WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Brisbane City Council v. Warren Bolton Consulting Pty Ltd

Case No. D2001-0047

 

1. The Parties

1.1. This Complaint was filed by Brisbane City Council, a body corporate established pursuant to the City of Brisbane Act 1924 (Qld), and having a place of business at Level 2, 69 Ann Street, Brisbane, Queensland, Australia, 4000 ("Complainant").

1.2. The respondent is Warren Bolton Consulting Pty Ltd, apparently a company incorporated under the laws of Australia, having a place of business at 90 Bryant Street, Rockhampton, Queensland, Australia, 4701 ("Respondent").

 

2. The Domain Name and Registrar

2.1. The domain name the subject of this Complaint is " brisbanecity.com".

2.2. The registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, United States of America ("Registrar").

 

3. Procedural History

Issuance of Complaint

3.1. On January 10, 2001, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on January 10, 2001 and the copy of the Complaint submitted by courier was received on January 15, 2001. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainant by email dated January 11, 2001.

Confirmation of Registration Details

3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on January 11, 2001. By email to the WIPO Center on

January 16, 2001, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of that domain name is the Respondent, and provided postal, telephone and email contact details; confirmed that the Uniform Policy applies to the domain name the subject of this Complaint; and informed that the current status of that domain name is "active".

Notification to Respondent

3.3. On January 23, 2001, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier and email to the addresses provided by the Registrar. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.

3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".

Filing of Response

3.5. On January 28, 2001, the Respondent sent an email to the WIPO Center asserting that proceedings under the Uniform Policy are generally unfair, and that the Complainant was not legally entitled to bring an action under the Uniform Policy. By email to the WIPO Center on February 9, 2001, the Complainant responded to the second assertion, by stating that the Complainant had delegated the power to commence legal proceedings to its Chief Executive Officer, who had expressly authorized the bringing of this action under the Uniform Policy. By email to the WIPO Center on February 10, 2001, the Respondent filed a Response to the Complaint. This Response contained hyperlinks to various annexures, but did not include the annexures themselves. Subsequently the Respondent provided on a CD-ROM both the Response and the hyperlinked Annexures thereto. An Acknowledgement of Receipt of Response was sent to both parties by the WIPO Center on February 12, 2001.

3.6. Rule 5(b) of the Uniform Rules requires that "the Response shall be submitted in hardcopy". This Administrative Panel has exercised its discretion to treat the Response and Annexures thereto, provided by way of CD-ROM, as submitted in accordance with the Uniform Rules.

Constitution of Administrative Panel

3.7. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On

March 1, 2001, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that

Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by March 14, 2001. The case before this Administrative Panel was conducted in the English language, being the language of the registration agreement applicable to the domain name in issue.

Compliance with the formalities of the Uniform Policy and the Uniform Rules

3.8. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.

Submissions Subsequent to Filing of Response

3.9. On March 2, 2001, the Complainant sent to the WIPO Center, and copied to the Respondent, an unsolicited Reply to the Response. On March 6, 2001, the Respondent sent an email communication to the WIPO Center, seeking some guidance on whether or not his comments on the Reply "would be in order or invited". The WIPO Center by email response the same day informed the Respondent as follows:

Pursuant to Paragraph 10 d) of the Rules, "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Therefore, it will be up to the Panelist to consider any further communication submitted by the parties."

3.10. As is usually the case with unsolicited subsequent submissions, the Reply did not, in the opinion of this Panel, add anything of substance to the issues and facts addressed in the Complaint and the Response. Accordingly, this Panel did not invite the Respondent to make any further submissions. Nevertheless, the Respondent and the Complainant did send various further communications to the WIPO Center. These further communications did not prove relevant to the resolution of this Complaint.

Unavoidable Delay

3.11. Through an unfortunate oversight, the dispatch of the case file to this Administrative Panel was misdirected. As a result, the case file was not received by the Panel until well after the date by which a decision was originally scheduled. Accordingly, the Panel was required a number of times to defer the deadline for rendering a decision. In addition to these deferrals, there occurred some unforseen events in relation to certain documentation held by a third party on which the Respondent relied in his Response. This led to further deferrals of the date by which a decision would be rendered. Whilst unfortunate, this Administrative Panel considers that no injustice has ultimately resulted to either party as a result of the unavoidable delay in rendering this decision.

