WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Spanton Media Group Pty Limited v. Lion Global Pty Limited
Cases Nos. DAU2007-0007 and DAU2007-0008
1. The Parties
On the same day, two complaints were filed with the WIPO Arbitration and Mediation Center (the “Center”) by the same Complainant, Spanton Media Group Pty Limited of Pyrmont, Australia, represented by Gray & Perkins Lawyers, Australia, against the same Respondent, Lion Global Pty Limited, of Brighton-Le Sands, Australia, represented by Legal Counsel Lion Global Pty Ltd, Australia.
Since the two cases involve the same Complainant and the same Respondent, coherence and expedition of proceedings require that both be resolved through a single decision: Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and WIPO Case No. D2004-0624.
2. The Domain Names and Registrar
The disputed domain names <barawards.com.au> and <bartender.com.au> are registered with Enetica Pty Ltd.
3. Procedural History
Both Complaints were filed with the Center on October 16, 2007. On October 17, 23, 30 and 31, 2007, the Center transmitted by email to Enetica Pty Ltd. requests for registrar verification in connection with the domain names at issue. On November 1, 2007, Enetica Pty Ltd. transmitted by email to the Center its verification responses confirming in each case that the Respondent is listed as the registrant of the disputed domain name but failing in each case to provide any contact details. The Center verified that the Complaints 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 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 Complaints, and both proceedings commenced on November 1, 2007. On November 15, 2007, the Respondent requested a three month extension of time within which to file its Responses and that both complaints be merged. On November 19, 2007, the Complainant objected to any extension of time and to the merging of the proceedings. That day the Center granted a seven day extension of time and informed the parties that the question of consolidation would be determined by the Panel. In accordance with the Rules, paragraph 5(d), the extended due date for Responses was November 28, 2007. The Responses were filed with the Center that day.
On December 7, 2007, the Complainant filed an unsolicited reply in each case. On December 24, 2007, the Respondent sought leave to submit a response to the Complainant’s unsolicited submission.
The Center appointed Alan L. Limbury as the sole panelist in both matters on December 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.
For the reasons given in the first paragraph of this decision, in exercise of the power conferred by paragraphs 10(a), (c) and (e) of the Rules, the Panel consolidates these proceedings pursuant to paragraph 4(f) of the Policy.
4. Factual Background
Since November 1999 the Complainant, which describes itself as Australia’s leading hospitality trade media company, has published throughout Australia a monthly magazine for professional bartenders entitled “Australian Bartender”.
Since 2000, under the auspices of that magazine, the Complainant has sponsored and organized an annual event, known at various times as one or more of ‘Australian Bartender Magazine Awards’, ‘Bartender Magazine Awards’, ‘Australian Bar Awards’ ‘The [number, eg. fifth] Annual Bar Awards’ and ‘Bar Awards’. This event is dedicated to the bar industry and attended by approximately 600 hospitality professionals from hotels, restaurants, bars, nightclubs and lounges from all over Australia. Awards are presented in numerous categories including ‘Bar of the Year’, ‘New Bar of the Year’ and the main award, ‘Bartender Magazine Bartender of the Year’.
The event and the magazine have received media publicity including, since 2003, through the Complainant’s website “www.barshow.com.au”. The magazine has also been advertised by the Complainant in a directory for buyers and sellers in the marketing media and advertising industry.
The Respondent registered the domain name <barawards.com.au> on September 16, 2005, four days before the 2005 event.
The Complainant is the proprietor of Australian registered trademark 988608 BARTENDER in respect of goods in class 16, namely “printed matter; photographs; periodicals and magazines; stationery; instructional and teaching material (except apparatus)”. The mark was registered on June 26, 2006 upon application made on February 12, 2004, which sought registration also in class 41 in respect of the following services:
“Education; entertainment; production and publication of webcasts, Internet and on-line programmes, on-line journals and on-line magazines; publishing services including publication of books, texts, journals and magazines; live music; theatre; organization and presentation of sporting and cultural activities; organization and presentation of exhibitions and shows for cultural and educational purposes”.
On November 29, 2005, the Complainant agreed to the deletion of class 41 from its application, following an examiner’s report stating “[t]he evidence provided does not support your client’s application in class 41 at all”.
