The Complainant is Multi-National Concepts Pty Ltd, of N/A, Australia, represented by Freehills, Australia.
The Respondent is 1300 Directory Pty Ltd, of Sydney, Australia, represented by Guy & Hinton, Australia.
The disputed domain names are as follows:
The above disputed domain names are all registered with Primus Telecommunications t/a PlanetDomain & PrimusDomain.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 2, 2009, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the disputed domain names. On April 6, 2009, Primus Telecommunications t/a PlanetDomain & PrimusDomain 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 Domain Name Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for the .auDRP (the “Rules”), and the WIPO Supplemental Rules for the .auDRP (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 April 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2009. A Response was filed with the Center on April 29, 2009.
On May 1, 2009, the Center advised both parties that the Response appeared to substantially exceed the prescribed 5,000 word limit. The Center gave the Respondent until May 7, 2009 to file a revised Response which complied with the word limit.
On May 4, 2007, the Respondent replied to the Center alleging that the Complaint also exceeded the 5,000 word limit. The Respondent also referred to previous proceedings between the parties (see National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021) and the Complainant's attempts in the current proceedings to address the Respondent's previous submissions in the closed proceedings. The Respondent argued that it was necessary for it to respond to attacks in the current Complaint which were canvassed in the previous proceedings, adding to the length of the Response. In short, the Respondent argued that the history and nature of the dispute, and the size and nature of the Complaint, was responsible for the length of the Response.
On May 4, 2009, the Center confirmed to the parties that the “Factual and Legal Grounds” section of the Complaint was under 5,000 words, and therefore complied with the Policy and Rules.
On May 5, 2009, the Respondent sent a further email to the Center in relation to the Complaint. This email stated that several paragraphs in the Complaint, which appear before the “Factual and Legal Grounds” section, amounted to over 1500 words, and contain a significant amount of submissions. As such, the Respondent stated that those paragraphs should have been included in the Complaint word count, as they belonged in the “Factual and Legal Grounds” section.
In any event, the Respondent filed a revised response on May 5, 2009.
The Center appointed John Swinson as the sole panelist in this matter on May 25, 2009. 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.
On May 27, 2009, the Complainant filed a supplemental filing. The purpose of the supplemental filing was to draw the Panel's attention to a recently decided auDRP decision, John Kolenda v. 1300 Phonewords Pty Ltd, WIPO Case No. DAU2009-0001. The Respondent thereafter filed a supplemental filing.
The Panel has decided to accept the supplemental filings. The Panel would have had regard to this decision in any event.
The parties have been involved in a previous domain name dispute, (see WIPO Case No. DAU2008-0021, supra), which involved 66 domain names, including the nine disputed domain names covered by these proceedings. In the previous case, the Complainant was not a complainant in its own right - its parent company (National Dial A Word Registry Pty Ltd) was a joint-complainant, along with eight other entities. The Respondent was the only respondent in the previous proceedings.
On March 6, 2009, a decision was issued by the single member panel in the previous case. The panelist held that the complainants did not have a common legal interest affected by the Respondent's conduct, and the Respondent did not appear to have engaged in common conduct against the complainants. As such, it was decided that it would not be efficient or equitable to permit consolidation of complainants in those proceedings. Therefore, no finding was made under any of the three core elements of the Policy.
The panelist noted that his finding was “entirely without prejudice to any finding that may be made by a subsequent panel in the event that one or more of the Complainants should choose to file a separate complaint (or complaints) on appropriate conditions under the Policy”.
This matter relates to “smartnumbers”, and domain names which correspond with smartnumbers. The Australian Communication and Media Authority (“ACMA”) provides the following explanation of “smartnumbers”:
smartnumbers® are freephone (1800 numbers) and local rate (13 or 1300 numbers) telephone numbers that are allocated through an on-line auction system by the Australian Communications and Media Authority (ACMA) on behalf of the Government. A smartnumber®, or phone word, can be a valuable marketing tool if it is a highly patterned number, for example, 1800 222 222, or if it can be translated into a memorable phoneword, for example, 13 2287 (13 CATS). A caller dials a phoneword by pressing the letters on a telephone keypad. Phonewords are easier for callers to remember, particularly if they can be linked to an organization's name or function e g. 13 RSPCA.
According to ACMA's website, over 31,000 smartnumbers have been licensed by auction in Australia.
The Respondent is the registrant of the disputed domain names. Each disputed domain name takes the form of a phoneword, with the addition of the 2nd TLD suffix “.com.au”.
The websites operating from the disputed domain names differ.
