WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WOW Audio Visual Superstores Pty Ltd v. Comonoz Pty Ltd
Case No. DAU2007-0003
1. The Parties
The Complainant is WOW Audio Visual Superstores Pty Ltd, of Queensland, Australia, represented by Maddocks, Lawyers, Australia.
The Respondent is Comonoz Pty Ltd, Trevor Power, of McMinns Lagoon Northern Territory, Australia, represented by Guy & Hinton, Solicitors, Australia.
2. The Domain Name and Registrar
The disputed domain name <wow.com.au> is registered with Distribute.IT t/as ClicknGo.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2007. On May 11, 2007, the Center transmitted by email to Distribute.IT t/as ClicknGo a request for registrar verification in connection with the domain name at issue. On May 14, 2007, Distribute.IT t/as ClicknGo transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the “.au” Dispute Resolution Policy (the “Policy”), the Rules for “.au” Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for “.au” 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 on June 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2007. The Response was filed with the Center on June 28, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on July 13, 2007. The Panel finds that it was properly constituted. The Panel has submitted the 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 and the Respondent are both Australian companies, the Complainant being domiciled in Queensland and the Respondent in the Northern Territory.
The Complainant commenced business on October 31, 2003 and runs a series of retail businesses known as superstores throughout Queensland, New South Wales and the Northern Territory and online businesses which specialize in selling products in the electronics, telecommunications, communications and entertainment fields.
The Complainant has registered several trademarks in Australia, which are as follows:
(a) Trademark Registered Number 938781, registered with IP Australia on December 23, 2002 for WOW SIGHT AND SOUND! and consisting of words and a device;
(b) Trademark Registered Number 969022, registered with IP Australia on September 5, 2003 for WOW VISION and consisting of words and a device; and
(c) Trademark Registered Number 1050244 registered with IP Australia on April 13, 2005 for WOW WICKED FINANCE and consisting of words and a device.
The Complainant has also made two further applications for the registration of trademarks in Australia, which are as follows:
(a) Application Number 1154003, made on December 27, 2006 with IP Australia for WIRELESS CO.WOW; and
(b) an Application made on May 1, 2007 with IP Australia for WOW.
The Complainant has also registered several domain names, namely <wowsightandsound.com.au>, <wowaudiovisual.com.au> and <wowwicked.com.au> which resolve to its main website and where its goods are advertised for sale. It has also registered <wowmobile.com.au> which resolves to a website providing various mobile telephone services.
The Respondent registered the disputed domain name on May 14, 2003. It has also registered other domain names incorporating the name “Wow” and has at various times since 2003 been using those domain names for the purpose of selling various goods and services including Internet services, fireworks and fishing tackle. The General Manager of the Respondent, who is the husband of the sole shareholder of the Respondent, was also formerly the owner of an Australian company named WOW Corporation Pty Ltd which was associated with those businesses. That company was de-registered on July 31, 2005.
5. Parties’ Contentions
The Complainant alleges that the domain name <wow.com.au> should no longer be registered with the Respondent but 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 company name, trading name and trademarks, both registered and unregistered, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered or 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.
In support of its case on the first of these three elements, the Complainant relies on the three registered trademarks and two applications for trademarks to which reference has already been made. It then says that its registered trademarks and applications comprise the word “wow” and that it has also established common law trademark rights to the word “wow” in respect of goods in class 9. It also maintains that its various domain names include the word “wow”. Thus it contends that as the disputed domain name consists entirely of the word “wow”, it is identical or confusingly similar to some or all of its company name, trading name and trademarks.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show that it does not resolve to an active website, that it has not done so since April 27, 2006, and that even when it did resolve to an active website prior to April 27, 2006, this use was merely ‘an attempted or model portal for selling products and services owned by other traders in connection with the word “WOW””.
It also contends that the domain name does not match any names, or products or services currently used or offered by the Respondent and that the Respondent is not known by that name. Moreover, the Complainant contends that the Respondent was copying the Complainant’s website, selling similar goods and using the domain name as a bait to attract customers.