For some time prior to September 9, 2006 (the exact period being in dispute), the Complainant was the registrant of the domain name <bartender.com.au>. The Complainant listed that domain name opposite “Subscribe Online” in the December 2002 issue of the magazine, advertised and listed it in subsequent issues and used it to direct Internet traffic to its main website. The Complainant unintentionally overlooked the renewal of the domain name registration due on September 9, 2006. It thereafter became available for registration to the general public and was registered by the Respondent on September 26, 2006.
On October 24, 2006, the Respondent applied to register Australian trademark 1142601 “BARGUIDE.COM.AU with image of cocktail glass with straw” in classes 16, 35 and 41. That mark was registered on June 18, 2007.
Between about November 2006 and July 2007 both disputed domain names resolved to the Respondent’s website “www.bars.com.au”, the home page of which was entitled “Bars’ and Nightclubs Directory Guide: Nightclubs, Nightlife, Night Clubs, Barguide…”. Under the heading BARS.COM.AU™ appeared links including Bars, Bartenders, Cocktails and Nightclubs. There was a Member Login area, lists of Hot Bars, Hot Nightclubs, Bartender Profile and Events. Since about August 2007 the disputed domain names have led to separate websites, identical in structure and with similar content to that just described, save for the headings BARAWARDS.COM.AU™ and BARTENDER.COM.AU™ respectively, instead of the heading BARS.COM.AU™.
On November 24, 2006, the Complainant’s Managing Director sent an email to the Respondent seeking the return of the disputed domain names “in return for some support via something in our portfolio of bar magazines and events…” The Respondent did not reply.
The Complainant’s solicitors sent a letter of demand to the Respondent by email on March 23, 2007 in relation to both disputed domain names, in which it claimed common law rights in the mark BAR AWARDS, both common law and registered trademark rights in the mark BARTENDER and that the disputed domain names, by defaulting to the “bars.com.au” website, competed with the Complainant’s business. The Respondent did not reply but on the same day lodged registered trademark applications 1167954 for BAR AWARDS; BARAWARDS.COM.AU and 1167956 for BARTENDER.COM.AU, both in class 35 in respect of marketing, promotional and advertising services in any form of media. These applications are pending.
5. Parties’ Contentions
The Complainant contends as follows.
The domain name <barawards.com.au> is identical to the mark BAR AWARDS, in which the Complainant has common law rights by virtue of having organized the event continuously since 2000 and by virtue of the presence of that mark on trophies, plaques, certificates, programs and signage at the event; on the “barshow.com.au” website; in press releases and in editorial review and comment in major Australian print publications and newspapers.
The domain name <bartender.com.au> is identical to its registered trademark BARTENDER, in which it also has common law rights extending beyond the goods in respect of which registration of the mark was obtained. In addition to its use in connection with the goods covered by the trademark registration, the Complainant intends and is entitled to use the BARTENDER mark in the future with respect to a website for the magazine or a non-downloadable online publication of the magazine.
The Respondent has no rights or legitimate interests in respect of the domain names. From the diversion of Internet users to the Respondent’s “bars.com.au” website until about July 2007 and the sudden recent creation of separate sites having identical content, the Complainant suspects that the Respondent deliberately registered them to appropriate the Complainant’s goodwill. The Respondent’s “bars.com.au” website directly competes with the Complainant’s business. As set out in the letter of demand, the Respondent’s registration and use of the disputed domain names constitute the tort of passing off, breaches of sections 52 and 53 of the Trade Practices Act (Cth) and, in the case of <bartender.com.au>, trademark infringement.
The domain names were registered or are subsequently being used in bad faith in that each was registered in order to prevent the Complainant from using its relevant trademark in a corresponding domain name and that in each case the Respondent has engaged in a pattern of such conduct by registering the other disputed domain name as well as the domain names <pubawards.com> and <pubawards.com.au> in order to prevent the Complainant from incorporating the trademarks BAR AWARDS and PUB AWARDS into corresponding domain names.
Further, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the trademarks as to the source, sponsorship, affiliation or endorsement of its website or of the services featured on its website. By continuing to use the disputed domain names in the course of trade after receipt of the letter of demand, the Respondent has had flagrant disregard for the Complainant’s rights and has therefore acted in bad faith.
