The Complainant is Peachbulk Pty Ltd, Australia, represented by Buchanan Law Firm, Australia.
The Respondent is Domain Boutique Pty Ltd, Australia, represented by Cooper Mills Lawyers, 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 July 7, 2020. On July 7, 2020, the Center transmitted by email to UniRegistrar Corp a request for registrar verification in connection with the disputed domain name. On July 8, 2020, UniRegistrar Corp 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 “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 July 22, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2020. The Response was filed with the Center on August 11, 2020. The Center appointed Andrew F. Christie, The Hon Neil Brown Q.C., and John Swinson as panelists in this matter on September 8, 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 claims that it, together with its associated entities and directors (one of which is the Australian plastic surgeon, Dr. Chris Moss), has an established reputation in the fields of cosmetics, skin care and plastic surgery, although it provided no evidence in support of this claim. The Complainant is the owner of several trademark registrations for the word trademark BROMANCE in class 3 in respect of body care and related products, including Australian Registration No. 1904495 (filed on February 2, 2018; accepted on March 15, 2018; entered on register on September 5, 2018), and International Registration No. 1422822 designating a range of countries. The Complainant says that these registrations are associated with a range of skin and health care products that are to be commercialized under the BROMANCE brand. The date on which this range of products is intended to be released was not specified. The Complainant has filed numerous pending applications for registration of the word trademark BROMANCE in Australia in classes 5, 9, 25, 29, 30, 35, 41 and 45, filed on various dates in May and June 2020. The Complainant says that these applications are associated with a range of other goods and services that relate to the proposed BROMANCE branded venture. According to .au Domain Administration Ltd (“auDA”), the administrator of the .au country code Top-Level Domain (“ccTLD”), and confirmed by UniRegistrar Corp, the creation date of the disputed domain is March 3, 2018. The Complainant has provided a screenshot, said to be taken on April 21, 2020, showing the disputed domain name being advertised for sale. The Complainant, through an agent, made an offer to purchase the disputed domain name on April 23, 2020. The Respondent rejected this offer, and made a counter-offer. The Complainant’s agent then made another offer, which was met with another counter-offer. On May 12, 2020, the Complainant’s agent sent a communication to the Respondent, stating “Our client, who owns registered trade mark rights to the BROMANCE name is seeking a commercial resolution to purchase the domain name” and offering the sum of AUD 2,600. On the same day the Respondent replied, stating: “While I appreciate the offer, we’re not actively seeking to sell this domain name as we’re currently exploring to JV with another client in the dating space. However, as they say everything is for sale if the price is right and I don’t think we’re lightyears away from where we would need to be to part ways with Bromance.com.au. To save us going back and forth, we’re prepared to sell this domain name for no less than $7,800 + GST.” The Complainant did not accept this proposal. On May 15, 2020, the Respondent registered the business name “Bromance E Foods”. On May 16, 2020, the Respondent filed two Australian trademark applications in class 35, one for the word BROMANCE and the other for an image with the words BROMANCE EROTIC FOODS and a stylized drawing of a half-peeled banana. Both applications were accepted on July 9, 2020, and are currently awaiting advertisement. On May 16, 2020, Google first indexed the disputed domain name as resolving to a website. The Complainant provided a screenshot, dated June 7, 2020, showing the website resolving from the disputed domain name. This Shopify website was headed with the words “BROMANCE Erotic Foods” and a stylized drawing of a half-peeled banana, and contained pictures of the front and the back of a 500g packet of rigatoni pasta that was apparently being offered for sale. The Respondent provided two order confirmations of apparent purchases from its website, one dated May 16, 2020, for a 225g packet of apricots, and the other dated August 7, 2020, for two 375g packets of pappardelle and two 500g packets of rigatoni. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it owns an Australian registered trademark for the word BROMANCE with a filing date of February 2, 2018, which is earlier than the Respondent’s registration of the disputed domain name; and (ii) it has applied for several other trademark registrations around the world for the word BROMANCE in a range of countries. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent’s company name “Domain Boutique Pty Ltd” does not match or incorporate the disputed domain name, and the Respondent is not involved in the sale or promotion of “Bromance” branded products or services; (ii) the Respondent’s website at “www.domainboutique.com” reveals that the Respondent’s core service pertains to the sale and brokerage of domain names; (iii) before the date of the Complaint, the Respondent had advertised the disputed domain name for sale via the domain Registry, GoDaddy; (iv) at all material times from the time the Complainant filed its trademark application through to May 12, 2020, the disputed domain name did not resolve to any active website but was indicated as being available for purchase; (v) at all material times the Complainant has not been made aware of any bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (vi) subsequent to the email exchange between the Complainant and the Respondent on May 12, 2020 regarding purchase of the disputed domain name, the Respondent used the disputed domain name to purportedly offer for sale certain food products described as “erotic foods”, and filed two Australian trademark applications for the registration of the word BROMANCE and an associated logo, neither of which actions can be regarded as a bona fide use of or demonstrable preparations to use the disputed domain name; (vii) the Respondent has not been commonly known by the disputed domain name; (viii) the Respondent’s association of the disputed domain name with the purported offering of “erotic foods” has the potential to tarnish the name and trademark rights associated with the Complainant; (ix) there is no evidence that the Complainant has authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use its registered BROMANCE trademark; and (x) the Complainant has established that it has prior rights in the registered BROMANCE trademark that precede the Respondent’s registration of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the disputed domain name appears to have been registered primarily for the purpose of selling or transferring it to another person for valuable consideration in excess of the Respondent’s out of pocket expenses, as evidenced by the fact that the Respondent is openly in the business of selling domain names and offered to sell the disputed domain name to the Complainant for AUD 7,800 plus GST; (ii) as the registration of the disputed domain name was after the filing date of the Complainant’s registration of its BROMANCE trademark, the Respondent has effectively prevented the Complainant from reflecting its proprietary rights to the trademark in the corresponding domain name; (iii) the disputed domain name has been registered and subsequently used as a bargaining device to disrupt the Complainant’s business activities; (iv) when registering the disputed domain name, the Respondent provided certain warranties regarding compliance with the auDA policy on eligibility for and allocation of domain names in the .au ccTLD, which were false and misleading and have been breached by the Respondent, including a warranty that the Respondent was entitled to register the disputed domain name and a warranty that the Respondent was not registering the disputed domain name for the sole purpose of resale; and (v) following the Respondent’s failure to sell the disputed domain name to the Complainant the Respondent took steps designed to create an illusion that it has a legitimate connection to the disputed domain name by applying to register a corresponding trademark for the word BROMANCE, causing the disputed domain name to resolve to a very basic “shopify” website that purports to sell certain “erotic foods”, confined in number to five only, one of which is a pasta product labelled as having been imported exclusively for the major retailer Woolworths Ltd, and thus unlikely to be authorized for retail outside of the Woolworths’ network of stores. B. Respondent In relation to whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent does not dispute that the Complainant has a registered trademark for BROMANCE but contends that: (i) the term “bromance” is generic and descriptive in nature; (ii) the Respondent is the applicant for two BROMANCE trademark registrations which have been accepted for registration; (iii) the trademark relied upon by the Complainant was not registered at the time the disputed domain name was registered by the Respondent (although the priority date of the trademark application was a few weeks earlier); (iv) the Complainant is a “trademark squatter” and does not have a reputation in the generic and descriptive term “Bromance”; (v) the Complainant has no reputation in the term “bromance”; (vi) the Respondent was not aware of the Complainant’s application for trademark registration of the word BROMANCE at the time of the Respondent’s registration of the disputed domain name; and (vii) the Complainant’s reference to overseas trademarks is irrelevant to the determination of the issues in this adjudication. In relation to whether the Respondent has rights or legitimate interests in respect of the disputed domain name, the Respondent contends that the Complaint seeks to assert a mix of irrelevant matters and unfounded claims of bad faith, namely: (i) it is irrelevant that the Respondent’s company name does not match the disputed domain name; (ii) the Respondent currently has two pending trademark applications for or containing the word “bromance”, which have been accepted for registration; (iii) the Respondent operates a food retailing business utilizing the “Bromance” name; (iv) the fact that the Respondent had advertised the disputed domain name for sale is not relevant to the Respondent’s legitimate rights or interests in it and, in any event, the Respondent did not solicit or offer the disputed domain name to the Complainant, but rather the Complainant approached the Respondent; (v) the Respondent purchased the disputed domain name at auction and expended money on it, so the Respondent was only prepared to consider selling the disputed domain name if it was able to cover its out-of-pocket expenses; (vi) the Complainant’s attempted purchase of a highly descriptive and generic domain name failed, so it has attempted to reverse domain name hijack the disputed domain name; (vii) the Complainant was aware that the Respondent was using the term “bromance” as a trademark, because it made bad faith trademark applications to try and block the Respondent’s trademark applications, and the Respondent’s e-commerce website was operational long before the Complaint was filed so it is entirely implausible that the Complainant was not aware of the Respondent’s rights to and use of the BROMANCE trademark; (viii) the Respondent does not need consent from the Complainant to use a descriptive and generic dictionary word for its business; (ix) the Complainant has made no use of the term “bromance” and has no reputation in the word “bromance”; (x) the Respondent has made demonstrable preparations to use the disputed domain name, as evidenced by an email to its web developer on March 4, 2020; (xi) the Respondent is commonly known by the disputed domain name and has established a reputation with its customers and the general public; (xii) the Respondent has operated an e-commerce store using the disputed domain name from at least May 16, 2020, and has two trademark applications (which have been accepted for registration) and a business name registration for BROMANCE; (xii) the Respondent has expended money on the promotion of the website resolving from the disputed domain name and its business, along with an application for wholesale product supply from a wholesaler who supplies Woolworths and Coles; (xiii) the Complainant is not currently making use of the trademark BROMANCE for the sale and promotion of any “Bromance” branded goods or services, and has no reputation in the term “bromance”, and therefore the Respondent’s use of the disputed domain name for an e-commerce store for food products cannot be a use that misleadingly diverts consumers or tarnishes the name or trademark; (xiv) the Complainant incorporated a company “Bromance Skin and Health Pty. Ltd ACN 642 104 523” on June 26, 2020, some time after the Respondent’s first use of the disputed domain name and prior to the Complaint; and (xv) the Respondent intends to oppose the Complainant’s pending trademark applications. In relation to whether