WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Stock Exchange Limited and ASX Operations Pty Limited v Community Internet (Australia) Pty Ltd
Case No. D2000-1384
1. The Parties
1.1. The First Complainant is Australian Stock Exchange Limited, a company incorporated in Australia with its principal place of business located in Sydney, New South Wales, Australia. The Second Complainant is ASX Operations Pty Limited, a company incorporated in Australia also with its principal place of business located in Sydney, New South Wales, Australia. Jointly the First Complainant and the Second Complainant are herein referred to as "the Complainants".
1.2. The Respondent is Community Internet (Australia) Pty Ltd, a company incorporated in Australia apparently with its principal place of business in Neerabup, Western Australia, Australia.
2. The Domain Name and Registrar
2.1. The domain name the subject of this Complaint is "australianstockexchange.com".
2.2. The Registrar of this domain name is Registrars.com ("Registrar"), of the United States of America.
3. Procedural History
Issuance of Complaint
3.1. On October 13, 2000, the Complainants by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on October 13, 2000 and the copy of the Complaint submitted by courier was received on October 17, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainants, by email dated October 17, 2000.
Confirmation of Registration Details
3.2. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on October 17, 2000. By email to the WIPO Center on the same day, the Registrar confirmed that it had received a copy of the Complaint from the Complainants; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of that domain name is the Respondent; identified the administrative Contact for the Registrant, and provided postal, telephone, facsimile and email contact details for the Respondent and the Contact; and informed that the domain name is "under registrar-lock pending arbitration". The Registrar, in a separate communication, also confirmed that its standard registration agreement provides that the registrant of the domain name agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Uniform Policy.
Notification to Respondent
3.3. On October 19, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding, by courier, email and facsimile to the addresses and number provided by the Registrar. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date.
3.4. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.5. On October 19, 2000, the Respondent sent to the WIPO Center an email, to which was attached a letter acknowledging receipt of the Notification of Complaint and making certain responses to the allegations contained in the Complaint. This communication was copied to the Complainants by the Respondent. On the same day, the WIPO Center by email to the Respondent acknowledged receipt of this letter, reminded the Respondent that it had 20 days from notification of the Complaint in which to submit a Response, and asked whether the Center should treat the letter as the Response to the Complaint. That day the Respondentís Contact by email replied that "I will consider the status of my letter following discussions with advisors and inform you of my decision within the time allocated for my formal response."
3.6. On November 8, 2000, the WIPO Center sent an email to the Respondent stating that the deadline for filing a Response had passed on the previous day, and informing that the Center would proceed to appoint an Administrative Panel in accordance with request in the Complaint. On November 9, 2000 the Respondentís Contact by email to the WIPO Center replied as follows:
"I have been unable to receive the appropriate advice from my legal advisors in the time allocated by you (sic) I therefore have been denied to this time the benefit of informed legal opinion. I therefore suggest that you proceed in this matter in accordance with your rules. You may or may not as you wish accept my letter as my response."
Constitution of Administrative Panel
3.7. On November 10, 2000, in accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On November 16, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance and Declaration of Impartiality and Independence. On the same day the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr. Christieís appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by November 29, 2000. The case before this Administrative Panel was conducted in the English language.
Compliance with the formalities of the Uniform Policy and the Uniform Rules
3.8. Having reviewed the Case File in this matter, this Administrative Panel concurs with the assessment by the WIPO Center that the Complaint complies with the formal requirements of the Uniform Policy and Uniform Rules.
4. Factual Background
4.1. The Complainants asserted, and generally provided evidence in support of, the following facts. Unless otherwise specified, this Administrative Panel finds these facts established.