The Respondent contends as follows.
The Respondent runs a global business with worldwide members, advertisers, bars, dj’s, ktvs, nightclubs, bands, suppliers, bartenders and users, with websites at:
“www.barguide.com.au”, “www.barguide.co.uk”, “www.barguide.co.nz”, “www.barguide.tv”, “www.barguide.in”, “www.barguide.sg”, “www.barguide.hk”, “www.barguide.tw”, “www.barguide.gr”, “www.barguide.be”, “www.barguide.ph”, “www.barguide.com.sg”, “www.barguide.jp”, “www.barguide.com.my”, “www.bartenders.com.au”, “www.bartender.com.au”, “www.bars.com.au”, “www.bars.sg”, “www.nightclubs.com.au” and “www.barawards.com.au”. These websites are available for anyone over the age of 18 years in any country to use within the terms and conditions of the websites. Any bar, dj, band, ktv, bartender, nightclub, industry related supplier in the world can add their profile to these sites.
The Respondent has over 50 related domain names used worldwide, creating the world’s largest linked entertainment portal, in which it has invested over $570,000 AUD in worldwide software development and promotion.
The Respondent is not infringing any of the Complainant’s claimed trademarks. Prior to receiving the complaint the Respondent had common law [rights] and trademark applications/registrations for BARTENDER.COM.AU, BAR AWARDS and BARAWARDS.COM.AU. The Complainant does not have monopoly rights over the words ‘bartender’ or ‘bar awards’.
The Respondent’s registration and use of BARAWARDS.COM.AU predates the Complainant’s use of BAR AWARDS and the Complainant is infringing the Respondents intellectual property rights by now trying to call its event “Bar Awards” when previously it was named Australian Bartender Magazine Awards.
There are other, better known, industry award nights and industry magazines in Australia, such as the Australian Liquor Industry Awards and the Australian Hotels Association magazine.
The Respondent contends that Barawards.com.au™ has been used in conjunction with the Respondents business worldwide for many years as a way of public worldwide voting according to set parameters. The goal is to recognize all world bars in order of a voting system. So for example a bar in Singapore, China, London, Mexico, Netherlands, Australia, and New Zealand may be voted on based on atmosphere, prices etc. This is totally different to what the Complainant is doing with its use of this term.
As to legitimacy, there is evidence, before the Respondent received any notice of the dispute, of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services and that the Respondent has been or is commonly known by the domain names in issue, even if the Respondent has acquired no trademark or service mark rights.
The Respondent’s rights and legitimate interests are further shown through the Complainant’s attempts to purchase the disputed domain names from the Respondent. The Complainant is aware that the Respondent has an unassailable right and legitimate interest in the domain names, proven by the Complainant’s email offering free advertising in return for the domain names. The Respondent also seeks to rely on the contents of emails from the Complainant headed “Without Prejudice”.
It is well established that domain names containing common dictionary words such as Bartender and Bar Awards may be registered in good faith and, per se, the Respondent has established legitimate interest. There can be no confusion because the “bartender.com.au” and “barawards.com.au” websites clearly state in the terms and conditions and footer copyright claim that they are owned and operated by the Respondent.
The Respondent denies bad faith registration or use and says the Complainant offers nothing more than speculation and conjecture, citing Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (mere assertions of bad faith are insufficient) and Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 to like effect.
Since the Respondent’s registration of the disputed domain name <barwards.com.au> pre-dates any use of the Complainant’s claimed mark, the Respondent could not have registered the disputed domain name in bad faith under Policy: Interep Nationall Radio Sales, Inc. v. Internet Domain Names, Inc., WIPO Case No. D2000-0174 (finding no bad faith where the Respondent registered the domain name prior to the Complainant’s use of the mark); see also Open Systems. Computing AS v. Alberto degli Alessandri, WIPO Case No. D2000-1393 (finding no bad faith where the Respondent registered the domain name in question before application and commencement of use of the trademark by the Complainant).
The Respondent did not register the domain names in bad faith because they are common, generic terms. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (holding that, where the domain name is comprised of a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of the Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Vitello v. Castello, FA 159460 to like effect.