Finally, the Complainant contends that the domain name was registered or is subsequently being used in bad faith. It contends that this is so because the Respondent has been passively holding the domain name, which amounts to bad faith.
The Respondent contends first that the Complainant has no trademark rights, either registered or common law, sufficient to support its Complaint. Even if it does, the domain name is not, as a matter of proper interpretation, identical or confusingly similar to any such trademark.
The Respondent then contends that it has rights and legitimate interests in the domain name because, prior to receiving notice of the dispute, it used the domain name for a bona fide offering of goods and services.
Thirdly, the Respondent contends that it did not register the domain name in bad faith because it registered it on May 14, 2003 and on the Complainant’s own evidence it did not start business until October 31, 2003. Nor has it used the domain name in bad faith, for the evidence shows that it has actively used the domain name for legitimate business purposes in the course of which it has incurred expenses and derived profit.
The Respondent also asks the Panel to 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.
The Panel therefore turns to discuss the various issues that arise for decision on the facts.
For the Complainant to succeed it 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; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered or subsequently in used in bad faith.
A. Identical or Confusingly Similar
As the Complainant says that the domain name is identical or confusingly similar to its name, as well as its trademarks, it is first necessary to determine the Complainant’s name for the purpose of this inquiry. The Policy provides as a footnote to its published version that:
“1 For the purposes of this Policy, auDA has determined that a “name…in which the complainant has rights” refers to:
(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant’s personal name.”
It will instantly be seen that, apart from personal names, any such name relied on must be registered.
The company name
Neither party has adduced any evidence as to the Complainant’s registered company name. However, the Complaint itself, certified by its solicitors as being correct, asserts that the Complainant’s name is “‘WOW’ Audio Visual Superstores Pty Ltd” and that its Australian Company Number is 080 864 973. A simple search of the website of the Australian Securities and Investments Commission (ASIC) shows that the name as given is indeed the name of the Complainant. As ASIC is “the relevant Australian government authority” for the registration of companies, it follows that “WOW” Audio Visual Superstores Pty Ltd is a name in which the Complainant has rights and thus a name on which it can rely for the purposes of the Policy.
The Complainant then argues that the domain name <wow.com.au> is identical to the company name ““WOW” Audio Visual Superstores Pty Ltd””. Merely to state the proposition shows that it cannot be correct, for the words are simply not identical. It is self-evident that the company name includes far more than the word “wow” and that, that being so, it negates any notion that it is identical to the domain name.
The Complainant then says that, alternatively, the domain name is confusingly similar to the company name. The Panel does not accept that argument for two reasons. First, the company name invokes the concept of superstores dealing in audiovisual goods, which is not surprising, seeing that this is the company’s business. In contrast, the domain name consists of the single word (or exclamation) “wow”. Secondly, the domain name consists of a popular and generic word that could be referring to any activity at all and not solely to the goods invoked by the full name of the company. Furthermore, the Panel does not consider that a reasonable bystander would be confused between the two expressions; thus, in the present case, the question is whether the reasonable bystander would be confused as to whether the “wow” of the domain name was, or might be, referring to the audio visual goods and superstores covered by the company name. The Panel does not find on the balance of probabilities that the disputed domain name is confusingly similar to Complainant’s name.
Accordingly, the Panel does not accept that the Complainant’s company name can be relied on in this case to make out the first element that must be established.
The trading name
The Complainant next relies on its trading name as the basis for the Complaint. Here, it makes an assertion in paragraph 1 of the Complaint, that WOW is its trading name and in paragraph 16 that its trading name is WOW Sight and Sound.
However, the Complainant has not produced any evidence of the registration of either name as its trading name. The Respondent, however, has produced as Annex B to the Response, a print out of search results from the Australian Business Register, which, although not conclusive, relies on information supplied by businesses themselves. This register does not reveal that either ‘wow’ as a single word or WOW Audio Visual Superstores Pty Ltd is registered as a trading name.
