WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Melbourne IT Limited v. Grant Matthew Stafford

Case No. D2000-1167

 

1. The Parties

The Complainant is Melbourne IT Limited, a company organized under the laws of Australia with the address of Level 2, 120 King Street, Melbourne, Victoria, Australia. The Complainant is represented by Mr. Tim Golder of Arthur Robinson & Hedderwicks, Solicitors of Melbourne, Victoria, Australia.

The Respondent is Mr. Grant Matthew Stafford of 30 Belgrave Road, Malvern East, Victoria, Australia. The Respondent is representing himself in this proceeding.

 

2. The Domain Name and Registrar

The domain name at issue is "melbourneitconsulting.com". The domain name was registered with the Complainant in its capacity as a domain name registrar on January 27, 2000. When acting as Registrar, the Complainant is known as "Internet Names Worldwide 1999 Ė a division of Melbourne IT".

 

3. Procedural History

A Complaint was submitted by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on September 4, 2000, (electronically) and September 6, 2000 (hard copy).

On September 5, 2000 a request for Registrar verification was transmitted by WIPO Center to the Complainant in its Registrar capacity, asking it 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 name at issue is registered with Melbourne IT Limited.

Confirm that the person identified as the Respondent is the current registrant of the domain name.

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 name, the technical contact, the administrative contact and the building contact for the domain name.

Confirm that the Uniform Domain Dispute Resolution Policy is applicable to the domain name at issue.

Indicate the current status of the domain name.

By email dated September 6, 2000, the Complainant in its Registrar capacity advised WIPO Center as follows:

Melbourne IT Limited as Registrar had received a copy of the Complaint from the Complainant.

Melbourne IT Limited is the Registrar of the domain name registration "melbourneitconsulting.com".

The Respondent, Grant Stafford under the organization name of Melbourne IT Consulting, is the current registrant of the said domain name. He is also its technical and administrative contact.

The UDRP applies to this domain name.

The domain name registration "melbourneitconsulting.com" is currently in "licensed" status.

With effect from January 1, 2000, Melbourne IT Limited, as a Registrar, 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 Melbourne IT Limited that the domain name is currently "licensed", the Respondent has never requested that the domain name be deleted from the relevant domain name database. The Respondent has not sought to terminate his agreement with the Complainant as Registrar. Accordingly, the Respondent is bound by the provisions of Melbourne IT Limitedís 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 September 6, 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 ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 25, 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 September 24, 2000, the Respondent filed an email copy of his Response with WIPO Center, with the hard copy being filed on September 29, 2000.

On September 29, 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 October 2, 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 October 2, 2000, WIPO Center forwarded the record to the Panelist by courier. This was duly received by him on October 7, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by October 16, 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 Complainant was established in 1996 by the University of Melbourne. It provides a wide range of information technology. It is an accredited Registrar of global domain names and the sole Registrar of "com.au" domain names.

In conjunction with its domain name services, the Complainant provides a variety of consulting and development services, including website design and development, system integration, web strategy consulting and technology assessment strategy consulting. It is a public company and was listed on the Australian Stock Exchange ("ASX") on December 14, 1999. At the time of listing, it was the second largest Australian Internet listing on ASX. Since listing, it has established subsidiary offices in the United States and Spain.

The Complainant has registered under the laws of the state of Victoria the following business names with Consumer and Business Affairs Victoria ("CABV"): viz "Melbourne IT Connections", "Melbourne IT" and Melbourne IT Creator".

The Complainant is the registered trademark owner of the following marks incorporating the words "Melbourne IT":

A) The words "Melbourne IT Creator", registered on January, 19 1998, in the following classes:

I) class 9 in respect of computer hardware and software; publications in electronic form supplied online from databases or from facilities provided on the Internet (including websites);

II) class 41 in respect of education and training services relating to computer hardware, software and Internet based systems including electronic commerce; information relating to education provided online from a computer database or the Internet.

B) The words "Melbourne IT", in conjunction with an image of a map of Australia against a striped oval and circled by an ellipse, registered on August 28, 1996, in the following classes:

I) class 38 in respect of telecommunications, including information transmission, communication, multimedia and related technologies;

II) class 41 in respect of educational and training services namely, education and training in technology used for the storage, transmission, manipulation and organization of digital information and education and training in the simultaneous transmission of audio, visual and textual information;

III) class 42 in respect of scientific and industrial research and computer programming, including research and programming in information and communication, multimedia and related technologies.

