WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KFM Properties Pty Ltd v. The Trustee for the Painter Family Trust (trading as Best Western Great Ocean Road Motor Inn)
Case No. DAU2012-0023
1. The Parties
The Complainant is KFM Properties Pty Ltd of Ocean Grove, Victoria, Australia, represented by Coulter Roache Lawyers, Australia.
The Respondent is The Trustee for the Painter Family Trust (trading as Best Western Great Ocean Road Motor Inn) of Port Campbell, Victoria, Australia, represented by Andrew O'Connor, Australia.
2. The Domain Name and Registrar
The disputed domain name <portcampbellmotorinn.com.au> (the “Domain Name”) is registered with Crazy Domains Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2012. On August 8 and 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 14, 2012, 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 Complainant filed an amended Complaint on August 16, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), 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 August 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2012. The Response was filed with the Center on September 4, 2012.
The Center appointed Alan L. Limbury as the sole panelist in this matter on September 17, 2012. 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
According to the Registrar, the Domain Name was registered by the Respondent on July 23, 2011.
At the time, the Respondent was seeking to buy the accommodation/motel business of Port Campbell Motor Inn Pty Ltd in Port Campbell, Victoria. The transaction did not proceed.
In or around September, 2011 the Complainant bought that business from Port Campbell Motor Inn Pty Ltd.
On November 18, 2011, the Complainant applied to register PORT CAMPBELL MOTOR INN (Logo) as an Australian Trade Mark (Application No. 1460298) in respect of services in Class 43. That application remains pending.
5. Parties’ Contentions
On August 31, 2011, as part of the purchase of the business, the Complainant became the new owner of the Victorian Registered Business Name “Port Campbell Motor Inn”, No. B2045993F. The Complainant was supposed to have acquired the Domain Name as part of the business but the vendor failed to renew the Domain Name registration and, as a result, it was registered by the Respondent.
The Domain Name is identical to the Complainant’s mark.
The Respondent is not commonly known by the Domain Name nor has it acquired the trade mark or service mark rights with respect to that name. The Respondent does not operate the Port Campbell Motor Inn as its business. Since June 5, 2004 it has operated a similar business in the same region as the Complainant, under the business name Best Western Great Ocean Road Motor Inn. The registration of the Domain Name is not connected with the Respondent’s business. As at August 1, 2012, the Respondent had not used the Domain Name. It resolved to a “parked” site. The Respondent has a separate domain name promoting holiday accommodation services under the “Best Western” brand.
The Domain Name was registered or is subsequently being used in bad faith. The Complainant says the Respondent purchased the Domain Name two days after the Complainant had acquired the business.
Upon discovering the registration of the Domain Name by the Respondent, the Complainant contacted the Respondent, who agreed to transfer the Domain Name to the Complainant. However, in or around early October 2011, the Respondent sought $9,000.00 for the transfer and as payment for lost legal fees in its own failed attempt to purchase the Port Campbell Motor Inn business from the Vendor.
The Respondent has acknowledged having no right to use and/or register the Domain Name.
The Respondent has actively engaged in conduct to disrupt the business of the Complainant, as the new business owner of the Port Campbell Motor Inn, preventing customers and consumers from legitimately making bookings and holiday enquiries with the Complainant through the use of the Domain Name. The Complainant relies on Internet bookings as a part of the operation of its business. The Complainant believes that approximately 75% of all business is directed from online queries, primarily through third party websites such as tripadvisor.com.
The Domain Name was registered on July 23, 2011, not early September as stated by the Complainant. It was purchased because the Respondent was at that time in the process of buying the Port Campbell Motor Inn business. There was no bad faith at the time of registering the Domain Name and it has not been used in bad faith.
The Complainant’s application for trade mark registration for the PORT CAMPBELL MOTOR INN mark has not achieved registration so the Complainant lacks standing to bring the Complaint as it is not the owner of a relevant registered trade mark.
The Certificate of Registration of Business Name exhibited to the Complaint is for the name “Port Campbell Country Inn” and not “Port Campbell Motor Inn” which is the name in dispute.
The Respondent denies having had any conversation with the Complainant and denies having tried to obtain payment for the transfer of the Domain Name, saying there has been no communication between the Complainant and the Respondent since the Complainant acquired the business in early September 2011.
