WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TABCORP Holdings Limited and TABCORP Assets Pty. Ltd v. Steven Hertzberg
Case No. D2000-0566
1. The Parties
The Complainants are TABCORP Holdings Limited and its wholly owned subsidiary TABCORP Assets Pty Limited. They are companies organized under the laws of Australia with the address of 5 Bowen Crescent, Melbourne, Victoria, Australia. The Complainants are represented by Mr. Marcus Hoyne of Corrs Chambers Westgarth, Solicitors of Melbourne, Victoria, Australia.
The Respondent is Mr. Steven Hertzberg of 18 Arch Lane, San Carlos, California, USA. The Respondent is represented by Mr. Ian K. Boyd of Harvey Siskind Jacobs, LLP, Attorneys, of San Francisco, CA, USA.
2. The Domain Names and Registrar
The domain names at issue are "tabcorp.com" and "tabcorp.org". The domain name "tabcorp.com" is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia, USA ("NSI"). The domain name "tabcorp.org" is registered with Register.com, Inc. 575 Eighth Avenue, New York, NY, USA ("Register.com").
3. Procedural History
A Complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on June 7, 2000, (electronically) and June 13, 2000 (hard copy).
On June 6, 2000 (for NSI) and on June 9, 2000 (for Register.com) requests for Registrar verification were transmitted by WIPO Center to NSI and to Register.com asking them to:
Confirm that a copy of the Complaint had been sent to them by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).
Confirm that the domain names at issue are registered with NSI or Register.com.
Confirm that the person identified as the Respondent is the current registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the building contact for the domain names.
Confirm that the Uniform Domain Dispute Resolution Policy is applicable to the domain names at issue.
Indicate the current status of the domain names.
By email dated June 6, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration "tabcorp.com".
The Respondent, Steve Hertzberg, is the current registrant of the said domain name "tabcorp.com". He is also its technical and billing contact. The technical and zone contact is SuperBusinessNet, Inc, 150 Almaden, BL #500 San Jose, CA, USA.
NSIís 5.0 Service Agreement is in effect.
The domain name registration "tabcorp.com" is in "Active" status.
By fax dated June 13, 2000, Register.com advised WIPO Center as follows:
Register.com had received a copy of the Complaint from the Complainant.
Steven Hertzberg is the current registrant of the domain name "tabcorp.org". He is also the administrative contact. Register.com is the technical and zone contact.
The Uniform Dispute Resolution Policy is applicable to the domain name.
The domain name is on "registry lock".
With effect from January 1, 2000, NSI and Register.com adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI and Register.com that the domain names are either "active" or on "registry lock", the Respondent has never requested that the domain names be deleted from the relevant domain name database. The Respondent has not sought to terminate his agreement with NSI or Register.com. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on June 15, 2000, transmitted by courier, email and facsimile a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI, ICANN and Register.com.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by July 4, 2000,). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On July 11, 2000, the Respondent filed a hard copy of his Response to WIPO Center, which had agreed to an extension of the time for the filing of a Response.
On September 1, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to be Sole Panelist in this case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Complainant has paid the required amount to the WIPO Centre.
Sir Ian Barker duly advised his acceptance and forwarded to WIPO Center his statements of impartiality and independence. On September 6, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On September 6, 2000, WIPO Center forwarded the record to the Panelist by courier. This was duly received by him on September 11, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by September 20, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The principal Complainant, TABCORP Holdings Limited, is an Australian public company with a market capitalization of some $A3.5 billion, and over 6000 employees. It was formed in 1994 as the result of the privatization by the then government of the State of Victoria of the Victorian Totalizator Agency Board (TAB). This state-owned entity had been formed in the 1950s to provide legalized off-course betting in Victoria for horse and greyhound racing. This Panelist takes judicial notice that the expression "TAB" for Totalizator Agency Board originated in New Zealand where there is still an entity of that name operating off-course betting services nation-wide. It is commonly referred to as the "Tee-Ay-Bee" rather than "TAB".
The principal complainant conducts a variety of wagering and gaming activities through networks throughout the State of Victoria and in parts of the states of New South Wales and Queensland. It has merged with a casino in Sydney, New South Wales. Its wagering division has 543 retail agencies and telephone betting accounts throughout Australia. It also operates 13,500 gaming machines in Victoria and conducts gaming activities through subsidiaries in the states of New South Wales and Queensland.
The secondary Complainant, Tabcorp Assets Pty Ltd, applied on September 17, 1997, for an Australian trademark for the tradename "Tabcorp" (including an image ellipse incomplete breaks star). Registration of the mark has not yet been granted. The Complainant alleges a common law trademark enuring before the date of application. The mark awaiting registration is displayed in advertising and signage throughout Victoria on television, press advertisements and promotional material and in conjunction with corporate sponsorships. No copy of the trademark application was annexed Ė an unusual omission in the experience of this Panelist.
The Principal Complainant has account holders in various parts of the world, including the United States and Hong Kong. Its shares, listed on the Australian Stock Exchange, are traded in American Depository Receipt form in the United States.