It should also be noted that there are public registers in Australia from which it can easily be discovered whether a particular name is a registered business name or not.
As the requirement of the Policy is clear in requiring evidence of registration as a trading name and as the only evidence tends to suggest that the names contended for are not registered, the Panel is unable to say on the balance of probabilities that the Complainant can rely on a registered trading name to establish this element.
The Complainant then relies on a series of its trademarks, both registered and unregistered and two applications for trademarks to make out its case under the first element of paragraph 4(a) of the Policy. Details of those trademarks and applications have already been set out.
The two applications for trademarks may be dealt with briefly, because it has been held on many occasions that mere applications for trademarks do not confer trademark rights and cannot be relied on in proceedings under the Uniform Dispute Resolution Policy or, by analogy, under the Australian Policy presently being applied: Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904.
The Complainant may, however, rely on the trademarks that are registered in its name and which are:
(a) Trademark Registered Number 938781, registered with IP Australia on December 23, 2002 for WOW SIGHT AND SOUND! and consisting of those words and a device;
(b) Trademark Registered Number 969022, registered with IP Australia on September 5, 2003 for WOW VISION and consisting of those words and a device; and
(c) Trademark Registered Number 1050244 registered with IP Australia on April 13, 2005 for WOW WICKED FINANCE and consisting of those words and a device.
The Respondent makes the point, which is true, that the second and third of those trademarks are of limited value overall in the present proceedings, as they were registered after the registration of the domain name, which took place on May 14, 2003. Nevertheless, they may be relied on for the purpose of the present examination under the first element because the Policy requires only that the complainant ‘has’ rights in a trademark, i.e. that it has those rights at the time it asserts them in a Complainant although not necessarily at any earlier time. It has thus been held that a complainant may rely on trademark rights acquired, as in the present case, after the domain name was registered: PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. Iogen, WIPO Case No. D2003-0544; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Valve Corp. v. ValveNET, Inc., WIPO Case No. D2005-0038 and the cases there cited.
That being so, the next and more important step is to see if the domain name <wow.com.au> is identical or confusingly similar to any of those trademarks.
It is self-evident that the domain name is not identical to any of the trademarks because none of them are for the word WOW alone and all of them include words in addition to WOW.
Nor, in the opinion of the Panel, is the domain name confusingly similar to any of the Complainant’s registered trademarks. Simply put, the Panel does not believe that the reasonable bystander, being confronted with nothing but the words would regard the domain name as being similar and confusingly so to the trademarks. In the present case, the such a person would easily deduce that the domain name was invoking the general notion of surprise, exclamation and admiration, for that is what the word “wow” means and would equally deduce that the trademarks were invoking the notion of a brand of sight and sound, vision and finance services. It is significant in this regard that while the word “wow” is contained in the Complainant’s registered trademarks, the marks themselves are not for the word “wow”, which is a highly generic expression.
The case cited by the Respondent, Capt’n Snooze Management Pty Ltd v. Domains4Sale, WIPO Case No. D2000-0488 is a good illustration of this. That is so because the mere fact that the single operative word of the domain name in that case, <snooze.com>, also appeared in the trademark CAPT’N SNOOZE, did not mean that the “snooze” of the domain name was referring to the “snooze” of the trademark, or that the one was confusingly similar to the other. So in the present case noting the simple operative word in the domain name is “wow”, there is very little to suggest that the domain name is confusingly similar to the Complainant’s trademarks or indeed that it could be referring to the Complainant, its trademarks or its products.
Moreover, it must be remembered that the three trademarks are marks consisting of both words and a device and the comparison must therefore be made not simply between the domain name and the word “WOW” in the trademarks, but, as it was put in Deutsche Post AG v. NJDomains WIPO Case No. D2006-0001, between ‘…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’. When that test is applied, there is really no confusingly similarity between the domain name and the overall impression of the trademarks, because the domain name must be taken as referring solely to the notions of surprise, exclamation and admiration and not to three businesses operating in sight and sound, vision and finance which are depicted by the words and the devices in the trademarks.