the disputed domain name has been registered or is being used in bad faith, the Respondent contends that: (i) the fact that the Respondent has made a significant expenditure of money and effort into establishing an online business using the disputed domain name, including the registration of a business name and two trademark applications, and the fact that it did not come to an agreement to sell the disputed domain name, displaces the Complainant’s assertion that the Respondent’s primary motivation for registering the disputed domain name was for sale or transfer of it; (ii) the Complainant has not advanced any evidence to support its assertion that the Respondent apparently sought “valuable consideration in excess of the Respondent’s out of pocket expenses”, and unless it reviews the Respondent’s financial books and records it is impossible for the Complainant to make this assertion; (iii) the Complainant’s assertion that it is a sign of bad faith that the Respondent’s other business interests include domain name brokering is an unsustainable argument, particularly given that the disputed domain name is owned by the Respondent not a third party and that the Respondent develops websites and creates businesses; (iv) the Complainant’s assertion that the website resolving from the disputed domain name is a “sham” is absurd, because the Respondent has developed a reputation and has established a bona fide business with actual sales, and such allegations by the Complainant are nothing more than a desperate attempt at reverse domain name hijacking following failure to buy the disputed domain name; (v) the Complainant’s assertion that the disputed domain name was registered to prevent the Complainant from reflecting its trademark in a corresponding domain name is unsustainable, because the Complainant does not operate a business and does not sell goods or services under the “Bromance” name and furthermore the domain name The Respondent submits that the Panel should make a finding of reverse domain name hijacking against the Complainant because: (i) the Complainant has at no time served the Respondent with a letter of demand outlining the subject matter of this dispute; (ii) the term “bromance” is a descriptive and generic laudatory term, a point on which the Complainant sought to mislead the Panel; (iii) the Complainant has failed to satisfy the grounds of the auDRP; (iv) the Complainant is legally represented, and ought to have known that there was no proper basis to bring this proceeding; (v) on May 2020, the Respondent suggested it was going to use the disputed domain name for a dating website and the following day the Complainant filed a trademark application for dating, when all along the Complainant has said that its business is in skin care products, so it is clear that the Complainant made the trademark application in bad faith and to harass the Respondent; and (vi) on or about May 15, 2020, the Respondent launched its website and on June 23, 2020, the Complainant filed another trademark application, this time for products that the Respondent was selling on its online store, such as dried fruit, which is another clear example of the Complainant’s determination to harass the Respondent and disrupt its business. 6. Discussion and Findings The discussion and findings that are set out in sections 6 and 7 of this decision represent the view of the majority of the Panel (Mr. Christie and Mr. Swinson). A minority of the Panel (Hon. Brown) provides a dissenting opinion. A. Identical or Confusingly Similar When the ccTLD “.au” and the Second-Level Domain (2LD) “.com” are ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s Australian registered word trademark BROMANCE. Accordingly, the majority of the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The majority of the Panel notes that the dissenting Panelist considers that the earliest the Respondent could have known of the Complainant’s trademark application was February 15, 2018, and only then “by scouring the Australian Official Journal of Trademarks”. This overlooks the fact that all Australian trademark applications are published online within one business day of being made, meaning that from February 5, 2018, the Respondent would have found the Complainant’s application by a simple search of the Register. In any event, the majority of the Panel is of the view that the question of when the Respondent could have known of the Complainant’s trademark application is simply not relevant to the issue of whether the Complainant satisfies paragraph 4(a)(i) of the auDRP. B. Rights or Legitimate Interests As explained in paragraph 2.1 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), panels require that a complainant make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name in dispute. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the auDRP. 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. The Complainant provided evidence showing, and the Respondent did not deny, that, during the first two years following registration by the Respondent, the disputed domain name was not put to any genuine use but was offered for sale. The Complainant has, therefore, made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent attempted to counter this prima facie case with a myriad of contentions, the clearly less irrelevant of which are that the Respondent purchased the disputed domain name at auction, the disputed domain name is descriptive and generic, the Respondent has used the disputed domain to resolve to an e-commerce website, and the Respondent has two pending trademark applications and a business name registration for that part of the disputed domain name which is not the 2LD and the ccTLD. The Respondent did not provide any details of the auction at which it purchased the disputed domain name. Thus, it is not clear how much the Respondent paid for the disputed domain name and whether, immediately before the Respondent acquired it, the disputed domain name was registered to another person or, instead, was an expired registration that was about to drop. However, nothing turns on this lack of detail, for the simple reason that the manner in which the Respondent acquired the disputed domain name is not relevant to whether the Respondent has rights or legitimate interests in it. That is to say, a registrant does not gain rights or legitimate interests in a domain name merely by virtue of acquiring it in an auction rather than through the standard registration process. Put another way, if a registrant would not have rights or legitimate interests in a particular domain name when acquired through a standard registration process, it will not gain such rights or legitimate interests merely by