The Complainant is The Commonwealth of Australia as represented by the Secretary, Department of Foreign Affairs and Trade, of Barton, Australia, represented by Meyer Vandenberg, Australia.
The Respondent is Domain Admin, Palmside Holdings of Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain names and are registered with R Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On November 30, 2018, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain names. On December 10, 2018, R Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 13, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 December 18, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2019.
The Center appointed Andrew F. Christie as the sole panelist in this matter on January 18, 2019. 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
On September 7, 2003, the then-Minister for Foreign Affairs launched the Australian Government’s travel advice public information campaign, known as “: it’s a must see destination”. The campaign’s aim was to highlight a message for Australian travelers to consult travel advice as part of routine preparation for overseas travel, and to broaden the public’s understanding of the Government’s travel advisory service. The campaign had a budget of AUD 9.7 million over four years, for targeted national television and print advertising, and for updated consular information on the website resolving from the domain names and . The campaign exhibited immediate signs of market penetration and recognition, with increases in numbers of people viewing the web page resolving from the domain name. In 2016-17 there were an average of 20,000 visitors per day to the “smartraveller” website, 1.3 million subscriptions to travel advisories, 142,000 “smartraveller” Facebook followers, nearly 20,000 Twitter followers, and close to 30,000 downloads of the “smartraveller” app.
The Complainant owns a number of Australian registered trademarks comprising or containing the string “smartraveller”, including trademark number 1426076 for the word mark SMARTRAVELLER (registered from May 19, 2011).
The Complainant stated that the disputed domain names were registered on November 12, 2003. At the time of the filing of the Complaint, and at the time of this decision, both of the disputed domain names resolve to web pages that contain various, mostly travel-related, sponsored listings, none of which are by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights because: (i) disregarding the “.” suffix, the first disputed domain name, , is identical to the “smartraveller” component of all the Complainant’s trademarks; and (ii) disregarding the “.” suffix, the second disputed domain name, , is only different from the Complainant’s trademarks through the addition of a second “t”, which does not reduce the fundamental confusion that is encountered.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) from a review of the web pages to which the disputed domain names resolve, there is a reasonable presumption the Respondent receives pay-per-click payments, and that this is not a bona fide use of the disputed domain names in connection with the supply of goods or services; (ii) typosquatting, where it is done for the purpose of redirecting unknowing consumers to another site, does not qualify as a bona fide offering of goods and services, whatever the goods and services that are offered at that site; (iii) this matter is an example of where typosquatting can be evidence in and of itself that a respondent lacks rights or legitimate interests in a disputed domain name; (iv) the Respondent has never been commonly known by the name “smartraveller” or “smarttraveller”; (v) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names as they resolve to web pages with links to various sponsored listings with a clear intent for commercial gain; and (vi) the Complainant is not affiliated with, nor has it authorised the Respondent to use, the term “smartraveller” or any similar variation in the disputed domain names or otherwise.
The Complainant contends that the disputed domain names were registered or are subsequently being used in bad faith because: (i) the Respondent has previously exhibited a pattern of registering domain names typographically similar to well-known trademarks owned by third parties, constituting a pattern of bad faith; (ii) the Respondent’s use of the disputed domain names, which are identical or substantially identical to the Complainant’s trademarks, is designed to confuse consumers as to the sponsorship, affiliation or endorsement of the Respondent by the Complainant; (iii) the disputed domain names were registered on November 13, 2003, in close proximity of the launch of the Government’s “smartraveller” campaign and the registration of the Complainant’s domain names, which is evidence of “classic opportunistic conduct” designed to lead individuals into confusion as to the sponsorship, affiliation or endorsement of the Respondent by the Complainant; (iv) as the listings on the web pages resolving from the disputed domain names are sponsored, there is a clear intent for commercial gain on the part of the Respondent; (v) given the significant reputation of the trademarks (even before they were registered) and the high likelihood that the Respondent was aware of the campaign, it would have been easy for the Respondent to identify that its registration of the disputed domain names was likely to infringe the Complainant’s rights; and (vi) the disputed domain names do not exactly match the Respondent’s business or trading names, nor do they comprise a trademark owned, or a trademark application made by, the Respondent, and are not an acronym or abbreviation of those elements, in contravention of the auDA 2002-07 Domain Name Eligibility and Allocation Rules for the Open 2LDs. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
When the country code Top-Level Domain identifier “.au” and the second-level domain identifier “.com” are ignored (which is appropriate in this case), the first disputed domain name consists solely of the Complainant’s registered word trademark SMARTRAVELLER, and the second disputed domain name consists solely of the Complainant’s registered word trademark SMARTRAVELLER with the addition of a second “t”. The addition of a second “t”, to make the two words “smart” and “traveller”, does not preclude the confusing similarity of the second disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the first disputed domain name is identical to a trademark in which the Complainant has rights, and the second disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorised by the Complainant to use its SMARTRAVELLER trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainant shows that the disputed domain names were used to resolve to web pages with links to various sponsored listings, none of which are by the Complainant, and some of which are unrelated to travel. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered or Subsequently Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain names have been used in bad faith. 7. 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 disputed domain names and be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: February 1, 2019
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