WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydney Opera House Trust v. Trilynx Pty. Limited
Case No. D2000-1224
1. The Parties
The complainant is Sydney Opera House Trust, of Sydney Opera House, Bennelong Point, Sydney, New South Wales, Australia. The respondent is Trilynx Pty. Limited of 1, Clara Street, Newtown, Sydney, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain name is sydneyoperahouse.net and the registrar 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 September 15, 2000 and in hard copy on September 22, 2000. It was acknowledged on September 18, 2000. On September 21, 2000, registration details were sought from the registrar. On September 28, 2000 registration details were confirmed by the registrar. On September 26, 2000 the respondent notified the Center of its contact details. On October 3, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee; printed out a copy of the disputed web page and formally notified the respondent by post/courier 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 for a response was October 22, 2000. On October 10, 2000, the response was received by the Center by email and on October 13, 2000 in hard copy. Receipt of the response was acknowledged by the Center on October 13, 2000.
On October 18, 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 October 20, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of November 2, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s 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
The building known as the Sydney Opera House has been world famous since its official opening in 1973 by Queen Elizabeth II. In recent years over 4 million people per year have visited it. 75% of all international tourists who come to Sydney visit the building. It is one of the busiest performing arts centers in the world and is often used as a symbol of Sydney in advertising and promotion. The Australian Government is seeking to nominate the Sydney Opera House for inclusion in World Heritage Listing with UNESCO.
The complainant is a body corporate established in 1961 under the Sydney Opera House Trust Act of the New South Wales parliament to manage and administer the building as such and as a theatre, concert hall and place of assembly (subject to the control and direction of the relevant government Minister). It is empowered to do all things it may deem conducive to the profitable and effective attainment of its objects and performance of its functions. It may acquire and hold any real or personal property and any rights and privileges which it may think necessary or convenient for its objects. To this end, the Trust is specifically authorized to register, purchase or apply for or otherwise acquire any trademark which may seem capable of being used in the exercise or in furtherance of any of its functions or the acquisition of which may seem to be calculated directly or indirectly to benefit the Trust.
It is the registered proprietor in Australia of the trade mark "SYDNEY OPERA HOUSE" (registration No. 710167) for goods and services in international classes 3, 8, 9, 14, 16, 18, 20, 21, 25, 26, 28, 30 and 41. It has also registered that mark in Japan in classes 16 and 25.
The complainant has licensed the use of its trade mark. Merchandise bearing the mark sold through the shop in the foyer of the building alone generates over AU$1 million per annum.
The complainant’s web site www.soh.nsw.gov.au received over 22 million hits in the last financial year.
The respondent is in the business of developing web and card technologies specializing in building ‘Web Networks". The respondent is the proprietor of www.HarbourBridge.com networks, a free community network consisting of www.AustNews.com, www.AustArt.com, www.AustStocks.com, www.AustMusic.com, www.SydneyHomes.com and others in the process of being launched.
The respondent also owns other domain holdings, including the disputed domain name, which was registered on May 6, 1999. No active use has since been made of it, other that for ‘protective’ purposes as described below. The corresponding web site displays a holding page supplied by the registrar. The respondent has not applied to register a trade mark incorporating the mark SYDNEY OPERA HOUSE nor any similar business name.
5. Parties’ Contentions
Identity or confusing similarity
The disputed domain name is identical or confusingly similar to the complainant’s famous mark "SYDNEY OPERA HOUSE" in which the complainant has an extensive and valuable reputation in Australia and around the world and which it has registered in Australia and Japan.
The complainant has not authorized the respondent’s use of the trademark nor its registration of the disputed domain name. Therefore the respondent has no legitimate interest in that name.
The respondent has not been commonly known by the domain name, nor has it been making any legitimate non-commercial fair use of the domain name without the intent for commercial gain.
Any use by the respondent of the disputed domain name in relation to goods or services would infringe the complainant’s rights and contravene the consumer protection provisions of the Australian Trade Practices Act 1974. Therefore the respondent could have had no reason to register and use the disputed domain name unless it sought to mislead as to an association with the complainant. Such commercial use could not be in good faith.
Having regard to the fame of the mark, the inference should be drawn that, even though no active use has been made of the disputed domain name, its registration by a person with no affiliation with the complainant constitutes bad faith registration and use.
The failure to make any use of the domain name for over a year after registration raises the inference that there was no intent, at the time of registration, to make good faith use of the domain name.