virtue of acquiring the domain name through an auction or some other non-standard means. The Complainant and the Respondent disagree on the question of whether the disputed domain name is descriptive or generic. Again, however, nothing turns on this. As explained in paragraph 2.2 of the auDA auDRP Overview 1.0, a respondent cannot rely solely on the fact that the domain name is composed of ordinary language words to ground a claim to rights or legitimate interests in it. If the complainant makes a prima facie case that the respondent has no rights or legitimate interests in the domain name, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the auDRP, or any other basis for rights or legitimate interests, then the respondent will lack a legitimate interest in the domain name even if it is comprised of a dictionary, descriptive or generic word or phrase. The only relevant claims made by the Respondent in relation to rights or legitimate interests in the disputed domain name are its use of the domain name for an e-commerce website, and its trademark applications and business name registration. The Respondent’s contentions and evidence of its use of the disputed domain are not persuasive. The Respondent asserted that it began preparations to use the disputed domain name for a website on March 4, 2020 when it informed its web developer of its desire to proceed with the project. However, the evidence offered does not support the contention. The email states “we’re not quite ready on the Domain Boutique project yet … we would be looking to start the DB project in the next few weeks”. There is nothing in the email to suggest that the “Domain Boutique project” or the “DB project” is in any way connected with the disputed domain name. Moreover, the e-commerce website to which the disputed domain name eventually resolved (on around May 16, 2020) is, in the opinion of a majority of the Panel, a sham website. It is a very basic Shopify site, which, although labelled as “Bromance Exotic Foods - Foods That Seduce”, offers unerotic and non-seductive dried pasta, dried cranberries, pitted prunes, and apricots. The majority of the Panel finds that this is not a bona fide use of the disputed domain name, and hence does not demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent’s trademark applications have been accepted, but have not yet been advertised. Thus, the applications have not yet proceeded to registration, and are subject to the potential for opposition. As explained in paragraph 2.7A of the auDA auDRP Overview 1.0, auDRP panels have found that an application by the respondent to register a trademark does not, of itself, automatically generate rights or legitimate interests in a corresponding domain name. The reason is that, although the rights to a trademark registration, once granted, run from the date of the application, a pending application does not confer any enforceable legal rights. The majority of the Panel finds that the Respondent’s pending trademark applications do not, of themselves, demonstrate rights or legitimate interests in the disputed domain name. This leaves the Respondent’s business name registration. The auDRP recognises (in footnote 1) that a registered business name constitutes a “name” for the purposes of paragraph 4(a)(i). However, the paragraph 4(a)(i) requirement and the paragraph 4(a)(ii) requirement address quite different issues – the former is a threshold requirement, the satisfaction of which establishes the “standing” of a complainant to bring a complaint under the auDRP; the latter is a substantive requirement, the failure to satisfy which precludes the complainant from obtaining a remedy under the auDRP. The majority of the Panel is of the view that a business name registration does not, of itself, establish that the holder of the business name has rights or legitimate interests in a domain name that is or contains the business name. This is because a business name registration is simply an act undertaken to avoid liability under section 18 of the Business Names Registration Act 2011 (Cth) (“BNR Act”), which makes it an offence for an entity to carry on business under a name that is not a registered business name and which is not the entity’s legal name. As section 17(2) of the BNR Act makes clear, a business name registration does not provide the registrant with any proprietary rights to the registered name. In the circumstances of this case, in which the majority of the Panel has found that the Respondent is not operating a genuine business using the disputed domain name, the mere fact that the Respondent has a business name registration which includes the term “bromance” does not, of itself, demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. In the absence of any evidence from the Respondent establishing the existence of circumstances that demonstrate rights or legitimate interests in the disputed domain name, the majority of the Panel finds that the Respondent has not met its burden of production which arises upon the Complainant’s establishment of a prima facie case of no rights or legitimate interests. Accordingly, the majority of the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith Paragraph 4(b)(v) of the auDRP provides that it is evidence of the registration and use of a domain name in bad faith if any of the representations or warranties as to eligibility or third party rights given by the registrant on application or renewal are, or subsequently become, false or misleading. Schedule A of the auDA Policy No. 2008-07 Mandatory Terms and Conditions Applying to .au Domain Name Licences (“auDA Mandatory Terms Policy”) sets out, in paragraph 1, the warranties that the registrant makes, and is taken to have made, when applying to register a domain name in the .au ccTLD. Paragraph 1.2 of the auDA Mandatory Terms Policy is the warranty that “the registrant meets, and will continue to meet, the eligibility criteria prescribed in the auDA Published Policies for the domain name for the duration of the domain name licence”. The requirements that must be satisfied for an entity to be entitled to hold a domain name in the .au ccTLD are set out in auDA Policy No. 2012-04 Domain Name Eligibility and Allocation Policy Rules for Open 2LDs (“auDA Eligibility Policy”).1 Paragraphs 2 and 3 of Schedule C of the auDA Eligibility Policy specify that a “.com.au” domain name must be either: (i) an exact match, abbreviation or acronym of the registrant’s name; (ii) otherwise closely and substantially connected to the registrant, in accordance with the categories of close and substantial connection set out in auDA Policy No. 2012-05 Guidelines on the Interpretation of Policy Rules for the Open 2LDs (“auDA