The Complainant is 101domain GRS Ltd., Ireland, represented by Brand Enforcement Team 101 Domain, United States of America (“United States”).
The Respondent is 101 Web Technology Pty Ltd., Australia. 2. The Domain Name and Registrar
The disputed domain name <101domains.com.au> is registered with Domain Directors Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On February 26, 2021, the Center transmitted by email to Domain Directors Pty Ltd. a request for registrar verification in connection with the disputed domain name. On March 5, 2021, Domain Directors Pty Ltd. 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 5, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2021. The Response was filed with the Center on March 9, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 15, 2021. 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 has been an ICANN accredited domain name registrar since 2007. According to the Complaint, it has been carrying on business from the domain name <101domain.com> since 1999 when it registered that domain name.
In addition to its primary domain name, the Complainant says it has registered over 500 active country code domains and has provided a sample of these. These include <101domain.com.au> and numerous others for “101domain”. Its registrations also include a number of domain names for “101domains” (plural) such as, for example, <101domains.com.ar>, <101domains.fr>, <101domains.tv>, and <101domains.us>, to name only a few.
The Complainant has registered as a trade mark:
(a) United States Registered Trademark No. 4,801,533, 101DOMAIN, in International Classes 42 and 45. This trade mark was filed on March 5, 2009, and registered on September 1, 2015; and
(b) Australian Registered Trade Mark No. 1552822 for a figurative or fancy version of “101domain”, which was filed and is registered from April 19, 2013.
The Australian registered trade mark is registered in respect of:
Class 35: Advertising; business management; business administration; office functions; marketing services, namely, conducting consumer tracking behaviour research and consumer trend analaysis on social media via computers
Class 42: Designing, developing and hosting web sites for others on a global computer network; providing e-mail and spam filtering services; blocking pop-up messages and protecting the privacy of users during the course of interacting with a global computer network
Class 45: Computer services, namely, managing and registering domain names for use on a global computer network
According to the Response, the Respondent was incorporated in Australia in 2003. Apparently, it provides Internet and website related services to clients including, according to the Response, a number of Federal Government Departments such as the Office of Parliamentary Counsel, the Department of Defence, and the Department of Health. The Respondent says it holds security clearances required to provide its services to these departments and agencies.
In connection with the provision of these services, the Respondent says it has been “selling” domain names as a wholesale partner of TPP Wholesale. According to the Response, this is not the Respondent’s primary business, but offered as a convenient service for its clients. It says it currently holds registrations of 103 domains for its clients and including its own domain names.
auDA has confirmed that the Respondent registered the disputed domain name on August 28, 2019.
To date, it has not resolved to an active website. The Respondent says it registered the disputed domain name in connection with a plan to provide an educational and centralized management platform for its clients:
“Background to the registration of 101domains.com.au. We saw a need amongst new clients to 101 Web Technology that many businesses did not understand domain name management, many had outdated registrant information, some had fallen victim to transfer scams and lost domains and almost all did not know who their domain was registered with. We registered 101domains.com.au for us to build an educational platform and host centralised resources for our clients to better understand online brand protection and why it is important to keep your domain records up to date, and in your control.”
Apparently, the Complainant discovered in September 2020 that the Respondent had registered the disputed domain name when a customer of one of its clients mistakenly typed the disputed domain name in a web browser. The client then notified the Complainant:
“For some reason my client tried to access their account by going to 101domains.com.au and looks like this domain is taken by another company.
“Thought that you guys should know about this.”
The Complainant then sent a cease and desist letter. In addition to the usual warnings and demands, the letter included an offer of AUD (presumably, the currency not being specified) 500 in exchange for transfer of the disputed domain name. The Respondent did not respond to that letter or a subsequent follow up. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.
The Complainant has proven that it owns the registered trade marks for 101DOMAIN in both the plain form (United States) and the slightly stylized or figurative form (Australia).
On the question of identity or confusing similarity, what is required is simply a visual and aural comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd.,WIPO Case No. DAU2002-0001. This test is more narrow and thus different to the question of “likelihood of confusion” under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant however, may fall for consideration under the other elements of the Policy.
