The Complainant is EventXtra Limited, Hong Kong, China, represented by Benny Kong & Tsai, Hong Kong, China.
The Respondent is Event X Pty Ltd, Australia / Catherine L’Huillier, DPMEW Pty Ltd, Australia represented by EAGLEGATE Pty Ltd, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that Catherine L’Huillier of DPMEW Pty Ltd is listed as the registrant in its WhoIs database and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or 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 September 17, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2021. The Response was filed with the Center on October 7, 2021. The Complainant sent an email communication to the Center on October 12, 2021, requesting that the Panel issue a procedural order granting it leave to file a supplemental filing in reply to the Response. The Respondent sent an email communication to the Center on the same day objecting to the Complainant’s request. The Complainant made an unsolicited supplemental filing on November 4, 2021.
The Center appointed Matthew Kennedy, Douglas Clark and Warwick A. Rothnie as panelists in this matter on November 10, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, paragraph 7.
The Respondent sent an email communication to the Center on November 14, 2021, objecting to the Complainant’s unsolicited supplemental filing.
4. Factual BackgroundThe Complainant provides event management software, in particular for virtual events. It was incorporated in Hong Kong, China in 2012 and changed its name to “EventXtra Limited” in 2013. The Complainant has registered 108 domain names comprising “eventx” and various Top-Level Domain or Secondary-Level Domain (“SLD”) extensions. In particular, it registered the domain name
European Union
018366255
May 5, 2021
9
Hong Kong, China
305494069
May 21, 2021
9, 35, 42
Singapore
40202027832S
July 2, 2021
9
On August 20, 2021, the Complainant filed Australian trademark applications numbers 2204461, 2204462 and 2204463, all for EVENTX, specifying goods and services in classes 9, 35 and 42, respectively. At the time of this Decision, those trademark applications have been accepted and are awaiting advertisement.
The Respondent Event X Pty Ltd provides event planning services, including for virtual events. It was incorporated in Australia as “DPMEW Pty Ltd” in 2008 and changed its named to “Event X Pty Ltd” on March 22, 2018. Catherine L’Huillier is the company secretary. The Respondent filed Australian trademark application number 2220182 for EVENTX on October 14, 2021, specifying services in classes 35, 38 and 41. At the time of this Decision, those applications have been published and are awaiting examination.
The disputed domain name was registered on February 24, 2018. It resolves to the Respondent’s website, where the Respondent provides information about itself and its services. The website header reads “eventX Creative Production – Award Winning Queensland Event Company”.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows.
The Complainant provides event management services throughout the world under the trade name and/or trademark EVENTX. This trademark has been continuously used by the Complainant and/or its related entities in the world since at least August 2013. As a result of its extensive advertisement and promotion, the EVENTX trademark has become well-known and distinctive throughout the world for the Complainant’s services. The Respondent uses the disputed domain name to provide event management services identical to, and in direct competition with, those of the Complainant and by reference to the Complainant’s trademark. The disputed domain name contains the element “eventx” and it is identical to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not made any legitimate use of the disputed domain name and has only used it for infringing activities, including passing off its business, services and products as and for the same as the business, services and products licensed and/or endorsed by and/or associated with the Complainant. As such, the Respondent has not been commonly known by the disputed domain name. The Respondent does not own any trademark registration reflecting or corresponding to the disputed domain name and has not made any legitimate non-commercial or fair use of the disputed domain name anywhere in the world. The Respondent has no connection or affiliation with the Complainant and has received no authorization, license or consent from the Complainant to use the EVENTX trademark or any other trademarks of the Complainant.
The disputed domain name was registered or is subsequently being used in bad faith. The Respondent clearly has registered and used the disputed domain name in bad faith in order to mislead the public into the mistaken belief that its services are in some way related to, or associated with, the Complainant. Further, or in the alternative, the Respondent uses the disputed domain name to host a website with the purpose of attracting Internet users for commercial profits through the promotion of services, where the disputed domain name can be confused with the domain names
The Complainant has used the domain name
The Respondent contends as follows.
