The Complainant is Aussie Car Loans Pty Ltd of Shailer Park, Queensland, Australia, represented by Axis Legal Pty Ltd, Australia.
The Respondent is Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), of Woolloongabba, Queensland, Australia, represented by Toogoods Solicitors, Australia.
The disputed domain names <aussieautoloans.net>, <aussiebikeloans.com> and <aussieboatloans.com> are registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. That day the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names and Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent, under its former name of Wilson and Wilson Accountants, 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 October 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2008. On October 30, 2008 the Respondent requested an extension of time to file the Response. On the same date the Center invited the Complainant to comment on that request. After receiving no comment from Complainant with regard to said request, the Center on November 3, 2008 granted an extension of time to file the Response, until November 17, 2008. The Response was filed with the Center on November 17, 2008.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 27, 2008. 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.
On November 18, 2008, the Complainant submitted an unsolicited submission. In acknowledging receipt that same day, the Center referred to paragraphs 10 and 12 of the Rules and noted that it will be in the sole discretion of the Panel to determine whether to consider and/or admit this.
All three disputed domain names were registered on July 9, 2000 in the former name of the Respondent, Wilson and Wilson Accountants.
The disputed domain names are being used by a competitor of the Complainant, a company called Aussie Bike Auto & Boat Loans Pty Ltd ACN 091 467 515 (“ABABL”). The Respondent is ABABL's accountant. Its address is the registered office address of ABABL.
On February 4, 2008, the Complainant initiated proceedings in the Federal Court of Australia against ABABL alleging, inter alia, that ABABL's use of the disputed domain names constitutes trade mark infringement, passing off and breaches of sections 52 and 53(c) of the Trade Practices Act, 1974.
One issue in those proceedings, as here, is whether the Complainant has common law trade mark rights in Australia in the names “Aussie Car Loans”, “Aussie Auto Loans”, “Aussie Boat Loans”, and “Aussie Bike Loans”.
In those proceedings, the Complainant relies on the following Australian registered trademarks and it appears also to rely on them here:
Nos. 904803, AUSSIE AUTO LOANS “WE'LL BEAT THE BANKS!” and 904804 AUSSIE BIKE LOANS “WE'LL BEAT THE BANKS!” (composite marks), both registered with effect from February 25, 2002;
Nos. 849580 and 916434, AUSSIE BOAT LOANS “WE'LL BEAT THE BANKS!” (composite marks), registered respectively with effect from September 7, 2000 and June 15, 2002;
Nos. 897800 AUSSIE CAR LOANS (word mark) and 972979 AUSSIE CAR LOANS (composite mark), registered respectively with effect from December 12, 2001 and October 3, 2003; and
Nos. 760108 and 916433, AUSSIE CAR LOANS “WE'LL BEAT THE BANKS!” (composite marks), registered respectively with effect from April 21, 1998 and June 15, 2002.
In the court proceedings, ABABL has put in issue the validity of those registered marks and has foreshadowed a cross claim (by leave) disentitling the Complainant from remaining registered as their owner.
In these administrative proceedings, the Complainant has provided details of lapsed or pending registrations for AUSSIE AUTO LOANS, AUSSIE BOAT LOANS and AUSSIE BIKE LOANS and of registered trade mark No. 982347 AUSSIE AUTO SEARCH (composite mark), registered with effect from December 17, 2003. However, it does not assert that it has registered rights in any of the lapsed or pending marks and does not make any express reliance on mark 982347.
The Complainant says the disputed domain names are identical to its (unregistered) AUSSIE AUTO LOANS, AUSSIE BOAT LOANS and AUSSIE BIKE LOANS marks and that the domain name <aussieautoloans.net> is furthermore confusingly similar to its (registered and unregistered) AUSSIE CAR LOANS mark. It is not clear whether the Complainant is also contending that the disputed domain names are confusingly similar to its various AUSSIE [AUTO][BOAT][BIKE] and [CAR] LOANS “WE'LL BEAT THE BANKS!” marks.
