Stella IP Pty Ltd. v. Creative Internet Consultants Pty Limited / i4u, Domain Administrator
Case No. D2008-1133
1. The Parties
The Complainant is Stella IP Pty Ltd., Queensland, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Creative Internet Consultants Pty Limited / i4u, Domain Administrator, Queensland, Australia; represented by Michael Sing Lawyers, Australia.
2. The Domain Names and Registrars
The following 25 disputed domain names are all registered with GoDaddy.com, Inc:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2008. On July 28, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On July 28, 2008, GoDaddy.com, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 on August 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2008. The Response was filed with the Center on August 25, 2008.
On September 9, 2008 the Respondent sent a supplemental filing to the Center. On September 17, 2008, the Complainant also sent a supplemental filing to the Center.
The Center appointed James A. Barker, The Honourable Neil Anthony Brown QC and John Terry as panelists in this matter on September 22, 2008. The Panel finds that it was properly constituted. Each member of 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 following facts are variously summarised from the Complaint and Response.
The Complainant is a company incorporated in the State of Queensland, Australia. It is a wholly owned subsidiary of Stella Leisure Holdings Pty Ltd., and part of the Stella Group of companies (“the Stella Group”).
The Stella Group manages and operates properties on the Gold Coast and Sunshine Coast, which are well-known tourist destinations in Queensland, Australia.
The Complainant is the registered owner of several trademarks registered with IP Australia for Q1, evidence of which was attached to the Complaint and submitted to the Panel.
Sunleisure Group Pty Limited is the registered owner of three trademarks registered with IP Australia for various word and graphic versions of CIRCLE ON CAVILL.
The Respondent is in the business of designing and maintaining websites, and the development of software for online accommodation bookings.
Almost all of the disputed domain names were registered in January 2007. The exceptions are <q1goldcoast.net> and <q1resort.com> which were registered in October 2005, and <sierra-grand-broadbeach.com> which was registered in February 2008.
Companies in the Stella Group are the registrants of other domain names that are in the Australian domain name space and generally relate to the names of the various resorts managed and operated by the Stella Group. For example, one of the resorts is the Break Free Alexandra Beach Resort. The relevant domain name owned by a member of the Stella Group is <alexbeachresort.com.au> and one of the disputed domain names is <alexandra-beach-resort.com>.
Before these proceedings, the Respondent was using the disputed domain names for the marketing of accommodation.
5. Parties' Contentions
The Complainant's description of its activities is similar to that set out by the panel in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, WIPO Case No. D2008-1149. Much of the Complainant's case against the Respondent, as outlined in that decision, is also similar in this case.
In short, the Complainant is an accommodation provider in Australia and New Zealand. The Complainant has exclusive management rights, as the sole caretaker of the entire accommodation facilities it manages.
The Complainant also has letting rights in relation to properties for which it has a letting agreement. As part of its letting arrangements, the Complainant takes bookings (whether via phone, call centre, internet or walk in), collects payment, checks visitors in and out of the facility, and provides housekeeping, room maintenance and other ancillary services such as maintaining a reception desk.
The Complainant refers to three agreements which it says were separately entered between the Respondent or its associated entities and companies in the Stella Group. While the terms of these agreements differed, the Complainant says that those agreements did not entitle the Respondent to register the disputed domain names. The Complainant also says that during the operation of those agreements it retained ownership of other domain names, in relation to which the Respondent was to create and maintain websites or operate booking software.
Identical or confusingly similar
The Complainant claims that the disputed domain names are identical or confusingly similar to marks in which it has rights. The Complainant describes its marks in three categories:
- the ‘Q1' domain names. The Complainant claims to have Australian-registered marks that relate to the Q1 Resort & Spa. The relevant disputed domain names are those that incorporate ‘q1' along with ‘resort' and ‘goldcoast' respectively.
- the ‘Circle on Cavill' domain names. The Complainant claims to have Australian-registered marks which relate to these. Three of the disputed domain names incorporate variations on the words ‘Circle on Cavill'.
- the ‘other domain names', in relation to which the Complainant claims to have common law trademark rights arising from its ‘management and letting rights'.