The Respondent has a registered trademark for the related portal website Barguide.com.auŽ and common law trademarks and pending trademarks for the domain names and logos of cocktail glass and bartender.com.au™, bar awards™ barawards.com.au™ bars.com.au ™ nightclubs.com.au™ bartenders.com.au™ further proving the Respondent’s good faith use and rights.
The Respondent registered the domain names since they were available for registration and the Respondent was eligible under the Policy to register and use them in good faith on the first come, first served principle.
The Panel should make a finding of reverse domain name hijacking because the Complainant knew or should have known it was unable to prove that the Respondent registered and is using the domain name in bad faith. The Complaint discloses that the Complainant is aware of the business and corporate status of the Respondent, and states it has even examined the websites available at the domain names. The domain names were both registered and are in use fully within .auDA Policy by the Respondent, and are being used for a legitimate business.
The Complainant’s abuse of the administrative proceeding is highlighted by the Complainant continuing to list the complaints as two separate complaints when both could easily have been merged to avoid further wasting of time and money for all.
C. Supplementary submissions
Rule 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, as under the UDRP, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. These are not cases of discovery of evidence not reasonably available to the Complainant at the time of its initial submissions. However, the Response did contain arguments by the Respondent that the Complainant could not reasonably have anticipated, many of which the Panel has found irrelevant to the issues to be determined or of insufficient substance to be worth setting out above.
Accordingly the Panel admits the Complainant’s unsolicited submission only insofar as the Complainant asserts, in reply to the Responses:
(a) that it is unaware of any other awards given solely in recognition of excellence in the bar industry; and
(b) that its ‘without prejudice’ communications were made in a bona fide effort to avoid these proceedings.
Under these circumstances it is unnecessary to consider any further reply the Respondent may wish to make and the Respondent’s request to do so is therefore denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainant to prove:
(i) the domain names are identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names (Note 2); and
(iii) the domain names have been registered or subsequently used in bad faith.
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.
For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
The Panel does not admit and has paid no regard to the Complainant’s ‘Without Prejudice’ communications put forward by the Respondent, in keeping with the approach adopted in Spirit Airlines, Inc. v. Spirit Airlines Pty. Ltd, WIPO Case No. D2001-0748 and Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587.
A. Identical or Confusingly Similar
The Complainant relies on claimed trademark rights. It clearly has registered trademark rights in the word BARTENDER, to which the domain name <bartender.com.au> is identical, since the suffixes ‘.com.au’ are inconsequential and to be disregarded. As with the UDRP, paragraph 4(a)(i) of the Policy embodies no requirement that the complainant’s trademark rights must have arisen before the disputed domain name was registered. See Valve Corporation v. ValveNET, Inc., Charles Morrin WIPO Case No. D2005-0038 (Mar. 9, 2005) and the cases there cited.
The domain name <barawards.com.au> is identical to the Complainant’s claimed common law trademark BAR AWARDS. To succeed in a Complaint under the Policy in relation to an unregistered mark, it is necessary for the Complainant to prove that the mark is in fact a trademark. Thus, the Complainant must produce evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark. That is to say, the Complainant must prove that, prior to filing the Complaint, it had acquired a right in the unregistered mark such as would enable it to bring a legal action against a third person using the mark without its consent: British Heart Foundation .v. Harold A Meyer III, eResolution Case No. AF0957.
On the evidence before the Panel, the December 2002 issue of Bartender magazine described that year’s event as “the second annual Bartender Magazine Awards”. There is no evidence as to the 2003 and 2004 events.
The event held on September 20, 2005 was described in the September issue of the magazine (which was presumably published before the event, since it described it as “Sold Out”); on the entry ticket; signage and the awards themselves; in the subsequent press release and in the November 2005 issue of the magazine as “5th annual Bar Awards”, the latter two words being the most prominent, and in each case in association with the name of the magazine. On September 25, 2005, Amy Cooper in the Sun-Herald mentioned “The Fifth Annual Bar Awards” and “the hundreds of assembled bartenders”. On the same day the Sunday Telegraph also mentioned “The Fifth Annual Bar Awards” and “a room filled with 600 people”. On October 19, 2005, City Weekly mentioned “Australia’s Fifth Annual Bar Awards for 2005”.
