The Complainant is Three Best Rated Pty Ltd, Australia, internally represented.
The Respondent is Signature Profit LLC, United States of America (“United States”), represented by Baxter Patent Attorneys Pty. Ltd, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 23, 2020, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 24, 2020, GoDaddy.com, LLC 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 31, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2020. On April 17, 2020, the Center received a request from the Respondent for an extension to the Response due date. The Response due date was extended to April 24, 2020. The Response was filed with the Center on April 24, 2020. On April 27, 2020, the Center received an unsolicited supplemental filing from the Complainant. On April 28, 2020, the Respondent contacted the Center in regards to the Complainant’s unsolicited supplemental filing. The Center appointed Alistair Payne as the sole panelist in this matter on May 4, 2020. 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 company was registered in Australia on October 3, 2019, and operates a business that informs consumers of the highest rated suppliers of various services evaluated by it. The Complainant owns Australian combined word and logo mark registration no. 2007508 registered on December 23, 2019, that incorporates the expression “Three Best Rated” which it uses in the provision of its services. It operates its business through a website at the domain name The Respondent is an American company founded in June 2010 that operates in various countries a ratings system for local businesses using a combined word and logo mark incorporating the expression “Three Best Rated”. It has provided its system in Australia since February 2017. The Respondent filed Australian trade mark application no. 1725654 for its combined trade mark on October 2, 2015, which did not mature to registration. On October 6, 2015, it obtained registration of the disputed domain name, which diverts to a web page through which it operates its “Three Best Rated” business in Australia. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns the registered Australian trade mark noted above for THREE BEST RATED. It says that these elements have not been disclaimed and are identical to the disputed domain name prior to the “.com.au” top level suffix and therefore the first element of the Policy is satisfied. Essentially, the Complainant’s case that the Respondent has no rights or legitimate interests in the disputed domain name is based on its allegation that the Respondent is and has been ineligible to hold the disputed domain name for nearly three years. It submits that the Respondent is a foreign company that fails to fulfill any of the requirements in Paragraph 1 of Schedule C to the auDA Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (“auDA Eligibility Policy”). It notes that although the Respondent applied to register an Australian trade mark that incorporated the expression or mark “Three Best Rated”, this application lapsed on April 20, 2017, and as a result at the date of filing of this Complaint the Respondent is neither the owner nor the applicant for an Australian trade mark registration and does not satisfy either criterion (e) or criterion (f) of Paragraph 1 of Schedule C of the auDA Eligibility Policy, or any of the other possible criteria. The Complainant says it follows, that because the Respondent is not entitled to hold the disputed domain name, it cannot have any rights or legitimate interests in it and a conclusion that a non-eligible registrant can have rights or interests in a domain name would be contrary to the Policy. As far as bad faith is concerned, the Complainant submits that the evidential requirements of paragraph 4(b)(v) of the Policy are met in this case, namely that the warranties that the Respondent gave on renewal of the disputed domain name in or around October 2017 and then again in October 2019 were false and that this amounts to evidence of registration and use in bad faith. This, says the Complainant, is the case because the relevant auDA policy on Mandatory Terms and Conditions Applying to .au Domain Name Licenses on each occasion required the Respondent to warrant that it met and would continue to meet the eligibility criteria for owning the disputed domain name, but in fact the Respondent did not meet the eligibility criteria when it renewed in October 2017 or in October 2019 and therefore it gave a false warranty on two occasions. This, says the Complainant, is evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(v) of the Policy. B. Respondent The Respondent says that it has been continuously using its trade mark including the words “Three Best Rated” in Australia since 2017 and around the world since 2014 in relation to the services of finding the three top local businesses and professionals in all states and any city and regional centres of Australia. It notes that it has a reputation as a consequence in Australia, the United States, Germany, India, and the United Kingdom associated with its trade mark including the words “Three Best Rated”. The Respondent has by way of declaration of its director provided evidence of the assessment method that it employs, of the cities and regions in which it has undertaken assessments, of the range of businesses assessed, various client references and details of its sales in Australia as well as its website page usage since 2016 on the Internet Archive WayBack Machine and details of its email usage based on the disputed domain name. The Respondent says that it registered the disputed domain name on the basis of its pending Australian trade mark application as noted above. Upon examination by the Australian Trade Marks Office it was rejected on the basis of descriptiveness and the Respondent says that it believed that it needed to continue to obtain reputation to support its usage and registration and had it been advised properly then it would have maintained a pending application until it had made sufficient use of its trade mark, instead of allowing it to lapse. In any event, the Respondent submits that it has continued to use its trade mark, including the words “Three Best Rated” on an uninterrupted basis in Australia since February 2017. It says that it renewed the registration of the disputed domain name in good faith on the basis of its uninterrupted use of its trade mark in Australia. When it was confronted with the present proceedings it realized that its trade mark including the words “Three Best Rated” could be registrable as a trade mark and it therefore filed Australian trade mark application no. 2081511 which includes the words “Three Best Rated”. It says that this reflected its standing as owner of its trade mark including the words “Three Best Rated” under common law in Australia and that there was no element of bad faith in its use of the disputed domain name as it considered that it owned the mark and