WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schark Holdings Pty Ltd and Surf Coast News Australia Pty Ltd v. Nicholas Soames
Case No. DAU2011-0032
1. The Parties
The Complainants are Schark Holdings Pty Ltd. and Surf Coast News Australia Pty Ltd, both of Victoria, Australia, represented by Coulter Roache Lawyers, Australia.
The Respondent is Nicholas Soames of Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <surfcoastnews.com.au> is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2011, the Registrar 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 Complaint, and the proceedings commenced on October 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2011. Due to an unforeseen circumstance at the Center (electrical fire), the Center extended the Response due date to November 20, 2011. The Respondent did not submit a formal response. However, the Center received several email communications from the Respondent.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 1, 2011. 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.
The Panel issued Administrative Panel Order No. 1 on December 7, 2011 (Attached as Annex A to this Decision). The Complainant filed its submission pursuant to this Panel Order on December 9, 2011. The Respondent did not file any submission in reply to the Complainant’s submission.
4. Factual Background
The disputed domain name was registered on August 11, 2005. Schark Holdings Pty Ltd (First Complainant) is the owner of Australian trademark registration No. 1211632 SURF COAST TIMES registered since November 22, 2007 in respect of newspapers and other Class 16 goods. Surf Coast News Australia Pty Ltd (Second Complainant) has published a newspaper under the banner Surf Coast Times since 1998. It also publishes the Bellarine Times. The Second Complainant is authorized to use the SURF COAST TIMES trademark by the First Complainant.
The Complainants claim a circulation of approximately 37,000 covering the Surf Coast region of Victoria with an area of approximately 1560 square kilometers and a population of approximately 25,000 persons. The Complainants have published an online edition of Surf Coast Times from a date which is unclear from the Complaint. The Panel notes however that the first capture of <surfcoasttimes.com.au> by <archive.org> was on April 5, 2006.
No information is available about the Respondent save that he appears to operate a web design business under the name Atmos Media and has an address in the town of Anglesea which is located in the Surf Coast region of Victoria.
According to the Complainants, they first became aware of the Respondent in November 2010 as a result of reports of instances of confusion. The Complainants state that they have encountered many instances of actual confusion amongst sponsors, supporters and advertisers, and cite an instance in September 2011 where, according to the Complainants, the table which they had booked to entertain clients at a sporting function was set with place cards bearing the name "Surf Coast News". The Complainants state that they believe that
"the Respondent has a small following and has only utilized the news services under the domain name www.surfcoastnews.com.au> for a small period of time. The Respondent's website does not feature any paid advertising and we submit has no real legitimate need to use the domain name of www.surfcoastnews.com.au".
On November 24, 2010 a director of the Complainants, Mr. Fred Scharkosi telephoned the Respondent in an attempt to negotiate the transfer of the disputed domain name. The attempt was unsuccessful and the Respondent posted an account of the call on the website at the disputed domain name. Subsequently the Complainants sent a cease and desist letter claiming trademark infringement and seeking relevant undertakings. According to the Complainants the Respondent did not respond to the letter but some time later the Complainants discovered that the disputed domain name was no longer in use and the Respondent's news service had been transferred to another domain name <www.surfcoastdailynews.com.au>, leading the Complainants to believe that the use of the disputed domain name had ceased. The Complainants later discovered, apparently in or about August 2011, that the Respondent had recommenced use of the disputed domain name, directed to a revamped website prominently featuring the words "Surf Coast News". The website to which the disputed domain name directs provides various items of news and information relating to events of interest to residents of the Surf Coast region. It also provides a blog site where comments can be posted.
Having noted the Complainants' statement that it believed that the Respondent had transferred the site to the domain name <surfcoastdailynews.com.au> the Panel visited that site only to find that it directed to the Complainants' website. As indicated, the Panel accordingly requested the Center to issue Administrative Panel Order No. 1.
In Response to this Panel Order, the Complainants advised that on or about September 15, 2011 they discovered that the domain name <surfcoastdailynews.com.au> had become available and decided that "it was best to secure this domain name, in addition to its desire to acquire <surfcoastnews.com.au>.
The Respondent did not reply to the Complainants' further filing.
5. Parties’ Contentions
The Complainants' contentions may be summarized as follows:
- The disputed domain name is substantially the same as the Second Complainant's corporate name and is confusingly similar to its trademark SURF COAST TIMES.
- The Respondent has no real or legitimate need to use the disputed domain name.
- The Respondent's use of the disputed domain name has lead to confusion among members of the public.
- The Respondent has persisted in the use of the disputed domain name notwithstanding that the Complainants' rights in the trademark SURF COAST TIMES and the confusion created by the disputed domain name have been brought to his attention.
