WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Institute of Arbitrators & Mediators Australia (IAMA) v. Adjudicate Today Pty Limited

Case No. DAU2012-0021

1. The Parties

The Complainant is The Institute of Arbitrators & Mediators Australia (“IAMA”) of Sydney, New South Wales, Australia, represented by ArgyStar.com, Australia.

The Respondent is Adjudicate Today Pty Limited of Mona Vale, New South Wales, Australia, represented by Moray & Agnew Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <iama.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2012. On July 27, 2012, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On July 30, 2012, NetRegistryPty Ltd. transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name is registered in the name of the Respondent and its contact details are correct;

(c) English was the language used in the registration agreement;

(d) the disputed domain name was registered subject to the “.au” Dispute Resolution Policy (the “Policy” or “auDRP”), and the Policy applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of 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 July 31, 2012. Also on July 31, 2012, the Complainant submitted a correction to a paragraph in the Complaint. The correction was also served on the Respondent.

In accordance with the Rules, paragraph 5(a), the due date for a Response was August 20, 2012. The Response was filed with the Center on August 20, 2012.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 30, 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

The Complainant was incorporated as the Institute of Arbitrators Australia in 1975. In 1997, it changed its corporate name to the Institute of Arbitrators and Mediators Australia.

It provides services in all forms of alternative dispute resolution (ADR), including arbitration, mediation, adjudication and expert determination. It is also involved in the professional development, training and accreditation of ADR practitioners in Australia and, according to the Complaint, internationally.

Amongst other things, it promotes its services by the acronym, IAMA, as can be seen for example from its website at “www.iama.org.au”. In addition to that website, it also has a website at “www.adjudicate.org.au” where, in addition to its formal name and IAMA, it also uses the trading name Adjudicate Australia. It is the only organisation nominated as an Authorised Nomination Authority in connection with building and construction industry payments legislation in each State and Territory of Australia.

The Respondent and other companies associated with the Respondent’s director, are also engaged in the ADR field in Australia.

In September 2008, one of the other companies associated with the Respondent’s director registered in New South Wales the business name “Investigation, Adjudication, Mediation in Australia”.

Also in September 2008, another company associated with the Respondent’s director, Adjudicate Today, registered in Queensland the business name “Institute of Adjudication & Mediation Australia”. The printout from Adjudicate Today’s website at “www.adjudicate.com.au” included in the Response states that Adjudicate Today is an Authorised Nominating Authority in a number of States in relation to the relevant payments legislation and provides a range of services in connection with that legislation.

According to the Response, the various companies associated with the Respondent have been operating in the ADR field for a number of years prior to the registration of the business names. In the case of Adjudicate Today, since 2000 and, in the case of the company which has registered the business name in New South Wales, since 2006.

The Respondent registered the disputed domain name in August 2008. The disputed domain name only resolved to a website featuring “lorem ipsum” text until June 2012 when a website promoting the services of Adjudicate Today started operating.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

While the draft decision was being formatted by the Center for final publication, the parties engaged in some further correspondence with the Center. The Complainant sought to invoke aspects of that correspondence in support of its Complaint. Given the very late stage at which the Complainant sought to adduce the material and the very limited, if any, relevance of the material to the issues under consideration, the Panel does not admit these materials into the record in the proceeding. They have not been taken into account in reaching the Panel’s decision which had already been formulated and submitted to the Center.

A. Identical or Confusingly Similar

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name or trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the name or trademark.

Note 1 to the Policy indicates that the auDA Board 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.”

As is plain from the terms of paragraph 4(a)(i) of the Policy and the accompanying Note, the Policy contemplates a potentially wider range of rights providing the foundation for a complaint than under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).

The Complainant does not have any registered trademarks for IAMA. Nor does it have any registered business names for IAMA. However, the materials submitted in the Complaint demonstrate that it generally uses the acronym IAMA to designate itself, often in conjunction with its formal name. In addition, it is clear that the Complainant is well-known in the community by the designation IAMA.

The Complainant does not claim that it has registered IAMA with a relevant government authority so its use of IAMA as its trading style does not qualify as a “name” under the broader conception adopted in the Policy. Through its use and reputation in IAMA, however, the Complainant has developed rights at common law which it could protect through an action under section 18 of the Australian Consumer Law or in passing off.

Accordingly, the Panel finds that the Complainant has proven ownership of rights in IAMA for the purposes of the Policy.

The disputed domain name is identical to the Complainant’s trademark, disregarding the “.com.au” country code second level domain suffix (“cctld”) which is a functional component of the domain name system: See e.g. MapQuest.com, Inc. v. William Scully Power and MapQuest Australia, WIPO Case No. DAU2006-0016; Jenna IP Holding Company LLC v. Mobile Alive Pty Limited, WIPO Case No. DAU2006-0013.

The Respondent points out that there are a number of trademarks registered for IAMA in Australia, none of which are owned by the Complainant. It has also submitted an extract from the Australian Securities and Investment Commission’s database showing that there are a number of companies registered in Australia with IAMA in their name. Further, the Respondent has submitted evidence of various organisations around the world which use the acronym IAMA. This evidence includes searches of that term using both the Google and Bing search engines (links to the Complainant are the first two or three organic search listings in both cases). The Respondent also refers to its own interests in the acronym through the registered business names of its associated companies.