Rights or legitimate interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names. While the Respondent has previously had commercial relationships with entities related to the Complainant, the Complainant never licensed nor permitted the Respondent to use its trademarks in a domain name. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, because it is using them to attract Internet users looking for properties managed by the Complainant. The Respondent is trading off on the fame of the Complainant's marks and registered them for that purpose.
Finally, the Complainant claims that the Respondent registered and has used the disputed domain names in bad faith, for much the same reasons as those set out above. The Complainant also claims that the Respondent registered the majority of the disputed domain names to ‘gain leverage' against the Complainant, when two of the three commercial agreements ended on September 22, 2008 and August 19, 2008 (the third of these agreements having already come to an end on May 19, 2008 – before the Complaint was filed). The Complainant's submission is, in effect, that by the Respondent being the registrant of those domain names it would be difficult for the Complainant to replace the Respondent with a different service provider.
The Respondent relevantly denies the allegations made against it. The following summarises the Response.
The Respondent first entered into a commercial agreement with a company called the ‘Gold Coast Booking Center Pty Limited' (GCBC) – otherwise known as ‘S8' - to provide website design services.
On September 22, 2005, the Respondent entered a second agreement with ‘S8 Pty Limited' (‘S8'). That agreement expired on September 22, 2008. Clause 9 of that agreement provided (among other things) that ‘Ownership of the domain names purchased by i4U will be retained by i4U'. The Respondent appears to contend that the ‘other domain names' the subject of the present dispute are those for which the Respondent obtained ownership and is entitled to retain ownership pursuant to clause 9. The Respondent notes that this agreement with S8 otherwise related to services it was to provide for websites at the domain names at Annex 9 of the Complaint – none of which are the subject of this dispute. (The agreement with S8, which was annexed to the Complaint, did not however identify any particular domain names, either those listed at Annex 9 of the Complaint or otherwise.)
S8 consented to the Respondent's registration of the domain names referred to in the Complaint as the ‘other domain names'. The Complainant's Internet strategy also provided that the Respondent would launch new domain names, which are also the subject of this dispute.
The Complaint's predecessor (Sunleisure Pty Limited) also agreed to the Respondent's registration of the ‘Q1' domain names.
In relation to the ‘Circle on Cavill' domain names, the Respondent denies that the Stella Group did not give it permission to register those domain names. The Complainant was aware that the disputed domain names were registered by the Respondent, and the related marketing strategy was a collaborative project. On the other hand, the Respondent says that neither the Complainant, nor its predecessors, were in a position to give such a permission, as it was not the Complainant's permission to give.
In early 2008, the Stella Group acquired both S8 and Sunleisure Pty Limited. The Complainant perceives the Respondent as a competitor and has sought to unfairly eliminate the Respondent from the market place. The Complainant appears to base its Complaint on the anticipated expiry of the second agreement, which amounts to a pre-emptive strike against the Respondent and an abuse of process.
Identical or confusingly similar
In relation to the ‘Q1' domain names, the Respondent denies that these are identical or confusingly similar to the Complainant's Q1 marks, as those are stylized marks.
In relation to the ‘Circle on Cavill' marks, the Respondent denies that the Complainant has any management rights to the relevant properties. The Respondent points out that the Complainant's trademark rights are based only on an assertion of having a licence from the Sunleisure Group. As such, the Respondent claims that the Complainant has failed to establish any trademark rights in the ‘Circle on Cavill' domain names.
In relation to the ‘other domain names', the Respondent claims that the Complainant has failed to establish any common law trademark rights. The Respondent also denies that the Complainant could have any authority to assign such rights (citing Australian case law to this effect).
If there are any common law trademark rights in the names of the buildings to which the disputed domain names relate, those rights would be owned by the body corporate for each building, which represents the interests of the owners of those buildings/lots.
Rights or legitimate interests
The Respondent claims that it has rights and legitimate interests in the disputed domain names, which it uses to market the properties of various real property owners.
The Respondent claims that the Complainant (or its predecessors) knew and encouraged its registration of the disputed domain names but that, in any case, the Complainant's permission was not required as the Complainant has not demonstrated any relevantly exclusive rights.
The Respondent denies that it acted in bad faith. The Respondent's registration and use of the disputed domain names was done with the knowledge and encouragement of the Complainant or its predecessors as part of an agreed marketing strategy.
