The Complainant is Travel Insurance Direct Pty Limited of Sydney, New South Wales, Australia, represented by Watson Mangioni Lawyers Pty Ltd, Australia.
The Respondent is Paul F Quinn of Moorebank, New South Wales, Australia, represented by Addisons, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 12, 2014. On March 12, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 20, 2014, Web Address Registration Pty Ltd 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 .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 Respondent of the Complaint, and the proceedings commenced on March 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2014. The Response was filed with the Center on April 10, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 2, 2014. 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 a provider of travel insurance products and services in Australia. Amongst other things, it advertises and offers its products for sale from a website at "".
The Complainant includes evidence that it has registered four trade marks in connection with its business. One of these, Australian Trade Mark No. 1142197 is for TRAVEL INSURANCE DIRECT in respect of insurance services in International Class 36. It was registered on October 22, 2006. According to the details from the online register, it was registered pursuant to the provisions of Trade Marks Act 1995 [then] section 41(5).1 That is, it was not sufficiently inherently distinctive to be registered merely on the basis of its characteristics as a sign but was found to be capable of distinguishing when its capacity to distinguish was taken into account with the extent of its use and other circumstances.
The Complainant's other three registered trade marks also include the words "Travel Insurance Direct". However, they also include additional figurative or device elements. In the case of Trade Mark No. 1137984, these elements include a "T" with a disc over it (perhaps suggesting a pictograph of a man), and it is registered in the colours green, light blue and red. Trade Marks Nos. 1466893 and 1466894 most strikingly feature the letters in stylized form "TID".
It would appear that the Respondent was formerly an employee of the Complainant. After he left the Complainant's employ, one of his companies, Go Travel Insurance (Aust) Pty Ltd applied to register Australian Trade Mark Application No. 1474686 on February 15, 2012 for a trade mark consisting of "DTI" over the words "DIRECT TRAVEL INSURANCE", with these two elements being separated by a bar or line. There is also an arc superimposed over the upper element DTI. This application lapsed in September 2013 in circumstances which will be discussed further below.
Go Travel Insurance (Aust) Pty Ltd also registered the business name Direct Travel Insurance on February 15, 2013. The Respondent says he registered the disputed domain name on behalf of Go Travel Insurance once the business name was registered.
On March 31, 2014, the company Direct Travel Insurance Pty Ltd was incorporated. According to the Response, this is a company the Respondent incorporated to carry on business as an affiliate reseller of Cover My Trip Travel Insurance Pty Ltd's products. Cover My Trip Travel Insurance's products are underwritten by AGA Assistance Australia Pty Ltd.
When the Complaint was filed, the disputed domain name apparently resolved to a "parking" page provided by the domain name hosting service. By the time the Response was filed, it redirected to the homepage of Cover My Trip Travel Insurance Pty Ltd at "". 5. Discussion and Findings
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 name, trade mark 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. 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 name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Complainant has proven that it owns the registered trade marks for, or based on, TRAVEL INSURANCE DIRECT referred to in Section 4 above.
The Complainant also contends that its trade marks are very well known in the Australian market and, consequently, it has acquired a widespread reputation in them. It refers the Panel to the Complainant's website for considerable further detail of its significant use of its Trade Marks.
The website does show use of the trade mark TRAVEL INSURANCE DIRECT. There is also at least one reference or claim on the website to having provided protection for over one million people. Even taking this latter claim at face value, the Panel is unable to find the Complainant's claims substantiated on this slender information, see e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.7.2 One would ordinarily expect to have evidence of revenues generated, advertising expenditure, the length of time of user and illustrations of the mark in actual use. Other indicators might include the number of customers or visitors to the Complainant's website and similar matters. The Panel also notes that some courts have expressed reluctance to infer reputation from "mere" evidence of use requiring, in some cases, evidence of trade and/or consumer recognition. None of that information is present here.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's trade marks, see e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Here (putting to one side the second and top level domain elements, "."), the disputed domain name consists of the same three words as the Complainant's registered Trade Mark No. 1142197 and which are a significant component of at least Trade Mark Nos. 1137984 and 1466893.
The Complainant says that this is sufficient: merely swapping the position of "direct" in the verbal formula will not preclude deception or confusion. While the Complainant does not know why Go Travel Australia's application to register "DTI Direct Travel Insurance" as a trade mark lapsed, it points out that it did so after the Complainant had written to the Trade Marks Office to claim that the application should not be registered because it resembled the Complainant's registered trade marks too closely. It infers that the Registrar of Trade Marks agreed with the Complainant's contentions.
The Respondent says that the trade mark application lapsed because correspondence from the Trade Marks Office was misdirected and it did not receive it. He points out further that each of the three words is a plain ordinary word, and the three word combinations themselves are simply descriptive terms. In support of this claim, he has submitted print outs from several other websites of other insurance providers which use one of the three word expressions. He then points out that in such cases, very small differences are sufficient to avoid deception. In support of this proposition, he cites REA Group Ltd v. Real Estate 1 Ltd [2013] FCA 559 at [116] where Bromberg J summarized the effect of the cases:
"When a descriptive name is used to identify a brand or businesses, any misconception on the part of the customers may be the result of the indistinct name adopted by the business rather than any conduct on the part of its competitor. Further, in relation to the use of descriptive names, small differences in the names used by competitors will suffice to avoid misconception by customer".
That statement was made in the context of claims of misleading or deceptive conduct contrary to section 18 of the Australian Consumer Law. The Courts have not been so explicit in relation to infringement of registered trade marks. In this respect, the Panel notes that, while Bromberg J found that "Real Estate 1" was not deceptively similar to "Real Estate", his Honour did find that presentations of the domain name did infringe Real Group's registered trade mark for REALESTATE.COM.AU. On the other hand, the Full Court in Australian Postal Corporation v. Digital Post Australia Pty Ltd [2013] FCAFC 153 recently upheld a ruling that "Digital Post Australia" did not infringe registered trade marks for AUSTRALIA POST.