- The Respondent has intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the Complainants; name and trademark.
The Respondent has not filed a formal response. He did, however, acknowledge receipt of the Complaint and sent an email to the Center on November 10, 2011 asking:
" Where is the mediation meeting to be held"
In response, the Center advised that the next step in the matter is the filing of the response and that there would be no mediation hearing. On November 16, 2011 the Respondent wrote to the Center stating that he wished to extend the time for filing the Response by two weeks. In reply, the Center asked the Respondent to advise the exceptional circumstances why he was seeking an extension of time. The Respondent did not respond to this communication.
The initial due date for response in this matter was November 16, 2011 but that date was extended to November 20, 2011 due to exceptional circumstances within the Center. The Panel notes that in its communication to the Respondent on November 16, 2011 the Center incorrectly stated the Response date to be November 16, 2011. Nevertheless, the Panel is satisfied that the Respondent had adequate notice that the correct date for response was November 20, 2011 and that the Respondent's failure to file a Response cannot be attributed to the clerical error made by the Center in its communication of November 16, 2011.
The Panel therefore proceeds to determine the matter on the basis of the information contained in the Complaint, the Panel's viewing of the parties’ respective websites and a search of the disputed domain name at <archive.org>. The Panel has also had recourse to its knowledge of the various newspaper titles in use in the state of Victoria.
6. Discussion and Findings
A. Identical or Confusingly Similar
Unlike the UDRP, the Policy provides two bases upon which the first criterion of the Policy may be satisfied, i.e. it provides that a complaint may be based upon either rights in a trademark or rights in a name. Therefore, a complaint may be based on a complainant's rights in its name whether or not it is entitled to claim trademark rights in that name. The rights which attach to a name, such as in this case the Second Complainant's corporate name are, without more, extremely limited. They extend to no more than the right to exist and carry on business under that name. The Complainants have not provided any evidence to support a claim to any additional rights, such as rights which might be acquired by reputation and public recognition of that name. The reputation which the Complainants have established attaches to the trademark SURF COAST TIMES not, on the basis of the evidence before the panel, the name Surf Coast News Australia.
Nevertheless, the Panel accepts that the words "Surf Coast News" are a dominant particular of both the Second Complainant's corporate name and the disputed domain name. In the view of the Panel the omission of the word "Australia" does not serve sufficiently to distinguish, objectively, the disputed domain name from the Second Complainant's corporate name.
The position with respect to the Complainant's trademark SURF COAST TIMES is somewhat different. The words "Surf Coast" form the initial, and substantial, part of both the trademark and the domain name. However, taken as a whole and in the particular circumstances of the newspaper trade the addition, respectively, of the words "Times" and "News" serve to distinguish the two. It is a matter of common knowledge that there is a cohort of words which are commonly used in the titles of newspapers; words such as "Chronicle", "Bulletin", "Advertiser", "Post", "News" and "Times". It is also within the Panel's personal knowledge that in Australia at least, regional newspapers almost invariably include, and commence with, the name of the town or region within which the newspaper circulates. Examples from places within the vicinity of the Surf Coast region of Victoria are: The Geelong Advertiser, The Geelong News, The Geelong Echo, The Geelong Independent, The Ballarat News, The Ballarat Courier, The Bendigo Miner, The Bendigo Weekly and the Bendigo Advertiser and many others. It is arguable therefore that, in the newspaper context, the names Surf Coast News and Surf Coast Times are not confusingly similar. However, it is unnecessary for the Panel to decide that question since the first criterion of the Policy is satisfied on the basis of the Second Complainant's name.
B. Rights or Legitimate Interests
The second element that a Complainant under the Policy must show is that the Respondent has no rights or legitimate interests in the disputed domain name. If a Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests, the onus reverts to the Respondent to displace that prima facie showing, see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. In this case, the Respondent has not filed any response either to the initial Complaint or to the Complainants’ reply to the question asked in the Panel Order. Notwithstanding that however, the Panel must still be convinced that the Complainants have provided sufficient evidence to show that the Respondent does not, on the balance of probability, have any legitimate rights or interests. The onus remains on the Complainant to show that each element of paragraph 4(a) of the Policy is satisfied, see Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036.
The Respondent has owned the disputed domain name since 2005 and has been using it to direct to an active website from a date which is not determined but appears to have been from about August 2010. That website contains items of news and information relating to the Surf Coast region of the state of Victoria. The expression "Surf Coast News" is a natural and apt expression for a publication, whether physical or online, which disseminates news in relation to that area.
