The Complainant is Australian Postal Corporation of Melbourne, Victoria, Australia, represented by Ashurst, Australia.
The Respondent is Jason Soares of Maroubra, New South Wales, Australia, represented by K&L Gates. 2. The Domain Name and Registrar
The disputed domain name is registered with NetRegistry Pty Ltd (“Domain Name”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2015. On February 5, 2015, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On February 9, 2015, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 12, 2015.
The Center verified that the Complaint together with the amended 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 February 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Response was filed with the Center on March 9, 2015.
The Center appointed William P. Knight as the sole panelist in this matter on March 23, 2015. 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.
A supplemental filing was received by the Center by email from the Complainant on March 27, 2015 (“Supplemental Filing”). 4. Factual Background
The following facts are undisputed:
1. The Complainant is a statutory corporation providing postal and courier services in Australia under the name Australia Post. It has certain statutory exclusivity with respect of postal services but that exclusivity does not, of course, extend to peripheral services such as the provision of mailboxes and courier services. The Complainant owns a family of Australian trade mark registrations containing the word POST combined with other words and devices. The Complainant has used the word “post” in relation to its postal and courier services.
2. The Domain Name was created on May 17, 2010.
3. On October 26, 2012 the Complainant launched a service that it called “Australia Post Digital Mailbox”, a service that the Complainant describes as “a digital mail solution and personal online management tool involving the secure delivery of communications traditionally delivered by physical mail.”
4. Until at least May 21, 2013, the Respondent had made no use of the Domain Name. By March 24, 2014, the Respondent had in operation under the Domain Name a substantial, apparently multi-layered website offering courier services. There is nothing in the evidence to indicate when development of that website commenced.
5. The Complainant lodged an application to register the mark MY POST on February 17, 2014. This application is opposed by the Respondent.
6. The Complainant rebranded its digital mail solution and other offerings “Mypost” on March 24, 2014 but did not commence major marketing activities in respect of the rebranded service until May, 2014.
7. The Complainant lodged an application to register the mark MYPOST DIGITAL MAILBOX on July 24, 2014. This application is also opposed by the Respondent.
8. By email correspondence in January and February 2014, the Complainant indirectly approached the Respondent for the transfer of the Domain Name registration. The Respondent initially refused to negotiate, however by February 2014 the parties had agreed to the domain name registration transfer for the sum of AUD 125,000. In March 2014, the Respondent changed his mind and requested an increased sum of AUD 175,000. The Complainant has since withdrawn from the negotiation.5. Parties’ Contentions A. Complainant
The Complainant contends that it has trade mark rights in the word POST arising from its numerous Australian trade mark registrations and the history and extent of its use of the word POST in relation to its postal and courier services.
The Complainant also contends that it has trade mark rights in the words MYPOST or MY POST. The principal evidence in support of this claim consists of its MY POST and MYPOST DIGITAL MAILBOX trade mark applications and its published rebranding of its Digital Mailbox service on March 24, 2014, and others of its services the following May, along with its internal preparations for that rebranding from January 2014.
The Complainant states that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services (relying on paragraph 4(c)(i) of the Policy) and is not commonly known by the words comprising the Domain Name (relying on paragraph 4(c)(ii) of the Policy). This proposition is based on the fact that the Respondent made no use of the Domain Name for a period of almost four years, up to some date after May 21, 2013 (the last snapshot of the Respondent’s web page under the Domain Name from the Wayback Machine () produced by the Complainant that shows the Domain Name as “parked”. From this, and from the fact that the Respondent has registered many domain names that comprise the well-known brand names of other companies, the Complainant concludes that the Respondent’s website is just a ruse, created in light of the Complainant’s obvious interest in the Domain Name, in order to push up the price he could demand. This conduct would not be sufficient for the Respondent to claim a legitimate interest in the Domain Name.
The same conduct of the Respondent as alleged by the Complainant, as well as his “reneging” on an agreement to accept AUD 125,000 for the transfer of the Domain, pushing up the price even higher, is also relied upon by the Complainant to argue that the Respondent has used the Domain Name in bad faith, in the terms of the Policy. B. Respondent
The Respondent disputes the Complainant’s claim of exclusive trade mark rights in the word POST, arguing that this is a generic term in relation to postal and courier services.
The Respondent also calls into question the Complainant’s claimed trade mark rights in MYPOST in any form, noting his registration of the Domain Name in 2010 and that he had a functional website up under the Domain Name from at least March 24, 2014 when the Complainant rebranded its Digital Mailbox service.
The Respondent contends that he has engaged in IT related services since March 2000 and that he has used the word MYPOST in relation to courier and delivery services from 2010, because he wanted to provide a superior delivery service to his customers. In support of this contention, the Respondent produces a copy of a single receipt dated June 19, 2013, and the statutory declaration of Hilton Swartz, General Manager of IP Trading dated March 5, 2015 relating to this receipt.
