WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tableland Economic Development Corporation v. Tablelands Online, Fast Internet and Sean Mullen
Case No. D2000-0744
1. The Parties
The complainant is an incorporated association, Tableland Economic Development Corporation Inc. (previously known as Mareeba Regional Development Organization Inc.) of PO Box 186 Mareeba, Queensland, 4880 Australia. The respondents, as named in the amended complaint, are Tablelands Online (a business name registered on March 9, 1999, by the complainant), Mr. Sean Mullen and Fast Internet (a business conducted by Mr. Mullen), both of 1/184 Grafton Street, Cairns, Queensland, 4870 Australia.
2. The Domain Names and Registrar
The disputed domain names are "tablelandsonline.net" and "tedc.net". The registrar of both names is Network Solutions Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on July 6, 2000. This was deficient in certain respects. On July 11, 2000, registration details were sought from the registrar. On July 14, 2000, registration details were confirmed by the registrar. On September 12, 2000, an amended complaint was received by the Center by email and on October 13, 2000, in hard copy. The Center drew the attention of the complainant to the need for the complaint to name as respondents the registrants of the disputed domain names even though the disputed domain names were registered in the names of businesses having no separate legal personality from the owners of the registrations. On October 24, 2000, a further amended complaint was received by the Center by email and fax. That day the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day specified in the notice for a response was November 12, 2000. On November 12, 2000, the response was received by the Center by email. Receipt of the response was acknowledged by the Center on November 13, 2000.
On November 20, 2000, the Center invited Alan L. Limbury to serve as panelist. That day, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 20, 2000, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of December 3, 2000.
On November 22 2000, the Center, at the Panelís request, issued Interim Order No. 1, inviting the complainant, within three business days, to provide evidence to the Panel that it has rights in trademarks corresponding to the disputed domain names (as distinct from business name registrations). The respondent was also given three business days within which to respond to any such evidence. It was indicated that any requests for further time should be addressed to the Center.
The complainant submitted a response to the invitation on November 24, 2000, and the respondent replied on November 30, 2000. The Panel has taken both submissions into account.
The language of the proceeding was English.
The Panel is satisfied that the complaint, as amended, was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; the response was filed within time and the administrative panel was properly constituted.
4. Factual Background (uncontested facts)
The Atherton tablelands region of the Australian State of Queensland is locally known as the tablelands. Mr. Mullen operates an Internet service business known as Fast Internet. From January 1997 to July 2000, Fast Internet operated a dial-in Internet access service, performed virtual hosting services, consulting, and operated a retail computer sales business on the Atherton tablelands. The complainant, as its name indicates, is an organization concerned to promote the economic development of the tablelands region and to provide opportunities to exchange information about it.
Pursuant to contractual arrangements between the complainant and Mr. Mullen, the complainant housed a computer in the office of Fast Internet, near the complainantís offices in Mareeba. On February 17, 1999, Mr. Mullen registered the domain name "tedc.net" in the name of Fast Internet and on May 30, 1999, he registered the domain name "tablelandsonline.net" in the complainantís then recently registered business name Tablelands Online. In each case Mr. Mullen is recorded by the registrar as the Administrative, Technical, Zone and Billing contact.
The complainant carried on business under the two disputed domain names, using the ISP services offered by Mr. Mullen, until (a dispute having arisen between them) in June 2000, Mr. Mullen ceased to operate the Mareeba office of Fast Internet.
On June 30, 2000, Mr. Mullen offered to sell to the complainant a package of five domain names, including the presently disputed domain names, for A$25,000, the money to be deposited into the bank account of Fast Internet, failing which the domain names would be sold to a domain name broker.
5. Partiesí Contentions
The complainant engaged Mr. Mullen to register the disputed domain names on its behalf. The complainant paid Fast Internet for the two domain names.
Mr. Mullen is now operating the "www.tablelandsonline.net" web-site in bad faith and is publicly airing what amounts to a billing dispute on the complainantís own web-site.
Mr. Mullen has no affiliation with Tablelands Online or Sean Mullen. This is the complainantís business name under which its Internet presence has been operating for some 15 months.
The address for Tablelands Online is definitely not the same as the one for Sean Mullen. If this seems to be the case then it is only for the purposes of Network Solutions.
[The Panel notes that the submissions filed by Mr. Mullen in response to the complaint are presented as submissions of "the respondent" in the singular, no doubt in recognition that two of the nominal respondents are business names having no legal personality. It is not surprising that no response is made on behalf of "Tablelands Online" since this business name belongs to the complainant, although it was used to register the disputed domain name "tablelandsonline.net" (with the contact details of Mr. Mullen). The business name "Fast Internet" belongs to and is the same person as Mr. Mullen. Hence the only effective respondent is Mr. Mullen.]