Typically and as is appropriate in this case, it is permissible to disregard the Second Level Domain, .com.au, as a functional component of the domain naming system. See for example auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.2. It is also usual to disregard the design elements of a trade mark under the first element as such elements are generally incapable of representation in a domain name. See for example, auDRP Overview 1.0, section 1.11.
Accordingly, the disputed domain name differs from the Complainant’s registered trade marks merely by the addition of the plural “s”. As the entirety of the Complainant’s trade mark is visually and aurally recognizable within the disputed domain name, therefore, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trade mark. Such typographical differences, even if not a deliberate misspelling, are insufficient to avoid a finding of confusing similarity. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,WIPO Case No. DAU2002-0001.
The Complainant states it has not licensed or allowed the Respondent to register or use the disputed domain name. Nor is the Respondent affiliated with the Complainant in any way. It points out that the Respondent registered the disputed domain name some six years after the Complainant registered its trade mark and the domain name <101domain.com.au> in Australia.
The Respondent does not dispute these matters. It says the disputed domain name is a natural extension of its “101” brand name into a field it was already operating in as it has done with many other (unspecified) “101” names. It says further (or the Panel understands the Respondent’s submission to be that), the name is derived from its corporate name “101 Web” and/or “101 Web Technology” and so it complies with auDA’s qualification requirements.
“The registration of 101domains.com.au was registered in accordance with the AUDA policy. During the registration process, as the registrant I certified that I had a close and substantial connection to the name. With the successful registration I believed the domain to be registered without any infringements, as many of my other 101 prefixed domains have been before.”
The Respondent denies cybersquatting and says:
“101domains.com.au is part of our marketing strategy. The intent of the domain is to host centralised resources for our clients to better understand online brand protection and why it is important to keep your domain records up to date, and in their control.”
Successful registration of a domain name, however, is not a defence to trade mark infringement or other, similar proceedings. Apart from anything else, registration is subject to the operation of the Policy. Moreover, as a general matter, domain name registrars typically rely on the applicant for registration’s warranties that the applicant’s registration and use of the domain name will not infringe another’s rights and instead leave the resolution of disputes to after the registration process is completed. Indeed, clause 1.4 of the Registrant’s Warranties in Schedule A to the Policy explicitly states:
“the registrant is aware that even if the domain name is accepted for registration, the registrant’s entitlement to register the domain name may be challenged by others who claim to have an entitlement to the domain name.”
The Courts have regularly found that the registration and use of a domain name can be in violation of a trade mark owner’s rights, notwithstanding registration by auDA. See e.g., Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56at [287].
The Respondent has not provided evidence to support its claim that it has been “selling” domain names since 2005. Nor has it provided evidence to support its claims that it has made demonstrable preparations to use the business name. See e.g., auDRP Overview, section 2.1A.
Searches of the Wayback Machine at The Panel will accept therefore that the Respondent has been using its name and <101webtech.com.au> since that date. The Panel will also accept that “101” in that context operates as a trade source identifier and could provide a basis for satisfying auDA’s eligibility requirements for registering a domain name in the .com.au TLD. The disputed domain name, however, is for “101domains.com.au”. That is not a name which the Respondent was, or claims to have been using, before registering it in September 2019. The Respondent has also not actually used the disputed domain name yet. According to the Respondent, the disputed domain name resolves to “the default cPanel site as we are in the middle of a migrating [sic] to a new server”. The Respondent says it is collecting content, writing video scripts and trialling technology. As noted above, the Respondent has not submitted any objective evidence to support its claim. That would ordinarily be a sufficient basis for the Panel not to accept the proffered explanation. See for example the extended discussion and cases referred to at WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.2. Also as noted above, the Panel has accepted the Respondent’s claim that it is operating a genuine business under the name “101 Web Technology” and has been doing so since at least 2004. Even if the Respondent had provided evidence to demonstrate that it has been making preparations to use the disputed domain name in connection with the services it has claimed, however, the Respondent’s conduct would still be many years after the Complainant has registered its rights. The services the Respondent proposes to offer are vaguely identified. Nonetheless, it appears that many, if not all, would be in direct or close (if not direct) conflict with the services covered by the Complainant’s registered trade mark in Australia. There might be a number of defences which might be available to the Respondent in legal proceedings brought by the Complainant on the basis of the Complainant’s trade mark. In broad terms, these would be positive defences which the Respondent would have to raise and prove. An