WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking”
Case No. DAU2006-0007
1. The Parties
The Complainant is WebFarm Ltd., of Plymouth, New Zealand, represented by Guy & Hinton, Solicitors, Australia.
The Respondent is Fopoco Pty Ltd. trading as “Free Parking”, David Geoffrey Frake, of Victoria, Australia, represented by Mallesons Stephen Jaques, Australia.
2. The Domain Name and Registrar
The disputed domain name <freeparking.com.au> is registered with Domain Directors Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2006. On July 3, 2006, the Center transmitted by email to Domain Directors Pty Ltd. a request for registrar verification in connection with the domain name at issue. On July 11, 2006, Domain Directors Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the “.au” Domain Name Dispute Resolution Policy (the “Policy”), the Rules for “.au” Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for “.au” Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2006.
On August 30, 2006, the Respondent applied to the Center for an extension of time in which to file its Response. On August 31, 2006, the Center granted an extension of time to September 6, 2006. The Response was filed with the Center on September 6, 2006.
The Center appointed Professor Michael Pryles, The Honourable Neil Anthony Brown QC and Dr. Dan Hunter as panelists in this matter on September 28, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a company incorporated under the laws of New Zealand. It has an Australian Business Number which is ABN 55 067 341 058. It operates a business in New Zealand, Australia and internationally, although mainly in the Asia/Pacific region, in the field of Internet web hosting, domain name registration and the provision of associated Internet services and products. It owns several domain names itself, namely <freeparking.biz>, <freeparking.co.nz>, <freeparking.net.au>, <freeparking.org.nz>, <free-parking.com.au> and <freeparking.com.sg>, through which it conducts its business.
The Complainant has the following trademark registrations in its name:
(a) Trademark registered number 636450 for the word mark FREEPARKING, registered with the Intellectual Property Office of New Zealand;
(b) Trademark registered number 655029 for the device mark FREE PARKING, registered with the Intellectual Property Office of New Zealand;
(c) Trademark registered number 655030 for the device mark FREE PARKING registered with the Intellectual Property Office of New Zealand;
(d) Trademark registered number 975211 for the word mark FREE PARKING registered with IP Australia.
The Respondent is a company incorporated under the laws of Australia. It has an Australian Company Number which is ACN 006 409 347 and an Australian Business Number which is ABN 14 006 409 347. It registered the domain name <freeparking.com.au> on July 13, 2000.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <freeparking.com.au> should no longer be registered with the Respondent and that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is identical or confusingly similar to the Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
Identical or confusingly similar
In support of its case on the first of these three elements, the Complainant relies on the registered New Zealand and Australian FREE PARKING and FREEPARKING trademarks to which reference has already been made. It then says that it is self-evident that the domain name <freeparking.com.au> is identical to or similarly confusing (sic) to those marks. The Panel assumes that by this last submission the Complainant means that the domain name is confusingly similar to the trademarks.
The Complainant also relies on common law trademark rights, as well as its registered trademarks. In support of this proposition it says that it has been using the name “Freeparking” in its business since it was launched on July 1, 2000 and that since then it has become widely known for its internet services under that name. In preparation for its launch it registered the domain name <freeparking.co.nz> on May 22, 2000, and it received its first customer on June 2, 2000, and its first Australian customer on July 31, 2000. Since its launch it has advertised in Australia and promoted its business by using the domain name <free-parking.com.au> which resolves to the Complainant’s website at “www.freeparking.biz”. In New Zealand it has become very successful, has about 15% of the market and now manages over 40,000 domain names.
Legitimate right or interest
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name, that all that the Respondent has done is register the domain name and also register a Victorian Business Name in the name “Free Parking” and that these acts alone cannot constitute a right or legitimate interest in a domain name.
Moreover, there is no evidence that the Respondent could bring itself within any of the provisions of paragraph 4(c) of the Policy, i.e. there is no evidence that the Respondent, before notice of the dispute, used the domain name to offer goods and services in a business and no evidence that its name is “Free Parking” or that it had developed a reputation in that name.
The Complainant also contends that the Respondent has shown a pattern of behaviour in breach of the Policy, for on the same day that it registered <freeparking.com.au>, it also registered <melways.com.au>, invoking the name of the famous Melbourne street directory. This registration was transferred to the Complainant in auDRP proceedings brought against the Respondent by the publisher of the street directory, Melway Publishing Pty Ltd1, when the Panel found that the conduct of the Respondent had been in breach of the Policy.