In the present case, the Respondent points to the fact that the disputed domain name starts with a different word to the Complainant's trade marks as dispelling any likelihood of confusion.
The Panel considers that there is considerable force in the Respondent's submissions. The question under the Policy, as with the Uniform Domain Name Dispute Resolution Policy, however, is not governed strictly by trade mark principles. The requirement of confusing similarity under the first limb is largely intended as a broad filter to ensure that complainants have a real basis to invoke the sanctions under the Policy.3
While the matter is one of impression and recognizing that this case is very finely balanced, the Panel finds that there is sufficient similarity between the disputed domain name and the Complainant's Trade Mark No. 1142197 in particular to qualify as confusing similarity under the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case, see e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
The Complainant states that the Respondent is not affiliated with or authorized by the Complainant. It says he is not known by the disputed domain name nor is it derived from his name. Bearing in mind that, when the Complaint was submitted, the disputed domain name did not resolve to an active website, the Complainant submits that the Respondent cannot claim any actual or contemplated bona fide use of the disputed domain name. It says, having regard to its trade marks, the Respondent cannot lawfully use the disputed domain name without infringing its rights. Further, pointing to the Respondent's former employment with the Complainant in the very senior role as General Manager Operations, the Complainant challenges how any such use could be in good faith.
Taken together, these matters establish the required prima facie case.
In answer, the Respondent says first that he registered the disputed domain name on behalf of his company Go Travel Australia after it had registered the business name, Direct Travel Insurance, and the subsequently incorporated Direct Travel Insurance Pty Ltd. He says this name was chosen for its aptness of description rather than any association with the Complainant.
In this connection, the Panel notes that the business name, the disputed domain name and the company were all registered several years after the Complainant acquired its registered trade marks Nos 1142197 and 1137984. Company names and business names registered after another trader has acquired a conflicting trade mark do not provide defenses to infringement, see e.g., BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 51 ALJR 363; 12 ALR 363 at 369 (Gibbs J, Barwick CJ and Murphy J agreeing).
The Respondent, however, goes further. He says that the disputed domain name has been registered in connection with a plan to sell travel insurance online as an affiliate reseller of products offered by Cover My Trip Travel Insurance Pty Ltd, underwritten by AGA Assistance Australia Pty Ltd. He says that the disputed domain name redirects to Cover My Trip Travel Insurance's website while his businesses' own website is being developed. In addition, he says that, while he has been in negotiations with the underwriter since February 2012, the products it is intended to market (or resell) have only been released on the market by the underwriter on March 14, 2014.
The Respondent has not provided evidence corroborating his claims to have been in negotiations with the underwriter since February 2012. The Panel notes, however, that the business name was registered late in January 2012. So there is some internal consistency in the evidence, and the Panel cannot say that the claims are implausible, let alone inherently implausible.
These matters may not be sufficient in themselves to establish a right or legitimate interest given the existence of the Complainant's trade marks and the clear intent to compete with the Complainant. The Respondent does contend, however, that the name he or his businesses are using does not infringe the Complainant's trade marks. If that were the case, the Respondent would have a claim to having rights or legitimate interests under the Policy.
The Panel considers this issue is very finely balanced having regard to the descriptive terms comprised in both the Complainant's trade marks and the disputed domain name and the differences in word order. This issue is further complicated by the potential for the Respondent, on the arguments he has advanced in this case, to invoke the protections arising under section 122(1) of the Trade Marks Act 1995 which involves an inquiry into matters for which proceedings under the Policy are not well suited. Cf., e.g., Anheuser-Busch Inc v. Budejovicky Budvar [2002] FCA 390; Optical 88 Limited v. Optical 88 Pty Limited (No 2) [2010] FCA 1380. Given the nature of the terms comprising the Complainant's trade marks and the disputed domain name, resolution of the issues those considerations raise would appear to require the procedures of discovery and cross-examination.
This is not a case like Compagnie Generale des Establissements Michelin v. Thomas Panagiotopoulos,WIPO Case No. DAU2013-0011, which the Complainant invokes in support of its contention that the disputed domain name has been registered and used in bad faith. So far as the Panel is aware, "Michelin" does not have direct reference to the nature or character of the goods or services in question.
Similarly. Aastra Telecom Inc. v. Spring Mountain Enterprise Pty Limited,WIPO Case No. DAU2008-0003, is distinguishable. There, the domain name was identical to the complainant's trade mark. Here, the disputed domain name is not identical to the Complainant's trade mark and, moreover, consists of purely descriptive terms apt to describe the services in question.
While the Panel has found sufficient similarity between the disputed domain name and the Complainant's trade marks for the purposes of the first limb of the Policy, the Panel considers that the Respondent has presented a sufficiently plausible case that his conduct would not infringe the Complainant's trade mark to answer in the context of proceedings under the Policy the Complainant's prima facie case. Accordingly, the Complainant has failed on the limited record in this case to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has failed to make out the second requirement under the Policy. C. Registered or Subsequently Used in Bad Faith
No purpose would be served by addressing the third limb under the Policy as the Complaint cannot succeed in view of the conclusion under the second limb. 6. Decision
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: May 18, 2014
1 Section 41 of the Trade Marks Act 1995 was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The corresponding provision is now s 41(4).
2 The Panel finds WIPO Overview 2.0 instructive as the Policy is largely based on the UDRP.
3See David Lindsay, International Domain Name Law: ICANN and the UDRP (Hart Publishing, Oxford, 2007), 274 – 275.
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