In relation to <1300accountant.com.au> there is a heading of “1300 Directory Australian Directory” … “The domain name 1300accountant.com.au is a part of 1300 Directory”. There are also sponsored advertisements sourced from Google. At the bottom of the website, there are links to nine other websites, one of which is titled “1300 Directory”. This website (operated by the Respondent) contains information on buying and selling smartnumbers, finding a business or telco, and spelling phonewords.
However the majority of websites resolving from the disputed domain names do not appear to be operational (for example, www.1300printing.com.au, www.1800locksmith.com.au, “www.1300printing.com.au” and www.1300sparky.com.au).
The Complainant makes the following contentions:
The Complainant owns rights in the smartnumbers which correspond to the disputed domain names. As such, only the Complainant can make use of those smartnumbers as a smartnumber, or authorise a third party to do so. Anyone who dials the smartnumber will be connected to the Complainant or its nominated licensee.
Some available 1300, 1800 and 13 smartnumbers will not correspond to any recognisable word. Others will only resolve to a single combination which has any practical commercial significance. Market research shows that in January 2008, 83% of the Australian population were aware of smartnumbers.
The Australian domain name administrator (auDA) requires that a domain name registrant has a close and substantial connection with a domain name. Holding the registration rights with ACMA would satisfy this test, and this supports the submission that the Complainant holds rights in the smartnumbers within the meaning of paragraph 4(a) of the Policy.
The Policy refers to “name” to include “another other legal name registered with the relevant Australian government authority”. A smartnumber falls into this category. The granting of a smartnumber amounts to a grant of rights in any phoneword that corresponds to the number (even if the owner only wants it for one particular phoneword).
Smartnumbers can be likened to business names or company name registrations (which are included as a name under the Policy). The authority allocating such names does not accept liability if those names infringe third party intellectual property rights, and the granting of the names themselves do not convey intellectual property rights. Therefore phonewords are types of names which are sufficient to show rights under the first limb of auDRP.
For each of the phonewords corresponding to the disputed domain names, there is only one corresponding telephone number. The Respondent does not hold any rights to those telephone numbers. The Respondent obviously appreciates the significance of the disputed domain names being phonewords, since it has registered such a large number with a 1300, 1800 or 13 prefix. Also, the Respondent's website at “www.1300directory.com.au“ uses the title “All About Phonewords, SmartNumbers, Phonewords, 1300 numbers & 1800 numbers”. Mr. Padilla of the Respondent has the right to use 17 smartnumbers registered with ACMA.
Some of the disputed domain names have been used by the Respondent in the past with a parking page of the Respondent's registrar.
The Respondent has not created a portal for the sale or lease of phonewords for more than three and a half years. The Respondent's website still says that the business directory is being equipped with the latest technology, and the website is not yet fully operational. As at October 1, 2005, the title to the same website said “The phoneword industry one-stop portal is still under construction”.
In any event, it is unlikely that the Respondent registered the names for the purpose of inclusion in a portal. It would be impractical to market and promote each separate domain name, so that a consumer would think to directly enter the domain name into a browser. Further, the Respondent is not following any pattern in registering smartnumber domain names, and the Respondent has only registered a small subset of generic smartnumber “.com.au” domain names. None of the disputed domain names has the degree of genericism necessary to fit within the purported business model. The Respondent could have achieved the same outcome for far less cost by using sub-domains instead, as this would have only required the registration of a single domain name.
The Respondent has been prepared to sell certain of its domain names to the owner of the corresponding phoneword. This is evidence that the Respondent does not consider the names are necessary for the implementation of the proposed directory. A submission by the Respondent that the purpose of registering the disputed domain names is for the establishment of a directory for selling or leasing phonewords, is implausible.
The Respondent does not own the rights in any of the phonewords that correspond to the disputed domain names. It is at least readily foreseeable that some users of phonewords would want to promote their business through the use of a website which contains the phonewords as part of the URL. A finding of bad faith can therefore be inferred.
The Respondent has demonstrated a willingness to sell phoneword domain names to various parties, between May 2007 and October 2008 (both before and after auDA changed its policies on June 1, 2008 to allow limited trading in “.com.au” domain names). Generally the cost offered by the Respondent was $6,000 plus GST. The Respondent has sought to encourage approaches for the purchase of domain names by offering commissions to relevant parties. Its primary focus was selling the domain names, as can be evidenced by the fact that the Respondent offered discounts for multiple purchases, and had an established transfer routine developed, together with an expectation of a normal turnaround time. As such, the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling them to another person for an amount exceeding registration costs. The Respondent also appears to have selected domain names for registration where those names correspond to phonewords which attracted higher auction prices.