The Respondent contends that he has used the word “mypost” in relation to courier and delivery services on the website hosted at the Domain Name since at least March 24, 2014.
The Respondent contends that it has used the phone number 1800 “mypost” in the course of trade since April 2014 and that his business vehicle bears the word ”mypost”.
The Respondent counter-claims that the Complainant is engaging in Reverse Domain Name Hijacking as described in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” The Respondent contends there should be such a finding because, he says, the Complainant has presented no convincing evidence in support of any of its claims and is seeking to make good by the Complaint what it failed to achieve by negotiation, which is to acquire the Domain Name notwithstanding the absence of any rights to it. 6. Discussion and Findings A. Supplemental Filing of Complainant
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 a further supplemental filing from the respondent might be allowed, but this should be seen as an exceptional and rare circumstance. This is in order to discourage protracted exchanges of argument; see auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) paragraph 4.2.
The Panel has reviewed the Supplemental Filing of the Complainant in order to determine whether it should be admitted. The factual matters in dispute that underlie these proceedings are significant. The Respondent raised in his Response a claim of reverse domain name hijacking against the Complainant. In light of the findings of the Panel below, a rebuttal of this claim by the Respondent justifies admission of the Supplemental Filing. The Complainant also took the opportunity in the Supplemental Filing to make an accusation of mendacity against the Respondent and to counter the arguments of the Respondent in a manner which was merely argumentative. The Complainant’s Supplemental Filing has 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 Name is identical or confusingly similar to its trade mark.
First, the Complainant must establish, on the balance of probabilities and based on the evidence that it provides in its Complaint, that it has a relevant trade mark.
The Panel rejects the somewhat ambitious claim of the Complainant to exclusive rights in the word POST in respect of relevant goods and services, such that any other mark embodying that word in respect of the same goods or services should be regarded as deceptively similar. Such a claim is ambitious because of the decision of a Full Court of the Federal Court of Australia in Australian Postal Corporation v Digital Post Australia (2013) 308 ALR 1; (2013) 105 IPR 1; [2013] FCAFC 153 in which such a claim was implicitly rejected, the Court choosing to compare the Complainant’s registered trade marks, in particular AUSTRALIA POST, as a whole, with the impugned trade mark DIGITAL POST AUSTRALIA, as a whole, and finding that latter was not deceptively similar to the former, in respect of services related to electronic mail.
For the sake of completeness, and for the same reasons given by the Federal Court in those proceedings, the Panel finds that the Domain Name is neither identical to nor confusingly similar to any of the Complainant’s registered trade marks incorporating the word post.
Accordingly, the Complainant must rely on its claimed rights in respect of the MY POST and MYPOST DIGITAL MAILBOX.
The Complainant cannot rely upon its trade mark applications alone for this purpose. The auDA auDRP Overview 1.0 paragraph 1.1C makes clear that the preponderance of panels under Uniform Domain Name Dispute Resolution Policy as well as the Policy have expressed the view that an application (even an accepted application, such as the applications of the Complainant) for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. For the complainant to satisfy that requirement, the trademark that is the subject of the application must either: (i) satisfy the test for being a common law or unregistered trademark; or (ii) constitute a “name” within Note 1 of the Policy – i.e., be the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority, or be the complainant’s personal name.
In order to satisfy the requirements for a common law trade mark, auDA auDRP Overview 1.0 paragraph 1.7 makes clear that the Complainant does not have to establish that its claimed mark is famous or well-known but must establish that the mark has sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the Complainant from those of other traders and some trading history that shows that the mark has become, with the relevant consumers, a distinctive identifier associated with the complainant or its goods or services. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the name, surveys of consumer recognition of the name, and media references to the name. Having a significant trading history using a name as a trade mark does not make that name distinctive. Where the complainant’s alleged unregistered trademark consists of a generic or descriptive word, a strong case will be required to show that the word has become associated with the complainant and its goods or services.
The Complainant in this case has two very significant obstacles to overcome, one of which was created by itself. The first is that the word “post” is generic. A company can trade for one hundred years with a statutory monopoly to mine and sell uranium but this will not give it trade mark rights with respect to uranium. The addition of the prefix “my” does little to distinguish the mark or the goods and services of the Complainant but it might be enough. I note that this mark and MYPOST DIGITAL MAILBOX have been accepted by IP Australia but are opposed by the Respondent.
The Complainant’s second problem is that it has chosen not to provide any sales or promotion figures in respect of revenues from or promotions of services under these marks. These may well be confidential but the Complainant does not even provide subscriber numbers or any other information other than the fact that it has named a number of its services mypost. This is not convincing.
