WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stella IP Pty Ltd. v. Paul Klerck, Info Link, Info-link
Case No. D2008-1149
1. The Parties
The Complainant is Stella IP Pty Ltd., Surfers Paradise, Queensland, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Paul Klerck, Info Link, Info-link, Robina, Queensland, Australia, represented by Irish Bentley Lawyers, Australia.
2. The Domain Names and Registrars
This dispute concerns 14 domain names. The following 13 disputed domain names are registered with Wild West Domains, Inc.:
The 14th disputed domain name <broadbeachonthepark.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2008. On July 29, 2008, the Center transmitted by email to Wild West Domains, Inc. and Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue.
On July 29, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent (‘Info-link’) is listed as the registrant of <broadbeachonthepark.com> and providing the contact details. On July 31, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent (‘Info Link’) is listed as the registrant of the other disputed domain names and providing the contact details.
On July 31, 2008, the Center emailed the registrar Wild West Domains, Inc. to confirm that a number of the disputed domain names, that were otherwise set to expire on August 3, 2008, would remain locked for the duration of these proceedings. (The effect of those domain names remaining ‘locked’ was that they would not expire while these proceedings remained on foot.) On July 31, 2008, Wild West Domains, Inc., confirmed that those domains would remain so locked, subject to action being taken by one of the parties to ensure that those domains remained active. On August 1, 2008, the registrar emailed the Center and the parties to note that the domain names concerned had been renewed for a period of one year, and would remain on registrar lock pending the outcome of these proceedings.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 4, 2008. The Center verified that the Complaint together with the amendment to 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 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2008. The Response was filed with the Center on August 26, 2008.
The Center appointed James A. Barker, The Honourable Neil Anthony Brown QC and Simon Minahan as panelists in this matter on September 4, 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.
On August 28, 2008, the Respondent filed further submissions in connection with this case. The Complainant also made a supplemental filing on September 5, 2008. The Respondent filed further submissions on September 9 and 17, 2008.
4. Factual Background
The following facts are not contested.
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 Respondent (Info Link IT Pty Ltd, named as ‘Info Link’ and ‘Info-link’ in these proceedings) is also incorporated in the State of Queensland, Australia. The Respondent’s business is website design, web site development and search engine promotion. The Respondent maintains a website at “www.infolinkit.com.au”.
Twelve of the disputed domain names were registered on July 29, 2004. The two remaining domain names were respectively registered in February and August 2004.
5. Parties’ Contentions
The following claims are summarised from the Complaint.
The Complainant belongs to a group of companies known as the Stella Group. The Complainant is the entity that holds, licences and maintains the Stella Group’s trademarks.
The Stella Group is Australia’s largest vertically integrated travel business and second largest accommodation provider. The Stella Group manages, but for the most part is not the owner of, real property in major cities as well as popular vacation areas. The large majority of the properties operated by the Stella Group are located in the Gold Coast and the Sunshine Coast, in Queensland, Australia.
The Stella Group’s properties are categorized into one of three brands: ‘BreakFree’, ‘Mantra’, and ‘Peppers’. (The Complainant provides evidence of having registered and pending variants of trademarks relating to each of those brands.) The properties to which the domain names relate are either ‘Mantra’ or ‘BreakFree’ properties.
The Stella Group had a commercial relationship with the Respondent, Paul Klerck. However, the Respondent, without permission from the Stella Group, registered the disputed domain names which contain the Complainant’s trademarks, which are similar to the Stella Group’s own domain names, and developed websites to compete with the Stella Group websites.
A company of the Stella Group allowed the Respondent to refer potential customers of the Complainant for several years, for example as part of an affiliate program. Neither the Complainant nor the Respondent has evidence of this agreement. But if any terms applied to the relationship, they are most likely to be the terms of the Stella Group’s standard affiliate agreement which existed at that time.
In July 2007, the relevant entity of Stella Group became unhappy with the Respondent for registering the disputed domain names and having misleading content on associated websites. The Complainant sought to resolve this by entering into a memorandum of understanding with the Respondent, but the Respondent refused to agree to it. At no stage did the Complainant authorise the Respondent to register the disputed domain names.