 

4. Factual Background to this Complaint

Complainantís Activities and Trademarks

4.1. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The Complainant was established pursuant to the City of Brisbane Act 1924 (Qld) ("the Act") on October 30, 1924. The Act is legislation of the Queensland State Parliament. The Act sets out the composition, duties and powers of the Complainant. The commencement of the Act contains a statement that the Act is "an Act for the good government of the City of Brisbane". Section 6 of the Act provides that the Complainant is a body corporate that may exercise its powers under the name "Brisbane City Council". The Complainant owns, operates and manages one of the most diverse public sector physical asset portfolios throughout Australia. The Complainantís assets are valued in excess of A$14 billion. The Complainant is known throughout Australia and elsewhere as the Brisbane City Council.

4.2. The Complainant has a number of commercialized business units. For example, the Complainant operates a number of commercial businesses that provide consultancy services. The Complainantís businesses include:

  • Building Certification Group, which provides building certification services;
  • Brisbane CityWorks, which offers a total package for customers in civil construction and maintenance;
  • City Design, which provides services in the planning and design and the delivery of civic infrastructure in an urban environment; and
  • Brisbane Water, which provides water and waste services in South East Queensland.
  • 4.3. The Complainant is the owner of 28 registered Australian trademarks and 9 pending Australian trademark applications. The Complainant is the owner of 4 registered Australian trade marks and trademark applications that include the words BRISBANE CITY. Details of these registered trademarks and applications are set out in Annex C to the Complaint. In particular, the Complainant is the applicant, under Australian trade mark application number 860065, for the words BRISBANE CITY in classes 9, 14, 16, 19, 25, 28, 35, 36, 37, 38, 39, 41 and 42. This application is pending.

    4.4. The Complainant is the owner of Australian trademark registration numbers 510495 and 510496, that include the words WATER SAVE IT and BRISBANE CITY. It is to be noted that these two registered trademarks are the subject of a disclaimer, which states "Registration of this trade mark shall give no right to the exclusive use of the slogan SAVE IT! and the words BRISBANE CITY". The Complainant is also the owner of Australian trademark registration number 768670, that includes the words BRISBANE CITY WORKS in classes 19, 35, 37 and 42. In addition, the Complainant is the owner of Australian trademark registration number 796961, for the words E BRISBANE. The Complainant uses this trademark in relation to its current project to provide services online. The details of this trade mark registration are provided in Annex F to this Complaint.

    4.5. The Complainant ordinarily uses the words BRISBANE CITY in conjunction with a number of its registered Australian trademarks. These include Australian trademark registration numbers 372022, 372024, 487398, 487400, 487401, 487402 and 487403 for a logo that shows the Brisbane City Hall. The Complainant uses these trademarks in connection with the goods and services listed in its trade mark registrations, the details of which are provided as Annex D to this Complaint. When using this logo, the words BRISBANE CITY are printed underneath the logo, as shown in registered trade marks 510495 and 510496 and in Annex E to this Complaint.

    4.6. In addition to the above-mentioned trademark application and registrations, the Complainantís corporate logo, by which the Complainant is ordinarily identified, contains the words "Brisbane City". The corporate logo is made up of the Brisbane City Hall logo (e.g. Australian trademark registration number 372022) with the words BRISBANE CITY underneath. The Complainant has been using this logo extensively for more than 15 years, on all buses and ferries it operates in Brisbane; painted on the side of the Complainantís vehicles; on council buildings and libraries; as letterhead on its correspondence including on rates notices to all property owners in Brisbane; on bus and ferry tickets; on flags at news agencies that sell bus and ferry tickets; on transport timetables; on brochures; on maps; on its website; on all major tenders and contracts; and on internal documents. A copy of the Complainantís corporate logo and evidence of the Complainantís extensive use of that logo is provided as Annex E to this Complaint.