An application to register the words "Melbourne IT" (without any accompanying images or designs) was lodged by the Complainant on July 1, 1999 in respect of the following classes:

a) class 9 in respect of computer hardware and software including customized software, software to enable connections to databases and the Internet; software to enable the searching of data; publications in electronic form supplied online from computer databases or from facilities provided on the Internet (including websites);

b) class 16 in respect of printed matter and publications; education and instructional material;

c) class 35 in respect of domain name registration services; business services; business consultancy and administration services; business information services;

d) class 38 in respect of telecommunications, including information transmission, communication, multimedia and related technologies;

e) class 41 in respect of education and training services; information relating to education provided online from a computer database or the Internet; and

f) class 42 in respect of computer programming services; computer software design; computer consultancy; website development services; services relating to providing access and leasing access time to computer databases; rental services including rental services on the Internet, by electronic and/or non-electronic means.

The Complainant has registered the following domain names incorporating the words "Melbourne IT":

- melbourneit.com
- melbourneit.net
- melbourneit.org
- melbourne-it.com
- melbourne-it.net
- melbourne-it.org
- melbourneit.com.au
- melbourne-it.co.uk
- melbourneit.co.uk
- itmelbourne.com
- itmelbourne.net
- it-melbourne.net
- itmelbourne.org
- it-melbourne.org
- melb-it.com
- melbit.net
- melb-it.net
- melbit.org
- melb-it.org
- melb-it.co.uk
- melbit.co.uk

As a consequence of its registration of business names, trademarks and domain names, all incorporating the words "Melbourne IT", coupled with its prominent position in the Australian information technology market, the Complainant claims a substantial reputation as a provider of information technology services and is commonly identified by the words "Melbourne IT".

The Respondent registered the disputed domain name with Internet Names Worldwide (i.e. the Complainantís registrar function) on July 27, 2000. He applied to register "Melbourne IT Consulting" as a business name, but his application was rejected by CABV on the grounds of confusion with the Complainantís registered business name. The Respondent subsequently registered "M.I.T.E. Consulting" as a business and company name. The business name registration was cancelled on August 9, 2000. It still exists as a company name.

On April 19, 2000, a letter of demand was sent by registered mail to the Respondent on behalf of the Complainant, requesting that the Respondent transfer the domain name and withdraw the business name application on the grounds that the Respondentís use of both names constituted an infringement of the Complainantís intellectual property rights. The Complainant received no response to this request.

On May 8, 2000, the Complainant engaged the services of Nationwide Investigation Services Pty Ltd to investigate the business activities of the Respondent. Those investigations revealed that the Respondent was a computer consultant, specializing in the installation, development and management of computer networks, allegedly trading under the name "Melbourne IT & E-commerce Consulting". Investigations conducted by Nationwide confirmed the fact that the domain name still did not resolve to a website operated by the Respondent.

On May 25, 2000, the Complainant found that the domain name resolved to a website under construction beneath the banner "Melbourne IT & E-commerce Consulting". The site provided contact details and the Respondentís resume.

The Respondent claims:

a) The Respondent registered the domain name "melbourneitconsulting.com" on January 27, 2000, via the online service provided by the Complainant in its registrar capacity.

b) The Respondent registered this name using a pending business name as the organizational contact and his correct personal details at the time. The business name, Melbourne IT Consulting, has never been used in any advertisement, electronic or otherwise, other than for the sole purpose of having that name as the organizational descriptive in the registration of the domain name. Attempts have been made to change the organization name using the registry key provided for Domain Name Administration, to reflect the proper organization that owns the domain, but each attempt has failed due to problems beyond the Respondentís control.

c) The Respondent registered the business name M.I.T.E. Consulting on April 18, 2000.

d) The Respondent registered the domain name "mit-e.com.au" on May 2, 2000.

e) The Respondent registered M.I.T.E. Consulting as a proprietary limited company on June 2, 2000.

f) An authorised representative of the Respondent applied to register "Melbourne IT and E-commerce Consulting" as a business name in June 2000.

g) The Respondent has a university education in Information Management and is a Microsoft-certified systems engineer. He has a current contract with the Victorian Government Department of Education to provide technical IT support services to schools. He is an online reseller of email, Internet and firewall software (temporarily offline during this dispute).

 

5. Partiesí Contentions

(i) Identical or Confusingly Similar

The Complainant submits that the domain name registered by the Respondent is confusingly similar to its registered or pending trademarks "Melbourne IT Creator" and "Melbourne IT".

The Respondent submits the trademark "Melbourne IT Creator" refers to two classes of goods and services, both of which the Respondent has no involvement with. Class 9 refers to the creation of electronic publications available online from databases or from facilities provided on the Internet. Class 41 refers to online education and training services.

The logo trademark "Melbourne IT" Ė a map of Australia against a striped oval encircled by ellipse Ė again refers to an additional three classes of goods and services, both of which the Respondent has no involvement with. The Complainantís attempt at correlating the "confusing similarity" between the domain name and the registered trademarks is contradicted in its own Complaint which clearly states what goods and services are provided by the Respondent.