The Complainant also submits that the fact that the Respondent registered the Business Name “FreeParking” shows in itself that the Respondent has no rights or legitimate interests in the domain name as this is a colourable device to create a false sense of business activity and hence a right or legitimate interest in the name. This is not supported by the facts, the Complainant contends, as
“… the Respondent’s conduct of registering a Business Name without a bona fide intention to trade under the name constitutes nothing more than a sophisticated cyber-squatting technique designed to cynically manipulate the intention of the Policy governing domain name registration. Furthermore, such conduct attempts to circumvent the law protecting trademark holder’s rights on the Internet and Internet users generally from misleading and deceptive conduct.”
Finally, the Complainant contends that the domain name was registered and/or is being used in bad faith.
It contends that the facts bring the case within the provisions of paragraph 4(b)(i) of the Policy, for they show that the Respondent’s primary intention in registering the domain name was to sell it for a profit or deal with it in some other way to make money.
The Complainant also says that the case comes within paragraph 4(b)(ii) of the Policy as the registration of the domain name has had the effect of preventing “the owner of the name, trademark or service mark from reflecting (it) in a corresponding domain name”. This, it is said, can be inferred from the fact that the Respondent registered the domain name on July 13, 2000, but not in the course of carrying on or establishing a legitimate business. In this regard, the Complainant again relies on the conduct of the Respondent exhibited in the auDRP proceedings referred to above concerning <melways.com.au>.
The Complainant also relies on the fact that the timing of the relevant events is “so convenient”, for:
“… the Respondent could not reasonably have “accidentally” chosen a domain identical to the mark in which the Complainant had legitimate rights, and so soon after the Complainant had launched its mark.”
“The point is, that the Respondent has chosen a domain name identical to the mark the Complainant has legitimate rights and interests in and choose (sic) it so soon after the Complainant officially launched its own mark.”
The Complainant also contends that the registration of the Business Name “Freeparking” is a device, which is in itself evidence of bad faith registration.
Turning to bad faith use, the Complainant contends that the case comes within paragraph 4(b)(iv) of the Policy because the facts show an intention to attract users to the Respondent’s site by causing confusion with the Complainant’s trademark. The evidence of this is said to be that the Respondent set up a website to which <freeparking.com.au> resolved and carried advertisements on it, but did so in late 2004 and only after communications from the Complainant and referral to the auDA Policy. Accordingly, it is argued, this is:
“…a cynical and calculated attempt attract for commercial gain, Internet users to the domain in question, by creating a likelihood of confusion with the complainant's name, which under paragraph 4(b)(iv) is evidence of bad faith registration.”
This is also said to be part of the Respondent’s modus operandi of inaction or passive holding, characterized as bad faith in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus it is argued that the Respondent has registered the domain name and then ‘sat back’ and done nothing, hoping that one day it may make a windfall profit by selling the name. Additional colour is given to this modus operandi, it is said, by the fact that:
“The Respondent also took considerable steps to conceal their (sic) identity during registration, by not supplying their business name registration number and by supplying a false email address that could not be contacted.”
Thus it is said that the Complainant has made out all three of the elements that it must establish to make out its case under paragraph 4(a) of the Policy.
Identical or confusingly similar
With respect to the first issue, the Respondent admits that the Complainant is the registered owner of the word mark FREE PARKING in Australia. However, it says that it is a non-descriptive term based on two generic words which cannot give rise to an exclusive right to use the expression as a domain name.
Right or legitimate interest
Secondly, the Respondent says that it has a right or legitimate interest in the domain name because, again, the constituent words are two generic words making a common descriptive term which it uses and proposes to use in business.
It also says that it has a registered business name in the same name and was the first in time to use the name in Australia as between the Complainant and the Respondent, at a time when it had not heard of the Complainant and long before the Complainant registered its trademark in Australia.
Moreover, it actually uses the domain name for its various current and proposed businesses and to carry third party advertisements, which is a legitimate use of a domain name. The Respondent concedes that it has been in discussions with the Complainant concerning the sale of the Respondent’s business (including the domain name) since July 31, 2003, but that the Complainant did not make any written allegations concerning the domain name until the Complainant was issued.