Unlike domain name cases such as Telstra (D2000-0003) and CBS Broadcasting (D2000-0397) where the name was an invented or coined word and the trademark was made famous by the owner’s products and services, Sydney Opera House is world famous not by the virtues of the merchandise in respect of which the complainant has rights, but rather by virtue of its cultural heritage as a symbol of Sydney and Australia.
The Sydney Opera House is a generic symbol, like the Eiffel Tower, the Statue of Liberty and the Great Wall of China. In connection with World Heritage, UNESCO states:-
"What makes the concept of World Heritage exceptional is its universal application. World Heritage sites belong to all the peoples of the world, irrespective of the territory on which they are located".
Thus great buildings of global significance, such as the Sydney Opera House, are ‘recognised generically in nature’ to represent a symbol of a place and appreciated universally as a ‘mark’ of human achievement. This dispels the complainant’s assertion that the Sydney Opera House is made famous as a result of the complainant’s activities and trademark rights in merchandising products for the Australian and Japanese tourist markets.
Identity or confusing similarity
Apart from a general denial that each of the 3 essential elements specified in paragraph 4(a) of the Policy is applicable to this dispute, the respondent does not contest that the disputed domain name is identical or confusingly similar to the complainant’s trademark. In dealing with the issue of bad faith, the respondent refers to K2r Produkte AG v. Jeremie Trigano (D2000-0622) in questioning whether there would be confusion in fact.
The respondent also comments that the disputed domain name is totally different from the complainant’s official website address www.soh.gov.nsw.au which distinguishes the complainant’s web address from the ‘other’ hundreds of thousands of web sites worldwide that have the Sydney Opera House as a topic.
The respondent never sought a licence of the complainant’s trademark because it was unaware of it and, in any event, the respondent’s business is totally different from that of the complainant.
Apart from the description of the respondent’s business outlined as part of the ‘background’ above, the respondent owns other ‘generic’ domain holdings which it intends to develop as a ‘second phase’ of its mission, including the disputed domain name and other ‘nets’ which the respondent registered to ‘protect and nurture’ the community. The respondent intends to build a ‘global community network’ bringing to life www.Harbourbridge.Net, Dugong.net, Galah.net, Kookaburra.net, PandaBear.net and other ‘generic people’s icons’ that will bridge the respondent’s web community worldwide and which the respondent registered with the purpose of ‘protecting’ and ‘making positive contributions’ towards society by developing an alternative and altruistic network, free of commercial bias and political bent that will enable it to serve the broader community in the spirit in which the world wide web was originally intended – to keep on improving the Web for the common good.
The respondent has over 100 affiliate agreements with leading online companies all over the world (see www.jerrypark.com ‘affiliates") that will feed dynamic news content, provide search features, classifieds, free services that will make this network a reality in the not too distant future.
Therefore the respondent has a legitimate interest. See St Moritz (D2000-0617).
The respondent has never had any intentions of operating a commercial enterprise using the disputed domain name.
The respondent believes by being a responsible owner of this domain name it was able to prevent a potentially irresponsible registrant from causing significant damage from ‘Cultural Heritage’ falling into the wrong hands. The respondent cited an example of a web site which incorporated the words sydneyoperahouse in conjunction with obscene language.
The respondent has rights under the United Nations accord for self determination, which enables the respondent to consider its position as a ‘protectionist’ and as such through the respondent’s actions was able to prevent a possible escalation of damage. This dispels the complainant’s allegation of no apparent good faith use.
The complainant’s cited cases on ‘passive use’ constituting bad faith can be distinguished. None of the circumstances described in paragraph 4(b) of the Policy are present in this case.
The respondent has chosen not to develop or link the disputed domain name because the respondent has been working on an ‘all encompassing plan’ based on launching a ‘global network’ of over 100 sites, ‘2Earth.com Network’ using the respondent’s domains. To date there are about 30 sites being trailed or which are currently under development that are hosted by ‘free’ affiliate partners including Yahoo, Excite, Fortune City and others. The respondent intends to launch its network sites when they have been fully tested, meet the quality standards or when the respondent can finance the official launch.
The respondent is financing this project with his own funds without any backing and therefore can develop the ‘community’ project only when funds are available based on the respondent’s employment status. Whilst the respondent is in need of funds, it has at no stage attempted to ‘exploit’ the disputed domain name. It has rejected many unsolicited offers for its domain names over the years.
Reverse domain name hijacking
The complainant’s failure to present any form of proof, any shred of evidence and the deliberate attempts in ‘bad faith’ to tarnish the reputation of the respondent without provocation justify a finding of reverse domain name hijacking within Rule 15(e).