IT Consulting services are not listed in any of the classes for which the Complainantís trademark has exclusive rights. The fact that consulting services are listed in the classes of the pending trademark, "Melbourne IT", lodged over 12 months ago, should be irrelevant considering the nature of the words involved Ė both being either a geographic term or a description of goods and services and the fact that it has not been approved.

Furthermore, after the geographic and service description are removed from the trademark "Melbourne IT Creator" and the domain name at issue, the terms "consulting" and "creator" are left. It is the Respondentís view that these terms are quite dissimilar.

(ii) No Rights or Legitimate Interests

The Complainant alleges:

a) Prior to being notified of the Complainantís objection to his use of the domain name (on April 19, 2000) the Respondent lodged a business name application with CBAV to register "melbourneITconsulting". This application was rejected by CBAV on the grounds of likely confusion with the Complainantís registered names.

b) The business name "M.I.T.E. Consulting" was similarly rejected on August 9, 2000.

c) Accordingly, the Respondent was not using or preparing to use a name corresponding to the disputed domain name prior to the dispute activated on April 19, 2000, in connection with a bona fide offering of goods and services.

d) In now holding out an association between the disputed domain name and the goods and services now offered under a different company name, the Respondentís offer of goods and services cannot be bona fide, since his registration of the business name "Melbourne IT Consulting" was rejected by the appropriate authority, CBAV.

e) CBAVís decision effectively prevents the Respondent from being known as "Melbourne IT Consulting".

f) There is no evidence that the Respondent had been commonly known by the disputed domain name before the April 19, 2000 letter.

g) Since there has been no website attached to the disputed domain name for much of the time since registration, it is unlikely that the Complainant would have been known commonly to Internet users by the name.

h) By retaining the domain name, the Respondent is circumventing CBAVís decision to prohibit him from trading as Melbourne IT Consulting. He continues to take advantage of the marketplace confusion that CBAVís decision was intended to end.

The Respondent alleges:

a) The website was developing ever since registration. Since June 2000, the Respondent has taken steps to block unauthorised site access.

b) The website has changed in reflection of CBAVís decision.

c) The Respondent is promoting his companyís name "M.I.T.E. Consulting Pty Ltd", which has both "melbourneitconsulting.com" and "mite.com.au" as contact domains. The reputation or common identity has been "immeasurable" because of Respondentís schoolsí contract with the Victorian Government.

d) The Respondent is not deliberately circumventing CBAV decisions or purposely registering the domain name to create commercial advantage.

(iii) Bad Faith Registration and Use

The Complainant submits that, as a contractor who has been employed in the information technology industry for several years, it is highly likely that the Respondent was familiar with the Complainantís marks and considerable reputation when he first registered the domain name. Given the obvious similarities between the domain name and the Complainantís marks, the Complainant submits that the Respondent registered the domain name in bad faith in order to attract the Complainantís potential customers.

By commencing construction of a website (which was only commenced after the Complainantís letter of demand) which provides contact and resume details, accessed via the domain name, the Respondent has continued to use the domain name in bad faith. By retaining the domain name (despite being unable to register it as a business name) the Respondent seeks to capitalize on the substantial risk of confusion acknowledged by CBAV, thereby attracting the Complainantís potential customers.

The Respondent displayed on the website and on literature a company name or business name (pending or approved) which he used for trading. This would show any potential customers of the Complainant who happened to resolve to the Respondentís web address that there was no affiliation with Melbourne Information Technologies Ltd and that the Respondent was not using the domain name in bad faith. The allegation that potential customers could be confused is speculation and the fact that they are there is either purely coincidental. The allegation that the Respondent registered the domain name in bad faith in order to attract potential customers of the Complainant and the allegation of not preparing to use the domain name or a name corresponding to the domain name are both emphatically denied, and disproved with the registration of M.I.T.E. Consulting as a business name on April 18, 2000.

 

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.

In determining whether the domain name "melbourneitconsulting.com" is confusingly similar to the Complainantís mark, the Panel has had regard to various tests in trademark law as to when a mark may not be registered where "the use Ö would be likely to deceive or cause confusionÖ". (These words cited, or similar, are to be found in the trademark statutes in several jurisdictions). Out of many cases, the following principles relevant to the present situation emerge:

Where there is a worldwide association of ideas in connection with a particular name or figure, a mark in whatever category will not be allowed which incorporates that particular name or figure. See Radio Corporation Pty Ltd v Disney (1937), 57 CLR 448, where the High Court of Australia upheld a Registrarís refusal of the marks "Mickey Mouse" and "Minnie Mouse" for radio receiving kits and sets.

