to argue that they have or either of them has any rights or legitimate interests in the Domain Names.
The Complainant further argues in respect of the First Domain Name that, since the First Respondent’s business is not located on the Complainant’s premises but nearby, the First Domain Name misleads or deceives consumers that the First Respondent’s business is on the Complainant’s premises or is in some way connected with or approved by the Complainant.
As for the Second Domain Name, the Complainant notes that the Second Domain Name is not in use and concludes from this that its registration by the Second Respondent must only have been for the purpose of blocking the Complainant’s registration of the same domain name in its own name or otherwise embarrassing the Complainant in its business.
As to the requirement under para 4(a)(iii) of the Policy that the Domain Name has been registered or is being used in bad faith, the Complainant submits that the Respondents' registrations were in bad faith but adduces no evidence to support this claim. The Complainant asserts that the First Respondent is using the First Domain Name in bad faith, evidenced by the purportedly inflated price the First Respondent requested for sale of the Domain Name. The Complainant argues that the First Respondent has numerous, other, more appropriate domain names more suited to its newly adopted business name. The Complainant contends that the First Respondent’s use of the Second Domain Name is for commercial gain with the view to mislead and divert customers to the First Respondent’s business. The Complainant also asserts that the First Respondent is acting in bad faith in respect of the First Domain Name as it remains parked and the Complainant is thereby blocked from registering it. B. Respondents
The First Respondent disputes that grounds exist under the Policy to mandate the transfer of the Domain Names. In particular, the Respondent disputes the Complainant’s claim to a long standing and continuing use of the name and trade mark CAIRNS AIRPORT. The First Respondent has provided evidence which shows that:
1. Prior to 1984 the airport at Cairns was known variously as “Cairns Aerodrome” or “Cairns Airfield”.
2. The Complainant’s predecessor in title operated under the name “Cairns International Airport” from approximately 1984 through to 2009, not “Cairns Airport”.
3. There was no use of the name “Cairns Airport” by the Complainant or its predecessors in title before 2009.
4. The Complainant registered the name “Cairns Airport Pty Limited” in September 2008 but did not complete the purchase of the airport and its operations until January 15, 2009.
In response to the Complainant’s allegations that the First Respondent has no legitimate interest in the Domain Names, the First Respondent shows that he had commenced an active business trading under the registered business name “Cairns Airport Parking” and the First Domain Name before the Complainant commenced use of the name CAIRNS AIRPORT and lodged its first application for registration of that name as a trade mark (of which application he was unaware and hence he did not oppose it).
The First Respondent states that there is no likelihood of confusion between the Domain Names and the Complainant’s marks, principally due to prominent disclaimers to prevent such confusion placed on the First Respondent’s website under the First Domain Name. The First Respondent also argues that any likelihood of confusion is further nullified by the generic nature of the term “Airport Parking”, the geographic nature of the place name “Cairns” and the abundance of similar “off-airport parking” businesses countrywide with the consequence that consumers can readily distinguish his business from that of the Complainant.
The First Respondent justifies his registration of the Second Domain Name in the name of the Second Respondent as a variation of the arrangement of words in his Business Name, with a view to strengthening his business’s online marketing presence, which he has since abandoned. The First Respondent claims that the Complainant has, in fact, registered domain names in order to attack the First Respondent’s business in a misleading and deceptive manner, as part of a pattern of conduct on the part of the Complainant. The First Respondent asserts that the Complainant has engaged in a campaign of continual harassment and has sought to undermine the First Respondent’s business, as well as threatening him with legal proceedings that he does not have the resources to defend against so strong an opponent.
In response to the Complainant’s allegations that the Respondent’s Domain Names were registered and are being used in bad faith, the First Respondent denies any bad faith. The First Respondent claims he properly registered and used the First Domain Name, along with his Business Name, since 2008, prior to the Complainant taking on the name CAIRNS AIRPORT. The First Respondent denies that an amount of money requested for the transfer of the Domain Names was inflated or in bad faith, citing the legal expenses incurred by participating in the ongoing dispute with the Complainant as the reason, rather than commercial gain. The First Respondent also asserts that the continued use of the First Domain Name despite his change of Business Name is necessary in order to connect with previous customers not aware of the change. The First Respondent asserts that the term “Airport Parking” is a generic term and “Cairns” is a place name. He points to several businesses in the vicinity of Cairns Airport which use the words “Cairns Airport” in their name including “Cairns Airport Shuttle” and “Cairns Airport Rentacar”, and also to similar domain names for airport parking providers in other cities, including and .