Reverse domain name hijacking
The Respondent requests a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark or marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Each of these elements are addressed below, immediately following a consideration of three procedural issues.
A. Identity of the Respondent
For the Complainant to proceed against a number of differently named Respondents, they must all be the same entity in fact. See e.g. Regal Removals v. Gary Bradshaw, WIPO Case No. D2003-0832; Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com's WHOIS Database isp a/k/a Amjad Kausar, WIPO Case No. D2005-0635.
In this case, the Complainant names two entities as the Respondent. This is because two of the disputed domain names are registered in the name of ‘Domain Administrator (otherwise known as Barney Rubble)'. The remainder are registered in the name of ‘i4u', which is the trading name of Creative Internet Consultants Pty Limited. The Complainant notes that the email and address details for ‘Domain Administrator' are relevantly the same as for ‘Creative Internet Consultants Pty Limited'. For this reason, the Complainant argues, in effect, that these two entities should be treated as the same for the purpose of the Complaint.
The Respondent however states that Domain Administrator (otherwise known as Barney Rubble) ‘is the appropriate registrant'. The Respondent does not explain why. The Respondent did not provide any evidence that Domain Administrator is a separate entity in fact, or an entity at all.
For these reasons, the Panel has treated Creative Internet Consultants Pty Limited as the single registrant in fact (and therefore the Respondent) of all the disputed domain names.
B. Supplemental filings
Both the Complainant and the Respondent have made supplemental filings in connection with this case. Consistently with the panel's approach in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, WIPO Case No. D2008-1149, the Panel considered the supplemental filings and took them into account in reaching its decision.
C. Compliance of the Response
In its supplemental filing, the Complainant apparently requests the Panel to disregard the Response on the basis that the Response exceeded the word limit established under the Supplemental Rules by around 20%. To the extent that the word limit has been exceeded, the Panel has not held this against the Respondent. Doing so would elevate a technical breach of the Supplemental Rules above a substantive consideration of the merits of the case. The Panel also considers that parties should generally not pursue their case on technical and self-evident grounds such as this, particularly in supplemental submissions.
D. Identical or Confusingly Similar
Q1 domain names and marks
The Complainant is the registered owner of several trademarks registered with IP Australia for Q1, evidence of which was attached to the Complaint and submitted to the Panel. That evidence shows that 3 of those trademarks (the ‘Q1 trademarks') were registered before the domain names <q1goldcoast.net> and <q1resort.com> were registered by the Respondent on October 19, 2005. Those marks are registered in a variety of classes including, for example, for household or kitchen utensils; clothing, footwear, headgear; real estate management and leasing of real estate; and all forms of catering. More recently (post-dating the registration of the disputed domain names) the Complainant has filed pending trademark applications for variations of ‘Q1' in other classes, including relevantly for e.g. ‘accommodation letting agency services'.
The Respondent does not dispute that the Complainant has rights in its registered ‘Q1' trademarks. The Respondent argues that the relevant disputed domain names are not identical or confusingly similar, since the Complainant has trademark rights in a stylized mark – rather than the term ‘Q1' per se – and because that term is not exclusively or distinctively associated with the Complainant.
The test of confusing similarity under the Policy is however more narrow. Whether a domain name is confusingly similar (or identical) to a mark is to be judged objectively, against the dominant textual elements of a complainant's mark, rather than graphic or stylized elements. This approach is supported by a series of prior panel decisions. See e.g., Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and cases cited therein. In that case, the panel noted that: “…graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.”
The Respondent however refers to e.g. Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902 for the proposition that ‘Stylised or design trade marks that also contain text…do not provide the owner of the mark with exclusive rights to the words contained in the mark'. While that may be true, that was a statement made by the respondent in that case (referring to Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270 where, in any event, no such statement is contained). It was not a statement made by the panel. Even if it were, is not relevant directly to the issue of confusing similarity.
Some previous decisions under the Policy have taken into account the stylized nature of a mark. See e.g. Tesla Industries, Inc. v. Stu Grossman d/b/a SG Consulting, NAF Claim No. 547889. However that case (including the preponderance of the decisions relevantly cited in that one) concerned a comparison between “highly stylized marks” and a domain name. In this case, the Complainant's Q1 trademarks are stylised to some extent, but not highly so. The term ‘Q1' is clearly the dominant textual element of each mark.