On January 1, 1993, the Complainant registered the domain name "tabcorp.com.au". The Respondent registered the domain name "tabcorp.com" in early 1997, allegedly at the request of a client, Carolyn Baker.
The Complainant alleges that the Respondent was in 1997 to have provided Internet business consulting and advisory services for other accountancy clients of Ms. Baker in satisfaction of a debt to her accountancy practice. Thus, says the Complainant, Ms. Baker had the Respondent organize the registration of several domain names, including "tabcorp.com", to be held on trust for Ms. Bakerís clients. A letter from Ms. Baker annexed to the Complaint asserts that the C. J. Baker Discretionary Trust has always owned the domain name, although NSI regards the Respondent as the owner since the registration is in his name.
The parties and/or their lawyers have had many communications between January 20 ,1999, and March 22, 2000. Respondent was willing to entertain an offer to sell the name, although always maintaining his entitlement to the name. He claims that the Complainant "went behind his back" to NSI to effect a transfer Ė an event which he said caused him to "harden his attitude". He turned down an offer of $3,000 made in December 24, 1999. He remains open to consider a higher offer.
A Mr. McPhail, an employee of the Complainant, spoke to Ms. Baker on January 20, 1999. According to his note, he asked her why she had registered "tabcorp.com". Her reply was "so when somebody wanted it we could sell it" and that the Respondent had told her this would be a good idea. No affidavit or statutory declaration from Mr. McPhail or Ms. Baker was filed.
The Respondent denies this hearsay version of Ms. Bakerís account of the reason for the registration. In a statutory declaration, he claims that their business relationship had terminated unhappily. He denied any suggestion that he had advised her to obtain the domain name with a view to a later sale at a profit. He admits that Ms. Baker suggested the name be registered. He denies that he is a "cybersquatter" who registers domain names of well-known trademarks. He says he is a consultant who works closely with internet companies at executive levels to assess, develop and complement on-line opportunities for new market development of existing services, new profit centres and cost savings through greater operating efficiencies. He has no connection with the gambling business.
His statutory declaration in support of his contentions is better evidence than the Complainantís presentation of a file note of an employeeís conversation with Ms. Baker or of a letter from Ms. Baker. However, even if the Complainant had provided a higher standard of evidence, the Panel would not be in a position to adjudicate on credibility issues.
The Complainant alleges that the Respondent has changed his contact details, making it hard for the Complainant to communicate with him. The Respondent says that he "commuted" between Australia and the USA for business but was unfamiliar with the Complainant when he had dealings with Ms. Baker. He has placed a traffic counter on the website "tabcorp.com".
Respondent claims to use the name "tabcorp.com" as a "storage facility" which clients or associates may visit to retrieve frequently used documents. The name for this domain was actually chosen because it was already in the Respondentís possession and was already listed on a free web-hosting service. According to the Complainant, the website has only a user name, a traffic counter and a password facility for members. The outside of the website is said to contain links to, inter alia, casino and gambling-related websites. The Respondent denies that the website has ever been used "in any way competitive to the Complainant, any off-shore casino or the gambling business in general".
The Respondent registered "tabcorp.org" on February 19, 2000, with a different Registrar from the Registrar for "tabcorp.com". He claims this registration was a "prophylactic" measure to stop third party use of the mark in the United States for business consulting services similar to his. He acknowledges that this site is inactive.
5. Partiesí Contentions
(i) Identical or Confusingly Similar
The Complainant submits the disputed domain names are confusingly similar to the mark for which it has applied for registration and to its alleged common law mark. The Respondent submits that the Complainant has submitted no evidence of its trademark application or of sufficient use to justify a common law mark. He cites Frank Wagner & Son v Mahan (WIPO D2000-0261) as authority for rejecting a complaint where no trademark registrations or applications were presented to the Panel. Paragraph 4(a)(1) applies only to trademarks or service marks. Also, a global trademark search by the Complainant found no applications or registrations for the mark outside Australia.
(ii) No rights or Legitimate Interests
The Complainant submits that it has not authorized or licensed the Respondent to use the word "Tabcorp" which is an invented word associated with its business. The "tabcorp.com" site is devoid of content other than a traffic counter, user name and password facility. The outside of the website contains links to casinos and gambling related websites. The "tabcorp.org" site shows no sign of being established. Nor is the Respondent known by the name "tabcorp".
The Respondent says that there is no evidence of the lack of his rights to use the names. He registered the name "tabcorp.com" at a clientís request and, when she did not want it, he began to use it as a service for his own clients. The name has no fame in the United States and the Respondent does not compete with the Complainant.
(iii) Bad Faith Registration and Use
The Complainant alleges that registration of the name was in bad faith. There was no legitimate purpose for its registration which was effected in order to sell or rent the name to the Complainant for a profit. The reported conversation by an employee of the Complainant with Ms. Baker verifies this contention.
The Complainant alleges bad faith use from the following facts:
(a) The domain name "tabcorp.com" is devoid of web content and the name "tabcorp.org" does not resolve into a website.
(b) There is no evidence of advertising or promotion or display to the public of the disputed domain names.
(c) Respondent has changed his contact details and become hard to contact. All these three factors indicate bad faith use through inaction.