    Respondentís Activities

    4.7. The Complainant asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established. The domain name "brisbanecity.com" was registered by the Respondent on April 21, 1999. On November 14, 2000 and January 5, 2001, the Complainant visited the http://www.greatdomains.com website, and found that the domain name "brisbanecity.com" was listed for sale for US$25,000. A copy of the website is provided as Annex K to this Complaint. On December 6, 2000, the domain name resolved to an inactive web page. A copy of the website accessible by the domain name on December 6, 2000 is provided as Annex G to this Complaint. On December 13, 2000, the Complainantís legal representatives sent a letter and email to the Respondent advising the Respondent of the Complainantís trade mark rights and requesting the Respondent to transfer the domain name to the Complainant. A copy of the letter and email is provided as Annex H to this Complaint. On December 18, 2000, the Respondent sent a letter to the Complainantís legal representatives stating that the Respondent was not prepared to transfer the domain name to the Complainant. A copy of the letter is provided as Annex I to this Complaint.

    4.8. On January 5, 2001, after the Respondent was notified of the Complainantís rights and intention to institute proceedings against the Respondent if the domain name was not transferred to the Complainant, the Complainant visited the website accessible by the domain name and found there an active website. That website contained a link to http://www.ozdomainsales.com, where the domain name "brisbanecity.com" is listed for sale at a price on application. The Respondent is also the registrant of the "ozdomainsales.com" domain name. A copy of the website accessible by the domain name, and the webpages linked to from the website accessible by the domain name, are provided as Annex J to this Complaint.

    4.9. The Respondent asserted the following facts (the veracity of which it is not necessary for this Administrative Panel to establish). The Respondent is a consultancy company in local government. In late 1998 the company made a decision to diversify and become involved with, and invest in, the developing technologies of the Internet. To this extent the company developed a number of web sites and purchased a number of domain names. On April 21, 1999, the Respondent registered the domain name "brisbanecity.com", along with other domain names containing the name of an Australian capital city and the word "city" Ė namely, "perthcity.com", "canberracity.com" and "hobartcity.com". In addition, around this time the Respondent also registered domain names such as "brisbanemedical.com", "brisbanelaw.com", "perthmedical.com", "perthlaw.com", "sydneymedical.com" and "canberralaw.com".

     

    5. Partiesí Contentions

    The Complaint

    5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute, as follows.

    5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name "brisbanecity.com" is identical to its alleged trademark BRISBANE CITY. In addition, the Complainant contends that the domain name "brisbanecity.com" is confusingly similar to its registered trademark BRISBANE CITY WORKS and to its name BRISBANE CITY COUNCIL.

    5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that there is no evidence that the Respondent has ever had any intention of using the domain name in connection with a bona fide offering of goods or services. The evidence reveals that the Respondent registered the domain name, and many other domain names, for the sole purpose of transferring the domain names to third parties for valuable consideration in excess of the domain name registrantís

    out-of-pocket costs directly related to the domain name. The domain name is listed for sale for US$25,000. Further, there is no evidence that the Respondent has ever been known by the domain name or any name similar to the domain name. The Respondentís business is known as "Warren Bolton Consulting Pty Ltd", a name which has no connection with the words "Brisbane City". The words BRISBANE CITY have no natural affiliation with, or obvious connection to, the Respondent or his business. As far as the Complainant is aware, the Respondent has not applied to register a trademark incorporating BRISBANE CITY nor any similar business name. By law in Queensland, if the Respondent was operating a business under the name BRISBANE CITY, the Respondent must register the name as a business with the Office of Fair Trading (see Business Names Act 1962 (Qld)). The Respondent has not done so. The Respondentís address is not located in or near Brisbane, but is located in Rockhampton approximately 745 kilometers north of Brisbane. Furthermore, the Respondent has not used the domain name in connection with the bona fide offering of goods or services. The Respondent has only used the domain name in relation to its website for less than one month. The Respondentís website at brisbanecity.com, which was created using a free webhosting service provided by register.com after the Respondent was first formally notified of this dispute by the Complainantís representatives, merely contains a photograph of the Complainantís light fixture in the Complainantís Queen Street Mall development and some links to other unrelated websites apparently owned by the Respondent.