Interpretation Guidelines”); or (iii) registered for the purpose of domain monetization, in accordance with the explanation set out in the auDA Interpretation Guidelines. The evidence in the case file makes it clear to the majority of the Panel that, at the time of the Respondent’s initial registration of the disputed domain name in March 2018 (and at any subsequent renewal that occurred prior to May 2020), the Respondent did not satisfy the eligibility requirements set out in paragraphs 2 and 3 of Schedule C of the auDA Eligibility Policy. That is to say, at the time of the Respondent’s initial registration of the disputed domain name in March 2018 (and at any subsequent renewal that occurred prior to May 2020), the disputed domain name was not an exact match, abbreviation or acronym of the registrant’s name, was not otherwise closely and substantially connected to the registrant, and was not registered for the purpose of domain monetization. Given that the Respondent was not eligible to initially register (or to renew) the disputed domain name prior to May 2020, it follows that the warranty as to eligibility that was made by the Respondent upon registration (and renewal) of the disputed domain name was false. According, to paragraph 4(b)(v) of the auDRP, this is evidence of registration and use of the disputed domain name in bad faith. The Respondent filed two trademark applications, and obtained a business name registration, containing the word “bromance” in May 2020, soon after the Complainant’s agent informed the Respondent that the agent’s client had trademark rights in BROMANCE. It seems clear to the majority of the Panel that these applications and registration were obtained by the Respondent for the purpose of attempting to “shore up” a claim to entitlement to the disputed domain name, rather than being in preparation for a bona fide trading use of the disputed domain name. This attempt did not, and could not, succeed. The facts show that, at the time it registered the disputed domain name, the Respondent was not eligible to do so, meaning its warranty as eligibility was false. Even without the deeming that is effected by paragraph 4(b)(v) of the auDRP, this act would constitute registration in bad faith – see the cases referred to in paragraph 3.2A of the auDA auDRP Overview 1.0. By virtue of paragraph 4(b)(v) (which was introduced subsequent to publication of the auDA auDRP Overview 1.0), this act is deemed to be evidence of both registration and use of the disputed domain name in bad faith. For the immediately foregoing reasons, and for the reasons set out in the majority of the Panel’s discussion of rights and legitimate interests in section 6B above, the majority of the Panel finds that the disputed domain name was registered and has been used in bad faith by the Respondent. D. Appropriate Remedy Paragraph 4(i) of the auDRP provides that the remedies available to a complainant shall be limited to cancellation of the domain name or transfer of the domain name registration to the complainant, provided the complainant is otherwise eligible to hold the domain name. In almost all cases, the complainant requests the remedy of transfer; and, in almost all cases where the complaint succeeds, the panel grants the remedy requested. There are, however, instances where a panel has ordered a remedy other than the one requested by the complainant – in particular, where the panel has ordered cancellation of the domain name even though the complainant requested that it be transferred. This Panel is aware of eight such decisions under the auDRP. The reasons given by the panels for making this order are varied. In a number of cases, the panel’s reasoning (or lack thereof) is curious: (i) transfer was requested to either of two co-complainants, but the panelist was “unable decide” (sic) which one was more deserving;2 (ii) transfer was requested to a particular one of the two co-complainants, but the panelist felt “logically” the domain name should be transferred to the other co-complainant;3 and (iii) the two remedies were sought in the alternative, and the panelist ordered cancellation without providing any reason for doing so.4 In other cases, the reasoning is more comprehensible: (i) the complainant did not satisfy the eligibility requirements;5 (ii) the domain name contains the family name of a beneficiary of the respondent;6 (iii) transfer of the domain name to the complainant would cause continuing confusion in the minds of Internet users;7 (iv) the domain name is an ordinary English word and is unlikely to distinguish the complainant’s goods or services from the goods or services of other traders;8 and (v) there are many owners of names or marks who would have a right or legitimate interest in the domain name, and the complainant does not have sufficient exclusive or predominant right or interest in the domain name to obtain it automatically by transfer.9 The peculiar circumstances of this case require the majority of the Panel to consider carefully what is the appropriate remedy to order. Of significance to the majority of the Panel is the fact that the Complainant has not to date used its registered word trademark BROMANCE, and hence does not have any reputation in that trademark. Moreover, the Complainant did not provide any evidence to support its claim to a proposed future use of the trademark. Furthermore, the term “bromance” is a dictionary term, and other traders are using it – including one who has a prior registration for a trademark that incorporates the term (Australian Registration No. 1902930). Thus, the Complainant’s right to exclusive use of the term “bromance” is neither wide nor strong. As a result, the position of the Complainant is essentially the same as that of the Respondent – neither party has any established reputation in the trademark BROMANCE, neither has a strong exclusive right to use the term “bromance”, and hence neither has a persuasive claim of a greater entitlement to the disputed domain than the other. While the Respondent is disentitled to continue to hold the disputed domain name due to the false warranty it made when registering it, there is no compelling reason to consider that the Complainant has any stronger claim to the disputed domain name than does the Respondent. While acknowledging that it is an unusual step to do so, the majority of the Panel considers that the appropriate remedy in this unusual case is cancellation of the disputed domain name. 7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the auDRP and 15 of the Rules, the majority of the Panel orders that the domain name Andrew F. Christie The Hon Neil Brown Q.C. John Swinson Peachbulk Pty Ltd v. Domain Boutique Pty Ltd WIPO Case DAU2020-0013 