All surrounding circumstances have to be taken into account, including the circumstances where the applicantís mark is likely to be used, the relevant market and the character of those involved in the market. See Polaroid Corporation v Hannaford and Burton Ltd [1975] 1 NZLR 566 and Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50.

The word "deceive" implies the creation of an incorrect belief and "causing confusion" may go no further than mixing up or perplexing the minds of the purchasing public: New Zealand Breweries Ltd v Heineken [1964] NZLR 115. Where deception or confusion is alleged as to the source of the goods, "deceived" is equivalent to being misled into thinking that the goods bearing the applicantís mark come from some other source and "confused" indicates being caused to wonder whether that may not be the case (Hi-Bred Corn case).

Although the marks must be compared as a whole in determining confusion, when each mark has a common feature, greater attention needs to be focused on the remaining parts of the marks: re Broadheadís Application (1950), 67 RPC 209, 215.

Allowances must be made for imperfect recollections on the part of members of the public and the effect of careless speech (re Rystaís Application (1943), 60 RPC 87, 188-9; Polaroid (supra) at 571).

The overall test is one of impression of confusion in the mind of the adjudicator making the decision: General Electric Co. v General Electric Co. Ltd [1972] 1 WLR 729, 738: [1973] RPC 297.

Where an application is to be rejected on the ground of confusion, the Court (or Panel) must be satisfied that there is a real danger of confusion (Berlei (UK) Ltd v Bali Brassiere Co Inc. [1969] 1 WLR 1306: [1969] RPC 472).

Applying these tests, the Panel considers that there is a real danger of confusion between the Complainantís marks "Melbourne IT" and "Melbourne IT Creator" and the disputed domain name "melbourneitconsulting.com" for the following reasons:

a) The Complainantís high profile in the IT world in Australia would make Internet users think that the domain name was connected with or affiliated to the Complainant in some way. The significant words associated with the Complainant are "Melbourne IT".

b) The burgeoning of information technology requires its use by almost all businesses and many private individuals, with the consequent need for experts to guide such users. Therefore, the word "consulting" in association with "melbourneit" could be thought of easily as a service activity carried on by a large player in the IT market. The "purchasing public" would be perplexed or mixed-up as to the identity of the provider of IT consulting services emanating from Melbourne.

c) The Respondentís contentions regarding the scope of the Complainantís trademark registration are insubstantial. In respect of the mark "Melbourne IT" where registration is pending, class 35 covers consulting services. Although registration has not been effected, if and when it occurs, trademark protection will relate back to the date of filing (July 1, 1999).

The Panel finds that the disputed domain name is confusingly similar to the Complainantís trademarks.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with Paragraph 4(c) of the Policy:

a) he has made 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 prior to the dispute;

b) he is commonly known by the domain name, even if he has not acquired any trademark rights; or

c) he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel has considered the submissions under this criterion and determines that the Complainant has discharged the onus of proof for this criterion and that the Respondent has failed to demonstrate a legitimate right or interest for the following reasons:

a) There is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before April 19, 2000, when the dispute commenced. He did apply (at a date unknown to the Complainant) to register "Melbourne IT Consulting" as a business name before April 19, 2000 but that registration was refused by CBAV on the grounds of likely confusion with the Complainantís various names or marks.

b) As at April 12, 2000 the domain name did not resolve to any website. On May 25, 2000 the website resolved into "Melbourne IT & E-commerce Consulting". The Respondent traded under that name after the dispute arose.

c) The Respondent cannot be known by the name "Melbourne IT Consulting" since proper authority has rejected his ability to do so.

d) The fact that the domain name directs users to Melbourne IT & E-commerce Consulting is not a fair use of the name. Rather, it is a means of circumventing CBAVís decision.

The Panel further determines that the Respondent has registered and continues to use the domain name in bad faith for the following reasons:

a) It is a fairly easy inference to draw that as at January 27, 2000 the Respondent, as a person in Melbourne experienced in IT technology, must have known of the Complainant under the emblem "Melbourne IT". Therefore, when he registered the domain name on that date, the Respondent must have done so in bad faith.

b) His continued use of the domain name, after his application to use the name as a business name had been rejected on the grounds of confusion with the Complainant, indicates bad faith.

c) nHis direction of Internet users hitting the domain name to his business is an attempt to use a rejected business name, despite that rejection.

 

7. Decision

For the foregoing reasons, the Panel decides that:

a) The domain name registered by the Respondent is confusingly similar to the trademarks to which the Complainant has rights.

b) The Respondent has no rights or legitimate interests in respect of the domain name.

c) The Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(1) of the Policy, the Panel requires that the registration of the domain name "melbourneitconsulting.com" be transferred to the Complainant.

 

 


Hon. Sir Ian Barker QC
Presiding Panelist

Dated: October 16, 2000