Accordingly, although the three registered trademarks may be relied on by the Complainant to mount its argument, in the Panel’s view none of them enable the Complainant to get to first base, because it cannot be reasonably said that the disputed domain name is, on an objective comparison, confusingly similar to any of those marks.
The Unregistered Trademarks
The Complainant finally says that the domain name is confusingly similar to further trademark rights that it has, but this time it says that they are common law trademarks that are relied on and the Complainant puts it that “it is also the common law proprietor of the WOW trademark in respect of retailing, wholesaling and distribution services in relation to electrical and other goods, and certain goods in class 9.”
In this regard, the Complainant relies on the fact that it has made an application for the registration of the WOW mark, that the word “wow” is a prominent feature of its registered marks, that it has used “the WOW marks” in sports marketing and sponsorship, that it has domain names incorporating the word “wow”, such as <wowsightandsound.com.au> and that consequently it has rights in the single word “WOW” and the word as it appears as part of its company name, its trade name, “all of the WOW marks” and the domain names.
It must first be said that unregistered or common law trademarks may be recognized as a basis for a claim under the UDRP Policy and by analogy the Australian Policy being applied in the present case, where the complainant is domiciled in a jurisdiction which recognises such common law rights. The Panel also accepts that Australia is such a jurisdiction and that accordingly, if proven, a complainant may rely on an unregistered or common law trademark.
The question then is whether the Complainant has made out the common law trademark contended for. The test to be applied in such cases is that set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions where the following statement appears:
“1.7 What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. W. Frederic Isler D2000-0575, Transfer
Skattedirektoratet v. Eivind Nag D2000-1314, Transfer
Amsec Enterprises, L.C. v. Sharon McCall D2001-0083, Denied
Australian Trade Commission v. Matthew Reader D2002-0786, Transfer Imperial College v. Christophe Dessimoz D2004-0322 among others, Transfer.”
Thus, evidence will be required that links the word in issue with the Complainant or its goods and services. In normal circumstances, no more evidence will be required than to satisfy the Panel on the balance of probabilities that the word in issue has come to identify the Complainant or its goods and services. However, where the word in question is a generic or common word or one that could easily apply to many parties other than the Complainant, this requirement will be difficult to prove.
An illustration of how difficult this is and of what the Panel will look for before it is satisfied that a generic name has in fact become so identified exclusively with one party or one supplier of goods, to the exclusion of all others, is contained in Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001, where the Panel said as follows:
“3. Does the Complainant have an unregistered trademark?
The Complainant may also be arguing that in addition to the registered trademarks on which it relies, it also has and presumably had before the domain name was registered an unregistered trademark in the word ‘Post’. The UDRP admits of the legitimacy of unregistered or common law trademarks, provided that they can be proved to have been established.
The Complainant however has two obstacles in its way in establishing that it has or at any time has had an unregistered trademark in the name ‘Post’.
The first obstacle is that set out in one of the postal cases already referred to, namely: Postecom spa v. smartphone sa (supra) where the issue was whether the complainant had established an unregistered trademark in <poste.biz>. The panel said:
‘Complainant …has not established that POSTE is a distinctive mark. The Panel finds the word POSTE is a generic term used in several languages with different meanings. Therefore, POSTE is incapable of acting as a common law trademark without a showing of significant secondary meaning.’ See SOCCERPLEX, INC. v. NBA Inc., File No. FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name <Soccerzone.com>, as it contains two generic terms and is not exclusively associated with its business); Rollerblade, Inc v. CBNO, WIPO Case No. D2000-0427 (August 24, 2000) (finding that ‘genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration’).”