Dissent. The Hon N A Brown QC Trademark It is clear that the Complainant has a trademark, its registered trademark for BROMANCE, and that it is obliged only to have a trademark at the time the Complaint is filed. It is also clear that the domain name is identical to that trademark. The Complainant has therefore met its obligations to obtain standing in this proceeding. However, the Complainant does not leave it there, but goes to make the point that because the trademark was filed on February 2, 2018 with IP Australia, this date was “earlier” than March 3, 2018, the date of registration of the domain name. That is literally correct, of course. Section 72 of the Trademarks Act provides that when a trademark is registered, it is “taken to have had effect” from the date of filing of the application for the trademark. But at the time when the Respondent bought its domain name at auction and registered it, on March 3, 2018, the Complainant did not have any trademark rights in BROMANCE. It filed its trademark application on February 2, 2018 and it was accepted by IP Australia on March 15, 2018. But by that date, and in fact some 12 days earlier, the Respondent had registered the domain name. The acceptance of the application for the trademark was not advertised until June 28, 2018, some 3 months after the domain name had been registered. Eventually the trademark was registered on September 5, 2018 and advertised on September 13, 2018. Clearly, the trademark had a retrospective effect to February 2, 2018, but when the domain name was registered there were no trademark obstacles in the Respondent’s way, no reason why it should not have registered the domain name, and no way that the Respondent could have known that the Complainant had applied for a trademark or had any intention of doing so, other than by scouring the Australian Official Journal of Trademarks (AOJT). The application was made on February 2, 2018 and the application was not published in the next edition of the AOJT on February 8, but it was published in the following edition on February 15, 2018, albeit listed under the name Peachbulk Pty Ltd, being the applicant in application No.1904495. In any event, if it were said that the Respondent must have known of the application by this or some other means, that should have been made an issue and a matter of evidence from which inferences could be drawn, one way or the other. Rights or legitimate interests The Respondent raised several grounds to show that it has a right or legitimate interest (RLI) in the domain name. This panelist takes the view that each of them has merit and that, together, they constitute the RLI that must be shown under the Policy. The test for whether they pass muster for that purpose must surely be, not whether they are perfect in every respect and beyond reproach, for few if any such cases can be so described, but whether they are plausible. In that regard, it should be remembered that this is a summary procedure where panels should, and usually do, make a general assessment of the defence put forward by a respondent and ask whether on the whole it is arguable, or as suggested above, plausible. In doing so a panel should bear in mind that the intention of auDA is, subject of course to specific requirements, that entitlement to a domain name is to be on a “first come, first served”10 basis. Indeed, the Policy has exactly that notion woven into paragraph 4 C and in two respects. First, the specific criteria of RLI are not exclusive, but are without limitation, and respondents are entitled to rely on any consideration to show that they have an RLI. Secondly, although not expressed in the same words as in the UDRP, the Australian policy takes the view that the test is whether the totality of the evidence “is to be taken to demonstrate” the RLI. Taken together, the evidence adduced by the Respondent in the present case easily meets that test. In the present case, the Respondent has bought a domain name at auction, which must have given him some comfort that there were no known third party claims to it and a domain name that it has never used to target or trespass on any one else or their rights or trademarks. In those circumstances, it had a right to buy the domain name and use it for a legitimate purpose. The Respondent relied on several grounds to show its RLI. Regrettably, not all of them were considered, despite the direction in the Policy that “all evidence presented” should be evaluated. One ground relied on that has not found favour with the majority of the Panel is the point just mentioned, that the domain name was acquired at public auction. Indeed, the majority view is that this ground is “not relevant”. I disagree. There is probably no rule or practice that such a purchase gives an automatic right to the buyer of a domain name, but it may do so if the circumstances show that the buyer had a reasonably based belief that the sale was legitimate in every sense and that it would not be trespassing on a trademark owner’s rights if it bought the domain name. That approach has found favour in UDRP decisions and commentary. The fact that it bought the domain name at auction where it can be presumed it was a being sold by a previous rightful owner or that it had been abandoned, gives some, although obviously not conclusive credence to that view. It must be remembered here that when the Respondent bought this particular domain name the Complainant had no trademark for BROMANCE and its application for the trademark had not even been accepted by IP Australia or advertised; there was no other trademark on the register for BROMANCE and the only other trademark for that word had lapsed 7 years earlier. Nor had the Complainant itself used the mark in business or at all. On the evidence that has been provided to the Panel, it seems, therefore that the purchase was an innocent and legitimate one. That could have been confirmed or rejected by further evidence which at least this panelist felt could assist him and the Panel as a whole in deciding if the sale were legitimate or whether it gave rise to suspicion about the Respondent’s motivations. It was for that reason that this panelist moved to invite the Respondent to give further evidence about the auction and his part in it. The majority of the Panel rejected that proposal. This has limited the assessment that the Panel can make of all of the circumstances surrounding how the respondent bought the domain name and its knowledge and motivation at the time of the purchase. Nevertheless, it is at least plausible that a party who buys a domain name at a public auction, as the Respondent has done, when there is no reason why the buyer should not buy it, when everything points to the