The Complainant also relies on grounds in paragraph 4(b)(ii) and (iii) of the Policy.
The Respondent has admitted that one purpose of registering the disputed domain names was to direct internet traffic back to his 1300 Directory website. This amounts to bad faith under subparagraph 4(b)(iv), as a person entering the phoneword as a “.com.au” domain name is likely to be looking for the entity that has the rights to that phoneword.
The Respondent makes the following contentions:
The Complainant does not satisfy the criteria for determination of “Applicable Disputes” as required by Schedule A, 4(a) of the Policy. It is not possible for a telephone number to be capable of meeting the criteria for “Applicable Disputes”.
The Complainant's assertion that most telephones in Australia have an International Standard keypad is not supported by evidence and is therefore disputed by the Respondent. ACMA's smartnumbers website states that all telephone keypads are not the same.
The Complainant does not rely on company names, trading names (business names) or registered or unregistered trade marks in this dispute. Smartnumbers are not a name in which the Complainant has rights, as a name is defined as a “company, business or other legal or trading name, as registered with the relevant Australia government authority”. A name must include letters or words, whereas the telephone numbers relied on by the Complainant are composed of numbers only. A telephone number is not a name fitting within this definition, and telephone numbers were not intended to be.
The Complainant is not the owner of the phonewords, but is the licensee of the telephone numbers. By entering into ACMA auctions, the Complainant has won the right to use itself or sublicense to another the relevant smartnumber (such as 1300 651 651). It has not become the owner of the rights in the phonewords. The terms and conditions of use of the ACMA auction website state that no “intellectual property rights are granted to you as a result of your obtaining a number”.
Excluding <1300sparky.com.au>, all other disputed domain names are longer in letters than the correlating smartnumbers' digits. Therefore the Complainant cannot have rights to words which do not correlate exactly with the digits. Licenses granted by ACMA are for 1300 or 1800 plus six digits, or 13 plus four digits, so it is impossible for the Complainant to have rights to <1300electrical.com.au> for example, as this has ten letters. “Overdialling” involves the addition of letters or digits to gain a more desirable word. Eight of the disputed domain names require overdial to correlate with the disputed domain names. The adding of digits or letters does not create any legal rights to the disputed domain names.
A smartnumber will correlate to numerous multiple letter strings (from between 729 to 4096), however the Complainant does not have rights to every word or letter combination that can be created from the number. The Complainant is a mere licensee of a smartnumber for a finite period of time, and renewal is subject to payment of applicable fees. No intellectual property rights are transferred. The Complainant has not acquired rights as required by the Policy, other than the simple right to use the smartnumber as a phone number. If it were otherwise, every person would have rights to the words spelled from their telephone number or mobile number, which would be absurd.
None of the smartnumbers reflected in the disputed domain names could be registered as word trade marks as they are not distinctive. The Complainant has presented no evidence of acquiring any secondary meaning in its licensed smartnumbers.
The Respondent registered the <1300electrical.com.au> domain name on November 1, 2004, while the smart number 1300 353 287 was registered by the Complainant on June 21, 2005, six months after the Respondent's domain name registration.
Prior to notice of this dispute, the Respondent used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services.
The Respondent considered that there was a niche for an online directory of 1300 numbers that were available for sale or lease. The Respondent registered approximately six hundred 1300, 1800 and 13 prefixed generic domains that would be suitable for describing the different categories of numbers that might be sold under each domain heading. These domains would be linked together over a network, and connected to the core domain of <1300directory.com.au>. The ultimate purpose was establishment of an advertising portal or network where smartnumber registrants could list their smartnumbers for lease or sale (for an advertising fee). Search engine optimisation is dependant on the number of relevant links a website has, so the numerous domains owned by the Respondent would help to gain awareness for the core 1300 directory.
The Respondent's business plan existed from 2005. It is not an original business model, and it will be fully implemented in due course. The Respondent envisages that in the future, people will be able to use smartnumber domain names to achieve connection with providers of goods and services via Voice Over IP, chat, email or video.
The Respondent's company name has been 1300 Directory Pty Ltd since incorporation in February 2005. This is evidence of the Respondent's primary purpose of conducting a 1300 directory.
