The Complainant is PB Fintech Private Limited, India, represented by Wadhwa Law Chambers, India.
The Respondent is Wayde Knight, The Trustee for WDK Trust, trading as Knightcorp Insurance Brokers, Australia, represented by Cooper Mills Lawyers, Australia. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 9, 2021, the Registrar transmitted by email to the Center its verification responses 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 proceeding commenced on March 9, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2021. The Response was filed with the Center on March 29, 2021. The Center appointed Sebastian M.W. Hughes, Frank Schoneveld, and The Hon Neil Brown QC as the Panel in this matter on May 17, 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 A. Complainant The Complainant is a company incorporated in India and a leading provider, since 2008, of online insurance products in India, under the trade marks POLICYBAZAAR.COM and POLICY BAZAAR (the “Trade Mark(s)”). The Complainant’s wholly owned subsidiary, Policybazaar Insurance Brokers Private Limited, is the owner of several registrations in India for the Trade Marks, including trade mark registration number 1764830 for the Trade Mark POLICYBAZAAR.COM, with a registration date of December 17, 2008; and registration number 2183636 for the Trade Mark POLICY BAZAAR, with a registration date of August 1, 2011. B. Respondent The Respondent is a company incorporated in the State of Western Australia. The Respondent is a licensed insurance broker in Australia. C. The Disputed Domain Names The disputed domain names were registered on June 4, 2015. D. The Websites at the Disputed Domain Names The disputed domain names have not been used and resolve to a holding page hosted by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks; the Respondent has no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered or subsequently used in bad faith. B. Respondent The Respondent contends that the Complainant does not meet the eligibility rules for registration of the disputed domain names; the Complainant does not possess any relevant trade mark or other rights in Australia for the purposes of the first limb under paragraph 4(a)(i) of the Policy; the Respondent was not aware of the Complainant and of its rights in the Trade Marks until receipt of the Complaint herein; the Respondent registered the disputed domain names in respect of a nascent and not yet launched “direct to market insurance policy marketplace” and, accordingly, the Respondent has rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have not been registered or subsequently used in bad faith. The Respondent also requests the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant. 6. Discussion and Findings 6.1 Eligibility Paragraph 6.1 of the Policy states as follows: “6. REMEDIES AVAILABLE TO COMPLAINANT 6.1 A Complainant may seek to have the domain name licence: a) cancelled, in which case the domain name will become available for registration in the normal way; or b) transferred to themselves, but only if the registrar determines that they are eligible to hold the domain name under the relevant policy rules.” This is reflected in paragraph 4(i) of Schedule A to the Policy, which states as follows: “i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name).” Schedule A to the .auDA Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the “Eligibility Rules”) provides relevantly as follows: ELIGIBILITY AND ALLOCATION RULES FOR ALL OPEN 2LDS First come, first served 1. Domain name licences are allocated on a ‘first come, first served’ basis. It is not possible to pre-register or otherwise reserve a domain name. Registrants must be Australian 2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD Schedule C to the Eligibility Rules provides relevantly as follows: ELIGIBILITY AND ALLOCATION RULES FOR COM.AU The com.au 2LD is for commercial purposes. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the com.au 2LD, registrants must be: a) an Australian registered company; or b) trading under a registered business name in any Australian State or Territory; or c) an Australian partnership or sole trader; or d) a foreign company licensed to trade in Australia; or e) an owner of an Australian Registered Trade Mark; or f) an applicant for an Australian Registered Trade Mark; or g) an association incorporated in any Australian State or Territory; or h) an Australian commercial statutory body. Schedule E to the Eligibility Rules provides relevantly as follows: ELIGIBILITY AND ALLOCATION RULES FOR NET.AU The net.au 2LD is for commercial purposes. The following rules are to be read in conjunction with the Eligibility and Allocation Rules for All Open 2LDs, contained in Schedule A of this document. 