The Complainant was well aware when it acquired the business that the Domain Name was not included in the contract of sale. The Respondent has an email dated August 30, 2011 from the vendor’s lawyer asking whether the Respondent was prepared to surrender the Domain Name, to which the Respondent replied ‘no’.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles it is to use in determining this dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Further, as under the Uniform Dispute Resolution Policy (“UDRP”), a Panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5. The Panel has done so in this case.
Paragraph 4(a) of the Policy requires the Complainant to prove:
(i) the Domain Name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Note 2); and
(iii) the Domain Name has been registered or subsequently used in bad faith.
Note 1: For the purposes of this policy, auDA has determined that a “name […] in which the complainant has rights” refers to:
(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant’s personal name.
Note 2: For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
A. Identical or Confusingly Similar
The Complainant’s pending application to register a trademark does not give the Complainant rights in the mark.
Unlike the UDRP, as Note 1 above makes clear, a Complainant may succeed in reliance on a business name. The Complainant exhibited a copy of the Victorian Business Name Registration Certificate No. B2394802N for “Port Campbell Country Inn”, registered on August 2, 2011. This appears to have no relevance to this Complaint.
However, the Complainant also exhibited a copy of a Change of Business Details form in relation to the business name “Port Campbell Motor Inn”, registration No. B2045993F. The form states that ownership of that business name was transferred on August 31, 2011 from Port Campbell Motor Inn Pty Ltd to the Complainant. The Panel’s own search of the Victorian Names Register confirms that the business name “Port Campbell Motor Inn”, No. B2045993F, was registered on October 5, 2007, that it has not been deregistered and that it is not due for renewal until October 5, 2013.
The Panel is satisfied that the Complainant has rights in the “Port Campbell Motor Inn” business name sufficient to give it standing to bring this Complaint and that the Domain Name is identical to that business name, bearing in mind that in determining identity or confusing similarity, country code top level domain suffixes are to be ignored: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.
The Complainant has established this element.
B. Rights or Legitimate Interests
Under the Policy, Paragraph 4(a)(ii), the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, whereupon the Respondent assumes the burden of demonstrating that it does. The Complainant asserts that the Respondent operates a rival business under a different name in the same region as the Complainant, is not known by the Domain Name, and has not used it, other than for a parking page. This is sufficient to establish a prima facie case.
The Respondent has neither denied nor endeavoured to contradict these assertions. Accordingly, the Respondent has not established any of the circumstances which, under the Policy, Paragraph 4(c), are to be taken, without limitation, to demonstrate a respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii), namely:
“(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
While the Respondent might have had a legitimate interest in the Domain Name as a putative buyer of the business, once it failed to effect that transaction, any right or legitimate interest it might have had was lost. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has established this element.
C. Registered or Subsequently Used in Bad Faith
The Policy, paragraph 4b provides: “Evidence of Registration or Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and [sic] use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Panel accepts that the Respondent, the operator of the nearby Best Western Great Ocean Road Motor Inn, registered the Domain Name on July 23, 2011 at a time when it was in the process of attempting to buy the competing accommodation/motel business of Port Campbell Motor Inn Pty Ltd. Although it failed in that attempt, it is more likely than not that the Respondent registered the Domain Name in good faith, hoping to be in a position to use it in connection with the business it was seeking to buy.
Having failed to purchase the business, however, the Respondent had no legitimate reason to hold the Domain Name. The Panel finds that the Respondent’s retention of the Domain Name in the face of requests for transfer by the new owner of the business is more likely than not to be for the purpose of obstructing the Complainant in its operation of that business. Accordingly, the Panel finds that, although the Domain Name was not registered primarily for the purpose of disrupting the business or activities of another person, the Domain Name has been used for that purpose.
The Panel therefore finds that the Domain Name has been used in bad faith.
The Complainant has established this element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <portcampbellmotorinn.com.au> be transferred to the Complainant, provided that the Registrar (or Registry) is satisfied that the Complainant is eligible to be the holder and registrant of a domain name in the “.com.au” domain name space. In the alternative, should the Registrar (or Registry) not be so satisfied, the Panel orders that the Domain Name be cancelled.
Alan L. Limbury
Dated: October 1, 2012