In its Complaint, the Complainant provided no evidence of use of its EventX trademark in 2013, as claimed. The Complainant provided evidence of a mere purchase of the
The Respondent has made, and is making, legitimate, bona fide and fair use of the disputed domain name in connection with its business activities without intent to mislead or divert consumers. The disputed domain name is an exact match of the Respondent’s name. The Respondent has held that name since 2018, prior to the Complainant’s adoption of that name and prior to the notification of the dispute. Since 2018, the Respondent has made bona fide use of the disputed domain name in connection with its goods and services and been known as EventX. The Respondent was not aware of the Complainant’s interest in the EventX name at that time and could not possibly have been aware of it in 2018 given that the Complainant did not operate under that name at that time and did not (and does not) operate in Australia. The Respondent has continuously used the disputed domain name since March 2018 to promote its services under the EventX name and its corporate name. The Respondent has never been contacted by the Complainant and was not aware of the dispute until the Center forwarded the Complaint.
The disputed domain name was not registered and is not being used in bad faith. The Respondent registered the disputed domain name three years before the Complainant had even commenced use of the EventX name. The Complainant’s business could not have been disrupted given that it adopted the name after the Respondent adopted the name. The Parties are not direct competitors as the Complainant provides software tools in the event-hosting industry whereas the Respondent provides event management services for in-person events with the ability to host virtual events and to stream events. There is no evidence of illicit conduct or targeting of the Complainant’s mark. The Respondent has never sought to sell the disputed domain name to the Complainant. The Complainant provides no evidence of bad faith.
6. Discussion and Findings 6.1 Supplemental FilingThe Complainant requested leave to make a supplemental filing after receipt of the Response. The Respondent objected to that request on the ground that the issues and evidence to be covered were not new. The Complainant later made an unsolicited supplemental filing prior to the appointment of the Panel. The Respondent objected to that supplemental filing on the basis that it contained further misleading information.
The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for supplemental filings by either Party, except in response to a deficiency notification or if requested by the Center or the Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings (including further statements or documents) received from either Party.
In this dispute, the Complainant asks the Panel to accept its supplemental filing on the ground that it could not have readily anticipated matters raised in the Response; in particular, the Complainant claims that no information as to the use of the EVENTX mark by the Respondent since 2018 as alleged could be retrieved by an Internet search. The supplemental filing addresses the Complainant’s alleged use of its trademark since 2013, the Complainant’s alleged business in Australia, and the Respondent’s allegation of reverse domain name hijacking. The Panel observes that this evidence is intended to substantiate the assertion in the Complaint that the EVENTX trademark has been continuously used by the Complainant and/or its related entities in the world since at least August 2013, and to address the issue of trademark use in Australia that the Complaint did not specifically cover.
The Panel notes that the Complainant has legal representation. It was the Complainant’s responsibility to ensure that the Complaint addressed all required elements of a claim under the auDRP and that the assertions in the Complaint were substantiated. Moreover, when it filed the Complaint in August 2021, the Complainant knew that the Respondent’s corporate name was “Event X Pty Ltd”. The Complainant was also familiar with the Respondent’s website, which showed that the Respondent had been conducting business as “eventX” for some considerable time. In these circumstances it was entirely foreseeable that the Respondent’s use of the “eventX” name predated the Complainant’s own rebranding to “EventX” in February 2021. Nevertheless, the Panel considers it helpful to make its decision on the basis of the best available information. The supplementary filing provides evidence of the Complainant’s mobile application, advertising and promotion, and its web traffic demographics vis-à-vis Australia, among other things.
Therefore, in accordance with Paragraphs 10(d) and 12 of the Rules, the Panel decides to exercise its discretion to accept the Complainant’s supplemental filing and will take it into account according to its relevance, materiality and weight. Given the Panel’s findings in Section 6.2 below regarding that evidence, and in the interests of ensuring that the proceeding takes place with due expedition, the Panel does not consider it necessary to give the Respondent an opportunity to make a supplemental filing in reply.
6.2 Substantive IssuesParagraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark 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.
The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant holds registered rights in the EVENTX trademark. The Panel has taken note that the Complainant’s trademark registrations were granted in foreign jurisdictions and considers them sufficient to demonstrate rights for the purposes of the first element of paragraph 4(a) of the auDRP. See, for example, Marshmallow Skins, Inc. v. Piipiinoo Australia Pty Limited,WIPO Case No. DAU2013-0015.
A complainant may also establish rights under the auDRP in its corporate name, if its name is registered with a relevant Australian government authority. The evidence in this proceeding does not indicate that the Complainant’s name is registered in Australia with the companies’ regulator or other relevant government authority.