In this case, the ‘Q1' domain names include the Complainant's registered mark, and a generic term clearly associated with the property in which the Complainant claims some management and letting rights, in one case merely describing where it is, on the Gold Coast, and in the other case merely stating what it is, namely a resort. As such, there is at least a likelihood of confusion by that portion of the public that may be familiar with the property or the Complainant.
The Panel therefore finds that the domain names <q1goldcoast.net> and <q1resort.com> are confusingly similar to the Complainant's Q1 trademarks.
‘Circle on Cavill' & ‘other domain names'
However the Complainant has not established trademark rights in relation to which either the ‘Circle on Cavill' or ‘other domain names' could be said to be confusingly similar.
Circle on Cavill
From the Complaint it appears that ‘Sunleisure Group Pty Ltd' owns registered marks in relation to ‘Circle on Cavill'. The Complainant states that it is ‘related' to Sunleisure, although Sunleisure recently ceased to be ‘part' of the Stella Group. The Complainant states that Sunleisure granted it a licence of the CIRCLE ON CAVILL trademarks to enable the Complainant to perform ‘its [the Complainant's] management and letting obligations'.
But the Complainant provides no evidence to support these statements.
The evidence annexed to the Complaint and adduced to the Panel shows that ‘Sunleisure Group Limited' (sic) is the owner of 3 trademarks registered with IP Australia for various word and graphic versions of CIRCLE ON CAVILL and that they were registered before the disputed Circle on Cavill domain names were registered.
However, no detail or evidence is given of the Complainant's relationship with Sunleisure. No evidence is given of the claimed trademark licence, its provisions or when it came into effect.
UDRP panels do not always insist on evidence that would be required in a court of law to prove formal matters. However, in this case, the proof of the Complainant's rights in a trademark or service mark to which the disputed domain names are said to be identical or confusingly similar is a fundamental matter that must be proved.
Moreover, it was particularly important in the present case because the Complainant's right to the trademark was an issue and known to be an issue before the Complaint was filed. That is so because there was extensive correspondence between the parties' legal advisers before the Complaint was filed. Without referring to it in detail, it is significant to note that on July 1, 2008 the Respondent's attorney wrote to the Complainant's attorney saying inter alia:
“Our client denies having misused the Q1 or Circle on Cavill trade marks, without admission of your client's ownership of the same.”
Even without that warning, proof of the Complainant's right in a trademark was in issue, but with the warning, it was doubly so.
In these circumstances, the Panel finds on the balance of probabilities that the Complainant has not established relevant trademark rights concerning the ‘Circle on Cavill' domain names.
Common law trademarks
The Complainant has also provided insufficient evidence of having common law trademark rights relating to the ‘other domain names' (the Complainant does not argue that it has any relevant registered rights). The Complainant's claims in this respect are similarly weak to those described by the panel, constituted differently in part in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, WIPO Case No. D2008-1149.
In brief, the Panel as presently constituted is concerned that the Complainant does not establish or even allege what any of the claimed common law trademarks are. It merely alleges that it has “various trademarks which are used in relation to these properties.” It will therefore instantly be seen that it is impossible for the Panel to say that a domain name is identical or confusingly similar to a trademark that is not specified.
The Panel is left to speculate whether the claim is for a common law trademark in the name of each resort. No evidence is adduced, however, to show where such a common law trademark originates or how it comes to be vested in the Complainant. In particular, the Panel is concerned that, as in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, (supra), the Complainant maintains in the present case that:
“These common law trademark rights were assigned to the Complainant from each of the related companies in the Stella Group pursuant to a confidential common law Trade Mark Assignment Deed. The Complainant provided each of these related companies with a licence back of the trademarks, on a non-exclusive basis, pursuant to a confidential Trade Mark Licence Deed.”
The Complainant cannot rely on evidence which it conceals from the Panel and the Respondent, denying the Panel an opportunity to assess its effect and denying the Respondent an opportunity to reply.
The Complainant provided no other evidence that would clearly establish that it owns common law rights in the relevant marks. The Panel cannot find that the Complainant has such rights on the basis of a mere assertion, particularly as the Complaint was contested in detail by the Respondent.