Other cases supporting the panel’s finding include Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum March 7, 2001) (finding that ‘seminar’ and ‘success’ are generic terms to which Complainant cannot maintain exclusive rights); Tough Traveler, Ltd. v. Kelty Pack, Inc., WIPO Case No. D2000-0783 (September 28, 2000) (finding that the Complainant could not establish a secondary meaning with the domain name, <kidcarrier.com>, because of the generic nature of the terms); CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum March 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); PetWarehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000) (finding that ‘pet’ and ‘warehouse’ are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning); and Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum March 20, 2000) (Complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark).
Likewise, in Australian Postal Corporation v. Aly Ramzan, FA 123884 (Nat. Arb. Forum December 20, 2002) it was held that the complainant had failed to show any common law trademark rights in the expression ‘POST OFFICE.’
The remarks of the panel in these two cases are equally applicable to the present case, as “Post”, like “wow”, is clearly a generic word. In the former case, the Panel further said as follows:
“Secondly, there is no evidence showing that the word ‘Post’ has come to be identified with the Complainant and its business. The Complainant says that it is ‘generally known as Post’, which no doubt it is in Germany and its survey establishes this. Equally the national postal service in other countries are more likely than not to be equated with the word ‘Post’ in those countries. But to establish a common law trademark which will in effect deny all other users the use of a generic word on the Internet, a complainant must establish far more than that, especially in an industry that is international and where the use is to be by a medium that is itself international, namely the Internet.
Clearly it cannot be expected to show that it has appropriated the generic name in every country in the world, but when it is seeking to appropriate to itself a generic word for its use internationally, it must show at least some international equation of its own name with the generic name. In this case, there is no evidence to that effect and the evidence falls far short of those requirements, even to the extent that the Complainant does not describe itself as ‘Post’ on its website. The Complainant has given itself the name Deutsche Post AG, which it uses and not Post AG and so far as the evidence goes it has always promoted itself not as Post but as Deutsche Post.
Accordingly, the Complainant has not established that it has an unregistered trademark in the term ‘Post’ that it can rely on in these proceedings.”
Applying this approach to the present case, it is apparent that the Complainant’s proofs fall a long way short of what is required.
In the first place, the burden of proof of this issue is on the Complainant to show that the word is distinctively associated with the Complainant (PetWarehouse v. Pets.Com, Inc., supra) on the balance of probabilities and the Panel is not satisfied that the Complainant has discharged that burden. The Complainant says that it ‘has established a strong reputation in Australia’ in its various fields. However, on the evidence, that reputation is confined to the Northern Territory, Queensland and New South Wales and there has been no real attempt to show that it is the name WOW that the Complainant has promoted, rather than its company name. The Complainant’s claim to the word is based solely on the fact that it “asserts that it is also the common law proprietor” of the mark, an assertion that is not based on any evidence and the fact that the word “WOW” is a prominent feature of its other trademarks, an argument that is not supported in law.
Secondly, the word “wow: ” is a generic term and capable of several meanings. It will therefore normally require a strong case to show that the word has come to be associated with the Complainant and its goods or services. The Panel does not accept that such a case has been made out here.
Thirdly, although the word “wow” certainly appears on the Complainant’s website, it appears more as an exclamation rather than as a brand name or insignia intended to mark the Complainant’s goods and to distinguish them from others in the same field. Thus, although the website opens to the word “wow” and although the word is used in sentences such as “Upgrade to a digital camera @WOW tm” and “What’s happening @WOW!?”, when the site turns its attention to the goods that are actually for sale, it heads each page of the website not with the single word “WOW”, but “WOW Sight and Sound” and continues this theme with sentences such as “Who is WOW Sight and Sound”. The term that the Complainant therefore seems anxious to promote is not “WOW”, but “WOW Sight and Sound”, for that is the name of the company. The website also seems concerned to promote the brand or trade names WOWWICKED.COM.AU and WOWMOBILES.COM.AU rather than WOW.
At best, the evidence is equivocal; for example, it is true as the Complainant says, that the rugby league team it sponsors uses the WOW logo on their jerseys, but the racing cars that the Complainant also sponsors uses the term WOW Sight and Sound.