The disputed domain names are all related to properties managed by the Complainant. The Complainant has acquired common law trademark rights in relation to those properties. The Complainant has established secondary meaning in the relevant resort names. 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 trademark assignment deed. (The Complainant did not provide evidence of that deed in these proceedings.)
The disputed domain names are identical or confusingly similar to the Complainant’s common law trademarks.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not consented to the Respondent’s use of the domain names. The Respondent cannot have a legitimate interest in the disputed domains since it registered and used them with intent to trade off the fame of the Complainant’s common law marks.
The Respondent also registered and used the disputed domain names in bad faith. The Respondent was seeking to divert Internet traffic looking for the official Stella websites, and is seeking to trick customers into believing that they are dealing directly with the Complainant or the relevant resort. The Respondent has engaged in a ‘pattern of conduct’ demonstrating bad faith. As a contractor of the Complainant’s related entities, the Respondent knew that the disputed domain names would resemble those already used by the Complainant.
There have been some negotiations between the parties to resolve this dispute which have been unsuccessful.
The following is summarised from the Response.
Since around 2001 the Respondent has had commercial relationships with the Stella Group, S8 Limited, and BreakFree Holidays, which appear to be related. During the course of those relationships the Respondent was engaged as an affiliate, website developer and search engine optimizer.
The Complainant has failed to provide evidence of which rights (if any) it acquired to the properties subject to this Complaint. It is uncertain if the Stella Group has any common law rights to the resort names.
From 2002 until 2004, the Respondent (Paul Klerck, now of Interactive Entertainment Australia Pty Ltd) entered an agreement with BreakFree to create an affiliate program, develop websites, perform search engine optimization, and register domain names. (The Respondent provides a copy of that agreement.) This contradicts the Complainant’s claim that there is no evidence of such an agreement and that the Complainant’s standard affiliate agreement would have applied.
In July 2004, the Respondent entered into an agreement with S8 Limited, to develop an affiliate program and develop, register, and create domain names that related to S8’s resorts on the Gold Coast and Sunshine Coast. (The Respondent was unable to locate a signed copy of that agreement but provided an unsigned copy.)
The disputed domain names were registered pursuant to the agreement between S8 Limited and the Respondent. The properties related to the domain names were originally owned by S8 Limited. (The Respondent provided a copy of a website at ‘s8corp.com.au’ which lists those properties as part of S8’s ‘stable of properties’.)
In early 2006, representatives of the Stella Group contacted the Respondent. Among those contacts was an email (evidenced by the Respondent) relating to commissions that the Stella Group would pay to the Respondent for referrals ‘across the Stella Resort Group network’. It included the statement that ‘you [the Respondent] will be building additional, individual property websites under your own domains similar to the properties’. This email contradicts the Complainant’s claims that the Respondent registered the domain names without the Complainant’s permission and contradicts a large degree of the Complaint.
Around September 2006, it appears that the Stella Group acquired S8 Limited. (Although an unsigned statement provided by the Respondent, from a former S8 executive, suggests that S8 was acquired in January 2007 by ‘MFS Limited’, and then, around May 2007, S8 Limited and the Stella Group merged.)
A dispute between the Complainant and Respondent first arose in July 2007. The Respondent refused to agree to an MOU proposed by the Complainant because it stated, among other things, that the disputed domain names were to be transferred to the Stella Group.
In relation to the elements of the Policy, the Complainant has no registered trademarks relating to the domain names. As the relevant resorts were originally managed by S8 Limited, any common law trademarks would need to be assigned to the Complainant for it to have rights to them. The Complainant has provided no such evidence. The Complainant provides no evidence of the ‘confidential common law Trademark Assignment Deed’ on which it seeks to rely, nor any particulars of what that deed contains. The Complainant cannot rely on such a relevant document without providing further particulars to allow the Respondent to respond.
The Respondent also has rights and legitimate interests in the disputed domain names, as they have been used by the Respondent since 2004 for a bona fide offering of accommodation packages for rooms provided by S8 Limited and (later) the Complainant. Both S8 Limited and its successor, the Complainant, have variously consented to the Respondent’s registration and use of the disputed domain names.