The respondent and the complainant have issues, which extend far beyond this dispute.
Perhaps discussions with the complainant led to the names being registered by the respondent. Similar to the way that one might suggest to a restaurateur "that corner would be a good place for a restaurant", the person who acts on this suggestion has no obligation to thank or remunerate those who spouted the suggestion.
The respondent believed that registering such domains such as "tedc.net" for future use would be a wise investment due to its appealing length. Likewise, the name Tablelands Online has an appealing appearance to the respondent. Furthermore, the respondent had not sighted any business certificates held by the complainant until the receipt of this action.
For a period of time the complainant was allowed to use the domain names by the respondent. This act was in good faith and in no way passed registration of the domain names from the respondent to the complainant.
A certificate of registration of a business name is not a valid trademark. The purpose of this certificate is very clear. Directly copied from the issuing bodies web site at the address "http://www.consumer.qld.gov.au/faq/answers5.htm" the following extract states:
Question: What is the difference between trademarks, business and company names?
A trademark identifies the goods and services of a proprietor.
Business or company name registration identifies the proprietors of a business or officers in a company.
Registration of the trademark protects the legal rights of the proprietors of the trademark in their use and control of the mark. It gives a monopoly property rights in that mark. Registration of a business or company name does not confer any property rights in that name.
Registration of a trademark is not compulsory while the registration of a business name or company name is compulsory.
The name of the complainant was registered on December 14, 1998. The complainant has not shown that it has rights to the abbreviation TEDC.
Another organization named TEDC exists in the form of a registered company, which operates in the same state of Australia as the complainant. This group would certainly have rights to the name TEDC, and the complainant would not.
In the cases of the names Tablelands Economic Development Corporation, TEDC, and Tablelands Online, the complainant holds no known trademarks. Without such a registration, there is no presumption of validity to the complainantís claim of exclusive rights in the mark.
The complainants chosen proof of rights to the names, in the form of business certification, explicitly denies any rights to a name.
The respondent started and provided Internet access services to the tablelands region for a period of three years. Thus the respondent put the "Tablelands Online". The respondent therefore has a more valid claim to the name "tablelands online" than the complainant.
As to "tedc.net", any short or generic worded domain name has an inherent value. Domain name brokerages are legitimate businesses and investing in domain names is a legitimate business. The respondent reserved the domain "tedc.net" for future sale or site development. At present it is used primarily for the respondentís personal email.
Both disputed domain names currently are used for the legitimate purpose of criticizing the complainant.
The respondentís use of the domain names does not purport to be delivered by the complainantís business. The current web sites located at both disputed addresses do not mislead the public into believing that they are operated by the complainant.
The websites do not intentionally attempt to attract Internet users to the site based on confusion with the complainant.
The existence of the sites operated by the respondent does not prevent the complainant from having a domain name, which reflects the complainantís business.
The respondent has operated a web site oblivious to this "dispute" at various times of differing content. The current content and any future additions accurately portray events and dealings between the complainant and the respondentís business, Fast Internet. In the future, it is planned by the respondent to use the tablelands online domain names to provide a directory for the region.
It would be vigorously disputed that any Internet user would believe that the content of the websites located at the disputed domain names could in fact confuse the bodies. A person who could confuse said content would be incapable of accessing the Internet.
The disputed domain names were included in a package offered to the complainant for sale in response to a message that the complainant "wanted the domains" and "were willing to pay their bills, if that is what it will take". The complainant promised to pay its outstanding accounts on June 12, 2000, but failed to do so. Thus it was through trickery on behalf of the complainant that the offer was ever made.
Interim Order No. 1
This Interim Order invited the complainant to provide the Panel with evidence that it has rights in trademarks corresponding to the two domain names in dispute (as distinct from business name registrations).
Response by complainant to Interim Order No.1
"The complainant is in the process of registering as trademarks the two disputed domain names, however it takes up to 7 months to decide ownership of a trademark. Neither the complainant nor Tablelands Online had a logo to register as a trademark and believed the registration of business names afforded protection to the organizations. Those names are currently and have at all times been registered by the complainant.
We submit that a trademark alone cannot define ownership to a name, and rights to a domain name cannot be decided by reference to ownership of the trademark alone.
Also note that Tablelands Online and the complainant are both managed voluntarily by members of the community as non-profit community benefit organizations.
Being the parent organization the complainant has established its common seal, which is provided as an attachment."
Respondents reply to the complainantís response to Interim Order No. 1.