Complainantsí Activities and Trademark
4.2. The First and Second Complainants are related entities. The Second Complainant is an operating company of, and is wholly owned by, the First Complainant. The First Complainant trades under the name "Australian Stock Exchange" and "ASX". The First Complainant operates the Australian Stock Exchange, which is Australiaís primary national stock exchange for equities, derivatives and fixed interest securities. The current operating activities of the First Complainant include:
(a) operation of Australiaís national stock exchange;
(b) listing of entities such as companies and trusts;
(c) provision of markets and trading facilities for securities such as equities, options and warrants;
(d) clearing and settlement of trades in securities traded on the Australian Stock Exchange;
(e) clearing and risk management of Australian Stock Exchange traded options;
(f) accumulation and dissemination of market data, listed-entity announcements and certain other real time and historical information related to the First Complainantís markets and services;
(g) market supervision and maintenance of market integrity such as preparing and updating Business Rules and Listing Rules, monitoring continuing compliance with those rules by market participants and listed entities;
(h) development of businesses such as the Internet based Enterprise Market; and
(i) the provision of infrastructure services to business.
4.3. On April 1, 1987, the First Complainant was formed as a mutual organisation through incorporation under legislation of the Australian Parliament entitled the Australian Stock Exchange and National Guarantee Fund Act. The First Complainant was formed to operate the first national exchange, which was named the "Australian Stock Exchange" and involved the amalgamation of the six independent State stock exchanges. In October, 1996, members of the First Complainant voted to begin the process of demutualisation. The vote authorised the Board to seek legislation to convert the First Complainant from a company limited by guarantee (a mutual) to a company limited by shares (a corporation). That legislation (Corporations Law Amendment (ASX) Bill 1997) was passed by both houses of the Australian Parliament late in November, 1997. The demutualisation process was completed in October, 1998, and culminated with the First Complainant, the organisation operating the name "Australian Stock Exchange", being the first listed stock exchange in the world. The First Complainant is now a profit-making company with an obligation to its shareholders, as well as to its customers. Its main revenue sources are listing fees from entities, participant fees, sale of market information, fees for trading and settlement on the equities market, and fees for derivatives contracts.
4.4. The Australian Stock Exchange national market is now the fourth largest in the Asia Pacific region and is the 12th largest stock market in the world. In the year to July 1, 2000, approximately AUD$362 billion of trading took place on the Australian Stock Exchange. As at July 1, 2000, the total capitalisation of equity securities with a primary listing on the Australian Stock Exchange was approximately AUD$682 billion, and total market capitalisation of listed entities was approximately $892 billion. Currently approximately 1,378 companies are listed and traded on the Australian Stock Exchange. The First Complainant is the official provider of a broad range of market data and information to investors and potential investors in the Australian stock market. The First Complainant provides market information to subscribing information vendors and media outlets such as Reuters and Bloomberg. In its role as Australiaís primary listed-entity stock exchange, the First Complainant is the official disseminator of all listed-entity announcements, financial accounts, corporate actions and associated information, in addition to stock price information.
4.5. The AUSTRALIAN STOCK EXCHANGE trademark was first used in 1987 when the six state stock exchanges were formally amalgamated in the one entity, which was named the Australian Stock Exchange. The AUSTRALIAN STOCK EXCHANGE trademark has been used continuously since 1987 to identify the Exchange. The Complainants have expended substantial sums of money advertising and promoting the AUSTRALIAN STOCK EXCHANGE. In the last financial year ending June 30, 2000, the Complainants have expended approximately AUD$570,000 on advertising and promoting the AUSTRALIAN STOCK EXCHANGE activities. The AUSTRALIAN STOCK EXCHANGE trademark is a widely known in Australia and is known overseas.
4.6. As at the date of this Complaint, the domain name "australianstockexchange.com" does not resolve to an active web site; rather, the domain name has been "parked". At the URL http://www.australianstockexchange.com there is a web page which states: "This domain was registered through Ö registrars.com. We are Moving in Shortly Ö please come back soon".
4.7. The Respondentís business consists of or includes an Internet Newspaper "joondaroo.com". At the URL http://www.comweb.com.au/joondaroo/news/technology/domains.html there is a web page which specifies "DOT COM DOMAINS currently registered by Community Internet (Australia) Pty Ltd". There follows a list of numerous domain names registered by the Respondent, including:
A printout of this web page, as at August 2, 2000, was Annexure W to the Complaint.
5. Partiesí Contentions
5.1. The Complainants contend that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain names the subject of this dispute.
5.2. In relation to element (i) of paragraph 4(a) of the Uniform Policy, the Complainants contend that the domain name in issue is either identical or confusingly similar to the trademark AUSTRALIAN STOCK EXCHANGE.