Finally, the disputed domain names were not registered or used in bad faith. The Respondent registered and has used these domain names in connection with a bona fide offering of services. Both S8 Limited and the Complainant expressly and impliedly allowed the Respondent to register the disputed domain names.
The Respondent seeks finding of reverse domain name hijacking, on the basis that the Complainant brought this Complaint as an inexpensive alternative to commercially purchasing the disputed domain names. The Respondent has incurred significant expense in recovering archived and deleted correspondence from up to four years ago as evidence in these proceedings. The Complainant should have been on notice that the Respondent was not acting in bad faith.
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.
For the reasons that follow, the Panel has found that the Complainant has failed to establish any of these elements. It would usually be necessary for the Panel to make such a finding in relation to one element only. The Panel proceeds to consider each ground nevertheless, on the basis that the discussion is relevant to the Respondent’s request for a finding of reverse domain name hijacking. These grounds are discussed below, immediately following a consideration of the identity of the Respondent, and the Panel’s treatment of the supplemental filings.
A. Identity of the Respondent
Paragraph 1 of the Rules provides that the Respondent “means the holder of a domain-name registration against which a complaint is initiated.” Previous panel decisions indicate that ‘the holder’ of a domain name must be a single entity in-fact. (See e.g. Regal Removals v. Gary Bradshaw, WIPO Case No. D2003-0832.) This means that a number of ‘different’ respondents or aliases might be named in a complaint, as long as there is a single underlying entity which holds the domain name registration. (See e.g., 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 is p a/k/a Amjad Kausar, WIPO Case No. D2005-0635.)
For the purpose of these proceedings, the Panel has accepted that that single entity is the named Respondent, Paul Klerck. Paul Klerck appears to be the person responsible for the registration and use of the disputed domain names, from the date they were registered until the date of this dispute. It follows that nothing turns on the Complainant’s point (made in the Complaint and its supplemental filing) that none of ‘Info Link’, ‘InfoLink’, nor ‘Info-Link’ is a legal entity. It appears that the disputed domain names were registered in the name of ‘Info Link’ (and its trivial variants) as a summary reference to the Respondent’s (Paul Klerck’s) business name in 2004.
B. Supplemental filings
Both the Complainant and the Respondent made supplemental filings in this case.
Neither the Policy nor the Rules explicitly provide for supplemental filings to be made. A Panel has a discretion to admit or invite further filings under the paragraph 10(a), (b) and (d), and paragraph 12 of the Rules.
In this case, the supplemental filings were brief and, in the Respondent’s case, submitted shortly after the due date for the Response. As such, and to allow fairness to both parties, the Panel considered those submissions.
C. Identical or Confusingly Similar
Rights in a mark
The first thing which the Complainant must prove under paragraph 4(a)(i) of the Policy is that it relevantly ‘has rights’ in a trademark. The Panel finds that the Complainant has not proven its case under this element of the Policy, for the following reasons.
The Complainant does not argue that it has relevantly registered trademark rights. The Complainant refers to a number of registered trademarks that it owns (‘BreakFree’, ‘Mantra’, and ‘Peppers’), but does not rely on those particular marks in these proceedings.
Rather, the Complainant seeks to rely on common law trademark rights.
The Complaint is vague about what those common law marks are. It refers to having ‘established secondary meaning in these resort names’ and common law rights in ‘various trademarks’ without clearly identifying them. The Complainant provided a list of the properties it manages and what it says are the corresponding domain names registered by the Respondent. For example, the Complainant says it manages ‘BreakFree Aloha’. It claims that the corresponding domain name is <alohaapartments.net>. The Complainant does not clearly identify whether it claims a common law mark in either the whole of the resort name (‘BreakFree Aloha’), part of the resort name (‘Aloha’), or the phrase relevantly reproduced in the domain name (‘alohaapartments’), or all of them.
This vagueness might in itself be sufficient for the Panel to deny the Complaint. Under the Policy the Complainant must prove its case. Proving its case requires, as a first step, a sufficient identification of the marks on which the Complainant relies. But the Complainant has not clearly identified those marks.