On September 19, 2006, The Bulletin mentioned “the 6th Annual Bar Awards”. On September 24, 2006, the Sun-Herald mentioned “the annual bar awards” and “the industry’s sixth annual bar awards”. Elsewhere in that edition, Amy Cooper named the “Party of the Week” as “The Sixth Annual Bar Awards” and referred to “700 bartenders in one room”.
On July 10, 2007, the Complainant’s website at “barshow.com.au” mentioned “7th annual Bar Awards”, quoted a well-known businessman from outside the bar industry as saying “The bar awards has certainly now become the premier hospitality function of the liquor industry”, and also referred to “Australian Bar Awards Categories”. The September 2007 issue of the magazine referred to the “7th annual Bar Awards presented by Australian Bartender and Industry” (another of the Complainant’s magazines). The cover of the program for the 2007 event was titled “Bar Awards”. The inside pages were all headed “7th Annual Australian Bar Awards”. The back cover bore the name of the Complainant. On September 23, 2007 in the Sun-Herald, Amy Cooper’s Party of the Week was “The Annual Bar Awards”. Her column said: “There are few greater drinking challenges than the annual Bar Awards” and again referred to 700 attendees. An article in The Age on October 2, 2007 referred to “the recent Australian Bar Awards” and to the Complainant’s Managing Director as “the man behind the Australian Bar Awards”. On the same day the Courier Mail referred to “the recent 7th Annual Bar Awards”.
In considering whether this evidence supports a finding of common law rights in BAR AWARDS, it must be borne in mind that the words ‘bar’ and ‘awards’ are ordinary descriptive words. In combination they are descriptive of awards conferred upon participants in the bar industry (although some might think also of barristers). The following well-known passage from the judgment of Stephen J in the High Court of Australia in Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 is apposite:
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words – “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be”. The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
The evidence reveals use by the Complainant and by others of a variety of names for the event, both sequentially and concurrently. On balance, the Panel is satisfied that, by the time of the filing of the Complaint, the words “bar awards” have become distinctive in the bar industry in Australia of an annual awards presentation event in that industry provided by the Complainant, such as to entitle it to bring a legal action against someone using those words without its consent in connection with such an event. Thus, not without hesitation, the Panel finds that the Complainant has common law rights in the mark BAR AWARDS in connection with such an event.
The Complainant has established this element of its case in respect of both disputed domain names.
B. Rights or Legitimate Interests
Although the onus of proof is on the Complainant, once the Complainant has made out a prima facie case that it satisfies this element, it is up to the Respondent to provide concrete evidence to the contrary. The Complainant’s assertion that the Respondent’s “bars.com.au” website, to which the disputed domain names resolved for some time, directly competes with the Complainant’s business is sufficient to establish a prima facie case, it being implicit that the Complainant has not authorized the Respondent to register the domain names or to use the Complainant’s trademarks.
Paragraph 4(c) of the Policy enumerates (non-exhaustively) several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names. Paragraphs 4(c)(ii) and (iii) do not apply because the Respondent is not known by the disputed domain names and is using them for commercial gain. Does paragraph 4(c)(i) of the Policy apply to the facts of this dispute:
“before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring)”?
The relevant time for the purpose of this analysis is the date of the Complainant’s letter of demand, not, as the Respondent appears to contend, the date of the Complaint. The Panel is not satisfied that the trademark registration applications lodged by the Respondent on the same day as the letter of demand were lodged before receipt by the Respondent of that letter. Accordingly, they cannot avail the Respondent on the question of legitimacy.
Prior to the letter of demand the Respondent had applied to register BARGUIDE.COM.AU as a trademark and both disputed domain names resolved to the Respondent’s website “www.bars.com.au”, which took the form of a bar guide containing, inter alia, profiles of bartenders and details of bars (rated by reference to the number of “stars” awarded) and cocktails. The Respondent’s business, commenced before the letter of demand, was clearly directed to participants in the bar industry as well as to patrons but was not restricted to participants in Australia. Both disputed domain names were thus used by the Respondent, prior to notice of the subject matter of the dispute, in connection with an offering of goods or services (not being the selling or renting of domain names). Was this use bona fide?