    5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the Respondent registered the domain name for the sole purpose of selling the domain name to a third party in excess of the domain name registrantís out-of-pocket costs directly related to the domain name. The fact that the Respondent is the registrant of the domain name ozdomainsales.com, and that the website accessible by that domain name advertises a number of other domain names owned by the Respondent that are available for sale, shows that the Respondent has engaged in a pattern of such conduct. The ozdomainsales website currently lists 91 domain names that are either available for sale or have been sold by the Respondent. Further evidence of the fact that the Respondent has engaged in a pattern of such conduct is provided by the fact that the Respondent was also a respondent in the case of Telstra Corporation Ltd v Warren Bolton Consulting Pty Ltd WIPO Case D2000-1293 (bigpons.com). In that decision, the panelist ordered the transfer of the domain name "bigpons.com" to the complainant. Furthermore, by using the disputed domain name, the Respondent is using the Complainantís trademark to attract Internet users to its other websites for commercial gain. Additionally, the Respondent knew or should have known of the Complainantís registration and use of BRISBANE CITY prior to registering the domain name.

    The Response

    5.5. The Respondent contends that the Complainant has no trademark rights in relation to BRISBANE CITY and is unlikely ever to obtain them. All the Complainantís current trademark registrations contain other words or items in support of the term BRISBANE CITY, and "it is the inclusion of these additional Ďwords or itemsí that make them trademarkable". Further, it is notable that the Complainantís registration of the trademark WATER SAVE IT BRISBANE CITY contains the endorsement disclaiming exclusive rights in the words BRISBANE CITY.

    5.6. The Respondent contends he has a legitimate right to use the domain name "brisbanecity.com" because it was and his intention to use it, and the other Australian capital city domain names he registered, to build a network of portals to service the capital cities of Australia. Also, the Respondent contends he has demonstrated preparations to use the domain name in connection with a bona fide offering of goods or services, by way of him engaging in 1999 a web design specialist to undertake work on the proposed website. The Respondentís plan was to start small and to develop sites that the company could afford, and use the profits from these enterprises to fund the development and promotion of the larger projects. The Respondentís first ventures were portal sites using the domain names "rockhamptoncity.com" and "rockygossip.com", which failed to perform in the market place. Accordingly, the Respondent put on hold the proposal to develop a similar portal site using the domain name "brisbanecity.com". It is for this reason that, as at the time of this dispute, no additional design work of any substance had been undertaken in relation to this proposed portal site.

    5.7. The Respondent contends that he has not registered and is not using the domain name in bad faith. In particular, he did not purchase the domain name for the primary purpose of selling it to the Complainant or its competitor. No approach has ever been made to the Complainant with a proposal that it purchase the domain name. Further, the Respondent is not preventing the Complainant from reflecting a trademark in a corresponding domain name, because the Complainant has no trademark over BRISBANE CITY. Furthermore, the Respondent is not a competitor of the Complainant, so it cannot be said the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. Finally, the Respondent is not using the domain name to attract, for commercial gain, internet users to a website by creating confusion with the Complainant as to source, sponsorship, affiliation or endorsement.

     

    6. Discussion and Findings

    Domain Name Identical or Confusingly Similar to Complainantís Marks

    6.1. The relevant part of the domain name the subject of this Complaint is "brisbanecity". The Complainant has contended that this part of the domain name is identical to its alleged unregistered trademark BRISBANE CITY, and is confusingly similar to its registered trademark BRISBANE CITY WORKS and to its name BRISBANE CITY COUNCIL. Each of these contentions is discussed separately, below.

    BRISBANE CITY

    6.2. In relation to the Complainantís first contention, the initial question to resolve is whether or not the Complainantís alleged unregistered trademark BRISBANE CITY is a trademark to which the Uniform Policy applies. It is clear that the Uniform Policy is not limited in its application to registered trademarks; unregistered trademarks are also within its scope. It is, therefore, possible for an action to be brought under the Uniform Policy, in relation to an unregistered word, phrase or string of characters (hereafter an "unregistered mark"), but only so long as the unregistered mark is a "trademark". For the unregistered mark to constitute a "trademark", it must function as a trademark. That is to say, the unregistered mark must perform the function of distinguishing the goods or services of one person in trade from the goods or services of any other person in trade.

