1. The Parties
The Complainant is Air Charter Service (Aust) Pty Ltd., Australia, represented by Holman Webb Lawyers, Australia.
The Respondent is AVMIN Pty Ltd, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name < aircharterservices.com.au > is registered with Web Address Registration Pty Ltd (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On July 20, 2021, the Registrar 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 July 29, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2021. The Response was filed with the Center on August 18, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 22, 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 is a company incorporated in Australia which offers air charter services. It was incorporated under its present name in March 2012 and, according to the Complaint, has been offering its charter services under that name since then.
The Complainant has registered two domain names:
(a)
(b)
The Complainant registered the first of those domain names in March 2012. It registered the second domain name in December 2013.
The Respondent is another Australian company which also offers air charter services or air charter brokerage solutions.1 It was apparently incorporated in September 2011 and has been providing its services under the name “Avmin” since around that date.
The disputed domain name was registered on December 4, 2020.
The disputed domain name redirects to a website at “www.avmin.com.au”. This website is headed “AVMIN® AIR CHARTER SPECIALISTS”.
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 name, trade mark, or service 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 not based its claim on any registered trade marks. Instead, it relies on rights in its corporate name or one or more unregistered trade marks. Its evidence is that:
“At all times, the Complainant has offered charter services under and in connection with its corporate name. The Complainant has been the user of, known by and used to market its services the domain names ‘www.aircharterservice.com.au’ (since March 19, 2012) and ‘www.aircharterservice.com’ (since
December 12, 2013). See Annexure 6 and 9.”
Annexures 6 and 9 are simply WhoIs records establishing the registration of the Complainant’s domain names at the relevant dates.
Note 1 to the Policy explains what constitutes a name for the purposes of the Policy:
“[1] For the purposes of this policy, auDA has determined that a ‘name … in which the complainant has rights’ refers to: a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant’s personal name.”
The Complainant’s corporate name, therefore, qualifies as a “name” for the purposes of the Policy.
Ordinarily, under Australian law, a company does not obtain rights in its registered name against third parties by the mere act of registering the name. The company must also show that it has acquired a reputation in the name through use.
The requirement that the Complainant show rights in a “name, trade mark or service mark” is one of the important differences between the Policy and the Uniform Domain Name Dispute Resolution Policy (the UDRP). It was introduced in response to early decisions under the UDRP in which it appeared that a complainant may not be able to rely on its personal name to establish relevant rights. For example, Bruce Springsteen v. Jeff Burgar and Bruce Springsteen ClubWIPO Case No. D2000-1532 and see Owen Bradfield, “Domain Names in Australia – Legal and Contractual Dispute Resolution”, [2001] JlLawInfoSci 15 (text at footnotes 10 to 13, also pointing out that later decisions under the UDRP accepted a person’s name could qualify as trade mark rights for the purposes of the UDRP where shown to have acquired secondary meaning).
In an earlier decision, this Panel had considered that the fact of registration of a name was sufficient for the purposes of the first requirement under the Policy. See John Kolenda v. 1300 Phonewords Pty Ltd,WIPO Case No. DAU2009-0001. That appears to have been accepted in later decisions e.g., Allianz Australia Insurance Limited and Allianz Australia Limited v. Throne Ventures Pty LimitedWIPO Case No. DAU2010-0012. In the cited case, however, there appears to have been evidence of reputation in the name acquired through use. Also, the John Kolenda decision supra concerned so-called phone names and a majority of a subsequent three-member panel did not accept the approach in John Kolenda: see e.g., Inbound Telecommunications Pty Ltd, Phonename Marketing Australia Pty Ltd v. 1300 Directory Pty Ltd, Demetrio PadillaWIPO Case No. DAU2009-0018.
There is no requirement of registration of a personal name: see Note 1 paragraph (b). In the two cases referred to in the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”) at section 1.6, the fact that both names were personal names (or a nickname in one case) appears to have been sufficient although both Complainants would have had substantial reputations in Australia in their respective names as a very well-known performer or sportsman. See Tina Arena v. Enigmatic Minds Pty Ltd, LEADR Case No. auDRP01/07 (2007), and Shane Keith Warne v. Sure Thing Services Pty Ltd, LEADR Case No. auDRP08/10 (2010).
Unlike the position with a claim to rights in an unregistered trade mark, therefore, it does not appear that the Complainant is required to demonstrate it has acquired a reputation in its name sufficient to establish a claim in passing off or for misleading or deceptive conduct in contravention of the Australian Consumer Law. See for example Allianz Australia Insurance Limited and Allianz Australia Limited v. Throne Ventures Pty LimitedWIPO Case No. DAU2010-0012.
In the present case, the Complainant does contend that it has been supplying its air charter services by reference to its corporate name since 2012. While the scale of that use is not disclosed, it does not appear to be disputed by the Respondent.
Accordingly, the Panel finds that the Complainant has established rights in its corporate name for the purposes of the first requirement under the Policy.
In addition to its corporate name, the Complainant also relies on its use of the two domain names since, respectively 2012 and 2013.
The two domain names which the Complainant relies on do not on the record in this case qualify as “names” for the purposes of the Policy. They may have been used as a trade marks but there is no evidence that they have been used as “trading names” nor have they been registered as company, business or other legal names with a relevant regulatory authority. If they are to qualify as rights under the Policy, therefore, they must do so as unregistered trade marks.
The Panel accepts that a domain name can be used in a trade mark sense and acquire distinctiveness through use. The evidence in this case, however, does not lead to that conclusion.
The limited evidence of use of the domain names described above would not be sufficient to establish rights in an unregistered trade mark. For example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 which states in part:2
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
[…]
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.” (emphasis supplied)
Accordingly, the Panel finds only that the Complainant has rights in its corporate name as registered with the companies’ regulator.