This Panel is satisfied that the domain name <bartender.com.au> has been used by the Respondent descriptively to attract bartenders to a website of interest to bartenders and to identify and enable the identification of individual bartenders to patrons. This is bona fide use of the domain name. Whether or not the Respondent was aware of the Complainant’s Bartender magazine when the Respondent registered this domain name, and whether or not the Respondent was aware that this domain name had previously been registered by the Complainant, both of which this Panel considers to have been likely, since the Respondent operated in the same industry as the Complainant, the fact remains that the Respondent has used the word “bartender” in the domain name in its ordinary descriptive sense. It follows that the Panel is not persuaded that the Respondent is using this domain name so as to trade off the Complainant’s goodwill in its magazine sold under the BARTENDER mark.
No evidence has been provided to establish that since the withdrawal of its application in relation to class 41 the Complainant has acquired common law rights extending beyond the goods in respect of which registration of the BARTENDER mark was obtained. Even if the Complainant does have such rights, it cannot prevent others from using the word “Bartender” to describe or attract bartenders. See Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270:
“… although the complainant has rights in the stylized form of the trademark LOVELY GIRL in relation to women’s apparel and women’s care products, those rights cannot prevail over the use of the words “lovely girls” as an accurate description of lovely girls. Likewise the owner of the trademark APPLE in relation to computers cannot prevent use of the word “apple” in relation to apples.”
The Panel is satisfied that the Respondent has rights and legitimate interests in the <bartender.com.au> domain name. The Complainant has failed to establish this element in relation to that domain name.
As to the <barawards.com.au> domain name, the timing of its registration, only four days before the 2005 event, suggests that the Respondent was then aware of the event, which had received advance publicity in the bar industry, in which the Respondent operates, and was described as “Sold Out” in that month’s issue of the magazine. The Respondent, who was at pains to take every conceivable point in the Response, has not claimed to have been unaware of the event.
Be that as it may, a difficulty for the Complainant is that the words “Bar Awards”, standing alone, do not appear to have been used by the Complainant in relation to the event until 2007. Prior to the Respondent’s registration of the <barawards.com.au> domain name, in the lead up to the 2005 event, the Complainant used the name “5th annual Bar Awards”. Leaving aside as inconsequential the designation “5th”, which one would expect to change each year, the word “annual” whether or not with a capitalised initial, is an important qualifier, distinguishing the Complainant’s bar awards event from other kinds of awards to bars, such as might be contained in a bar guide of the kind provided in its online bar guide by the Respondent. In the words of Stephen J. quoted above, “a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action”.
Although the Panel has found that, by the time the Complaint was filed in late 2007, the Complainant had acquired common law rights in the BAR AWARDS mark, the Panel is not satisfied that those rights had been acquired at the time of the registration of the <barawards.com.au> domain name. If the Complainant had any trademark rights at that time, they were most likely in the mark “ANNUAL BAR AWARDS”.
The Panel finds that the Respondent’s use, prior to the letter of demand, of the <barawards.com.au> domain name in relation to the provision to the bar industry and to the public of an online bar guide, rating bars by reference to “stars” awarded, is a bona fide use of the domain name. The Panel would have reached the same conclusion even if the Complainant did have common law rights in the mark BAR AWARDS in relation to an annual awards presentation event at the time the Respondent registered the <barawards.com.au> domain name.
Accordingly, the Panel is satisfied that the Respondent has rights and legitimate interests in the <barawards.com.au> domain name. The Complainant has failed to establish this element in relation to that domain name.
C. Registered or Used in Bad Faith
Having regard to the Panel’s findings that the Respondent has rights and legitimate interests in both domain names, it is unnecessary to consider this issue.
D. Reverse Domain Name Hijacking
Rule 1 defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. See also Rule 15(e). Cases decided under the UDRP are relevant here. To prevail on such a claim, it has been held that a respondent must show either that the complainant knew of the 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: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
The Complainant’s case was weak but this does not mean that it was brought in bad faith, knowing that it would be likely to fail. The Respondent has not discharged its burden of satisfying the Panel that a finding of reverse domain name hijacking is justified.
For all the foregoing reasons, both Complaints are denied.
Alan L. Limbury
Dated: January 2, 2008