WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Careflight Australia Limited v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / CareFlight Australia Limited
Case No. D2016-1624
1. The Parties
The Complainant is Careflight Australia Limited of Northmead, New South Wales, Australia, self-represented.
The Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / CareFlight Australia Limited of Westmead, New South Wales, Australia, represented by Macpherson Kelley, Australia.
2. The Domain Name and Registrar
The disputed domain name <careflight.org> is registered with Bottle Domains (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2016. On August 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After several reminders, on August 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that “[G. W.]” is listed as the registrant and providing the contact details. On August 18, 2016, the Center sought clarification of the registrant of the disputed domain name from the Registrar. On August 21, 2016, the Registrar provided a second, concise response. On August 22, 2016, the Center requested further clarification from the Registrar. On August 22, 2016, the Registrar replied confirming that the registrant of the disputed domain name is:
CareFlight Australia Limited
Redbank Road Entrance
With the named individual contact being one “[G. W.]”.
On August 22, 2016, the Respondent’s representative provided an unsolicited communication purporting to identify the registrant of the disputed domain name. The Center sent an email communication to the Complainant on August 24, 2016 inviting the Complainant to reflect the above-mentioned name as the Respondent and to submit a corresponding amendment to the Complaint. The Complainant filed the first amended Complaint on August 25, 2016. In response to the Respondent’s further email communication on August 29, 2016, correcting the details of the registrant of the disputed domain name made in the Respondent’s previous, unsolicited email, the Complainant submitted the second amended Complaint on September 5, 2016.
The Center verified that the Complaint together with the first and second amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2016. The Response was filed with the Center on September 28, 2016.
The Response sought to have the dispute decided by a three-member Panel. In due course, the Respondent nominated its list of proposed appointees. Despite several reminders from the Center, however, the Complainant failed to nominate any members or pay the required fee. Instead, the person nominated in the Complaint as the representative of the Complainant contacted the Center on October 20, 2016, to advise that “Lifeflight Australia Limited” had changed its legal representatives.
After an extension of time being granted, on November 2, 2016, the newly appointed legal representatives for the Complainant (or at least “Lifeflight Australia Limited”) emailed the Center to advise that they were no longer able to act for the Complainant.
On November 10, 2016, the Respondent filed an amendment to the Response deleting its request for a three-member Panel.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 21, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Response has been provided by Careflight Limited.
Careflight Limited was incorporated in 1986 as a public benevolent institution and registered charity. Since that date, it has been providing aeromedical retrieval services and associated research and training services. At that time, it began using the trademark “Careflight”.
In 1993, Carefight Limited granted the then Gold Coast Helicopter Rescue Service Limited the right to use the name “Careflight Queensland”.
On August 27, 1999, Careflight Limited registered the disputed domain name. It has used the disputed domain name since that date in connection with the services it provides. It has continued to do so after the transfer of the disputed domain name in 2006 referred to below.
In February 2002, the Gold Coast Helicopter Rescue Service Limited changed its name to Careflight Queensland Limited (“CFQld”).
On March 31, 2006, Careflight Limited and CFQld incorporated the Complainant. Careflight Limited and CFQld are the two shareholders in the Complainant. There were a complicated set of arrangements set in place in connection with this:
(a) Careflight Limited transferred to the Complainant the disputed domain name and the trademarks Careflight Limited had already registered or applied for;
(b) CFQld transferred to the Complainant the trademarks and domain names that CFQld had registered at that date;
(c) there were licences back from the Complainant to Careflight Limited and CFQld of the various assets they had transferred or assigned to the Complainant;
(d) the parties entered into a Brand Custodian Agreement setting out terms about their intentions for the use of the trademarks; and
(e) a shareholders agreement setting out the terms on which the Complainant could operate and, in particular, decision making processes.
On July 1, 2016, CFQld changed its name to Lifeflight Australia Limited.