5.3. In relation to element (ii) of paragraph 4(a) of the Uniform Policy, the Complaints contend that they have not licensed or otherwise permitted the Respondent to use the AUSTRALIAN STOCK EXCHANGE trademark, nor have they licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating that trademark. In addition, the Complainants contend that the Respondent has not traded at all under the name "Australian Stock Exchange" nor, in the light of the reputation the Complainants have in association with the AUSTRALIAN STOCK EXCHANGE trademark and their business and company names, could the Respondent lawfully do so in any jurisdiction. This is especially the case in Australia, as section 1115(3) of its Corporations Law states that a body corporate that is not a stock exchange shall not use, or by inference adopt, the name or title of a stock exchange or use a name, title or description which implies or creates the belief the body corporate is a stock exchange.
5.4. In relation to element (iii) of paragraph 4(a) of the Uniform Policy, the Complainants contend that the AUSTRALIAN STOCK EXCHANGE trademark is one of the most well known trade marks in Australia and has substantial and increasing prominence internationally. Because that trademark, and the business carried on by reference to it, receives frequent media attention and is heavily referred to through all forms of media on a daily basis, it is inconceivable that the person or persons behind the Respondent, which is located in Australia, would not be aware of this. In addition, the Complainants contend that any realistic use of the domain name must misrepresent an association with the Complainants and its goodwill, and so result in a passing off, a breach of Australian consumer protection legislation such as sections 52 and 53 of the Trade Practices Act 1974 (Cth), sections 42 and 44 of the Fair Trading Act 1987 (NSW) and trade mark infringement contrary to section 120 of the Trade Marks Act 1995 (Cth). Further, the Complainants contend that, because the Respondent has not established an active web site corresponding with the domain name, and could not for the reasons stated legitimately do so, it is fair to assume that the Respondent has acquired the domain name for one or more of the following purposes: (i) to prevent the Complainants from reflecting its trade mark in a corresponding domain name; (ii) to disrupt the business of the Complainants; (iii) in future to establish a web site and attract, for commercial gain, Internet users to the web site or other on-line location by creating confusion with the Complainantís mark AUSTRALIAN STOCK EXCHANGE; (iv) to sell the domain name to a competitor of the Complainants; or (v) to sell the domain name to the Complainants for valuable consideration in excess of the costs incurred in acquiring the name. Finally, the Complainants contend that the Respondent has also registered the domain names of other well known Australian entities, without any apparent authority to do so from those entities.
5.5. The only substantive submission from the Respondent is that contained in its letter to the WIPO Center of October 19, 2000. The Respondent in its subsequent email to the WIPO Center of November 9, 2000 stated that "You may or may not as you wish accept my letter as my response." This Administrative Panel has treated that letter as the Respondentís Response to the Complaint.
5.6. The substance of the Response is contained in the following paragraphs of the letter of October 19, 2000.
My company registered the Domain Name "australianstockexchange.com" following publicity instigated by the office of The Hon Richard Alston, Minister for Communications. This publicity indicated that a number of Australian companies and institutions might be vulnerable to abuse from the unauthorised registration of Internet Domain Names. My company also published an article warning of the danger outlined by the Minister prior to registering the Domain Names.
My company spent considerable time and money protecting what it considered to be vulnerable Domain Names from being registered by hostile persons. My company gave preferential action to registering Domain Names of companies and institutions with which it has or has had trading relations.
At no time has my company attempted to use the Names so registered for financial gain. The Domain names have not been hosted and my company has never offered to or ever had any intention in trading in these Names. In fact the only offer ever made to this company to "purchase" a Domain Name registered by this company was by the complainant who offered to reimburse "reasonable costs". This offer followed what I considered to be inflammatory and defamatory statements and was ignored.