The First Respondent asserts that the claim is vexatious and brought in bad faith and seeks a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings A. Procedural Matters
1. Involvement of the Second Respondent and the Second Domain Name
The Panel notes that the Second Respondent, a separate legal entity under Australian law, which is the registrant of the Second Domain Name, has never been formally joined in these proceedings. However, no objection to this has been taken by either of the Respondents and it is clear to the Panel that the Respondents are closely connected and share all the same contact details. Accordingly, the Panel accepts that both Respondents have effectively been joined in the proceedings for the purpose of disposing of the issues between the parties.
2. Supplementary Filings
The purpose of the Policy is to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes. Only if a respondent raises entirely new facts or in otherwise exceptional circumstances should a supplemental filing be accepted filed by a complainant – similarly, in turn, if the complainant then raises something entirely new might a further supplemental filing from the respondent be allowed, but this should be seen as exceptional and rare circumstances. This is in order to discourage protracted exchanges of argument; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.2.
The Panel has reviewed the Supplemental Filings of both parties in order to determine their admissibility or otherwise. The factual matters in dispute that underlie these proceedings are significant. The First Respondent raised very significant matters in his response that the Complainant had chosen not to disclose in the Complaint, as well as assertions regarding the Complainant’s behavior that, if true, would not be to its credit. Accordingly in order to shed as much light upon the issues, the Complainant’s Supplemental Filing has been admitted by the Panel.
The Supplemental Filing of the Complainant consists only of a “chain of title” document which does nothing to contradict the First Respondent's assertion and evidence that the name “Cairns Airport” was not adopted until 2009 and was not in use at a much earlier date by the predecessors in title of the Complainant. This, not surprisingly, drew a very strong supplemental filing, accompanied by further evidence, from the First Respondent. In fairness, this has also been admitted by the Panel. B. Identical or Confusingly Similar
In accordance with paragraph 4(a)(i) of the Policy, the Complainant is required to show that the Domain Names are identical or confusingly similar to its trade mark.
In respect of the First Domain Name, the Panel finds that the First Domain Name is confusingly similar to the Complainant’s registered trademarks. The addition of the word “parking” does little to differentiate the First Domain Name as it merely a generic word describing a particular service, a service that the Complainant also provides. The Complainant’s trade mark comes first in the string, and is dominant, within the First Domain Name, to the extent that viewed objectively the First Domain Name may be regarded as confusingly similar to the Complainant’s mark. It does not necessarily follow from that that a court would find infringement by the First Respondent's use of the First Domain Name (see for example, Lift Shop Pty Ltd v. Easy Living Home Elevators Pty Ltd, [2013] FCA 900), nevertheless, for the purpose of paragraph 4(a)(i) of the Policy, all that is necessary is a finding of confusing similarity. The Panel further notes that it does not matter for the purpose of paragraph 4(a)(i) that the name and trade mark was not registered until after the registration of the First Domain Name.
In respect of the Second Domain Name, the Panel finds that the requisite confusing similarity does not exist. The arrangement of words in the Second Domain Name first evokes the idea of airport parking rather than CAIRNS AIRPORT and is sufficiently different and so generic and descriptive that a reasonable Internet user would be unlikely to associate the Second Domain Name with the Complainant’s mark. It conveys nothing more than the notion of parking being available in Cairns that can be used if one is going to the local airport. In the circumstances, the Complainant has not satisfied its burden to show that the Second Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. In failing to establish this criterion, the Complainant’s claim in respect of the Second Domain Name fails. C. Rights or Legitimate Interests
In respect of the First Domain Name, the Panel finds that the First Respondent has established a real right and a legitimate interest in the First Domain Name. The evidence before the Panel shows that the First Respondent was using the trade mark ‘Cairns Airport Parking’ before either the Complainant’s name or trade mark was registered. This use appears to the Panel to have been bona fide, and would likely provide a defence of prior use under section 124 of the Trade Marks Act 1995 (Cth). This prior use of the First Domain Name before notice of the dispute fits comfortably within the parameters of para 4(c)(i) of the Policy which provides an example of rights or legitimate interests in a disputed domain name as follows:
“(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring).”
The First Respondent was given notice of the subject matter of the dispute by means of a letter of demand dated September 22, 2009 from the Complainant’s solicitors to the First Respondent. Prior to that date, the First Respondent had registered the First Domain Name and had used it to solicit business for his airport parking business and there is nothing to suggest that the use of the First Domain Name in that business was anything other than bona fide. This prior use of the Domain Name before notice of the dispute clearly comes within the provisions of paragraph 4(c)(i) of the Policy.