As a result of these matters, the Respondent contends that it cannot be assumed that there will be confusion between the disputed domain name and the Complainant’s trademark, all the more so as the public is becoming increasingly sophisticated and knowledgeable in their access to and navigation of the Internet.

It is important to note, however, that the inquiry in the present context is a different inquiry to that prescribed by trademark law. It requires only the comparison of any relevant rights proved by the Complainant to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the Policy, but may arise under the other paragraphs. See e.g., Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.

As the disputed domain name is identical to the Complainant’s proven trademark on the relevant tests, therefore, the Panel finds that the Complainant has established the requirement under the first limb of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

It is not in dispute between the parties that the Respondent is not authorised by the Complainant to use IAMA or in any other way associated with the Complainant. The Complainant points to the period of almost four years in which the disputed domain name was essentially inactive and contends that the website to which the disputed domain name now resolves intentionally creates a misleading impression that the Respondent is associated with or endorsed by the Complainant.

These matters are sufficient to raise the prima facie case against the Respondent required under the Policy.

The Respondent points to the derivation of the acronym from the two registered business names held by two of its associated companies, “Investigation, Adjudication, Mediation Australia” in New South Wales and “Institute of Adjudication & Mediation Australia” in Queensland, both of which have been registered since September 2008. The Complainant contends, however, that the business names have been chosen as a pretext to justify the registration and use of the disputed domain name. Note 1 to the Policy referred to above clearly demonstrates that a registered business name may qualify as a “right” for the purposes of the Policy, at least in the context of the inquiry under paragraph 4(a)(i) of the Policy. Note 2 to the Policy, however, states that 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.”

This is consistent with the position at law generally in Australia that a registered business name does not confer in and of itself positive rights which override pre-existing registered trademarks or common law rights: see e.g., BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1976) 51 ALJR 363; 12 ALR 363 at 369 (Gibbs J, Barwick CJ and Murphy J agreeing). Rather, registration of a business name is an obligation to enable identification of the person who is in fact carrying on the business. Under the general law and apart from registration as a trademark, therefore, rights derive from use and development of a reputation with the public. The Panel also recognises that a business name is not subjected before registration to the kind of substantive examination that occurs in the case of a trademark application. In the usual case, the name proposed to be registered is compared only to other names already existing on the register.

According to the Response, the companies which have registered these names have been operating in the ADR space for many years; in the case of Mediate Today Pty Ltd, which operates as Adjudicate Today, since 1994 and, in the case of Review Today Pty Limited which is said to operate as the investigation arm of “Investigation, Adjudication Mediation Australia”, since 2006. The Respondent contends that these are bona fide businesses and their uses of the respective registered business names demonstrate it has rights or legitimate interests in the disputed domain name.

The annexes to the Response demonstrate that the Respondent and the relevant associated companies have been incorporated for a number of years; in the case of Mediate Today Pty Ltd since at least 1994. There is also evidence of business operations at the various websites used by the Respondent, or its associated companies, in addition to the launch in June 2012 of the website to which the disputed domain name resolves.

Apart from the appearance of the business name registered in New South Wales, “Investigation, Adjudication, Mediation Australia”, as a headline on the website to which the disputed domain name has resolved since June this year, none of the extracts from the websites put in evidence by the Respondent appear to make any use of either of the registered business names on which the Respondent relies or of the acronym IAMA (or, if they do, the use would not appear to be sufficiently prominent to generate reputation at common law).

The Respondent does not contend that it was unaware of the Complainant’s name or use of IAMA when it registered the disputed domain name. Given the common field in which both the Complainant and the Respondent, or its director and associated companies, operate, that is hardly surprising. Given this, and in the absence of evidence of use of IAMA by the Respondent (until the disputed domain name began resolving to an active website in June this year) or of either of the registered business names, the Panel considers that the Respondent has not rebutted the prima facie case established by the Complainant.

Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.

C. Registered or Subsequently Used in Bad Faith

Unlike the UDRP, this requirement under the auDRP is disjunctive. It is necessary for the Complainant to show only registration in bad faith or use in bad faith.

The disputed domain name currently resolves to a website which promotes the ADR-related services of the Respondent’s associated company under the name Adjudicate Today.

These services directly compete with services provided by the Complainant under its name IAMA.

As the Panel has found in section B above that the Respondent does not have rights or a legitimate interest in “IAMA”, this conduct is bad faith use proscribed by the Policy. It falls within, or is closely analogous to, the conduct prohibited by paragraph 4(b)(iv) of the Policy:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on that web site or location.”

The Respondent contends that any reasonable and objective Internet user who landed at the website would recognise it was only a temporary site pending development of a site in accordance with the Respondent’s longstanding business operations. Even assuming the website is only temporary, the Panel rejects that as a defence or justification. The website is being used to direct people by reference to a domain name which is confusingly similar to the Complainant’s name IAMA to services which compete with the Complainant’s services. Moreover, it has been doing so for in the order of three months now. For the reasons set out in section B above, this conduct is not justified by a right or legitimate interest recognised under the Policy.

In these circumstances, the Panel finds that the disputed domain name is (at least) being used in bad faith contrary to paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <iama.com.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Dated: September 13, 2012