did not and does not infringe the rights of any third party. The Respondent says that the filing of the Complainant’ trade mark registration no. 2007508 was in bad faith as it was clear that it could not obtain registration of the words “Three Best Rated” without a distinctive element or evidence of use and that it subsequently registered a combined distinctive red logo. It says that it is also clear that the Complainant must have been aware of the disputed domain name, as the Complainant had to register the alternative domain name The Complainant submitted a supplemental filing on April 28, 2020, and the Respondent made an email communication in response the same day. Neither the Complainant’s supplemental filing nor the Respondent’s email in reply address new matters that could not have been addressed at the outset or add anything to the Parties’ respective cases and accordingly the Panel exercises its discretion not to admit them to the record. A. Identical or Confusingly Similar The Complainant owns Australian combined word and logo mark registration no. 2007508 registered on December 23, 2019, that incorporates the words “Three Best Rated”. This expression is the dominant and only textual element of this registered trade mark and it follows that the Complainant has registered trade mark rights for the purposes of the Policy. Excluding the Top-Level Domain name suffix of “.com.au”, the disputed domain name is identical to the dominant textual element of the Complainant’s registered trade mark. As a result, the Panel finds that the Complaint satisfies this element of the Policy. B. Rights or Legitimate Interests The Complainant’s case under this head is that the Respondent is (and has been) ineligible to hold the disputed domain name for nearly three years and as a non-eligible registrant cannot have legitimate rights or interests in the disputed domain name. It submits that the Respondent is a foreign company that fails to fulfill any of the requirements in Paragraph 1 of Schedule C to the auDA Eligibility Policy (Policy No 2012-04) for domain names. It notes that although the Respondent applied to register an Australian trade mark that incorporated the expression “Three Best Rated”, that this application lapsed on April 20, 2017, and as a result at the date of filing of this Complaint and upon the last two renewals of the disputed domain name in October 2017 and October 2019, the Respondent was neither the owner nor the applicant for an Australian trade mark registration and did not satisfy any of the criteria in paragraph 1 of Schedule C of the auDA Eligibility Policy and was in breach of its warranty upon renewal. It says that if the Respondent is not entitled to hold the disputed domain name then it cannot have any rights or legitimate interests in the disputed domain name as a matter of logic and policy and this is the end of the matter under this element of the Policy. Certainly previous panels have found that a Respondent’s knowing renewal of a domain name without having a right to use it under the eligibility rules of the Policy may in particular circumstances amount to a breach of the Respondent’s warranty upon renewal and as a result is evidence of registration or use in bad faith under the third element of the Policy (see section 3.2A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition). However, it does not necessarily follow that a Respondent in this position can be said to have “no rights or legitimate interests” in the disputed domain name for the purposes of the second element of the Policy. In this case, the Respondent registered the disputed domain name on the basis of a valid Australian trade mark application and it subsequently made legitimate use of that mark in the course of trade in Australia. The Respondent has provided a reasonably substantial amount of evidence, including evidence of the extent of its trade mark use and turnover and has demonstrated that it has used the disputed domain name in the course of a bona fide offering of business services in Australia on an ongoing basis since 2017. The Complainant admits that it commenced preparation for its business in May 2019. This was almost 2 years after the Respondent’s commencement of business in Australia under its “Three Best Rated” logo mark and using the disputed domain name. The Complainant has not suggested that this is a cybersquatting case in which the Respondent has sought to use the disputed domain name illegitimately in order to trade on the Complainant’s goodwill. On the contrary, it is apparent to the Panel that prior to the commencement of these proceedings the Respondent had made a bona fide use of the disputed domain name in connection with its service offering in Australia. The Panel finds that – irrespective of any possible failure to meet the relevant eligibility criteria – such use fulfills the requirements of paragraph 4(c)(i) of the Policy and demonstrates a legitimate interest of the Respondent’s in relation to the disputed domain name. As a result, the Complaint fails under this element of the Policy. The Panel notes that the Policy provides a specific procedure for complaints about eligibility (Policy No: 2004-01) which would have been the appropriate course had the Complainant wished to make a complaint about the Respondent’s eligibility to own the disputed domain name. The Panel notes that even when a complaint about eligibility is made under that procedure, a domain name owner is afforded 14 days by auDA in which to rectify the position retrospectively. No doubt the Respondent would have sought to rectify its position within the relevant period, by filing an Australian trade mark application, just as it did after receiving notice of these proceedings, or in the alternative by finding another basis for eligibility which is expressly permitted under paragraph 4.3 of the Eligibility Policy 2004-01. Therefore and contrary to the Complainant’s assertions, the Panel’s finding that the Complaint has not succeeded under this element of the Policy is not inconsistent with the overall objectives of the Policy and the complaint procedure under Policy 2004-01. It follows that in circumstances where the Respondent registered and used the disputed domain name long before the Complainant and that the Respondent was carrying on a legitimate business activity and was not targeting the Complainant in any way, the Complainant should have been aware that it would be unable to succeed under this limb of the Policy. It appears to the Panel that in bringing these proceedings the Complainant has sought to use the Policy in the hope of obtaining the disputed domain name for its own business and consequently diverting the Respondent’s goodwill and custom in Australia. On this basis, the Panel finds that the Complaint amounts to a case of reverse domain name hijacking. 7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied. Alistair Payne
Sole Panelist
Date: May 11, 2020
Full & Egal Universal Law Academy