purchase being legitimate and the respondent’s conduct being honest and reasonable, gives the respondent a right or legitimate interest in the domain name. This Panel therefore should give considerable credence to the fact that the domain name was acquired, in public and at an auction where presumably any buyer, including the present Complainant, could come forward, there was no known trademark obstacle to the Respondent or anyone else buying the domain name, the Respondent has said it did not know of the Complainant and there seems to be no reason why it should or could have known of the Complainant, who was not then using the name in its business or exhibiting any signs that it might do so in the future. This is sufficient as a whole to support a finding of an RLI in the Respondent and, if not, it is certainly enough to say that a positive finding that it did not have such an RLI must be very dubious indeed and should not be made. The second ground relied on by the Respondent was that the domain name is “descriptive or generic”. This was rejected by the majority on the ground that “nothing turns” on it, a bold assertion and one that is contrary to a long-standing acceptance in this field that a lot turns on it. What turns on it is that the Respondent acquired, at a time when there was no trademark or other objection to its doing so, a domain name using a word that is now in common usage, with a recognised meaning and defined in many dictionaries and a word that is widely used by others. No specific person, whether the Complainant or anyone else can have exclusive rights to such a word or prevent other parties from using it in a domain name. The question is therefore whether the Respondent has a right to use part of the common language and whether it has an identifiable interest in doing so. The answer to those questions must be yes, unless there is a clear embargo on doing so in the contract to which the acquisition of the domain name is subject or whether there is some clear statutory objection to acquiring the domain name. The obligations on the Respondent in paragraph 2 of the Policy have not been broken, so far as the evidence goes; indeed, the evidence available would suggest the contrary. It was eligible for a domain name in the open 2LD; the state of the Respondent’s knowledge at the time of the registration must negate any notion that it would have violated the rights of any third party and there is no suggestion it could have been in breach of criterion (c) or (d). In particular, it is difficult to see how anyone, either the Respondent or anyone else, could have known on March 3, 2018 that the Complainant had filed an application for the BROMANCE trademark that had not been accepted by IP Australia and certainly not advertised. That being so, the Respondent has acquired a domain name based on a word that anyone is entitled to use and which the Respondent has not used to target, mimic or pass itself off as the Complainant, sell competing or counterfeit goods or engage in any other untoward conduct. This gives it an RLI in the domain name or alternatively it makes the denial of such an RLI to be very unsafe. The third ground offered for the RLI is that the domain name has been used by the Respondent for an ecommerce website. The majority of the panel disparage this as a “sham.” This panelist certainly does not find the evidence adduced in support of the website to be very persuasive and it appears to have the imperfections we often find in evidence in cases of this sort. It should, however, be put in balance with the other evidence and probably subjected to more examination before it is written off as a “sham”. That is tantamount to its being described as a fraud, which is entirely inappropriate language to be using about a party in these proceedings in the absence of clear evidence and without the party being given an opportunity to defend itself against such a charge. It is far more realistic to see the website as part of the positioning engaged in by both parties for the eventual price of the domain name to be as high or low respectively as they could make it. The Complainant engaged in similar conduct itself, the only difference being that its conduct is not characterised as a “sham”; it was dressing up its claim in the hope of buying the domain name for a lower price and giving an air of verisimilitude to what was obviously, and still is, a non-existent business under the name Bromance. The Complainant had obtained registration of its trademark on September 5, 2018 but clearly did not bother using it through the remainder of 2018, the whole of 2019 and through 2020 until May 12, 2020 when its agent asserted to the Respondent that his principal had trademark rights in BROMANCE. Even now, as at the filing of the Complaint on July 7, 2020, the best that the Complainant can do is say that its cosmetics are “to be commercialised” under the name Bromance, presumably meaning that it will do at some indeterminate date in the future, which will then be over two years from its filing for its trademark, when it must have made the same statement to comply with Section 27 of the Trademarks Act. In contrast, at least the Respondent has used the domain name to advertise goods that it reasonably sees as coming within the meaning of “bromance”, for the word is widely defined to cover the social interaction between the persons concerned in the “bromance”; it does no violence to the language at all to import that notion of social interaction into the daily use of the word, and some of the images used to illustrate a “bromance” include the use of food and drink as accoutrements for maintaining and advancing the relationship, including the pasta,11 much criticized by the majority. For some reason, the majority has singled out, as the basis for finding that the website is a “sham”, the pasta and other food sold on the Respondent’s website because they are “unerotic and non-seductive”, which is not a test of any relevance in this proceeding. Moreover, if a panel is to apply subjective and judgmental conclusions of that sort, it suggests that the panel is applying wrong principles in reaching its conclusions. The only relevant conclusion to be reached here is whether the Respondent’s website is plausibly within the meaning of the domain name. There is more than enough evidence to conclude that it is. Taken together, the foregoing considerations give rise to an RLI in the domain name on the part of the Respondent. Bad Faith The Panel’s reason for finding bad faith seems now to be the single issue of whether various auDA policies result in the Respondent having registered and used the domain name in bad faith. In particular it does not seem to be part of