The Complainant is Phillip Island Nature Park Board of Management Inc. of Phillip Island, Victoria, Australia, represented by DLA Piper Australia, Australia.
The Respondents are The Trustee for the Langford Family Trust No. 4 ABN 71513399182 of Surf Beach, Victoria, Australia; and Technology Consulting and Solutions Pty Ltd ACN 074 527 of Malvern, Victoria, Australia, represented by David Luscombe & Associates, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Web Address Registration Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2016. On March 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent The Trustee for the Langford Family Trust No. 4 ABN 71513399182 is listed as the registrant and providing the contact details. In response to a notification by the Center, the Complainant confirmed the Registrar's name on March 30, 2016.
The Center verified that the Complaint together with the Complainant's confirmation 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 proceeding commenced on March 30, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2016. The Respondent, Technology Consulting and Solutions Pty Ltd ACN 074 527, filed the Response on April 19, 2016.
The Center appointed John Swinson as the sole panelist in this matter on May 3, 2016. 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 Phillip Island Nature Park Board of Management Inc. The Panel understands that the Complainant is a not-for-profit organization responsible for managing conservation and tourism parks on behalf of the State Government of Victoria. One of these parks is the Churchill Island Heritage Farm.
The Complainant owns Australian registered trade mark number 1396239 for CHURCHILL ISLAND HERITAGE FARM & FUNCTIONS AUSTRALIA (the "Trade Mark") in device form:
The Trade Mark was registered on December 3, 2010.
The Respondents are The Trustee for the Langford Family Trust (the "First Respondent") and Technology Consulting and Solutions Pty Ltd (the "Second Respondent").
It appears that the First Respondent is the registrant of the Disputed Domain Name, and the Second Respondent was the operator of a café on Churchill Island. The Second Respondent operated the café under lease from the Complainant. The lease expired on August 2, 2015.
The First Respondent registered the Disputed Domain Name on September 20, 2010.
The website at the Disputed Domain Name previously advertised the café on Churchill Island. The Disputed Domain Name still resolves to that website, but the home page of the website contains a notice which states: "Our Café @ Churchill Island business will be closing from the August 2, 2015." 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant has used the Churchill Island name in respect of café and restaurant services since 2000. It has used the Trade Mark for café and restaurant services since the Trade Mark was registered in 2010. Rights or Legitimate Interests
Churchill Island is a geographical location near Phillip Island in Victoria, Australia. The Complainant has the sole right to determine which businesses operate at the Churchill Island site.
The Respondents previously operated the Churchill Island café under lease from the Complainant, and ceased doing so on August 2, 2015. The Disputed Domain Name is used exclusively in relation to the promotion of the café.
The Respondents no longer have any right to, or legitimate interest in, the Disputed Domain Name or the café. The Complainant has written to the Respondents requesting that they cancel the Disputed Domain Name, but the Respondents have failed to do so. Registered or Subsequently Used in Bad Faith
The Disputed Domain Name was registered, and is being used, exclusively to promote the café. The café has been operated by the Complainant since the Respondents' lease ended in August 2015. Despite this, the Respondents continue to operate the website at the Disputed Domain Name with a message stating that: "Our Café @ Churchill Island business will be closing from the August 2, 2015."
As the Complainant is now operating the café, this message is false, misleading and is causing confusion and damage to the Complainant. The Complainant's customers are falsely led to believe that the café is closed and that there are no restaurant services on Churchill Island. B. Respondent
The Respondents make the following submissions. Identical or Confusingly Similar
The Respondents acknowledge that the Complainant is the owner of the Trade Mark, but deny the rights claimed by the Complainant in the name "Churchill Island". This is a place name which is available for use by the public, and no intellectual property rights may subsist in this name. The Complainant does not have the exclusive right to use the name "Churchill Island". Rights or Legitimate Interests
The Respondents have rights and legitimate interests in respect of the Disputed Domain Name. The Respondents operate an accommodation and function business from land which is adjacent to, and overlooks, Churchill Island.
When the lease to the café expired, the Respondents offered to sell the assets of the business, including associated intellectual property rights, to the Complainant. The Complainant has failed to negotiate with the Respondents in relation to this sale. Registered or Subsequently Used in Bad Faith
The Respondents are using the website at the Disputed Domain Name to advise their customers that they have ceased to operate the Churchill Island café business. The Respondents are continuing to operate businesses in the Churchill Island area, and reserve the right to use the Disputed Domain Name for that purpose in the future.
The Respondents deny that the message on the website at the Disputed Domain Name is misleading, as it refers only to the Respondents' business ("Our Café @ Churchill Island").
The Respondents registered the Disputed Domain Name for the legitimate purpose of operating the Complainant's business. The Respondents did not register or use the Disputed Domain Name for any purpose set out in paragraph 4(b) of the Policy. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or has subsequently been used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
The Complainant must establish two limbs in order to be successful on the first element of the Policy:
- that it has rights in a trade mark or other relevant name; and
- that the Disputed Domain Name is identical or confusingly similar to that trade mark or name.
In relation to the first limb, the Complainant claims rights in the Trade Mark, which is a registered trade mark. The Trade Mark is a figurative mark, the textual element of which reads CHURCHILL ISLAND HERITAGE FARM & FUNCTIONS AUSTRALIA. The Panel accepts that the Complainant has rights in the Trade Mark.
The Complainant also appears to claim common law rights in the name "Churchill Island". The Complainant states that it has used this name in respect of café and restaurant services since 2001, but has provided no evidence of this.