6. Discussion and Findings
Domain Name Identical or Confusingly Similar to Complainantsí Mark
6.1. The initial question to resolve is whether the Complainants have rights in a trademark or service mark to which the Uniform Policy applies. The Complainants have no trademark or service mark registrations for the name AUSTRALIAN STOCK EXCHANGE. It is, however, clear that the Uniform Policy is not limited to a "registered" mark; an unregistered, or common law, mark is sufficient for the purposes of paragraph 4(a)(i). The Complainants provided detailed evidence to establish that they provide services under the name AUSTRALIAN STOCK EXCHANGE, and that they have a reputation in the services provided under that name such that members of the public would associate those services with the Complainants and not with others not authorised by the Complainants to use that name. Accordingly, the Complainants have established to the satisfaction of this Administrative Panel that the name AUSTRALIAN STOCK EXCHANGE is a service mark in which the Complainants have common law rights. Thus, this Administrative Panel finds that the Complainants have rights in a service mark to which the Uniform Policy applies.
6.2. In relation to the domain name "australianstockexchange.com", the relevant part of this domain name is "australianstockexchange." This Administrative Panel finds that this part of the domain name is identical to the Complainantsí service mark AUSTRALIAN STOCK EXCHANGE.
Respondentís Rights or Legitimate Interests in the Domain Name
6.3. The Respondent has not provided evidence of, or even asserted the existence of, circumstances of the type specified in paragraphs 4(c)(i), (ii) and (iii) of the Uniform Policy, being circumstances which demonstrate a right or legitimate interest in the domain name. The Respondentís (implicit) contention of a right or legitimate interest in the domain name rests on the claim that it registered this "vulnerable" domain name (along with many others) as a way of "protecting" it "from being registered by hostile persons". The Respondent also stated that it gave "preferential action to registering Domain Names of companies with which it has or has had trading relations."
6.4. The Respondent provided no evidence of a current or past "trading relation" with the Complainants. The Respondent also did not specify how its action of registering the domain name amounted to "protecting" it. If "protecting" a "vulnerable" domain name was the motive of the Respondent, then it would be expected that the Respondent would have accepted the Complainantsí offer for the Respondent to transfer the domain name to them. The Respondentís assertion that this offer was ignored because it followed "inflammatory and defamatory statements" is not consistent with the Respondentís claim to be "protecting" the domain name for the Complainants.
6.5. This Administrative Panel does not need to decide the question of whether the motive of "protecting" a "vulnerable" domain name from registration by "hostile persons" gives the registrant a legitimate interest in the domain name for the purposes of the Uniform Policy, although it doubts that it does. This question does not need to be decided because the Respondent has not established to the satisfaction of this Administrative Panel that this was indeed its motive in registering the domain name in issue.
6.6. This Administrative Panel finds that the Respondent has no right or legitimate interest in the domain name "australianstockexchange.com", because that domain name bears no relationship to any legitimate business or other activity of the Respondent, because that domain name is not one that the Respondent, in the context of provision of goods, services or information via a web site, would use unless seeking to create a false impression of an association with the Complainants, and because that domain name is not one that the Respondent could legitimately use under Australian law.
Domain Name Registered and Used in Bad Faith
6.7. Paragraph 4(b)(ii) of the Uniform Policy provides that registration of a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name is evidence of bad faith registration and use of the domain name, so long as the registrant has engaged in a pattern of such conduct. The Respondentís registration of the domain name "australianstockexchange.com" prevents the Complainants from reflecting their service mark AUSTRALIAN STOCK EXCHANGE in a corresponding domain name. As described in paragraph 4.7 above, the Complainants provided evidence, in the form of a printout from the Respondentís web site, which establishes that the Respondent has registered domain names containing the trademarks or service marks of other widely known Australian businesses, without apparent authority of those businesses. These registrations prevent those businesses from reflecting their trademark or service mark in a corresponding domain name. This Administrative Panel finds that this evidence demonstrates that the Respondent has engaged in a pattern of conduct of the type specified in paragraph 4(b)(ii) of the Uniform Policy. Accordingly, this Administrative Panel finds that the Respondent has registered and is using the domain name "australianstockexchange.com" in bad faith.
7.1. This Administrative Panel decides that the Complainants have proven each of the three elements in paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of this Complaint.
7.2. Pursuant to paragraph 4(i) of the Uniform Policy and paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainants contained in paragraph 13 of the Complaint, this Administrative Panel requires that the Registrar, Registrars.com, transfer to the Second Complainant, ASX Operations Pty Limited, the domain name "australianstockexchange.com".
Andrew F. Christie
Dated: November 30, 2000