1. To be eligible for a domain name in the net.au 2LD, registrants must be: a) an Australian registered company; or b) trading under a registered business name in any Australian State or Territory; or c) an Australian partnership or sole trader; or d) a foreign company licensed to trade in Australia; or e) an owner of an Australian Registered Trade Mark; or f) an applicant for an Australian Registered Trade Mark; or g) an association incorporated in any Australian State or Territory; or h) an Australian commercial statutory body. Paragraph 15(a) of the Rules provides that “A Panel shall decide a 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 it deems applicable”. The Panel considers it is obliged to determine the question of eligibility both in light of the express reference to eligibility in the Policy, and in considering the Eligibility Rules, being rules applicable to the determination of this complaint. The Complainant is a company incorporated in and doing business in India. The Complainant does not carry on any business in Australia (as a licensed insurance broker, or otherwise). The Complainant does not meet any of the alternative eligibility requirements set out in paragraphs 1(a) to 1(h) of Schedule C and Schedule E to the Eligibility Rules. In particular, it is not the owner of any registered trade marks in Australia. The Panel therefore finds that the Complainant is ineligible to own the disputed domain names under the Eligibility Rules. Accordingly, the Panel determines that the Complaint should be denied, without making any findings with respect to the three elements set out under paragraph 4(a) of the Policy, but noting that, had it been necessary to do so, it would appear the Complainant might in any event have had difficulty in fulfilling each of the three requisite elements. 6.2 RDNH Paragraph 15(3) of the Rules provides as follows: … If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. RNDH is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. The Respondent requests a finding of RDNH on the following grounds: 1. The Complainant has at no time served the Respondent with a letter of demand, outlining the subject matter of its dispute. 2. The term “Policy Bazaar” is a descriptive and generic laudatory term, a point the Complainant has sought to mislead the Panel on; 3. The Complainant has failed to satisfy any of the grounds of the Policy; 4. The Complainant is legally represented by experienced Counsel, and ought to have known that there was no proper basis to bring this proceeding; 5. The Complainant only trades in India, and is not licensed to trade in Australia. 6. The Respondent does not trade in India. 7. The Complainant did not raise its concerns with the Respondent and sought to surprise the Respondent and try to claim domain names which it is not eligible to hold under the Policy, these factors confirm its determination to harass the Respondent and disrupt its business and put it to the expense of defending itself in this proceeding. Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH. The Panel majority considers that, in light of its reputation as a leading provider of online insurance products in India under the Trade Marks since 2008; its numerous registrations for the Trade Marks in India; the fact the disputed domain names, disregarding the ccTLD, are both identical to the Trade Mark POLICY BAZAAR; and its prior success in recovering domain names identical or confusingly similar to the Trade Marks under the Uniform Domain Name Dispute Resolution Policy against respondents not based in India, the Complainant had sufficient prima facie grounds – notwithstanding its apparent ignorance of the Eligibility Rules - to commence this proceeding, and in doing so it did not act unreasonably. The Panel majority notes further that the Complainant and the Respondent both operate in the insurance field and, notwithstanding the Statutory Declaration provided by a director of the Respondent which states that he personally was not aware of the Complainant and of its rights in the Trade Marks prior to receipt of the Complaint herein, there is no evidence before the Panel that the Respondent itself had no such knowledge. Furthermore, as regards the second element under the Policy, the Respondent’s passive holding of the disputed domain names for 6 years from the date of their registration also suggests the Complainant had reasonable grounds for establishing the second limb (as well as the first limb) under paragraph 4(a) of the Policy. The Panel considers it is not unreasonable to suggest the Complainant might want to enter the Australian market in future, nor is there any obligation on complainants to send letters of demand or enter into prior discussions or negotiations prior to commencing proceedings under the Policy. For the above reasons, the Panel majority is unable to conclude that the Complaint was brought primarily to harass the Respondent. As regards bad faith (both in general in accordance with paragraph 15(e) of the Rules, and in accordance with RDNH as defined under the Rules), the Panel majority notes that the Eligibility Rules are publicly available on the .au Domain Administration Limited (auDA) website, and they are also expressly referred to on the Center’s information page “WIPO Domain Name Dispute Resolution Service for .AU” on the Center’s website (“Eligibility Criteria: .AU domain names are restricted to Australian registrants. Additional criteria apply under the eligibility and allocation rules for each second level domain”). Although not binding on the Panel, the Panel majority derives assistance from the judgment of Stewart J in Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530: 405. Section 62A of the TM Act provides that the registration of a trade mark may be opposed on the ground that "the application was made in bad faith”. 