It may be that the Complainant is at least claiming common law trademark rights corresponding to the name of each of the resorts that it manages (e.g. ‘BreakFree Aloha’). The Complainant provides a list of those properties, including the date at which the Complainant says it acquired management rights in them, as follows:
December 10, 2001
BreakFree Aruba Beach
December 28, 2002
Mantra Bel Air
October 31, 2002
Mantra Broadbeach On The Park
April 13, 2000
BreakFree Enderley Gardens
May 27, 2005
December 14, 2001
BreakFree Imperial Surf
July 1, 1999
December 18, 1998
June 25, 2001
BreakFree Rays Resort
March 6, 2002
December 16, 2002
BreakFree St Tropez
December 13, 2001
September 16, 2002
(The list provided by the Complainant contained other details, including a description of each property and a corresponding domain name, at which it states is ‘Stella’s official website’. Those domain names included many relevantly identical to the domain names in dispute in this case: including e.g. ‘alohaapartments.com’, <belairresort.com.au>, and <crowntowersresort.com.au>. Those domain names also include others which are different in some degree from the domain names in dispute: including e.g. <arubabeach.com.au> and <mantrabroadbeachonthepark.com.au>.)
However, the Complainant provided little evidence of having common law rights in marks corresponding to the names of these resorts. The Complainant claimed that these rights were assigned to it by a ‘confidential common law Trade Mark Assignment Deed.’ The Complainant did not identify the date on which this assignment took effect, nor any other relevant details of the claimed assignment. Regardless, the Complaint cannot rely on evidence which it conceals from the Panel and the Respondent. 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.
Identical or confusingly similar
Even if the Complainant had clearly identified its claimed marks, and even if it provided concrete evidence to support owning them, it also seems doubtful that the Complainant could establish that all of the disputed domain names are confusingly similar. This question is, of course, speculative for the Panel since the Complainant has not precisely identified its marks.
A related weakness of the Complainant not clearly identifying its claimed marks, is that it provides no real argument to demonstrate how its marks (whatever they are) are confusingly similar to the disputed domain names. Again, this is the Complainant’s burden to prove. This does not mean that a complainant must always make its case in a particular way where the comparison between a mark and a domain name is clear or self-evident. But, for the reasons outlined above, the comparison in this case is less than clear.
For example, the Complainant suggests that the signage for the relevant properties includes ‘the common law trademark as well as the registered trademark of “BreakFree” or “Mantra”‘ (emphasis added). This might suggest that the common law mark the Complainant claims is separate – for example, that for the resort ‘BreakFree Aloha’, ‘BreakFree’ represents its registered mark, while ‘Aloha’ is its common law mark. Alternatively, it might suggest that the Complainant claims a common law mark in ‘BreakFree Aloha’ as a whole. But on either approach, it is not clear in this example that ‘BreakFree Aloha’ or ‘Aloha’ is confusingly similar to the disputed domain name <alohaapartments.net>. There are similar ambiguities in the Complaint in relation to each of the names of the resorts listed above.
D. Rights or Legitimate Interests
Under paragraph 4(c)(i) of the Policy, the following circumstance, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Respondent claims that it has such a legitimate interest. It bases this interest on its use of the disputed domain names since 2004 in connection with websites offering accommodation packages provided by S8 Limited, BreakFree and by the Complainant itself.
There is some ambiguity in the evidence about the relationship between S8 Limited, BreakFree and the Complainant. The Respondent admits these ambiguities. But it provides evidence that S8 Limited had (prior to this dispute) an interest in the properties to which the disputed domain names relate. The Respondent provided an unsigned copy of an agreement between itself and S8 Limited according to which the Respondent registered the disputed domain names. The Respondent also provided a signed statement from an employee of S8 Limited (employed as ‘Product Coordinator’ between May 2006 and January 2007). That statement says that in that period S8 Limited had management rights to the relevant properties which the Complainant says it now manages. The statement says that S8 Limited was aware that all of the domain names (with the exception of <broadbeachonthepark.com>) were registered and used by the then business of the Respondent, and that S8 Limited had permitted that use in connection with its affiliate program. The Panel also notes that this statement refers to domain names (<equinoxresort.net> and <imperialsurfresort.com>) which the Complainant says, in its supplemental finding, were not addressed in the Response.