The respondent lives within 5 km of the complainant and should have been contacted to ascertain the truth about the respondent before the complainant put together a case of false allegations in reliance on misleading cases without any evidence.
The ‘bad faith’ allegations by the complainant without any form of provocation, together with the complainant’s history in operating under a web address chosen as different from the disputed domain name seems to show that these proceedings have been brought in bad faith by the complainant.
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.
Whether the complainant has rights in the trademark
The fact that the fame of the Sydney Opera House is attributable to its global significance as a building does not mean that trademark rights may not exist in the name Sydney Opera House. Many trade marks applied to merchandise become famous as names before being turned to such use. The field of ‘merchandising’ depends upon the fame of a mark being used to render attractive goods or services to which it is applied. The complainant, by virtue of its objects, functions and powers conferred by statute, was entitled to use as a common law trademark and to register the name Sydney Opera House and the panel finds that the complainant has rights in that mark.
Identity or confusing similarity
Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. There is no dispute that the domain name is essentially identical to the complainant’s famous trademark SYDNEY OPERA HOUSE.
The panel finds the complainant has established this element.
The respondent asserts that it has no intention to engage in any commercial activities using the disputed domain name. The panel infers that the respondent has not used the domain name in connection with any offering of goods or services.
The respondent has not sought to demonstrate any circumstances within Rule 4(c). Nevertheless, the onus of proof on this, as on all issues, is on the complainant.
By conferring upon the complainant the right to acquire and register trademarks in connection with its objects and to exercise its rights thereunder, the NSW Parliament, on behalf of the people of New South Wales, Australia, designated the complainant as the appropriate entity to manage and administer the famous building and protect its reputation. Accordingly, sincere though the respondent may be in seeking to be a responsible owner of the disputed domain name and to prevent others from significantly damaging the cultural heritage of all peoples of the world, as expressed in the Sydney Opera House, the law of New South Wales (where both the complainant and the respondent are located) prevents the respondent from establishing a legitimate right or interest in a domain name which incorporates the complainant’s trademark.
Under these circumstances, the panel finds the complainant to have established that the respondent has no rights or legitimate interests in the disputed domain name.
In E2r Produkte v, Jeremie Trigano (D2000-0622) relied upon by the respondent, the trademark and the disputed domain name were used in entirely different fields. Here both are used to evoke the same building. In the Fuji case (D2000-0409), also relied upon by the respondent, the trademark was one of many, in different fields. There is only one Sydney Opera House.
The respondent correctly submits that there is no evidence of circumstances which shall be taken to be evidence of both bad faith registration and use within Rule 4(b). That Rule is not exhaustive, however and it is therefore appropriate to consider separately whether there is evidence of bad faith registration and use.
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).
The respondent cannot have failed to have known of the use of the name SYDNEY OPERA HOUSE to identify the building at Bennelong Point before the respondent registered the disputed domain name, otherwise the respondent would not have perceived the need to "protect" that name as it has asserted. Although the respondent does not claim to have been unaware of the existence of the complainant, the respondent may not have known that the complainant had registered the name as a trademark and may not have appreciated that the complainant had common law rights in the name.
Nevertheless, by virtue of the maxim ‘ignorance of the law is no excuse’, the respondent must be taken to have known of the provisions of the Sydney Opera House Trust Act 1961 (NSW) and thus of the complainant’s objects and functions with respect to the famous building. Parliament entrusted to the complainant the maintenance and administration of the building and the protection of any trade mark the complainant might acquire or register to meet its objects. The panel finds that the respondent should have known of the registration and use of the complainant’s trademark before it registered the disputed domain name.
Accordingly the panel finds that the registration was made in bad faith.
The only use the respondent has made of the disputed domain name has been to "prevent possible escalation of damage" by preventing potentially ‘irresponsible’ registrants like the one who associated the name Sydney Opera House with apparently obscene material.
In order that the respondent’s protective role might be effective, that use of the domain name must have been intended by the respondent to create the impression that the respondent was the ‘official’ protector of the name of the opera house and thus to give the false impression of an authorized association between the complainant and the respondent which the respondent knew did not exist. The panel finds this to constitute use in bad faith.
Reverse domain name hijacking
To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge; Plan Express Inc. v. Plan Express (D2000-0565). Neither circumstance has been shown here.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name sydneyoperahouse.net to be transferred to the complainant.
Alan L Limbury
Dated: October 31, 2000