406. In Fry Consulting Pty Ltd v. Sports Warehouse Inc (No 2) [2012] FCA 81; 201 FCR 565 at [143]-[166], Dodds-Streeton J undertook a detailed analysis of s 62A and its requirements. In DC Comics v. Cheqout Pty Ltd [2013] FCA 478; 212 FCR 194 at [62]-[68], Bennett J sought to distil a number of principles from Dodds-Streeton J's analysis. I gratefully adopt that distillation, and identify the following as being relevant principles: - Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it. - Bad faith does not require dishonesty. - Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person's behaviour fell short of acceptable commercial standards. - The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards. - Mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character. 407 The analysis of bad faith in Fry Consulting was cited with approval by Perry J in Bauer Consumer Media Ltd v. Evergreen Television Pty Ltd [2017] FCA 507; 349 ALR 679 at [341]. (Emphasis added). The Panel has a broad discretion under paragraph 15(a) of the Rules 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 it deems applicable”. Although the judgment in Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd concerned the question of bad faith under section 62A of the Trade Marks Act in the context of a trade mark opposition, the Panel majority considers the learned Judge’s findings on the question of bad faith are persuasive and helpful in the context of assessing bad faith under paragraph 15(e) of the Rules. In light of the publicly available Eligibility Rules, the Panel majority considers there are grounds to suggest that the Complainant (and its counsel) were negligent, incompetent or lacked prudence to reasonable and experienced standards in bringing the Complaint. It bears stressing, however, that bad faith is a serious allegation, and, in all the circumstances of this proceeding, the Panel majority is unable to conclude (on the balance of probabilities) that the Complainant’s conduct, in commencing this proceeding, was conduct of an unscrupulous, underhand or unconscientious character. The Panel majority therefore declines to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision For all the foregoing reasons, the Complaint is denied. Sebastian M.W. Hughes Frank Schoneveld In this matter, the Respondent has requested that a finding of Reverse Domain Name Hijacking (RDNH) should be made against the Complainant. The Panel must therefore have regard to the wording of the provisions in the Rules relating to findings of RDNH and the practice that has developed among panelists on when they will or will not be disposed to make a finding of RDNH. In that regard it may be said that at least on the issue of RDNH in general, the UDRP is similar to the auDRP and the experience on the former may be used as a guide to the latter. The first consideration is the provision in the auDRP Rules that enables a finding of RDNH to be made. The definition of RDNH in the Rules is: Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name. The Rules then provide that: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” There are therefore two situations where a finding might be made. The first is where the complaint is brought in bad faith, meaning that the complaint was filed for a malevolent purpose or to achieve an objective by improper means, for example by lying. The second is where the complaint was brought primarily to harass the registrant of the domain name, where for example the complainant, by filing the complaint, is trying to intimidate the registrant to give up the domain name before a finding is made against it that the domain name should be transferred to the complainant. Each case obviously depends on its own facts, but there are at least two tendencies that have emerged in those cases where a request for RDNH has been considered. The first tendency is the view that merely to lose a case on the merits is not a ground for a finding of RDNH. To lose a case need not be the same as having acted in bad faith or as having harassed the registrant. The second tendency is the view that if a complaint is filed which the complainant knows is baseless or which it will not be able to prove or make out, then the filing of the complaint may well amount to bad faith and/or harassment. It would, for example, be bad faith for a complainant