important consideration in their possible application is likely to be whether or not the Respondent took reasonable steps before adopting the disputed domain name. See, for example, Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 in Beach J said at [111]: “The test to be applied is in one sense objective. If a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then they are not acting in good faith. If the Respondents are to avail themselves of this defence they must show that their conduct was in good faith. The onus rests on them.” Other cases imposing similar requirements include Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252 at [293]-[294]; Insight Radiology at [125]-[127] (affirmed on appeal sub nom Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 at [103]). There is no legal obligation under the Trade Marks Act 1995 in Australia or the Policy to undertake a trade mark search before adopting a domain name. As the existence of the Policy makes plain, however, registration of a domain name is ultimately subject to and subordinate to the prior existing rights of trade mark owners. Ordinarily, therefore, one would expect a prudent business person to undertake a trade mark search before adopting a domain name; still more so before embarking on substantial use. The Respondent has not claimed it undertook a trade mark search before registering the disputed domain name. It appears to suggest it considered no such search was necessary as it had registered a number of other “101” domain names without issue. That may be the case, but it has not provided evidence of those other names. Moreover, “101” and “domains” are ordinary words in the English language alone but, in combination, have different connotations than combinations of “101” with other, different term(s). Furthermore, it is not at all clear to the Panel why the Respondent, having decided to proceed without taking the precaution of a trade mark search, should not bear the consequences of assuming that risk. In these circumstances, the Respondent has not displaced the prima facie case established by the Complainant that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy. C. Registered or Subsequently Used in Bad Faith In contrast to the Uniform Dispute Resolution Policy, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy. The two elements are disjunctive; it is necessary to establish only one or the other. Paragraph 4(b) of the Policy provides that: For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or (iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or (v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner. The Respondent denies that it registered the disputed domain name to take advantage of the Complainant’s trade mark. It points out that the disputed domain name has not been used to generate revenue from pay‑per-click advertising based on resemblance to the Complainant’s trade mark. Nor has it demanded payment for the transfer of the disputed domain name. Thus, according to the Respondent, the objective evidence does not demonstrate the Respondent has engaged in “cybersquatting”. That may be the case, but paragraph 4(b) of the Policy provides only examples of what is in breach of the Policy. Those examples are not an exhaustive definition of what qualifies as registration or use in bad faith under the Policy. See Do The Hustle, LLC v Tropic Web,WIPO Case No. D2000-0624. Also, although it has been derived from the UDRP, paragraph 4(b) of the Policy includes sub-paragraph (v). In the absence of rights or legitimate interests in the disputed domain name, its use for services covered by the Complainant’s registered trade mark would appear very likely to invoke paragraph 4(b)(v). Although the disputed domain name has been registered for over one year, it has not been used as yet. It is well-established that the so-called passive holding a domain name can constitute use for the purposes of the Policy. See for example auDRP Overview 1.0. section 3.2. In the present case, the use of the disputed domain name would appear likely to be in direct or, if not direct, very close conflict with the Complainant’s trade mark. Having failed to rebut the Complainant’s prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, therefore, the use of the disputed domain name would constitute use in bad faith under the Policy. The Respondent points out that the Complainant has not established a reputation with the public in Australia. Whether or not that is the case, the fact is the Complainant does have rights in relevant registered trade marks sufficient for the purposes of the Policy. The Respondent also points out that the Complainant’s service shows that both the Complainant’s own domain name, <101domain.com.au>, and the disputed domain name are available for registration. This is of course wrong, as both are in fact already registered. The accuracy or quality of the services the Complainant offers under its trade mark, however, is not the issue under the Policy. The Complainant has proven ownership of the two registered trade marks identified in section 4 above. The quality, or otherwise, of the services it provides under or by reference to those trade marks does not affect whether or not the Respondent has rights or legitimate interests in the disputed domain name or the registration or use of the disputed domain name is likely to misrepresent an association with the Complainant’s trade mark or otherwise constitute bad faith under the Policy. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 domain name, <101domains.com.au>, be transferred to the Complainant. Warwick A. Rothnie 1 In view of the similarity in the issues and the derivation (with modifications) of the Policy from the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), panels have frequently applied principles and approaches from the UDRP in deciding cases under the Policy.
Sole Panelist
Date: March 29, 2021
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