As a resident of the Surf Coast area the Respondent may be presumed to have known of the existence and reputation of the Surf Coast Times. That is not to say however, that he would have been aware of the existence, and reputation if any, of the Second Complainant's corporate name Surf Coast News Australia Pty Ltd. It is the expression "Surf Coast News" which is the subject matter of this dispute not Surf Coast Times, so it does not necessarily follow that the Respondent was aware of the subject matter of the dispute either at the time he registered the disputed domain name or the time when he first commenced to use it in the provision of an online news service. It would appear therefore, provided the Respondent's use is bona fide, that the Respondent may satisfy the requirement of paragraph 4(c)(i) of the Policy. It may also be that the Respondent's satisfies paragraph 4(c)(iii) but the evidence is unclear as to whether or not the Respondent's use is "non-commercial". The Complainants state that the Respondent's website does not feature any paid advertising but from the Panel's inspection of the website it does appear that there is some incidental advertising at the site and the reasonable presumption is that the Respondent obtains some financial benefit from that advertising. In any event, the circumstances set out in paragraph 4(c) of the Policy are non-limiting.
A question which remains however, is whether or not the Respondent's use of the disputed domain name has been a bona fide use. The Panel accepts that the Complainants have a reputation in the trade mark SURF COAST TIMES and that at the time of registration of the disputed domain name the Respondent was probably aware of that reputation. The Panel also accepts that there may have been instances of confusion in the public mind between the Respondent's domain name and website "surfcoastnews.com.au" and the Complainants' trademark, newspaper and website "surfcoasttimes.com.au". However, that is not the end of the matter.
As discussed above, it is common that news media serving a particular geographical area will use the name of that area in the promotion and delivery of its goods and services. It is also the case that a certain cohort of words including the words "news" and "times" are commonly used as the distinguishing names of the media. The Complainants submit:
"ordinary persons would accept that "Times" and "News" is (sic) interchangeable term in the news business".
That is so but those words are not, in themselves, confusingly similar. It is those terms and others such as those in the cohort referred to above which form the distinctive element of the media title. It is often the case that locally and colloquially they are used alone to refer to the publication. Thus, The London Times is referred to as "The Times", The Sydney Morning Herald as "The Herald", The Hobart Mercury as "The Mercury", and so on.
The Complainants have produced evidence of an incidence of confusion but otherwise their contentions with respect to bad faith and the Respondent's rights or interests are based on mere assertion. The fact that confusion may arise between names incorporating common descriptive or geographic elements does not lead necessarily to the conclusion that the adoption of the one in the face of the other is done in bad faith. As pointed out by Stephen J, with whom Barwick CJ, and Jacobs, Murphy and Aickin JJ agreed. in Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd,  140 CLR 216 at paragraph 22:
"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 application 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 Simmonds). 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…".
In the light of all the above circumstances and notwithstanding the Respondent's failure to respond, the Panel is of the view that, on the basis of the evidence before it, the Complainants have failed to discharge the onus of showing on the balance of probability, that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
In the light of the above finding it is unnecessary to consider this further ground of complaint. The Panel notes however, that many of the factors discussed above are relevant to the questions of bad faith registration or subsequent use and there is no evidence of other facts which might lead to a finding of bad faith.
Finally, the Panel notes that a finding that the Respondent has a legitimate interest in the disputed domain name within the terms of the Policy does not mean that there may not be a legitimate dispute between the parties which may be amenable to resolution by court or other proceedings. The Policy is of limited scope intended to deal with deliberate instances of cybersquatting. It is not intended to resolve conflict between competing interests.
For all the foregoing reasons, the Complaint is denied.
Desmond J. Ryan AM
Dated: December 15, 2011
ADMINISTRATIVE PANEL PROCEDURAL ORDER NO. 1
Schark Holdings Pty Ltd and Surf Coast News Australia Pty Ltd v. Nicholas Soames
Case No. DAU2011-0032
The Panel notes that according to paragraph C of the Complaint, second dot point, sometime after a cease and desist letter was sent to the Respondent,
“the Complainant's (sic) discovered that the domain name was no longer in use and the news service being provided by the Respondent had been transferred to another domain name called www.surfcoastdailynews.com.au"
The Panel notes however, that this domain name currently resolves to the Complainant's website and according to the WhoIs for the domain name the Second Complainant, Surfcoast News Australia Pty Ltd, is the owner of the domain name.
Without prejudice to the Panel’s decision in this matter, the Complainant is requested to submit within three days or until December 10, 2011 this clarification.
The Respondent may, within two days following receipt of the Complainant’s submission, file submissions and supporting evidence, if any, strictly in reply thereto to the Center.
Submitted materials from either party shall be submitted to the Center by email to firstname.lastname@example.org.
The due date for submission of the Panel’s decision in the present case is hereby extended to December 20, 2011.
Desmond J. Ryan
Dated: December 7, 2011