5. Discussion and Findings
A. Identical or Confusingly Similar
There is no dispute between the Complainant and Careflight Limited that the Complainant is the owner of trademark rights in CAREFLIGHT or that the disputed domain name is identical to the Complainant’s trademark.
Nonetheless, the Complaint must fail.
B. Rights or Legitimate Interests
Following the second clarification provided by the Registrar on August 22, 2016 and further confirmed by the WhoIs record provided by Domain Central Support, the Panel notes that the disputed domain name is already registered in the Complainant’s name.
It would appear that what those who have caused the Complaint to be filed really seek to achieve is to change the administrative, technical and billing contacts in which the disputed domain name is registered to those of persons associated with Lifeflight Australia Limited (i.e., the Queensland entity participating as one of the two shareholders in the Complainant).
The party which has submitted the Response, Careflight Limited, claims that the action of initiating a Complaint under the Policy requires a Board resolution of the Complainant, passed by both shareholders: Careflight Limited and Lifeflight Australia Limited. Careflight Limited says that no such board resolution has been passed.
The Complainant, or those who submitted the Complaint on its behalf, have not sought to respond to Careflight Limited’s claim.
Secondly, Careflight Limited claims that it is licensed under its licence agreement from the Complainant to use the disputed domain name in the manner in which it uses the disputed domain name. Further, it claims that Lifeflight Australia Limited is not licensed under the terms of its licence from the Complainant to use the disputed domain name.
Once again, the Complainant, or those who submitted the Complaint on its behalf, have not sought to respond to Careflight Limited’s claim.
What is apparent from this summary of the contentions and the documents submitted by the parties is that there is plainly a dispute between the shareholders in the Complainant about the rights and use of the disputed domain name. That is a dispute amongst themselves. It is not something which typically falls within the scope of the Policy which concerns the abusive registration and use of domain names by third parties to take advantage of someone else’s trademark rights.
On the record as it stands in this administrative proceeding, the disputed domain name is in fact registered in the name of the Complainant. Furthermore, there are unrebutted, plausible claims by one of the shareholders in the Complainant that:
(1) the Complaint has been filed without appropriate internal authorization;
(2) Carefight Limited is licensed by the Complainant to use the disputed domain name in the way it has in fact been using the disputed domain name since the disputed domain name was transferred to the Complainant.
In these circumstances, the dispute in this administrative proceeding falls well outside the scope of the disputes which the Policy seeks to address. Moreover, it appears therefore that, at a minimum, Careflight Limited (while apparently not the registrant of the disputed domain name) has a right or legitimate interest to continue using the disputed domain name under licence from the Complainant in the way it has been doing since 2006.
C. Registered and used in bad faith
In the circumstances, there is no value in considering whether the third requirement under the Policy has been satisfied as the Complaint must fail in any event.
D. Reverse Domain Name Hijacking
Careflight Limited appears to seek a ruling that the Complainant, or those who have initiated the Complaint, have engaged in reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Panel is greatly concerned by the conduct of those who have initiated the Complaint in this proceeding. The matter of most concern is the failure of the Complainant to make full and frank disclosure about the relationship of the parties involved in the dispute. In particular, there was partial reference to the transfer of trademarks and domain names to the Complainant, but not full disclosure of the complicated documentary structure set in place around that transfer. This conduct was all the more egregious given the Complaint sought some sort of expedited determination on the grounds that the “respondent’s” conduct was causing, or had the potential to cause, confusion of the public. Furthermore, those who initiated the Complaint did not seek to correct the record or justify their position in light of the more extensive disclosure made in the Response, notwithstanding the certification that information contained in the Complaint was complete and accurate to the best of the Complainant’s knowledge.
It is not clear that the Complainant can be found to have engaged in reverse domain name hijacking if, as Careflight Limited contends, the Complaint was brought without proper authority. The Panel considers, however, that the conduct of those who have initiated the Complaint on the Complainant’s behalf have done so in bad faith.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: December 5, 2016