the case that the domain name was acquired by the Respondent “primarily” for resale to another person. In any event it is clear that such a conclusion could not be reached on the evidence. It is true that the domain name was available for sale and the evidence is that this was so on April 21, 2020 which was two years after the Respondent had acquired it. It therefore cannot be assumed that it was the intention of the Respondent at the time when it acquired the domain name that it was doing so for resale. In particular, it cannot be assumed that it was the Respondent’s intention “primarily” to acquire the domain name for resale, which is the requirement in the Policy. The Panel did not have, although it could have had, additional evidence that would have enabled it to reach better conclusions on the intentions of the Respondent at the time of the purchase. That being so, a positive conclusion should have been made that the Respondent did not acquire the domain name primarily for selling it (etc.) to another person. Accordingly, the only issue is that relating to the auDA policies. The provisions of paragraph 4(b)(v) of the Policy, paragraph 1 and 1.2 of Schedule A of the auDA Policy No. 2008-07 Mandatory Terms and Conditions Applying to .au Domain Name Licences, paragraph 8 of Schedule A of the auDA Policy No.2012-04 Domain Name Eligibility and Allocation Policy Rules for Open 2LDs,and paragraphs 2 and 3 of Schedule C of that Policy are accurately set out in the decision. The argument on these policies seems to be solely whether the domain name is closely and substantially connected to the registrant. Some guidance is given in the Guidelines bv way of examples as to how that is to be ascertained. The examples, however, are only examples, as are the industries specified in the examples and the question always remains whether a particular domain name is closely and substantially connected to the registrant, bearing in mind the industry in which it is engaged. Thus First, it is stating that it holds the domain name In any event, the finding of the Panel on whether the domain name is “closely and substantially connected” to the registrant should be considered with all other evidence, before a decision is made on the question at issue, which is whether the Respondent registered or used the domain name in bad faith. Accordingly, when the Panel considers this issue, together with the facts that the domain name was bought at auction, registered legitimately, was not then or since in breach of any trademark for BROMANCE and was not used to harm the Complainant in any way, the Panel should conclude that it was not registered or used in bad faith. The appropriate remedy The Panel has ordered that the domain name be cancelled. In the opinion of this panelist, that conclusion is unwise and unnecessary. The majority of the Panel itself has found that the Complainant has never used its trademark BROMANCE, that it has no reputation in the mark, has given no evidence that it intends to use it in the future, that the term in the domain name is a dictionary word and that other parties in business are using it. One might ask what else the Respondent could be expected to prove to show that on balance it should retain its domain name. These findings represent major shortcomings in the Complainant’s case and as the onus of proof rests on the Complainant, the claim should be dismissed. A panel would not normally order a transfer when such findings have been made against a Complainant and accordingly the Complaint should have been dismissed. Moreover, the Parties were entitled to a remedy that would have brought the dispute to an end. Instead, after spending the time and cost of pursuing it through the auDA dispute resolution process, they are left with nothing or, rather, nothing but a perpetuation of the dispute. Presumably they will now have to contemplate judicial proceedings to obtain the finality they were entitled to expect here, but which they have been denied. The Complainant submitted only to the jurisdiction of the Cayman Islands courts as its chosen mutual jurisdiction, being the address of the Registrar and that is now the only venue where the Respondent can have confidence that it will find jurisdiction. This puts an unfair and unnecessary burden on the Respondent who is entitled to have this Complaint denied. Thus, the decision to cancel will come not only as a surprise to the Complainant but as a disappointment to those who see the UDRP and auDA processes as a quick and reasonably economical way of resolving domain name disputes and in particular to those who thought that buying a domain name at auction gave them at least some confidence. It is anything but that in the present case. The Hon Neil Brown QC 1 The Complainant made reference to paragraph 8 of Schedule A of the auDA Eligibility Policy, which applies to all open 2LDs and states that a registrant may not register a domain name for the sole purpose of resale or transfer to another entity. Due to its findings in relation to paragraphs 2 and 3 of Schedule C of the auDA Eligibility Policy, it is not necessary for the majority of the Panel to address the Complainant’s contention that a breach of paragraph 8 constitutes evidence of bad faith for the purposes of paragraph 4(a)(iii) of the auDRP – and the majority of the Panel does not do so. 2 Premier Fire Prection Services (NSW) Pty Ltd and Premier Fire Services (NSW) Pty Ltd, LEADR Case No. auDRP07/05. 3 The Calvin Klein Trademark Trust and Calvin Klein, Inc v. Yangjae Kim (t/a Primary Blue), LEADR Case No. auDRP08/08. 4 Regional Publishers Pty Ltd v. Australianews.com.au Pty Ltd, LEADR-auDRP03/10. 5 Rainbow Sandals, Inc. v. Malua Point Holdings Pty Limited, Anthony Brown / Malua Point Holdings Pty Limited a/k/a Malua Point Merchants,WIPO Case No. DAU2013-0014. 6 Jaguar Land Rover Limited v. The Trustee for the Trivett Family Trust,WIPO Case No. DAU2016-0033 ( 7 E.F.G. Nominees Pty Limited v. Lenland Property Development Pty Ltd, IAMA Case No. 3658 ( 8 Woopie-Do Pty Ltd v. Goodwin Reading Diagnostic Centre, IAMA Case No. 3714 ( 9 Leader Computers Pty Ltd v. Australian Flourish Pty Ltd, LEADR Case No. auDRP05/12 ( 10 https://www.auda.org.au/policies/index-of-published-policies/2012/2012-05/ 11https://www.google.com/search?q=bromance+food+and+drink&tbm=isch&ved=2ahUKEwjZwoXR4q3sAhXnnUsFHesyAQQQ2-cCegQIABAA&oq=bromance+food+and+drink&gs_lcp=CgNpbWcQDDoECAAQQzoCCAA6BAgAEB46BggAEAgQHlC6Z1isgwFg15UBaABwAHgAgAH-AYgBhxSSAQYwLjEzLjKYAQCgAQGqAQtnd3Mtd2l6LWltZ8ABAQ&sclient=img&ei=mp-DX9mNN-e7rtoP6-WEIA&bih=896&biw=1903&hl=en-GB
Presiding Panelist
Panelist
Panelist
Date: October 9, 2020
Date: October 9, 2020
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