Fourthly, as the Respondent alleges, its Annexes B and C show that there are many other businesses in Australia that use the word “wow” as part of their business names and trademarks and that some of the registered trademarks are for the single word WOW. Several of such registered trademarks are registered with respect to Class 9, a status that the Complainant claims for its unregistered trademark. This fact alone weakens the Complainant’s case that it has established since 2003, when it commenced business, an exclusive right to the mark in its field.
The Panel also notes that it was not until May 1, 2007, nine days before the Complaint was issued, that the Complainant first asserted its trademark rights to the word WOW by lodging an application for its registration with IP Australia.
In the Panel’s view not only is the Complainant’s case in support of its asserted common law rights not a strong one, it is at best equivocal and is generally a weak case.
Having regard to the totality of the evidence, the Panel finds that the Complainant has not established common law trademark rights to WOW. It therefore cannot rely on an unregistered trademark for the purpose of these proceedings.
As the Complainant has therefore been unable to establish that the disputed domain name is identical or confusingly similar to a name or registered or unregistered trademark or service mark, it has been unable to make out the first of the three elements that it must establish.
As that element is an essential requirement in these proceedings, the Complaint cannot succeed.
B. Rights or Legitimate Interests
In view of the finding already made, it is not strictly necessary to make a finding on this, the second element. However, it should be said that even if the Complainant had established a name or trademark on which it could rely, the evidence is overwhelming that the Respondent has rights or legitimate interests in the domain name. The Complainant commenced business on October 31, 2003. But the Respondent registered the disputed domain name five months earlier, on May 14, 2003, and seems to have been using the name WOW, which is subsequently embodied in the domain name <wow.com.au>, since April 2003.
Moreover, which is the most troubling aspect of this case, the Complainant knew from at least May 26, 2003 that the Respondent had rights and legitimate interests in the domain name and conceded as much. This came about as the Respondent sent an email to the Complainant’s then solicitors on that date, in reply to an inquiry whether the Respondent was using the domain name in its business, saying inter alia:
“Yes, the Company is using the word WOW in its many business activities and products, as advised to C J Mccoy on 20/05/2003 a new website is already underway for its business activities and products where he was invited to view the site in approx 7-10 days time.”
The Complainant’s solicitors replied to the Respondent on May 27, 2003 saying:
“Thank you for your prompt response to our email dated May 23, 2003. We note that on the information you have provided Comonoz Pty Ltd has legitimately obtained the domain name <wow.com.au> by registration through ‘au’ Domain Administration and Just Net” (emphasis added).
Not only was that concession made, but also the email of May 27, 2003 went on to say that the Complainant’s instructions were “that they do not intend making a complaint under the auDRP complaint process.”
The Complaint was, however, re-activated on May 10, 2007.
It is therefore as plain as words can make it that the Complainant accepted for four years that the Respondent had a legitimate interest in the domain name.
Moreover, even if this were not so, the Respondent has clearly brought itself within the terms of the Policy that established that it had such a right or legitimate interest in the domain name. That is so for the following reason.
In response to the Complaint, the Respondent tendered an affidavit by Trevor Alan Power, the General Manager of the Respondent, sworn on June 25, 2007 in which he says that since the year 2003 the Respondent has made a profit from selling goods via the disputed domain name of approximately AUD 600,000. Annexed to the Response are printouts from the website to which the domain name resolved from 2003 until 2005, copies of photographs of the Respondent’s WOW branded fireworks. Copies of photographs of the Respondent’s WOW branded fishing lures and fishing equipment, photographs of the Respondent’s labels for other WOW branded products and copies of photographs of WOW T-shirts and glow sticks, all of which goods were being offered for sale through the website or through other websites linked to it. Other evidence tendered by the Respondent shows the expenditure of AUD 100, 000 on marketing and promotional material in preparation for the launch of the Respondent’s business under the name “WOW.com.au”, radio advertisements, invoices for them and a letter concerning the sale of WOW fireworks.