The Panel therefore makes a similar finding in this case to the finding made by the panel in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, (supra): that the Complainant has not established relevant common law rights to support its claim for the “other domain names”.
E. Rights or Legitimate Interests
The Panel admits to finding some difficulty in following the facts set out by the Complainant and the Respondent. For example, the Respondent claims to be both a competitor of the Complainant, but also in a contractual relationship with the Complainant (through various of its predecessors) to develop websites in relation to which that competition occurs. This picture is complicated further by claims that both the Complainant and the Respondent were seeking to register domain names related to properties that neither of them own. There is also a lack of clarity about the source of the Respondent's rights to register the particular domain names at issue. Both parties refer to (and the Complainant provides copies of) three agreements relating to the relationship between the parties. However those agreements do not explicitly identify any of the domain names in dispute.
Despite this, the Panel finds on the balance of probabilities that the Respondent has established rights or legitimate interests in the disputed domain names. The preponderance of evidence points to the Respondent having registered and used the disputed domain names in connection with its business, including its relationship with predecessors of the Complainant.
Further, and importantly, the Complainant's case on this ground is that the Respondent had no permission from the Complainant to register and use the disputed domain names. But there is no evidence that any such permission was needed. Except for the ‘Q1 trademarks', the Complainant has failed to establish any trademark rights which might allow it the right to grant such a permission. And, as noted above and despite what the Complainant claims, the agreements to which the Complainant points do not contain any terms that explicitly relate to the domain names in dispute.
The Q1 domain names
With respect to the two ‘Q1 domain names' the Complainant says that the Respondent was not authorised or licensed to use its trademarks in the website of <q1resort.com>. (The Panel notes that those marks did not extend to services of accommodation, letting or reservations, the business of the Respondent). Presumably this is also the basis for the Complainant's claim with respect to the other Q1 domain name, <q1goldcoast.net>.
In reply, the Respondent says that the Q1 domain names were registered with the approval of the Complainant as other domain names were registered with its approval pursuant to the agreement in writing of September 22, 2005. There was no agreement in writing about the Q1 domain names, but what happened, it is said, is that a company in the Stella Group entered into an oral agreement with the Respondent on May 11, 2006 to the effect that the Respondent could register additional Q1 domain names, as it was entitled to do at its own expense under the agreement of September 22, 2005 with respect to other domain names. This it did and that, it claims, is what gives rise to its right or legitimate interest in the Q1 domain names.
However, the Panel notes that these domain names were registered in October 2005 before the oral agreement of May 11, 2006 to which the Respondent refers.
It is of course difficult for the Panel to reach a positive finding that the Respondent's case is an accurate description of what in fact happened. The initial onus is on the Complainant to make out a prima facie case that the Respondent has no right or legitimate interest in the domain names, after which the onus shifts to the Respondent to show on the balance of probabilities that it does have such a right or legitimate interest.
Applying those tests, the Panel is unable to find that the Respondent has no rights or legitimate interests in respect of the Q1 domain names and finds that, on the balance of probabilities, the Respondent has established rights or legitimate interests in the disputed domain names. The reasons why the Panel reaches that conclusion are as follows.
Firstly, the nature of the relationship between the Respondent and the Complainant (and its predecessors) suggests that it is more likely than not that the domain names were registered in that connection.
Secondly, one part of that relationship was established by the agreement of September 22, 2005, an agreement between the Respondent and a predecessor of the Complainant. It is clear that the thrust of that agreement was for the Respondent to apply its online bookings system for the benefit of the Complainant's resort properties, for which the Respondent would earn 4.4% commission on all bookings obtained. Clause 9 of the agreement provides that:
“Domain names that are purchased by i4U [the Respondent's business name] are purchased at the expense of i4U. Ownership of the domain names purchased by i4U will be retained by i4U.”
The only meaning that can be given to that clause, in the context of the agreement as a whole, is that if the Respondent wanted to earn more commission by enticing holiday makers by means of those other domain names, in addition to those already obtained and paid for by the Complainant, it could register and use them, pay for them itself and own them, even after the agreement came to an end.