(d) Respondentís agreement to consider offers for sale.
(iv) The Respondent Alleges
(a) There was no registration in bad faith. The name was obtained at a clientís request at a time when he was unfamiliar with the Complainant. He did not imply to Ms. Baker that he was registering the name in the hope of selling it.
(b) The Complainant did not take any step to stop his use of the name for 2 years after registration.
(c) Respondent did not approach the Complainant to sell the name.
(d) Respondent uses the name for different reasons in a country where the Complainant and its mark have no notoriety or fame. There is no confusion of consumers. The parties are not competitors.
(e) Respondent has never concealed his true identity or provided false information.
(f) This proceeding is inappropriate for determining the Complainantís rights in the mark.
(g) He denies that he has been difficult to contact or that he has attempted to conceal his location or identity.
(h) He denies that his website has any connection to gambling in any form.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principals of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- That the Respondent has no legitimate interests in respect of the domain name.
- The domain name has been registered and used in bad faith.
The Panel determines that the domain names "tabcorp.com" and "tabcorp.org" are identical to the Complainantís mark "tabcorp" which is awaiting registration. The addition of "com" or "org" does not affect the decision.
The Panel considers that the Complainant should have exhibited a copy of its trademark application to its Complaint. A Complainant bears the onus of proof and should "get it right" first time. However, because the Panel finds against the Complainant on other grounds, it does not rest its finding on this technicality. The fact that since early 1999 the Complainant has consistently maintained its right to the mark in its many iterations with the Respondent is sufficient to excuse the Complainantís omission. The Respondent never questioned the Complainantís mark in his many contacts with the Complainant.
The Panel determines that the Respondent has no right or legitimate interest in respect of the domain names for the following reasons:
(a) The Respondent has failed to submit any evidence that he has any right or legitimate interest in respect of the domain names at issue.
(b) According to the Complainantís search, there is no developed website in connection with the domain name "tabcorp.com", and "tabcorp.org" shows no sign of being established.
(c) The Respondent is not known by the name "tabcorp".
The Panel has difficulty in deciding whether the name "tabcorp.com" was registered in bad faith by the Respondent in January 1997. Normally, one would not expect that a U.S. resident would know of the Complainant or of an Australian mark relating to a gambling organization which, whilst of interest in one country, is unlikely to be widely known in another (if at all). The situation is similar to that in VZ VermögensZentrum AG v Anything.com (WIPO Case D2000-0527). There, a 3-member Panel found bad faith registration (as distinct from bad faith use) unproven. The Complainant was a financial services company, well known in Switzerland. Its mark was unlikely to have been known in the country of the Respondent, the Cayman Islands. Subsequent bad faith use does not necessarily prove bad faith registration. In this case, the presence of the Respondent in Australia at the time of registration excites suspicion. But, given his statutory declaration that he did not know of the Complainant at the date he registered the domain name, compared with the Complainantís hearsay suggestion that he did, it will be for a Court to determine where the truth lies. The Panel finds bad faith registration not proved.
The Panel considers there is bad faith use of "tabcorp.com" shown by:
(a) The Respondentís course of dealings with the Complainant culminating with his willingness to consider an offer for the domain names.
(b) Inaction by the lack of development of the websites and any promotion of the websites.
(c) The Respondentís registration of "tabcorp.org" in February 2000.
The situation with regard to "tabcorp.org" is different. Bad faith registration in February 2000, can be inferred easily. By then, Respondent knew full well the Complainantís concern about "tabcorp.com". His excuse of a "prophylactic measure" is unconvincing and meaningless.
The bad faith use of "tabcorp.org" is shown by the failure to develop the website and the Respondentís course of dealings in relation to "tabcorp.com".
In relation to the Respondentís dealings with Ms. Baker, it is not possible for a Panelist in this expedited proceeding to make any credibility findings. There is a clear conflict of evidence between the suggested evidence of Ms. Baker (produced only by a note of a conversation) that the Respondentís motive in registering the domain name "tabcorp.com" was later to sell it at a profit. In evidence produced in a more satisfactory form, the Respondent denies this. There is also a conflict whether or not that domain name was held on trust by the Respondent for Ms. Bakerís Trust. This has an impact on the Complainantís approach to NSI to transfer the name which the Respondent characterizes as evidence of "unclean hands" by the Complainant. Such matters can only be determined in a Court of competent jurisdiction and not by a WIPO Panelist operating under the ICANN Dispute Resolution Policy.
The situation is different in respect of "tabcorp.org". It was registered after the Respondent had ample notice of the Complainantís concerns and it must be transferred to the Complainant.
The Panel decides that the Complainant has not made out a sufficient case for the transfer of the domain name "tabcorp.com". At best for the Complainant, there is only a suspicion that this domain name was registered in bad faith. The Complainant will have to take Court proceedings if it wishes. The Panel declines to order the transfer of the domain name "tabcorp.com".
However, the Panel decides that the necessary grounds have been made out in respect of the domain name "tabcorp.org". The Panel therefore orders that the domain name be transferred to the Complainant.
Hon Sir Ian Baker QC
Dated: September 20, 2000