The Respondent also contends that it did not acquire the domain name to sell, rent or otherwise transfer it. The Respondent summarises its position as follows:
“In summary, the Respondent has a legitimate interest to use the domain name the subject of this dispute because it is a descriptive term, the domain name was registered long before the Complainant registered trademark rights in Australia and the Respondent has been engaged in a bona fide use of the domain name in connection with an offering of goods and services before the Respondent received notice of this dispute.”
On the third issue, the Respondent contends that because of the sequence of events it could not have known of the Complainant’s business when it, the Respondent, registered the domain name. Accordingly, the Respondent cannot be said to have registered the domain name with the intention of preventing the Complainant from reflecting the Complainant’s trademark in a domain name.
The Respondent also denies the allegation of having “targeted” the Complainant by registering the domain name, because the Complainant was not well-known in Australia at the time.
The Respondent also contends that the Complainant and it are not competitors, and that it did not intend to disrupt the Complainant’s business or register the domain name to resell it.
As to the suggestion of an acquiescence to sell the domain name to the Complainant, the Respondent says that it did not initiate the discussions to sell and that its preparedness to sell is not evidence of bad faith.
In summary, the Respondent contends that it neither registered or used the domain name in bad faith and that not only should the Complaint be dismissed, but the Panel should make a finding of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In doing so, the onus is on the Complainant to make out its case and both the Policy and many UDRP decisions have made it clear that a Complainant must show that all three elements of the Policy have been made out before any order can be made to cancel or transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the evidence.
For the Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and
C. The domain name has been registered or subsequently used in bad faith (paragraph 4(a)(iii)).
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name is identical to the Complainant’s registered New Zealand Trademark registered number 636450 for the word FREEPARKING, registered with the Intellectual Property Office of New Zealand. That is so because the entirety of the domain name consists of the trademark.
In this regard, the Panel should add, for it will become relevant later in this decision, that the Complaint alleges that the trademark was “registered and filed on April 20, 2001”. That is not correct, for an examination of the register at the Intellectual Property Office of New Zealand, or at least as disclosed on its website, shows that trademark number 636450 was filed on April 20, 2001, but was not registered until March 29, 2004.
Nevertheless, the Complainant has shown that it has a trademark at the time the Complaint was lodged and that is sufficient to establish its standing for the purposes of paragraph 4(a)(i) of the Policy. Although the domain name was registered on July 13, 2000, and the trademark was registered on March 29, 2004, it has been held in many UDRP decisions that it is not necessary for the trademark to have been registered before the domain name, although that fact may, of course, become relevant when it is considered whether a respondent could have registered a domain name in bad faith at a time when no trademark in the same or a similar name had been registered. See, on this issue, the discussion and cases referred to in the useful WIPO Overview of WIPO Panel Views on Selected UDRP Questions2, where it is said:
“1.4 Does the complainant have UDRP-relevant trademark rights in a mark that was registered, or in which the complainant acquired unregistered rights, after the disputed domain name was registered?
Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.
Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer
Iogen Corporation v. Iogen D2003-0544, Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer.”
The Panel also finds that the domain name is identical to the registered Australian trademark number 975211 and notes that that trademark, being registered on October 20, 2003, was also registered well after the domain name.
The Respondent has submitted that the Complaint should be dismissed because the trademarks relied on consist solely of generic words which cannot distinguish the goods and services of the Complainant and consequently cannot afford the Complainant any exclusivity.
It is certainly true that the Complainant is relying on trademark rights in two generic words and generic words have often been given little protection under the UDRP and auDRP, whether they are used as a common law trademark (Postecom spa v. smartphone sa File No. FA0204000110805 (NAF July 22, 2002), or even as registered trademark (Rollerblade Inc. v. CBNO, WIPO Case No. D2000-0427).
The way in which this conflict has been resolved was expressed in Hewlett-Packard Company v. Full System S.a.S., File No FA94637 (NAF, May 22, 2000) where, although the domain name consisted of the same generic words as the registered trademark OPENMAIL, the trademark had become synonymous with Hewlett-Packard through its promotional efforts and, as the panel put it:
“… (t)hese efforts have caused consumers throughout the United States and the rest of the world to recognize OPENMAIL marks as computer software products, which originate with Hewlett-Packard.”
Accordingly, the domain name in that case was held to be confusingly similar to the trademark.