The Complainant has not sought to rebut any of this evidence and the Panel therefore accepts it as evidence within the meaning of paragraph 4(c)(i) that the Respondent made bona fide use of the domain name in connection with an offering of goods.
As the Respondent has said that it received notice of the dispute on or about May 1, 2007, it is clear that the Respondent made bona fide use of the domain name before it received notice of the subject matter of the dispute.
The case thus falls within the provisions of paragraph 4(c) of the Policy as establishing rights and legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) and accordingly the Complainant has failed to make out the second of the three elements that it must establish.
C. Registered or Used in Bad Faith
Likewise, it is equally clear from the history of this matter that the Respondent registered the domain name at a time when the Complainant had no name or trademark identical or confusingly similar to the domain name. Accordingly, the Respondent could not have registered the domain name in bad faith and the Panel makes a finding that the Respondent did not do so.
The Panel also finds that the Respondent has not used the domain name in bad faith and that the totality of the evidence shows that it has acted in good faith.
Reverse Domain Name Hijacking
The Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking (RDNH).
Rule 15(e) provides that, if the Panel “finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Reverse Domain Hijacking is defined in Rule 1 as ‘using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name’.
There have been several statements of what is required to make out such a claim. Between them, they have highlighted several features which, if present, would dispose a panel to make a finding that the proceeding had been brought in bad faith and hence as an attempt at RDNH.
Thus, in K2r Produkte AG v. Jeremie Trigano, WIPO case D2000-0622 it was noted by the Panel in finding RDNH that: “By the time the complaint was filed, the complainant had been informed of and had otherwise ascertained all the facts necessary, inter alia, to establish that the respondent, acting on behalf of his mother, had a legitimate interest in the disputed domain name;…”
Similarly, in Smart Design LLC v. Carolyn Hughes,WIPO Case No. D2000-0993 the panel also relied in part on a letter which “expressly acknowledges that the Respondent holds the rights to the Domain Name”.
In Sydney Opera House Trust v. Trilynx Pty .Limited, WIPO Case No. D2000-1224, the panel said that “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)”.
In PROM Software, Inc. v. Reflex Publishing, Inc. WIPO Case No. D2001-1154, the Panel said: “Respondent has asked that the Panel find that Complainant has engaged in reverse domain name hijacking in pursuing this action. While, the Panel would be reticent to find reverse domain name hijacking in the ordinary case, the Panel concludes that this is not the ordinary case.
Complainant’s current position – that it is entitled to a transfer of the domain name from Respondent – is belied by Complainant’s initial inquiry to Respondent as to whether the domain name might be available for sale. Complainant has known from the beginning that its rights in PROM are not exclusive. PROM is generic, both for a school dance, the most common meaning and the meaning relevant to Respondent’s registration and use, and for identifying programmable, non-volatile semiconductor memories. Complainant has confirmed what appears to be Respondent’s legitimate interest in the domain name. The record is devoid of any evidence of bad faith on Respondent’s part. [The Complainant had a] knowingly flimsy claim …”
In Goldline International, Inc. v. Gold Line WIPO Case No. D2000-1151 the Panel said: “To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224.
Instructive is the Panel’s decision in Smart Design LLC v. Hughes, WIPO Case No. D2000-0993, in which the Panel found attempted reverse domain name hijacking in a similar, though not identical, situation, in which the domain name reflected a mark that was likely to have multiple legitimate uses. Taking account of the complainant’s delay in bringing its claim “and apparent initial acknowledgement that the respondent was the bona fide owner of the domain name”, the Panel ruled that it was unreasonable for the complainant to have brought the complaint given the objective unlikelihood of success. In other words, bad faith was found to encompass both malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests… “Complainant’s actions in this case constitute bad faith. Prior to filing its Complaint, Complainant had to know that Complainant’s mark was limited to a narrow field, and that Respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith. Not only would a reasonable investigation have revealed these weaknesses in any potential ICANN complaint, but also, Respondent put Complainant on express notice of these facts and that any further attempt to prosecute this matter would be abusive and would constitute reverse domain name ‘hijack[ing]’. Complaint, Annex 2. Complainant’s decision to file its Complaint in the face of those facts was in bad faith. Accordingly, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.”.