"Churchill Island" is the name given to a geographical location off the coast of Victoria, Australia, which is part of a conservation park owned by the Victorian Government and managed by the Complainant.
Previous panels have determined that a party cannot claim trade mark rights in a geographical location "unless its geographical significance is shown to have been displaced by long and extensive use as a brand by a single trader in such a manner as to distinguish that trader's goods and services from those of competitors" (The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven,WIPO Case No. DAU2003-0001 and case cited therein; see also Randall's Island Sports Foundation, Inc. v. Eric Theador,WIPO Case No. D2011-0483 and Brisbane City Council v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2001-00471).
While the Complainant has exclusive rights in relation to the management of Churchill Island (and the rest of the conservation park), it has failed to provide evidence to show that it has been using the name "Churchill Island" as a trade mark. Indeed, the Respondents had operated the café under the name "Our Café @ Churchill Island" for approximately 5 years, so it cannot be said that the Complainant has had a long and exclusive use of that name as a trade mark in respect of café services.
The Panel finds that the Complainant does not have the necessary rights in the name "Churchill Island" sufficient for the purpose of the Policy.
The Complainant may also satisfy the first limb of the first element of the Policy by showing that it has rights in a "name", which, according to Note 1 of the Policy, can include the Complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority.
Here, the Complainant's legal name is Phillip Island Nature Park Board of Management Inc. (registered as a local government entity), with a trading name of Phillip Island Nature Park. The Panel accepts that the Complainant has rights in these names, but neither of these incorporate the name "Churchill Island", so are not relevant in the present circumstances.
As such, the Panel finds that the relevant rights held by the Complainant are those in the Trade Mark. The question that remains is whether the Trade Mark is identical or confusingly similar to the Disputed Domain Name. As stated above, the Trade Mark is a figurative mark, the textual element of which reads CHURCHILL ISLAND HERITAGE FARM & FUNCTIONS AUSTRALIA.
Visually, in its figurative form, the Trade Mark is not confusingly similar to the Disputed Domain Name. However, as design elements are not capable of being represented in a domain name, these elements of a trade mark will generally be ignored for the purpose of assessing identity or confusing similarity (auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0"), paragraph 1.11).
Based on the textual element alone, the Panel considers that the distinguishing terms in the Trade Mark are HERITAGE FARM & FUNCTIONS AUSTRALIA. These are used in conjunction with the name CHURCHILL ISLAND which, as discussed above, has significance as a geographical location (see, e.g. Brisbane City Council v. Warren Bolton Consulting Pty Ltd,WIPO Case No. D2001-0047).
The Panel considers that the dominant element of the Disputed Domain Name is CHURCHILL ISLAND. With the addition of the distinguishing terms in the Trade Mark, the Panel considers that CHURCHILL ISLAND HERITAGE FARM & FUNCTIONS AUSTRALIA is not confusingly similar to Churchill Island Café.
The Disputed Domain Name is not confusingly similar to the Trade Mark. The Complainant has not established the first element of the Policy. B. Rights or Legitimate Interests and Registered or Subsequently Used in Bad Faith
In light of the Panel's finding in relation to the first element, it is not necessary for the Panel to decide whether the Respondents have rights to or legitimate interests in the Disputed Domain Name (under paragraph 4(a)(ii) of the Policy), or whether the Respondents registered or subsequently used the Disputed Domain Name in bad faith (under paragraph 4(a)(iii) of the Policy).
However, as different panels may take different views in relation to the issues raised under the first element, the Panel will briefly address the Complainant's submissions on the second element of the Policy (which would not alter the Panel's view as to the outcome of this case).
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests. It is then for the Respondents to rebut this prima facie case.
The Complainant has not provided compelling evidence or submissions regarding the Respondents' rights to or legitimate interests in the Disputed Domain Name, or lack thereof. The Complainant has not addressed any of the matters set out in paragraph 4(c) of the Policy which, while not the only factors that may be relevant, would assist in showing that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name.
The Complainant's primary argument in relation to this element is that the Respondents no longer operate the Churchill Island café, which they previously leased from the Complainant, and as such, they no longer have any rights to or legitimate interests in the Disputed Domain Name. Whether it is correct to conclude that the Respondents no longer have any rights to or legitimate interests in the Disputed Domain Name depends on an analysis of the lease, the termination of the lease, and the surrounding circumstances.
It is well established that the Policy is not designed to address complex business disputes (see, e.g., Ruff Roofers, Inc., Ruff Roofing, Inc. and Roofing by Ruff, Inc. v. Jean Ruff,WIPO Case No. D2014-1755 and UTVG Europe Holding B.V. v. Vitali S,WIPO Case No. D2014-1345). Here, the Respondents registered the Disputed Domain Name and used it for a number of years to promote their café business either with the Complainant's permission or without the Complainant's objection. From the Panel's review of the evidence in the case file, the lease did not deal with ownership of trade marks or domain names or what happened to these assets when the lease expired. Based on this limited evidence, the Panel finds that the Complainant has failed to make out a prima facie case on this element.
As the panel in The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 stated, "[t]his Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting".
The Panel considers that the dispute raised in these proceedings forms part of a broader business dispute which is not suitable for resolution under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: June 6, 2016
1 In light of the substantive and procedural similarities between the auDRP and the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel has cited authorities decided under the UDRP where appropriate.
Full & Egal Universal Law Academy