Applying the same approach to the present case, the evidence is that there is sufficient association between the Complainant and the names FREEPARKING and FREE PARKING in New Zealand and Australia to justify the Panel holding that the Complainant may rely on the registered New Zealand and Australian trademarks.
The Panel finds, however, that the domain name is not identical to or confusingly similar to the other two New Zealand trademarks relied on by the Complainant, numbers 655029 and 655030, for they are both device marks and the domain name is neither identical or confusingly similar to either of them.
Making a comparison between a domain name and a pictorial or figurative trademark can sometimes be very difficult. That is so because opinions differ as to whether the comparison should be between the domain name and either the words in the graphic trademark or the entire graphic representation as well as the words. That issue was considered recently in Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001, where the panel had to compare the domain name <post.com> with a trademark consisting of the word ‘post’ together with a dominating representation of a post horn. The panel concluded:
“The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying that test, the overall impression of the trademark in the present case is entirely different from that conveyed by the domain name. The pictorial representation of the horn is such a prominent and dominating part of the trademark that the result is a logo of the horn as well as the word “Post”. It is highly artificial to contend that this is a trademark for the word “Post” when it clearly is far more than that.”
Applying the same test in the present case, the Panel’s view is that the representation of the motor vehicles in the two trademarks is so dominant that there is no real similarity between them and the domain name in question.
However, as the domain name is identical to the New Zealand word mark, the Panel concludes that the Complainant has made out the first of the three elements that it must establish under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a Respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Respondent initially relies on paragraph 4(c)(i) of the Policy to show that it has a right or legitimate interest in the disputed domain name.
The first question to resolve is when the Respondent received notice of the dispute. Once that question is resolved it will be possible to decide whether, before that date, the Respondent was using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.
The Complainant says that there is no evidence that before notice of the dispute the Respondent was either using or making demonstrable preparations to use the domain name for the specified purpose.
However, the Respondent has given evidence by way of a Statutory Declaration made by its Managing Director Mr. Frake, in which he says that:
“…it was not until I received official notice of the auDRP dispute that Webfarm set out their alleged rights in relation to the domain name.”
Mr. Frake concedes that he had had contact with the Complainant before then, but that that contact had taken the form of the Complainant or someone one its behalf and then Mr. James Guy contacting him and offering to buy his business and the domain name. In other words, the substance of what Mr. Frake is saying is that the Complainant tried to buy the domain name, but did not make any claim to it and consequently did not give notice of a dispute about it, until the proceedings were instituted.
The wording of the Complaint is even more specific and is as follows:
“The Respondent received notice of the dispute regarding the domain name on receipt of the Complaint being August 14, 2006.”
The record does not show that the Complainant has lodged or sought leave to lodge a supplementary filing or other material to refute what Mr. Frake and the Complainant have said. Nor is there evidence of any of the cease and desist letters that are so common in these cases, as one would expect them to be, where the Complainant’s case is set out, giving rise to a demand and a dispute if it is not acceded to and a date when that dispute can be said to have been brought to the notice of the Respondent.
Consequently, the Panel concludes on the balance of probabilities that the Respondent received notice of the dispute when the Complaint was received, namely on August 14, 2006.
The Respondent’s Statutory Declaration also provides that:
“Since November 2005, I have been using “www.freeparking.com.au” to advertise Fopoco Pty Ltd, to sell personalized Victorian number plates and to sell advertising space. I believe that this is a legitimate business use of this domain name. The website was established independently by me and was not designed to look like any other website.”
The website is not available for the Panel to inspect, but Mr. Frake has deposed that this was not due to anything he had done, but that it was apparently due to the lock that had been put on the domain name when the proceedings commenced, that he had not removed the website and in fact had been trying to reinstate it. Nor are any pages of the website available to the Panel by using the Wayback Machine at “www.archive.org”.
Again, there is no evidence from the Complainant to rebut or cast doubt on any of this evidence. The evidence there is, is contained in Annex K to the Complaint, which consists of extracts taken by the Complainant from the Respondent’s website on June 29, 2006, and which show advertisements for the Respondent, the sale of personalized number plates, a mortgage broker and The Big Strawberry and an invitation to advertise on the site.
All of the activities deposed to by Mr. Frake and demonstrated by Annex K are “…in connection with a bona fide offering of goods or services; …”. Consequently, they bring the Respondent within the provisions of paragraph 4(c)(i) of the Policy. As the onus is on the Complainant to prove that the Respondent has no rights or legitimate interest in the domain name, the Panel finds that the Complainant has not discharged that onus.