(The Respondent provided an unsigned statement relevantly to similar effect, purportedly by the Chief Financial Officer/Chief Executive Officer of S8 Limited. Among other things, that statement indicates that S8 Limited was merged with the Stella Group around May 2008. In its supplemental filing, the Complainant indicates that the deponent to this statement refused to sign it, because it contained ‘incorrect information’. The Complainant did not identify which information in this unsigned statement it considered to be incorrect. However, since it was not signed, the Panel has not taken this statement into account.)
The evidence is less clear about whether the Respondent had a particular authority to register the disputed domain name <broadbeachonthepark.com>. In relation to this domain name (as well as <enderleygardens.com>) the Respondent notes that the Complainant claims to have acquired management rights of the related property after the Respondent registered the disputed domain name. Regardless, the preponderance of the evidence suggests that the domain name was registered as part of the Respondent’s legitimate business concerning accommodation affiliate programs.
The Respondent also provides evidence of agreements (including emails) between itself and the Complainant and its predecessors, for the development of websites and the registration of accommodation-related domain names. While this evidence is generally less specific in relation to the particular domain names at issue, it is consistent with the case which the Respondent puts as to its business and associated legitimate interests.
In contrast with this evidence, the Complainant’s is vague and incomplete. Important aspects of the Complainant’s evidence are also flatly contradicted by evidence provided by the Respondent. For example, the Complainant stated that ‘a company in the Stella Group allowed the Respondent to refer potential customers to Stella Group websites’, but that neither it nor the Respondent had evidence of that agreement. However, the Respondent provided evidence of such an agreement. The Complainant’s claims are further undermined by its lack of detail about when it acquired the relevant rights it asserts, which is critical to the issue of whether the Respondent had rights or legitimate interests when the disputed domain names were registered.
The totality of the evidence provided by the Respondent, and the weaknesses in the evidence provided by the Complainant, strongly indicates that the Respondent has established rights and legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. In particular, that evidence indicates that the Respondent registered and used the disputed domain names in connection with its business carried out for the Complainant and, previously, for other entities. To the extent there may be a broader dispute between the parties about the nature of that relationship, it is not one within the scope of the Policy to resolve.
E. 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. The registration of the disputed domain names in 2004 seems to have occurred according to a commercial agreement between the Respondent and S8 Limited, and other entities concerned with on-line accommodation bookings. This is strong evidence that the Respondent acted in good faith in registering the disputed domain names. This evidence is not contraverted by the evidence provided by the Complainant.
F. 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 the complainant knew of the 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. Ltd., 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. 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 Complainant has failed to establish any other elements required under paragraph 4(a) of the Policy. The Panel is unanimous in finding no element of the Complainant’s case convincing. The Panel is also concerned that the Complainant appears to have provided only part of the story, even for evidence which should clearly have been within the Complainant’s own knowledge. This includes evidence of S8 Limited’s prior relationship with the Respondent – of which the Complainant said nothing – and which it could and should have made available to its counsel for presentation to the Panel in the appropriate form.
By comparison, the Respondent’s case generally is meticulous and detailed.
This does not mean that the Panel found all elements of the Respondents case satisfactory. In particular, as noted by the Complainant in its supplemental filing, the Respondent sought to provide an unsigned statement by the former CFO/CEO of S8 Limited, and merely referred to it in the Response as ‘the Statement of Craig Chapman’. But if Mr Chapman did not agree and sign the statement, it is no statement at all. This said, a finding of reverse domain name hijacking primarily relates to the conduct of the Complainant in not taking reasonable steps to confirm the case before filing it. Evidence of the Respondent’s subsequent conduct, while it may be relevant to the Panel’s consideration in other respects, cannot be relevant to a consideration of reverse domain name hijacking.
In these circumstances, the Panel makes a finding of reverse domain name hijacking against the Complainant.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
The Honourable Neil Anthony Brown QC
Date: September 18, 2008