"The complainant has failed to demonstrate rights in trademarks corresponding to the two domain names in dispute. The complainant offers ignorance as a defense. Ignorance is a very poor defense at best. The complainant demonstrates a poor understanding of trademark matters by insinuating that a logo is required to register a trademark. In fact, registering a trademark is a simple matter, which can even be done online. It is common knowledge that business names offer no rights to a name.
The complainant argues that a trademark cannot be used alone to define ownership of a name. Whilst the rules set out under the UDRP are somewhat vague in this area, I would like to draw attention to Network Solutions Policy which predates the UDRP and sets a sensible standard for the "quality" of rights in a name.
Section 5 of NSI's Domain Name Dispute Policy (Revision 02) recognizes that the use of a domain name can infringe "the legal rights of a third party," but the policy will only be triggered by the complainant furnishing a certified copy of a valid foreign trademark or a United States registered trademark that is identical to the domain name. This is an interesting provision as not only does it ignore the confusingly similar provisions in most common law trademark regimes, it also refuses to activate its policy if a right other than a registered trademark is alleged to have been infringed. This would presumably include allegations of the infringement of dilution rights, common law marks (in the US and Australia) and the Trade Practices Act in Australia.
Why does the complainant raises the suggestion that "... Tablelands Online and the TEDC are both managed voluntarily by members of the community as non profit community benefit organizations..."? I fail to see how this statement demonstrates rights to a name, and believe that seeking relief through pity is an even poorer defense than ignorance."
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel notes that the complainant appears to treat "Tablelands Online" as if it were a separate person from the complainant whereas, on the evidence before the Panel, it is merely a business name under which the complainant is entitled to trade. It appears therefore that the disputed domain name "tablelandsonline.net", which the complainant seeks to have transferred to it, already belongs to the complainant. At present Mr. Mullen is the only contact in respect of that name notified to the registrar.
Whether the complainant has rights in a trademark
The complainant submits that a trademark alone cannot define ownership to a name. Beyond the scope of the Policy, this is true: contractual, fiduciary or confidential relationships between parties may define or determine rights to a name as between those parties. However, the Policy and the Rules provide a strictly limited procedure designed solely to resolve certain specific disputes between the owners of trademark rights and the registrants of domain names, subject to any independent resolution by court decision Ė Policy paragraphs 4(a) and 4(k). Disputes raising issues falling outside the Policy (such as breach of contract, trust or confidence) may be resolved in any available court, arbitration or other proceeding Ė Policy paragraph 5.
The complainant also submits that rights to a domain name cannot be decided by reference to ownership of the trademark alone. Beyond the scope of the Policy, this is also true, since the applicable national law of contract, trust or confidence may determine rights to a domain name. In Australia the (Federal) Trade Practices Act and the (State and Territory) Fair Trading Acts may also be invoked to determine rights to domain names in appropriate circumstances.
Under the Policy, however, a domain name may be transferred or cancelled upon proof of the elements set out in paragraph 4(a), including ownership of trademark rights. Hence proof by a complainant that it has rights in a trademark is an essential prerequisite to relief under the Policy.
The Policy is designed to afford protection to the owners of common law trademarks as well as registered trademarks:
"Had ICANN intended the Policy to be restricted to cases involving only registered trademarks or service marks, it could easily have used narrower language than "a trademark or service mark in which the complainant has rights". The Panel finds the Policy applies to marks in which there are common law rights as well as to marks in which there are rights arising from registration"- Passion Group Inc. v. Usearch Inc. (Case AF 250); see also Askonas Holt Ltd. v. Webocracy Inc. (Case D2000-0392); Jeanette Winterson v. Mark Hogarth (Case D2000-0235); Steven Rattner v. Buy This Domain Name (John Pepin) (Case D2000-0402); IFP Online Ltd.v. Applying Thought.com (Case AF-0198); Chemstations, Inc. v. Batchcad, Ltd. Case AF-0226; Cox & King India Limited v. Rakesh Sud (Case D2000-0411) and Daniel J. Quirk, Inc. v. Michael J. Maccini (Case FA 0006000094964).
The complainant concedes it has not yet secured a registered trademark and has offered no evidence of its use of either of the names TABLELANDS ONLINE or TEDC such as might establish that it has common law trademark rights in either of them. The respondent is correct in its contention that the registration of a business or corporate name does not confer any rights in a trademark.
For this reason the complaint must fail. It is unnecessary for the Panel to express a conclusion on any of the other elements required to be proved under paragraph 4(a) of the Policy.
The complaint is dismissed.
Alan L Limbury
Dated: December 2, 2000