However, despite owning 600 generic domains, the Respondent was unable to convince smartnumber brokers to list with him, and lacked the necessary capital to build his network. The Respondent was approached by various parties to purchase certain smartnumber domain names however these offers were always initiated by others and not the Respondent. Some offers were made just prior to the change in auDA's domain name transfer policy, while others were made after the policy had come into effect. The majority of efforts to sell by the Respondent which have been put forward by the Complainant relate to domain names not the subject of this dispute. Only one of the disputed domain names is referred to by the Complainant as being offered for sale by the Respondent.
auDA has recently upheld that there was a close and substantial connection between the Respondent's domain names and the 1300 directory business. Therefore the Respondent satisfies auDA's eligibility criteria.
The Respondent has only registered domain names for their purely generic value, as is evident from the fact that the Respondent has registered domains such as “13gas.com.au” and “1300voip.net.au” which are incapable of being smartnumbers as they do not have a sufficient number of digits. It would be impracticable (for business reasons) for the Respondent to use sub-domains instead of registering a large number of smartnumber domains.
As the Complainant does not have rights in the disputed domain names, the Respondent could not have registered them with the intention of preventing any person from reflecting a name. Nor could the Respondent have acted to disrupt the business of any other person, as it was merely acting in pursuance of a legitimate business model.
To succeed in its claim, a complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the respondent 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 to the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the complainant.
The Complainant does not allege that it holds trade mark rights in the disputed domain names. Rather, the Complainant contends that its rights arise via its ownership of certain “phonewords”, which are names for the purposes of the Policy. In this regard, the Complainant focuses on the term “phoneword” rather than “smartnumber”.
The Complainant contends that it has received from ACMA a licence to the following smartnumbers, which equate to the corresponding phonewords: 1300 353 287 (1300ELECTRICAL), 1300 336 246 (1300FENCING), 1300 426 737 (1300HAMPERS), 1300 774 684 (1300PRINTING), 1300 772 759 (1300SPARKY), 1300 933 346 (1300WEDDINGS), 1300 222 686 (1300ACCOUNTANT), 1800 562 576 (1800LOCKSMITH) and 1300 758 624 (1300 PLUMBING).
It could be that one or more of these smartnumbers spells a different word than those outlined above. The ACMA licence to a smartnumber is only for a telephone number, and the licence does not explicitly refer to any word. In some cases, there may be no word that corresponds to a smartnumber (e.g., 131111). It is not clear whether the Complainant alleges to have rights in any or every name which can be extracted from the licensed numbers, or only the words that correspond to the disputed domain names? For example, would a licensee of the smartnumber 13 24 72 have rights under the first element of the Policy in all of the corresponding domain names / phonewords such as “13 AIRCRAFT”, “13 AIRCON”, “13 CIRCLE” and “13 CIRCUS”?
The Panel has noticed as a preliminary point that the Complainant's contentions as to ownership of the relevant smartnumbers does not appear to be supported by the information available on the smartnumbers website.
After a successful bidder for a smartnumber pays the relevant bid amount to ACMA, it obtains the rights of use (ROU) to that number. The winning bidder may provide the ROU to another party.
The ACMA website provides details on the winning bidder and ROU holder for each smartnumber. For 1800 562 576 (which corresponds to 1800LOCKSMITH), 1300 Australia Pty Ltd is listed as both the winning bidder and ROU holder. For 1300 933 346 (which corresponds to 1300WEDDINGS), Mister Magnets P/L t/a AmeriTel Enterprises is the winning bidder, while Multi National Concepts is the ROU holder. For 1300 336 246 (which corresponds to 1300FENCING), 1300 Australia Pty Ltd is the winning bidder and National Dial A Word Registry is the ROU holder.
The ACMA website states that the ROU is effectively the legal right to use the number. Therefore, at a minimum, the Complainant should hold the ROU for each smartnumber listed above. This does not appear to be the case, according to the information on the smartnumbers website. Out of the nine smartnumbers relevant to this proceeding, the named Complainant only appears to hold the ROU in respect of five smartnumbers. The Complainant has not provided evidence to the contrary on this issue. It may not be sufficient that a related entity of the Complainant (such as National Dial A Word Registry) is the ROU holder, as National Dial A Word Registry is not a complainant in these proceedings. But in any event, it is not necessary for the Panel to decide that issue here.
Leaving ownership issues aside, the key issue for determination under this element is whether the smartnumbers in which the Complainant has licence rights should be considered as a “name” for the purposes of the Policy. Both the Complainant and Respondent have put forward forceful arguments on this issue.
As a starting point, the wording of the Policy does not expressly consider phonewords. Note 1 to the Policy states:
“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”.
As the Respondent rightly points out, there are significant differences between a name (which is the wording used in the Policy) and a number (which is ultimately what the Complainant has a right to own, as admitted by the Complainant).