to allege that it started business under a certain name before the registrant registered the domain name when in fact it knows that it started business after the registration. Likewise, if a complaint is filed which a panelist finds is so lacking in merit that it must have known or should have known that the case could not be proved and was hopeless, that may well be an attempt at RDNH. It should be noted here that the approach of the panelist would not be to ask if the case might fail, but that it would fail or that it could not be proved. Here it should also be noted that panels can, and do, take into account whether the complainant was represented by a lawyer. That is so because a lawyer, especially one who holds him or herself out as an expert in intellectual property law, should know if a case simply cannot be proved, no matter how good an expert he or she may be. That is why the complainant is required to certify that its assertions in the complaint make out “a good-faith and reasonable argument”. Again, it must be emphasised that each case will depend on its own unique facts. Applying these principles, this panelist would find that the complainant or alternatively its lawyers must have known that the case as filed would fail, because the complaint did not show that the Australian eligibility requirements had been met or that they could be met. If it did know this, it was demonstrating bad faith, because the complainant was asserting that an essential element of the claim, its standing, could be proved when it could not be proved, and the complainant knew it could not be proved. If the complainant’s lawyers did not know this, they should have known it, because it was basic to the claim it filed and which it asserted in the complaint was “a good-faith and reasonable argument”, which it must have known it was not. It is also harassment because it is clear that the complainant was trying to bluff the respondent and persuade it to relinquish the domain name because of a case it was presenting that it claimed was valid but which it knew or should have known was not so. That is so because the complainant must have known, when it considered whether to file the claim or not, that there was an Australian Policy to be considered. When considering it, the complainant would have noticed the provision in paragraph 6 of the Policy document that provides: “6. REMEDIES AVAILABLE TO COMPLAINANT 6.1A Complainant may seek to have the domain name licence: (a)…; or (b) transferred to themselves, but only if the registrar determines that they are eligible to hold the domain name under the relevant policy rules.” (emphasis added) Then, the complainant would have noticed that in the Policy itself, it provides in paragraph 4 i: 4 i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant (provided that the complainant is otherwise eligible to hold that domain name) (emphasis added). The Complainant was therefore informed in advance of filing the complaint that it would have to comply with and meet the Australian eligibility requirements. Upon making reasonable inquiries it would have seen that there were two requirements with which it had to comply. First, Schedule A of the Eligibility and Allocation Rules for All Open 2TLDS provides that : “Registrants must be Australian 2. Domain name licences may only be allocated to a registrant who is Australian, as defined under the eligibility and allocation rules for each 2LD.” Schedule C of the Eligibility and Allocation Rules for All Open 2TLDS provides that: ….. 1. To be eligible for a domain name in the com.au 2LD, registrants must be: a) an Australian registered company; …:” Instead of complying with those requirements, the complainant asserted in the complaint: “The Complainant is registered and incorporated under the laws of India and is located at Gurgaon, Haryana.” This is an admission that it could not prove the essential standing requirement specified in the Policy and the Rules. The complainant therefore knew that it could not prove the most basic requirement that had to be proved and yet it filed the complaint, certifying that it was presenting “a good-faith and reasonable argument”. That is a strong reason for making a finding of RDNH. With respect to the judgment of Stewart J in Allergan Australia Pty Ltd v Self Care IP Holdings Pty Ltd [2020] FCA 1530, cited by the majority, this panelist of course gives due credence to the learned Judge’s observations in that case. However, that was a trade mark case and the present proceeding is a domain name case and it must be decided in accordance with principles relevant to such proceedings and particularly the Rules made under the Policy. Having regard to all the circumstances, this panelist would make the finding of Reverse Domain Name Hijacking. The Hon Neil Brown QC
Presiding Panelist
Panelist
Date: June 7, 2021 Dissenting Opinion on the Issue of Reverse Domain Name Hijacking
Panelist
Date: June 7, 2021
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