The Complainant further says that the Respondent has no rights or legitimate interest in the disputed domain names, which were registered and are being used in bad faith.
The Response was submitted on behalf of the Respondent and on behalf of ABABL. It denies the Complainant's contentions and seeks a finding of Reverse Domain Name Hijacking.
Under paragraph 4(a) of the Policy, the Complainant must prove, in respect of each disputed domain name, that each of the following three elements is present:
(a) the domain name is identical or confusingly similar to the Complainant's trademark;
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The foundation of any claim for relief under the Policy is accordingly the need for the Complainant to demonstrate, to the satisfaction of the Panel, that, as at the time of the filing of the Complaint, it has rights in a trademark, whether at common law or through registration.
The Rules, paragraph 18(a) provide:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
The legal proceedings brought by the Complainant in the Federal Court of Australia are not brought against the Respondent in this administrative proceeding but against the user of the disputed domain names, ABABL, the Respondent's client for accountancy services.
At the heart of the court proceedings lies the contested issue of whether the Complainant has common law trademark rights in Australia in the names “Aussie Car Loans”, “Aussie Auto Loans”, “Aussie Boat Loans”, and “Aussie Bike Loans”, the very marks on which the Complainant explicitly relies in this administrative proceeding. Insofar as the Complainant's registered marks are also relied on in this administrative proceeding, their validity is also in issue in the court proceedings and the Complainant's entitlement to continue to be registered as their owner is foreshadowed to be in issue in a cross-claim to be filed (with leave) in those court proceedings.
These considerations lead this Panel to conclude that, despite the different respondents to the two proceedings, the court proceedings fall within the description of “any legal proceedings (…) in respect of a domain-name dispute that is the subject of the complaint” within the meaning of the Rules, paragraph 18(a).
Should this Panel suspend or terminate this administrative proceeding or proceed to a Decision? To proceed to a Decision is in this Panel's view out of the question, since the issue of ownership of the very same trademark rights claimed by the Complainant will be determined by the court, which is in a much better position to determine that issue than this Panel, since the Panel, unlike the court, is confined to a consideration of the written material submitted by the parties and cannot have the benefit of hearing witnesses examined and cross examined on oath. Besides, comity alone militates in favour of paying deference to the decision of the court where the very issue that is fundamental to this administrative proceeding is to be determined.
In deciding between suspension and termination, the Panel is swayed by the evidence of the Respondent that it was always ABABL's intention that it should be the registrant of the disputed domain names and that the Respondent was named as the registrant through administrative error (Response, Annexure 2). The Panel is also mindful that UDRP proceedings are intended to be expedited, and that suspensions pending the outcome of court proceedings (which may themselves be of an indeterminate or lengthy nature) are generally not considered desirable.
Further, the Respondent's solicitors' agent wrote to the Complainant on October 30, 2008 proposing inter alia that, if the disputed domain names were unlocked, the Respondent would transfer their registrations to ABABL so as to ensure that the domain names can be dealt with in the Federal Court proceedings since the respondent in that matter would then also be the registrant of the domain names. Although that proposal was not accepted, termination of this proceeding pursuant to the Rules paragraph 18(a), will afford the Respondent an opportunity to follow that course and enable the Federal Court to resolve all issues between the real parties to the dispute.
Accordingly, the Panel believes that the appropriate course in this case is for the Panel to terminate this administrative proceeding pursuant to the Rules, paragraph 18(a), without expressing a view as to the respective merits and without prejudice to any filing of a future complaint under the Policy that may be thought appropriate after the referred-to court proceedings have concluded. See Family Watchdog LLC v. Lester Schweiss, WIPO Case No. D2008-0183 and Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.
For all the foregoing reasons, the Administrative proceeding is terminated pursuant to the Rules, Paragraph 18(a).
Alan L. Limbury
Dated: December 9, 2008