Bearing in mind that the Complainant’s trademark registrations were only granted in 2021, three years after the registration of the disputed domain name, the Panel will consider the possibility that the Complainant also has unregistered rights in the EVENTX mark. Given that this is a dispute within the scope of the auDRP, any unregistered rights must exist in Australia in order to satisfy the first element of paragraph 4(a). See, for example, The Lotter Enterprises Limited v. NG, Ying Fat,WIPO Case No. DAU2016-0047. This requires an assessment of whether the Complainant has a reputation in Australia in respect of the EVENTX mark.
The Complainant claims that its EVENTX trademark has been continuously used by itself and/or its related entities in the world since at least August 2013. The evidence shows that the Complainant used “eventx” as part of the domain name
The Complainant claims to have first entered the Australian market in around 2017. This claim appears to be based on the global release date of its EventX mobile application. The evidence appears to show that its iOS application had less than 30 product page views in the AppStore from Australia up to October 2019 while its Android application has had an installed audience of up to 16 unique users per day in Australia since August 2019. The Complainant provides what it describes as a list of its Australian “clients” that actually appears to be a list of its Australian connections on LinkedIn containing no more than 114 names. There is evidence of one customer enquiry received from Australia in 2020, which does not refer to EVENTX. The Complainant also engaged a business development consultant in Australia for several months in 2020, when it was still conducting business as “EventXtra”. The evidence from the Complainant’s customer relationship management system consists of four email threads exchanged by the consultant with two event management companies and one client in Australia, none of which refers to EVENTX. The consultancy ended in November of the same year.
The Complainant rebranded its business as EVENTX in February 2021, six months before it filed the Complaint. The rebranding was reported in Campaign Asia-Pacific, a business magazine that covers news in the region, including Australia, but there is no other evidence on the record of media or industry recognition of the Complainant’s EVENTX mark in Australia. The volume of traffic to the Complainant’s rebranded website from Australia has been low; there was a spike of over 9,000 visits for one page regarding an event (VIVECON) held in May 2021 but that page appears to be hosted on the VIVECON website; it displayed an EVENTX logo incidentally.
The Panel also notes that the EVENTX mark contains the word “event”, which is descriptive of the end use of the Complainant’s products.
In sum, the Panel finds the evidence too weak to support a finding that the Complainant has sufficient reputation in Australia in respect of the EVENTX mark such that it has acquired secondary meaning and become a distinctive identifier that the Australian public associates with the Complainant’s products and not with those of competitors or others not authorized by the Complainant to use it. Therefore, based on the present record, the Panel is unable to find that the Complainant holds any unregistered rights in the EVENTX mark in Australia.
The Panel has taken note that the Complainant filed three Australian trademark applications for EVENTX in August 2021, which have all been accepted but not proceeded to grant. Given that the Complainant has neither demonstrated that it holds unregistered rights in Australia in the EVENTX mark nor claims to hold other rights in a name, as defined in Note 1 to the .auDRP, these Australian trademark applications are not in themselves sufficient to create rights for the purposes of the first element of paragraph 4(a) of the auDRP. See, for example, TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited,WIPO Case No. DAU2006-0003. In any case, they are more recent than its foreign trademark registrations.
In view of the above, the Panel will continue its evaluation of whether the disputed domain name is identical or confusingly similar to the EVENTX mark on the basis of the Complainant’s registered trademark rights only.
The disputed domain name incorporates the Complainant’s EVENTX registered trademark as its initial element, inserting a hyphen between the word “event” and the letter “x”. Despite that minor difference in punctuation, the EVENTX mark remains clearly recognizable in the disputed domain name. The disputed domain name also includes the open SLD suffix “.com.au”. This element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.
B. Rights or Legitimate InterestsParagraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP. The first of those circumstances is as follows:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring);
In the present dispute, the evidence shows that the Respondent is using the disputed domain name and the name “eventX” in connection with an offering of services. The Complaint provides screenshots of the website associated with the disputed domain name that present the Respondent’s event planning business, displaying the phrase “eventX Creative Production” in the website header. The website displays details of events that the Respondent has planned and lists some of its clients. The Respondent also provides evidence of its Facebook account, rental agreements, invoices, tenders, quotes and client testimonials showing that it has been offering services in Queensland under the name “eventX” since at least April 2018. The Respondent also won a Meetings & Events Australia (“MEA”) State award for a special event that it organized during the IATA Slots Conference in 2019.