    6.3. In deciding this Complaint, this Administrative Panel has taken into consideration a number of other decisions under the Uniform Policy concerning alleged trademarks that are geographical locations, including in particular Excelentismo Ayuntamiento de Barcelona v Barcelona.com Inc. WIPO Case D2000-0505 (barcelona.com), Kur- und Verkehrsverein St. Moritz v StMoritz.com WIPO Case D2000-0617 (stmoritz.com), Port of Helsinki v Paragon International Projects Ltd. WIPO Case D2001-0002 (portofhelsinki.com), and City of Hamina v Paragon International Projects Ltd. WIPO Case D2001-0001 (portofhamina.com).

    6.4. Both WIPO Case D2000-0505 (barcelona.com) and WIPO Case D2000-0617 (stmoritz.com) concerned registered trademarks, and so provide no assistance on the issue of whether the unregistered mark BRISBANE CITY is a trademark to which the Uniform Policy applies. In contrast, both WIPO Case D2001-0002 (portofhelsinki.com) and WIPO Case D2001-0001 (portofhamina.com) concerned unregistered marks, namely PORT OF HELSINKI and PORT OF HAMINA, respectively. In WIPO Case D2001-0002 (portofhelsinki.com), the Panel stated the following general proposition:

    "First the Panel notes that the present Dispute Resolution Policy applies only to conflicts between on the one hand a trademark or a service mark (Complainantís) and on the other hand a domain name (Respondentís). The Policy consequently does not presently apply to, for instance, conflicts between domain names and geographical indications or signs or symbols that are not supported by trademarks/service marks. The Panel cannot agree with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question under the Policy. Protection for geographical names can be provided through other means, such as the special protection for geographical indications and not per se under trademark law."

    A similar view was expressed by the Panel in WIPO Case D2001-0001 (portofhamina.com), where it was stated: "The Administrative Panel takes definite exception to the Complainantís view that rights to a unique geographical name should, evidently as a matter of principle, Ďbe regarded to belong to the owner of the geographical area in questioní."

    6.5. In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this Administrative Panel agrees with that view. Thus, the important issue in a case, such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark Ė that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade.

    6.6. In WIPO Case D2001-0002 (portofhelsinki.com), the Panel concluded:

    "In view of Ö the fact that no market research or similar evidence has been submitted by Complainant to prove establishment on the market in the sense of the trademark law, the Panel cannot make a finding that trademark rights exist in the denomination "Port of Helsinki"."

    A different conclusion was reached in WIPO Case D2001-0001 (portofhamina.com), where the Panel found that the mark:

    "Port of Hamina has acquired distinctiveness and become established in the meaning of the Trademarks Act as a trademark/service mark relating to services originating from the City of Hamina/Port of Hamina. Consequently, Port of Hamina is a trademark/service mark to which the Complainant has rights."

    6.7. In relation to this Complaint, the evidence on the record is not sufficient to persuade this Administrative Panel that the unregistered mark BRISBANE CITY is performing the function of a trademark and so is a trademark for the purposes of the Uniform Policy. The evidence does not show that the mark distinguishes the goods or services of the Complainant, Brisbane City Council, in trade from the goods or services of any other person in trade. Rather, this Panel finds that the mark is descriptive of a geographical location, in this case the City of Brisbane. Thus, there are likely to be many traders providing goods or services in or relating to the City of Brisbane who would have a bona fide interest in using the unregistered mark BRISBANE CITY in relation to those goods or services. In these circumstances, the unregistered mark BRISBANE CITY is unable to and does not perform the function of a trademark, and so is not a trademark for the purposes of the Uniform Policy.

    6.8. This conclusion is different from the conclusion reached by the Panel in WIPO Case D2001-0001 (portofhamina.com). However, the facts of the two cases are not the same, and so there is no reason why the two cases should necessarily come to the same conclusion on this issue. In WIPO Case D2001-0001 (portofhamina.com), the Panel found that the unregistered mark on which the complaint was based (PORT OF HAMINA), although descriptive of a geographical location (namely, the Port of Hamina), nevertheless had acquired distinctiveness, and so was able to and did perform the function of a trademark in relation to the services provided by the complainant (being the authority for that port). In this Complaint, this Panel does not find that the unregistered mark BRISBANE CITY has acquired distinctiveness, such as to be able to perform the function of a trademark in relation to the goods or services of the Complainant, Brisbane City Council. Thus, a different result is warranted.