The Complainant has not therefore satisfied its burden to show that the First Respondent had no rights or legitimate interests in the First Domain Name. In failing to establish this criterion, the Complainant’s claim in respect of the First Domain Name should also fail. D. Registered or Subsequently Used in Bad Faith
In light of the Panel’s findings under the criteria above, it is unnecessary for the Panel to consider this third requirement under the Policy. However, for the sake of completeness, the Panel finds that there was no bad faith on the part of the Respondent in his registration or use of the First Domain Name.
The First Respondent registered and used the First Domain Name with a business concept of offering parking close to what was then known as “Cairns International Airport”.
At the time, April 30, 2008, the Complainant did not have the trademark for CAIRNS AIRPORT which was not registered until October 2011, three and a half years later and the Complainant had not even applied for its trademark, which it did not do until September 11, 2009. Many decisions under both the Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP) have held that in such circumstances the registration of the domain name would not have been in bad faith “because the registrant could not have contemplated the Complainant's then non-existent right”: see paragraph 3.1 of WIPO Overview 2.0.
The Panel considers that, in registering the First Domain Name before the Complainant had established any trade mark rights in the words CAIRNS AIRPORT, there was nothing which could be shown to be bad faith or “to be in disaccord with honest practices in industrial and commercial matters”, to use the words of the learned panel in City of Hamina v. Paragon International Projects Ltd.WIPO Case No. D2001-0001.
Similarly, the Panel dismisses the Complainant’s contentions about false or misleading information being provided on the website of the First Respondent. Adopting again the words of the same panel in the City of Hamina decision:
“There is no evidence that such information has been introduced under the domain name with an evil intent or else outside the course of, perhaps not infallible, ordinary business services. There is no evidence of an intent to create confusion as mentioned in paragraph 4.b(iv) of the Uniform Policy, nor of any other element of bad faith. Any confusion that may appear as a result of the semi-identity between trademark and domain name must be accepted under the law, because of the character of the mark and the character of the opposite legitimate interest in the domain name. The risk of confusion may have been foreseen by the Respondent, introducing on its website the disclaimer ….”
In this case, the Respondent has in an effort to resolve the dispute changed his business name and inserted a most prominent disclaimer on the webpage to which the First Domain Name directs. Awareness of a possibility of confusion cannot under the circumstances be held against the First Respondent. The disclaimer rather attests to the finding of the Panel that no bad faith is involved and the creditable, responsible and prudent behavior of the First Respondent. The scope of Complainant’s rights in a highly descriptive name and mark are limited. As noted by Stephen J. in Hornsby Building Information Centre v. Sydney Building Information Centre, 140 CLR 216:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public”. 7. Reverse Domain Name Hijacking
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”. Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
According to the WIPO Overview 2.0, “to establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances” and “WIPO panels have on occasion entered such findings on their own initiative, especially where the complainant has intentionally attempted to mislead the panel by omitting material evidence.”
The Panel finds that the First Respondent’s contentions as to a course of conduct on the part of the Complainant to harass him and undermine his business, exploiting its superior financial power, to be credible in light of the evidence tendered by the First Respondent and not contradicted by the Complainant. In the opinion of the Panel, these proceedings form a part of that conduct in that it is clear that Complainant has been parsimonious with the facts behind the dispute, which were amply evidenced by the First Respondent, in particular when it commenced use of the name “Cairns Airport”. When faced with the First Respondent’s evidence the Complainant did not resile but sought leave to file a supplement to the Complaint which did nothing to rebut the First Respondent's evidence and, indeed tended to repeat the partial and prejudicial statements already made.
Whilst a finding of Reverse Domain Name hijacking will rarely be found in the case of a genuine dispute, in the circumstances of this case the Panel finds that the Complainant, was well aware of the prior use by the First Respondent of the business name “Cairns Airport Parking” and the effect of that on the Respondents’ rights. In bringing this Complaint in the light of that knowledge and offering an incomplete account of the history of the name, the Complainant has engaged in Reverse Domain Name Hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied in respect of both First Domain Name and the Second Domain Name.
In addition, the Panel finds, as per paragraph 15(e) of the Policy that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The bringing of these proceedings seems to form a part of a pattern of harassment by the Complainant of the Respondents. Furthermore, the Complainant has been less than forthcoming in these proceedings, particularly in respect of its history and when it became known as “Cairns Airport”.
Desmond J. Ryan AM
Presiding Panelist
The Hon Neil Brown Q.C.
Panelist
William P. Knight
Panelist
Date: October 24, 2013
1 The Panel notes, however, that the publicly available WhoIs information for the disputed domain names listed the First Respondent as the registrant of the First Domain Name and the Second Respondent as the registrant of the Second Domain Name. It further notes that the First Respondent appeared as the registrant and tech(nical) contact names for the First Domain Name.
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