Generally speaking, a name is a word or a series of words used to identify a thing, such as a person or a legal entity or a product or a place. One would not usually consider a telephone number to be a name.
Some numbers can be names or trade marks, or form part of a name or trade mark. For example, “911” is a registered trade mark of Porsche and “747” is a registered trade mark of Boeing in some jurisdictions. “7-UP” and “Mitre 10” are well known brands that include numbers. However, as a general point in relation to the Policy, the recognition of a number as a name or trade mark will generally only occur where the number has enjoyed significant promotion and has a reputation that can be tied to particular goods or services, or where the number is the legal name (identifier) for a legal person.
The difficulty for the Complainant in this case is that it has not put forward any evidence that its phonewords are recognised as a name (or identifer or label) for a legal entity or any other thing, or as a trade mark for any goods or services. The Complainant has or may have a licence, sublicence or RTU use certain numbers, and there is evidence that the Complainant is aiming to lease those numbers to third parties to use as memorable telephone numbers.
When one of the smartnumbers the subject of this dispute was dialled by the Panel (1300 electrical), a recorded message was received which stated:
“If you're interested in securing this powerful phoneword for your business, call National Phonewords Registry on 1300 Registry or visit phonewords.com.au. Discover how your phoneword will become your ultimate marketing weapon, crushing your competition and helping your company become the market leader in your industry. Act now or risk your competitor forever securing this unfair advantage. Call National Phonewords Registry on 1300 Registry or visit phonewords.com.au.”
This reinforces the Panel's view that the Complainant is not currently using the smartnumber as a name or brand. Its primary objective is to sublicence the smartnumber to someone who does want to use the smartnumber as a telephone number, and maybe as a name or a brand. It is entirely possible that the ultimate sublicensee may use the smartnumber as a memorable telephone number, but not use or promote the number as a name or brand.
Without some evidence of promotion of the smartnumber and its recognition as a name, the Panel cannot see how the Complainant has rights in a “name” for the purposes of the first element of the Policy. If it were otherwise, any telephone number (such as a landline or mobile telephone number) which is leased to a certain person could arguably also constitute a name under the Policy, and as the Respondent notes, this would be an absurd result.
The Panel agrees with the Respondent that a telephone number per se was not intended to be a “name” within the meaning of the Policy.
Similarly, a vehicle licence plate number (including a vanity plate) even if issued by the government would not usually be considered to be a “name” within the meaning of the Policy.
The Panel wishes to make it clear that its finding does not prevent an entity holding or obtaining rights in a phoneword from having rights for the purposes of the first element of the Policy. The Panel is aware of well known phonewords which could well enjoy protection, either as a trade mark or a name, such as 1300 FLOWERS.
All the Complainant has shown in this case is that it may have an exclusive licence to a telephone number. When the Panel views one of these numbers (1300 758 624), it cannot automatically recognise it as 1300 PLUMBER, and it doubts any member of the public would. This is partly because the word does not exactly correlate with the digits - there is an extra letter in PLUMBER, which is not reflected in the smartnumber. Thus, for the purposes of the first element of the Policy, without evidence that the smartnumber is being used and is known as a phoneword, it is hard for the Panel to find that the smartnumber telephone number consisting of digits is “confusingly similar” to a domain name consisting of words.
The Panel notes that a finding was made for the complainant in John Kolenda v. 1300 Phonewords Pty Ltd, WIPO Case No. DAU2009-0001, which also involved the issue of phonewords. The facts in that case are different to the facts present in this case. For example, in Kolenda, the respondent was a prior owner of the phoneword in question. The complainant also provided evidence that it purchased the phoneword at auction with a plan to use the name in connection with business services, run under a name corresponding to the phoneword. That is not the case here. The Complainant runs a phoneword registry, where it sublicences its smartnumber to third parties. While those third parties may commence a business under the phoneword, the Complainant is not doing so, and as such, has no rights with respect to the first element of the Policy.
In summary, the Complainant does not assert that any of the phonewords or smartnumbers that it has a licence to use are a trade mark, service mark, company name, business name or trading name of the Complainant. In the circumstances of this case, the Panel does not consider that a telephone number per se is a “name” within the meaning of the Policy.
The Complainant has failed to establish the first element.
Although not relevant to this element, the Panel also understands that one of the disputed domain names was registered before the Complainant received a licence for the corresponding phoneword (1300 ELECTRICAL). This would indicate, at least in relation to this domain, that the Respondent may have had rights or legitimate interests in the name, although for the reasons stated above, it is not necessary to come to any conclusion on that point.
For all the foregoing reasons, the Complaint is denied.
Dated: June 7, 2009