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 narrower than 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 (2LD), .com.au, as a functional component of the domain naming system. See for example auDRP Overview 1.0, section 1.2.
On that approach, the disputed domain name consists of the Complainant’s corporate name minus the required corporate designations, expressed as a plural. The Complainant’s corporate name, therefore, is clearly visually and audibly recognisable within the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s name and the first requirement under the Policy is satisfied.
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.
It is not in dispute between the parties that the Respondent is not affiliated or associated with the Complainant in any way. The disputed domain name is not derived from the Respondent’s own name or any name by which the Respondent claims to be known.
The expression “air charter services”, however, is a descriptive term. As noted above, the Complainant contends that the Respondent does not actually use that expression on its website. Accepting that contention in the Complainant’s favour, however, the expression “air charter services” seems to be a fair and reasonable description of the services which the Respondent is offering via its website.
At least prima facie, therefore, it appears that the Respondent is using the disputed domain name in connection with its descriptive meaning. Even in such a case, the Respondent may be found not to have rights or legitimate interests if it has adopted the disputed domain name in bad faith. So, for example section 2.2 of the auDRP Overview 1.0 summarises:
“…. As a general principle, the less distinctive is the complainant’s mark or name, the more likely it is the respondent will have rights or legitimate interests in a corresponding domain name.
“Factors that are relevant to determining if the respondent has rights or legitimate interests in a descriptive, generic, or dictionary word domain name include the distinctiveness, status and fame of the trademark or name in which the complainant has rights, the likelihood of customer confusion, and whether the respondent was aware of this likelihood prior to registering the domain name. Where the complainant’s trademark has a very considerable reputation and there is a strong likelihood of confusion between it and the domain name, the descriptive nature of the words constituting the domain name will not give the respondent rights or legitimate interests in it. ….”
In the present case, the disputed domain name is directly descriptive of the relevant services. The Complainant has not claimed to own a registered trade mark over the expression. Apart from stating it adopted its corporate name and one of its domain names in 2012 and the second domain name in 2013, the Complainant has not provided any evidence to establish its trading volumes, the number of customers it serves or the extent of its advertising and promotional activities.
As the Complainant and the Respondent are in the same industry, there must be at least a suspicion that the Respondent was aware of the Complainant and its name when the Respondent registered the disputed domain name. In the absence of evidence about the scale of the Complainant’s operations, however, the Panel is not really in a position to assess whether there is merely a suspicion or something much stronger tending towards passing off or unfair competition. As the Respondent contends the proceeding is driven by some personal matter between the parties it seems likely that the Respondent was aware of the Complainant when registering the disputed domain name.
auDRP Overview 1.0 section 2.2 goes on to record that a respondent will not have rights or legitimate interests where there is evidence of actual confusion.
Some care needs to be taken with this. Certainly, where a Complainant relies on a registered trade mark, there would be infringement of those rights under Australian law where there was a real risk of confusion. That is, it would be sufficient if there was a real possibility that some members of the relevant public would be caused to wonder whether there was some form of association between the defendant and the trade mark owner. See for example Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 at 608 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ); Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [50] (French J, with whom Tamberlin J agreed).
In the case of unregistered trade marks (passing off) or where reliance is placed on misleading or deceptive conduct, however, “mere” confusion is not sufficient. The courts in Australia have warned that the price for adopting a descriptive term is that some confusion must be expected. In Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 Stephen J explained:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
The disputed domain name arguably has a closer degree of resemblance to the Complainant’s corporate name than the names at issue in the Hornsby case. However, in circumstances where:
(a) the extent and strength of the Complainant’s reputation in its corporate name is not established;
(b) the disputed domain name is directly descriptive of the Respondent’s services; and
(c) impugning the Respondent’s bona fides will like require discovery and cross-examination, processes which are not available under the Policy,
the Panel does not consider it appropriate to find that the Complainant has discharged its burden to establish the Respondent does not have rights or a legitimate interest in the disputed domain name.
The Panel has considered whether the Complainant should be invited to submit a supplemental filing addressing its claimed reputation in its name or the domain name. In the end, that is not appropriate. First, proceedings under the Policy are designed to be conducted on the basis of a Complaint and a Response. The obligation falls on the Complainant to advance the materials on which it relies in support of its case in its Complaint. As the Complainant does not rely on a registered trade mark, demonstrating the strength of its reputation in its name and any evidence of confusion and/or mala fide intentions of the Respondent was a core issue that it should have realized needed to be addressed especially given the descriptiveness of its name/mark. In addition, as already noted, impugning the Respondent’s bona fides in this case is likely to involve access to Court processes unavailable in proceedings of this nature. Accordingly, the Panel declines to invite a supplemental filing addressing the Complainant’s claimed reputation.
In these circumstances, therefore, the Complainant has not established the second requirement under the Policy and the Complaint must fail.
In light of that conclusion, no good purpose would be served by considering the third requirement under the Policy.
6. DecisionFor all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: November 5, 2021
1 The Complainant contends that the Respondent’s “Avmin” website (discussed below) does not use the expression “air charter services” but instead uses expressions like describing itself as providing “charter solutions”, “fly-in-fly-out services”, “VIP charter services”, “aircraft charter solutions”, and “charter aircraft solutions” and does so in a context where it is clear the Respondent’s “brand name” is AVMIN. Accepting those contentions for the purposes of this proceeding, it is nonetheless clear that the Respondent provides services in connection with arranging and hiring the charter hire of aircraft. It is less clear whether the Respondent uses its own aircraft to provide these services, aircraft of “partner operators” or some mix of the two.
2 auDRP Overview 1.0, section 1.7 notes that the position under the Policy is the same as under the UDRP.