The Complainant alleges that the Respondent’s use of the disputed domain name is not bona fide. The Panel takes note that the operational element of the disputed domain name is nearly identical to the Complainant’s EVENTX trade name, inserting only a hyphen between the word “event” and the letter “x”. However, the disputed domain name was registered in February 2018. At that time, the Complainant was conducting business as “EventXtra”; it had no trademark registrations for EVENTX anywhere in the world and the Panel has been unable to find that it had any unregistered trademark rights in Australia. “eventx” (without a hyphen) was part of the Complainant’s website address and “EventX” was a recently-launched mobile application, but both appear to have been virtually unknown in Australia at the time. The Respondent submits that it was not aware of the Complainant’s interest in the EventX name at that time. There is no evidence to contradict that submission nor any evidence that it registered the disputed domain name to exploit the value of such a trade name or mark.
An alternative good faith explanation for the Respondent’s choice of the disputed domain name is apparent on the facts of this case. The Respondent changed its name to “Event X Pty Ltd” in March 2018, one month after registration of the disputed domain name. The disputed domain name contains the Respondent’s company name, substituting a hyphen for the space between “Event” and “X” for technical reasons. The name “Event X” comprises the word “event”, which describes the Respondent’s event planning services, and the letter “X”, which is a symbol denoting an unknown or unspecified thing. The Respondent has been using the disputed domain name and the “eventX” name in connection with that meaning, i.e., to plan events. Accordingly, the Panel finds this to be the more likely explanation for the Respondent’s choice of the disputed domain name.
The Complainant claims that the Respondent’s use of the disputed domain name has severely damaged its business. However, it provides no evidence of damage of any kind. The Complainant holds no trademark rights for EVENTX in Australia. There is no evidence of any actual consumer confusion between the Parties or their products. There is no evidence suggesting that the Respondent has attempted to create any such confusion in the three years in which it has been operating as “eventX”. Nor is there any evidence that the Respondent has registered other domain names in bad faith. The Respondent filed a trademark application during this proceeding but that application has no impact on the Panel’s conclusions.
Based on its evaluation of all evidence presented, the Panel finds that the Respondent has been making a bona fide use of the disputed domain name and a name corresponding to the disputed domain name in connection with an offering of services within the terms of paragraph 4(c)(i) of the auDRP.
Therefore, the Panel finds that the Respondent has rights or legitimate interests in respect of the disputed domain name. The Complainant has failed to satisfy the second element in paragraph 4(a) of the auDRP.
C. Registered or Subsequently Used in Bad FaithGiven the Panel’s findings in Section 6.2B above, it is unnecessary to consider the third element of paragraph 4(a) of the auDRP.
D. Reverse Domain Name HijackingThe Respondent requests that the Panel make a finding of reverse domain name hijacking
Paragraph 15(e) of the Rules provides that, if 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. Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Respondent submits that (i) the Complainant never served the Respondent with a cease-and-desist letter; (ii) the Complainant already owns many “eventx”-formative domain names and has attempted to use this proceeding to resolve a competing rights dispute rather than a cybersquatting dispute for which the auDRP was created; (iii) the Complainant used this proceeding to harass and intimidate the Respondent; and (iv) the Complainant failed to bring material aspects of this proceeding to the attention of the Panel, including its rebranding in 2021, the Respondent’s bona fide use of the disputed domain name in trade since 2018, and the fact that the Complainant’s trademark applications were filed only recently, including its Australian trademark applications, which were filed only four days before the Complaint.
The Complainant submits that the Complaint is not an abuse of process. It asserts that it has at all material times enjoyed substantial reputation and goodwill in its trademark and it provides an updated list of its domain names. It notes that the Respondent was not renamed “Event X Pty Ltd” until six years after the incorporation of the Complainant and it provides details of the Respondent’s recent filing of an Australian trademark application. The Complainant submits that it reasonably believes it has a good cause of action against the Respondent.
The Panel notes, once again, that the Complainant has legal representation in this proceeding. The Panel has already found that the Complainant’s evidence is weak, both in the Complaint and in its supplementary filing. The Complainant itself should have appreciated this after reviewing the Respondent’s name and website. Nevertheless, the Complainant appears to have an extensive business directed to the online environment, including some users of its EventX mobile application in Australia, which indicates that the Complaint was not doomed to fail. There is no duty to serve a cease-and-desist letter prior to filing a Complaint, although one may well have benefited both Parties in this case.
Therefore, the Panel does not find that the Complaint was brought in bad faith or that it constitutes an abuse of the administrative proceeding.
7. DecisionFor all the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Presiding Panelist
Douglas Clark
Panelist
Warwick A. Rothnie
Panelist
Date: November 20, 2021