    6.9. In reaching this conclusion, this Administrative Panel is mindful of the discussion pertaining to "Geographical Indications, Indications of Source and other Geographical Terms" contained in The Recognition of Rights and the Use of Names in the Internet Domain Name System, the Interim Report of the Second WIPO Internet Domain Name Process ("Interim Report"), of April 12, 2001. This discussion, whilst not determinative of the issue, is consistent with this Panelís view about the capacity of the name of a geographical location to perform the function of a trademark. At paragraph 277 of the Interim Report it is stated that "the protection of place names within the gTLDs is a novel concept". Accordingly, the Interim Report states (at paragraph 282) that, to provide such protection, it would be necessary to revise the Uniform Policy by way of "the incorporation into it of an additional cause of action". The assumption which underlies this discussion in the Interim Report appears to be that, as a general rule, place names per se are not trademarks for the purposes of the Uniform Policy. This assumption is, in this Panelís view,

    well-founded. Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy.

    BRISBANE CITY WORKS

    6.10. The Complainant contends that the domain name "brisbanecity.com" is confusingly similar to its Australian registered trademark 768670, which includes the words BRISBANE CITY WORKS. This Administrative Panel does not agree. This trademark registration consists of an image (being a diamond indented by three triangles) and the words BRISBANE CITY WORKS. The word BRISBANE is on the left of the diamond image, while the words CITY WORKS on the right of the diamond image and slightly run-together. Visually, "brisbanecity" is not confusingly similar to this trademark. Even if this trademark were considered to consist only of the words BRISBANE CITY WORKS, the Panel would come to the same conclusion. With a word mark such as BRISBANE CITY WORKS, the distinguishing feature (if there is indeed one) is the conjunction of the word WORKS with the words BRISBANE CITY; the words BRISBANE CITY themselves are not distinctive. Thus, it follows that the domain name "brisbanecity.com" is not confusingly similar to the Complainantís Australian registered trademark 768670.

    BRISBANE CITY COUNCIL

    6.11. Finally, the Complainant contends that the domain name "brisbanecity.com" is confusingly similar to its name BRISBANE CITY COUNCIL. The first thing to note, of course, is that the Uniform Policy only applies to a trademark or service mark of the Complainant, and not to the name of the Complainant. It is for this reason that the WIPO Interim Report contains a very lengthy consideration of the question whether the Uniform Policy should be extended to include trade names. The Complaint makes clear, however, that the Complainantís contention on this issue is based on the claim that, due to the "extensive use of its corporate logo, the Complainant has also obtained common law trade mark rights in relation to its corporate logo and the words ĎBrisbane Cityí". This Administrative Panel is willing to assume that this claim is correct. It does not follow, however, that the Complainant has obtained common law trademark rights in the words BRISBANE CITY on their own. Indeed, this Panel concludes that the Complainant has not obtained such rights in those words on their own. The reason for this is as previously stated Ė the words BRISBANE CITY, on their own, do not perform the function of a trademark. Thus, whatever common law rights the Complainant may have obtained in relation to its logo together with the words BRISBANE CITY, those rights do not extend to the words BRISBANE CITY alone.

    6.12. It follows from the above findings that the Complainant has not satisfied the requirement of Paragraph 4(a)(i) of the Uniform Policy, namely that the domain name "brisbanecity.com" is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Accordingly, this Panel finds that the Complaint fails.

    Respondentís Rights or Legitimate Interests, and Respondentís Bad Faith

    6.13. Given the conclusion above, it is not necessary for the Panel to determine whether the Respondent has a right or legitimate interest in the domain name, as required by paragraph 4(a)(ii) of the Uniform Policy. It is also not necessary for the Panel to determine whether the Respondent registered and is using the domain name in bad faith, as required by Paragraph 4(a)(iii). Accordingly, the Panel makes no finding on those matters.

     

    7. Decision

    7.1. This Administrative Panel decides that the Complainant has not proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of the Complaint.

    7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, this Administrative Panel denies the request that the Registrar, Network Solutions, Inc., be required to transfer to the Complainant, Brisbane City Council, the domain name "brisbanecity.com".

     


     

    Andrew F. Christie
    Sole Panelist

    Dated: May 7, 2001