If that was the foundation of the arrangement between the parties, it seems more likely than not, although obviously not conclusive, that when, eight months later, the Q1 resort had opened and the parties did a similar deal with respect to that establishment, they would have included a similar incentive for the Respondent to the one they had already agreed for 19 other resorts. There is nothing surprising about that. Indeed, it would have been odd had the parties not reached such an agreement with respect to the Q1 resort when they had already reached the same agreement about 19 other resorts.
The third reason why the Panel has reached the conclusion it has on this issue is that both parties filed supplementary submissions in this matter. The Respondent's allegations about the alleged oral agreement of May 11, 2006 were set out in detail in its Response and, although the Complainant had the opportunity of presenting its denial or version of the alleged agreement, it did not do so. The Panel therefore has only the unchallenged evidence of the Respondent on this issue.
Those matters tilt the scales in favour of the Respondent and the Respondent has therefore shown that it is more likely than not that it has a right or legitimate interest in the Q1 domain names.
The Circle on Cavill domain names
Such a finding is also more consistent with what is suggested by the evidence in relation to the ‘Circle on Cavill' domain names and the ‘other domain names'.
The Complainant makes a similar allegation about the Circle on Cavill domain names as it does about the Q1 domain names: namely that the Complainant did not give the Respondent permission to register them.
The Respondent says in reply that on April 11, 2007 a similar oral agreement was entered into as that of May 11, 2006 and provides details of the 8 people attending when the agreement was reached. The Respondent further alleges that the thrust of the agreement was that the Respondent would register its own Circle on Cavill domain names and that subsequently it was actively encouraged to do so and worked with the Complainant in a co-operative manner.
Again, it is noted that the Complainant has not denied in its supplementary filing that such an agreement was reached or that any such meeting took place.
The conclusion must be, for reasons already given, that it cannot be said that the Respondent has no right or legitimate interest in the Circle on Cavill domain names and that, on the balance of probabilities, the Respondent has such a right or legitimate interest.
The other domain names
Even if the Complainant could establish the common law trademarks contended for, the Panel would conclude that, on the balance of probabilities, the Respondent has a right or legitimate interest in the other domain names. The agreement in writing of September 22, 2005 clearly contemplates that such domain names will be registered. For this and the other reasons given above, the Panel finds that the Respondent has a right or legitimate interest in the domain names at issue.
The Panel is reinforced in this conclusion by reference to other domain names which are not directly the subject of this dispute but which ‘fill out' the likely picture of the relationship between the parties (discussed in Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link, WIPO Case No. D2008-1149).
F. Registered and Used in Bad Faith
For similar reasons to those set out above, the Panel would not find that the disputed domain names were registered or have been used in bad faith. There is little, if any, evidence before the Panel that the Respondent registered the disputed domain names to trade on the fame of the Complainant's marks (to the extent that the Complainant has established such rights). Rather, the evidence indicates that the disputed domain names were registered and used by the Respondent in connection with its business of providing and servicing websites relating to the on-line booking of accommodation, for the mutual benefit of the Complainant in earning letting and management fees and the Respondent in earning commission.
G. Reverse domain name hijacking
The Respondent requests a finding of reverse domain name hijacking against the Complainant. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
A finding of reverse domain name hijacking may be made where a complainant knew of a respondent's unassailable rights or legitimate interests 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. Limited., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
In this case, the Complainant is a large commercial entity and is represented by counsel. It might be argued that the Complainant should have known that the Respondent had at least a legitimate interest in the disputed domain names and that the commercial disagreement between them was not a basis for filing a Complaint under the Policy.
The evidence provided by both parties also tended to demonstrate to the Panel that the parties, and interests associated with both of them, had indeed had a business relationship which concerned, among other things, the registration and use of domain names for the purpose of accommodation bookings. This material included the three agreements referred to by both parties, and various correspondence between them.
However, the Panel does not make a finding of reverse domain name hijacking in this case. Principally, this is because the evidence presented by the parties was particularly convoluted and in various parts equivocal, as noted in the discussion above. It may be that this uncertainty itself gave the Complainant a false sense that it might succeed, but that is not sufficient for a finding on this ground. As such, the Panel finds it difficult to reach a positive conclusion on the evidence that the Complaint was brought in bad faith. Accordingly, the Panel declines to find reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
The Honourable Neil Anthony Brown QC
Dated: October 10, 2008