In addition to all of this, it is clear that, quite apart from the provisions of paragraph 4(c)(i) of the Policy, the Respondent has a right or legitimate interest in the domain name. That right or legitimate interest comes from the fact that the Respondent was entitled to register the domain name.
At the time the Respondent registered the domain name, on July 13, 2000, the Complainant had not registered its trademark or made any other claim to the name and certainly none in Australia where the Respondent was situated. It did not file its application for the trademark in New Zealand until April 20, 2001, and it was not registered until March 29, 2004. It did not obtain its Australian trademark until October 20, 2003, more than three years after the Respondent registered the domain name.
The domain name that the Respondent registered consisted of two generic words. Its Managing Director says that he had in mind a business or two that might be suitable for invoking the name ‘Free Parking.’ But even if it had not considered this, there is no prohibition on registering generic words as domain names absent an intention to take advantage of another party’s rights in those words. Moreover, all other things being equal, the registration of a domain name that adopts generic words may in certain circumstances give rise to a legitimate right or interest by itself. See, for example, the recent case cited by the Respondent, TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003, where the generic domain name <truelocal.com.au> was in issue, in circumstances not dissimilar from the present case. The panel said:
“In this case, it is important that the disputed domain name is comprised of generic words. Prior panel decisions have found that, if a respondent is using a generic word to describe its product/business or to profit from the generic value of the word without intending to take advantage of the complainant’s rights in that word, then it has a legitimate interest. (See item 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the cases cited there.) In other words, it is not a general knowledge of the Complainant’s business that is important. It is knowledge of “the complainant’s rights in that word” (emphasis added).”
The Complainant’s evidence is that it had “used the name Freeparking as a major element and division of its web hosting business since launching on July 1, 2000”. This may be literally correct and, using the Wayback Machine at “www.archive.com” to look at the history of <freeparking.co.nz>, which seems to be the Complainant’s principal domain name, its first press release was dated July 10, 2000, and announced “FreeParking launches to make buying a “.nz” Domain Name easy”.
It would seem, therefore, that the Complainant had scarcely started its business, that the business was confined to New Zealand and that the Complainant had no proprietary interest in the name, at the time the Respondent registered the domain name in Australia. That being so, nothing that the Complainant points to can detract from the legitimacy of the Respondent’s rights in respect of the disputed domain name in this case.
The Complainant also asserts in effect that it staked out its Australian presence by registering “the Australian Business Name FreeParking on 1 November 1999 (Annex H)”. This is not correct and the Complainant seems to be misdirected on this issue. The Complainant really registered an Australian Business Number or ABN which is a public number used in business dealings and not an “Australian Business Name”, as is alleged on page 8 of its Complaint. The ABN is not a registration process for names3. As the Complainant itself says in the Complaint, this registration “…was never intended nor does it establish any rights or legitimate interest in the name”.
Nor has the Complainant registered a Business Name or Company name in Australia. Its Australian presence is thus confined to the registration of the trademark, which occurred on October 20, 2003, more than three years after the domain name was registered. None of those matters can detract from the legitimacy of the Respondent’s rights in respect of the disputed domain name in this case.
Accordingly, the Panel finds that the Respondent has a right or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As the Panel has found that the Respondent has a right or legitimate interest in the domain name and as the Complaint must therefore fail, it is not necessary to address the third requirement of bad faith.
D. Reverse Domain Name Hijacking
The Panel will not make a finding of reverse domain name hijacking for the following reasons. First, it is apparent that because of the work put in by the Complainant in establishing its business and its name, it genuinely believed that it had established a right to the domain name and brought the proceedings to further that genuine belief. Secondly, it has only been by a proper analysis of the evidence after all of the facts have became known that has enabled the conclusion to be reached that the Complainant does not have such a right. Even at that stage, some of the evidence was equivocal. The Panel’s view, therefore, is that this is not an appropriate case for making a finding of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Professor Michael Pryles
The Honourable Neil Anthony Brown QC
Dr. Dan Hunter
Dated: October 17, 2006
1 Melway Publishing Pty Ltd. V Fopoco Pty Ltd. Trading as Melways Advertising, WIPO Case No. DAU2006-0005