However, despite the slim pickings in the Complaint under this heading, the Panel is prepared to accept, on the balance of probabilities, that the Complainant does have a trade mark MYPOST. No doubt this issue will be clarified if the opposition by the Respondent to the Complainant’s trade mark applications is heard and determined in due course in a forum more likely provided with better evidence that that provided by the Complainant in this case.
That being the case, the Panel is also satisfied that the Domain Name is identical to the Complainant’s trade mark. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant first relies on the failure of the Respondent to use the Domain Name for an extended period of time. However, this means nothing in the absence of some other conduct. There is nothing to contradict the claims of the Respondent. He made no attempt to contact the Complainant with respect to the Domain Name or to use it in any provocative manner so as to attract the interest of the Complainant.
The Complainant next relies upon the unsatisfactory course of negotiations. Here it is noted that it was the Complainant that made indirect contact with the Respondent seeking to purchase the Domain Name, which approaches the Respondent initially ignored. The Respondent’s conduct thereafter, in response to the Complainant’s representative’s up-bidding its own bids in response to the Respondent’s apparent absence of interest, is then consistent with the realization that there was a great deal more behind the interest shown in the Domain Name and it would be advantageous to test how far the Complainant was prepared to go. This may reflect on the question of use of the Domain Name in bad faith but it does nothing to establish that the Respondent had no legitimate interests in the Domain Name. It is completely equivocal.
Similarly, the absence of any business name registration or trade mark application by the Respondent is equivocal. The Respondent’s explanation of his conduct is neither obviously a lie nor is it contradicted by anything the Complainant has put forward.
The problem with the Complaint is that it seems to have put the cart before the horse. The Complainant has become so convinced of the bad faith of the Respondent that it expects this observation to colour the determination of the separate issue of rights or legitimate interests. It may be, for example, that the Respondent has registered and/or is using many other domain names in bad faith, which embody the trade marks of others. However, that does not mean that it is self evident that the Respondent does not have rights or legitimate interests in this Domain Name.
Of course, it is in the nature of the determination of this separate issue that it is difficult to prove a negative and frequently it may well be that the Complainant must rely upon inferences available from an absence of things – such as business name or trade mark registrations – and the presence of questionable behavior. As the auDA auDRP Overview 1.0 paragraph 2.1 observes, after the Complainant makes out a prima facie case, the evidential burden falls on the Respondent “to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. […] If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant.”
In this case, the Domain Name was registered by the Respondent long before the Complainant even considered the possibility of an interest in it. The Respondent has provided plausible assertions regarding his use of the name “mypost”. Even on the Complainant’s own evidence, on or soon after March 4, 2014, and no later than March 24, 2014, the Respondent had what appears to be a substantial website in place under the Domain Name. The Complainant has not provided any evidence to suggest that the Respondent’s website is a sham or does not work as it appears to do. This was only weeks after the Complainant’s first trade mark application and before the Complainant’s published rebranding.
In such circumstances, it is impossible to make a finding that the Respondent has no rights or legitimate interests in the Domain Name. In the opposition to the Complainant’s trade mark applications, it may be established that by virtue of the Respondent’s prior use or honest concurrent use, the Respondent is equally entitled to use the trade mark, including in the form of the Domain Name. This is not the forum to determine such rights or obligations between the parties, and no determination of any kind is given, or could be given, in respect of any such matters which are exclusively the domain of IP Australia and the courts.
The Complainant has not therefore satisfied its burden to show that the Respondent had no rights or legitimate interests in the Domain Name. In failing to establish this criterion, the Complainant’s claim in respect of the Domain Name must 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. 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”. As mentioned above, Reverse Domain Name Hijacking is defined under paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The auDA auDRP Overview 1.0 paragraph 4.17 provides examples of conduct that might qualify as Reverse Domain Name Hijacking, such as where a respondent shows knowledge on the part of the complainant of the complainant's lack of relevant trade mark 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 may also constitute a basis for a finding of abuse of process against a complainant filing under the auDRP in such circumstances.
In this case, the Complainant may be criticized asserting trade mark rights in the word “post” without dealing with the decision of the Full Court of the Federal Court of Australia in Australian Postal Corporation v Digital Post Australia (cited above) and for pursuing this Complaint when the essential issues – and the real issues – are yet to be dealt with in the opposition proceedings in IP Australia.
However, the auDA auDRP Overview 1.0 paragraph 4.17 also states “[a] finding of Reverse Domain Name Hijacking will rarely be made where there is a genuine dispute. Where a complainant has an arguable case that is merely weak on the evidence, a panel is unlikely to find the complaint to have been brought in bad faith.”
In this case, whilst the Complainant’s case is weak, it cannot be doubted that it has convinced itself of the impropriety of the Respondent’s conduct and this has caused it to take these somewhat pre-emptive proceedings. In the circumstances, the Panel is unable to conclude that the Complainant has engaged in Reverse Domain Name Hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
William P. Knight
Sole Panelist
Date: April 2, 2015
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