Finally, in a more recent decision which sums up the way panels currently look at applications for a finding of RDNH, Goway Travel Limited v. Tourism Australia WIPO Case No. D2006-0344, the panel said:
“Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking (‘RDNH’). That is true notwithstanding that Respondent has not requested such a finding, and even in the absence of a Response. The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Rules, paragraph 1 and 15(e).
Complainant’s effort to obtain transfer of the Domain Name on the basis of alleged cybersquatting of a generic word may in itself be indicative of RDNH. Even worse, Complainant did not disclose in the text of its Complaint the material fact that Complainant was forced to disclaim any exclusive rights to ‘downunder’ in both of the trademark registrations upon which the Complainant relies. Taken together, these facts, along with the unsupported arguments made by the Complainant under the second and third factors of the Policy, are sufficient to show that the Complaint was filed in a bad faith attempt to deprive the Respondent of a domain name to which it is entitled. Rodale, Inc. v. Cambridge. WIPO Case No. DBIZ2002-00153.”
The difficulty for the Complainant in the application of these criteria is that it seems to have fallen foul of all of them.
In the first place, its claim is based on an alleged unregistered trademark in the name WOW, used by itself and as part of other expressions, but in all cases a generic and widely used word that is capable of a wide variety of meanings.
Secondly, even if a case were made out for such a trademark, a wildly optimistic expectation, the Complainant’s own evidence is that it did not trade under that name until after the domain name was registered.
Thirdly, the Complainant alleged in the Complaint that the Respondent had no rights or legitimate interests in the domain name. It did not reveal, however, that its then solicitors had written to the Respondent in 2003 acknowledging that the Respondent had “…legitimately obtained the domain name <wow.com.au> (and that it did not) intend making a complaint under the auDRP complaint process.” It will be seen from several of the above decisions, that this element is a sign of bad faith, as it raises the inference that, despite knowing that an essential requirement of the claim could not be proved, the complainant went ahead with it.
Fourthly, the Complainant alleged bad faith against the Respondent. The Panel believes that such an allegation should only be made when there is evidence to support it. Moreover, when the Complaint was filed, it specifically alleged that the Respondent was in breach of each and every of the possible grounds of bad faith set out in paragraphs 4(b)(i), (ii), (iii) and (iv), each of which was itemised in its turn. Each of these was a serious allegation and should not have been made unless there was a reasonable ground for believing that it was true. The Panel does not accept that there was a reasonable ground for making any of those allegations.
Just how baseless the allegations were can be seen by the allegation that the Respondent had registered the domain name primarily for the purpose of disrupting the business of the Complainant. This is tantamount to an allegation that the Respondent registered the domain name to disrupt a business that, according to the Complainant, did not exist at the time of the disputed domain name registration.
Likewise, the allegation that the Respondent has been trying to create a likelihood of confusion with the Complainant could not be made after any balanced and reasonable assessment of the evidence.
Fifthly, the Panel’s assessment of the history of this matter is that the Complainant did not bring to the attention of its current solicitors that the correspondence of May 2003 had taken place. When the Respondent’s solicitors drew their attention to the existence of the correspondence, the Complainant’s solicitors properly withdrew all of the allegations about bad faith referred to above.
As a result, however, the case depended solely on passive holding within the meaning of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) to make out the element of bad faith.
A balanced appraisal of the known facts should have told the Complainant even at that late stage that there was no reasonable prospect of that argument succeeding, as the Complainant was relying not on a prominent name like Telstra, but a generic name and one that was already used by many other businesses in Australia.
Accordingly, the elements that have encouraged other panels to make a finding of RDNH are present in this case.
For all of these reasons, the Panel concludes that the Complainant was brought in bad brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied. In addition, the Panel finds that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Honourable Neil Anthony Brown, QC
Dated: July 24, 2007