WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Radio 2UE Sydney Pty Limited, Radio 3AW Melbourne Pty Limited and Harbour Radio Pty Limited v. James Flavin
Case No. D2016-1797
1. The Parties
The Complainants are Radio 2UE Sydney Pty Limited (First Complainant), Radio 3AW Melbourne Pty Limited (Second Complainant), and Harbour Radio Pty Limited (Third Complainant) of Pyrmont, New South Wales, Australia, represented by Banki Haddock Fiora, Australia.
The Respondent is James Flavin of Beverly Hills, New South Wales, Australia.
2. The Domain Names and Registrars
The disputed domain name <2gb.news> is registered with Wild West Domains, LLC.
The disputed domain name <2ue.news> is registered with GoDaddy.com, LLC.
The disputed domain name <3aw.news> is registered with Blue Razor Domains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2016. On September 5, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 7, 2016, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant for the three disputed domain names and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on October 18, 2016. 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 Complainants are each Australian corporations owned by the same ultimate holding company, Fairfax Media Ltd, and are each members of the Macquarie Radio Network. They have common directors and each operates as a commercial radio station in the Australian cities of Sydney, in the case of the First and Third Complainant, and Melbourne, in the case of the Second Complainant. Each Complainant provides broadcasting services which include a substantial news component. The Complainants have sought consolidation of these Complaints.
Each Complainant operates under a call sign assigned by the Australian Communications and Media Authority, namely, respectively, 2UE (Sydney), 3AW (Melbourne), and 2GB (Sydney). Each of the Complainants is the owner of an Australian registered trademark corresponding to its call sign dating from May 7, 2010 (December 17, 2010). Each of the Complainants also operates a website at a web address incorporating its respective call sign and trademark.
Whilst the Complainants’ trademarks were registered only in 2010 the radio stations which they operate have been operating under their respective call signs for many years prior to that. Radio 2UE has been operating in Sydney since 1925, Radio 2GB has been operating in Sydney since 1926 and Radio 3AW has been operating in Melbourne since 1932.
The disputed domain names were each registered on July 15, 2015. Each of the disputed domain names redirects to the corresponding website of the respective Complainant.
According to the Complainants the Respondent is associated with a website broker named “Missed My Domains” which, on its website at <missedmy.domains> states that:
“We are an Australian based Website broker.
We buy and sell websites on behalf of clients
who were “too slow out of the blocks” to buy
them when they initially became available.”
The Respondent registered the disputed domain names in the “.news” generic Top-Level Domain (“gTLD”) when that domain became open for registration. On July 21, 2015, shortly after the registration of the disputed domain names, the Respondent offered to sell the disputed domain names to the head of Digital at the Macquarie Radio Network (to which the Complainants belong) for $5,000. Again on April 2, 2016 the Respondent offered to sell them for $19,500.
5. Parties’ Contentions
Each of the Complainants respectively asserts registered trademark rights in a trademark corresponding to its allocated call sign. Each contends that the respective disputed domain name is identical to its corresponding registered trademark.
Each Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name corresponding to its registered trademark.
The Complainants contend that:
- the Respondent is not ordinarily known by any of the trademarks corresponding to the disputed domain names nor has he been licensed by any of the Complainants to use their respective trademarks;
- none of the disputed domain names has ever been used in connection with a bona fide offering of goods or services. Each of the disputed domain names redirects to the corresponding website of the respective Complainant;
- the Complainants’ trademarks each reflect a unique radio call sign allocated by the Australian Communication and Media Authority (ACMA); and
- the Respondent is not licensed by ACMA to use their call sign and cannot claim to have any rights or legitimate interest in any of those call signs.
The Complainants contend that the disputed domain names were registered and used in bad faith. Each of the Complainants submit that the disputed domain names were registered primarily for the purpose of selling the domain names to the Complainants for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Consolidation of Complaints
The Complainants have requested consolidation of their Complaints against the Respondent. In this case the Complainants are subject to a common ownership and control and are each aggrieved by the same conduct of the Respondent. In the Panel’s opinion it is administratively efficient and equitable to consolidate the Complaints, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
The Panel therefore accepts the consolidated Complaint.
A. Identical or Confusingly Similar
Apart from the gTLD “.news”, each of the disputed domain names is an exact match for the corresponding trademark and call sign of the respective Complainants. The Complainants each holds a registration for its respective trademark. It is well established that the gTLD should normally be disregarded for the purpose of comparison of a trademark with a domain name under the Policy, see WIPO Overview 2.0, paragraph 1.2.
The Panel therefore finds that disputed domain names are each identical to the corresponding trademarks in which the Complainants have rights.
B. Rights or Legitimate Interests
The Complainants have established a prime facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Those disputed domain names reflect the unique call sign allocated to the broadcasting services conducted by the respective Complainants. The Respondent is not licensed to use those call signs. It is extremely unlikely therefore that the Respondent would have any basis upon which to claim a relevant right or interest. There is no evidence that the Respondent can satisfy any of the criteria set out in paragraph 4(C) of the Policy nor of any other circumstance which might justify such a claim. The Respondent had the opportunity to respond to the Complainants’ assertions but failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
The Respondent has an address which is located in Sydney, New South Wales, Australia. The First and Third Complainants are long established commercial radio stations operating in the Sydney area for over 90 years and hold between them 3,6 and 12,1 percent respectively of the Sydney radio market. The Second Complainant has operated in the Melbourne market since 1932 and holds 15.2 percent of the Melbourne radio market. Each of these radio stations follows a format largely devoted to the provision of news, commentary and talk back radio. It is inconceivable that a Sydney resident would not have been well aware of the Complainants and their respective trademarks and call signs.
The evidence indicates that the Respondent is associated with the website at <missedmy.domains> and that as part of the business operated at that website the Respondent registered the disputed domain names specifically for the purpose of selling them to persons who “were too slow out of the blocks” to register domain names when they became available. While there may be circumstances in which it would be legitimate to register domain names which may be regarded as potentially valuable as and when the possibility of registration in a particular domain becomes available, that does not extend to circumstances where the domain name appropriates a well-known trademark and the registration is for the purpose of selling the domain name to the trademark owner for profit. That is precisely the type of conduct which the Policy is intended to remedy. In the present case the Respondent clearly registered the disputed domain names with the intention of selling them to the Complainants and proceeded to offer them to the Complainants for an amount far in excess of his reasonable out-of-pocket expenses. The Respondent’s conduct therefore satisfies the circumstance set out in paragraph 4(b)(i) of the Policy.
The Panel therefore finds that each of the disputed domain names has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that:
(a) the disputed domain name <2ue.news> be transferred to the First Complainant;
(b) the disputed domain name <3aw.news> be transferred to the Second Complainant; and
(c) the disputed domain name <2gb.news> be transferred to the Third Complainant.
Desmond J. Ryan AM
Date: October 26, 2016