WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Capital Equity Pty Ltd., Kerry Stokes v. Domains by Proxy, LLC / Vicki Rodgers
Case No. D2017-0751
1. The Parties
The Complainants are Australian Capital Equity Pty Ltd. and Kerry Stokes, both of West Perth, Western Australia, Australia, represented by Herbert Smith Freehills, Australia.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Vicki Rodgers of Brisbane, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <kerrystokes.net> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2017. On April 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2017, the Registrar transmitted by email to the Center its verification response confirming, inter alia, that:
(a) it is the Registrar for the disputed domain name;
(b) the registration agreement is in English;
(c) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name,
but disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 24, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 28, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 29, 2017. 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 First Complainant was incorporated in Australia in 1980. The Second Complainant has been its chairman and a director since that date. It is an investment vehicle owning shares in a wide range of enterprises including Seven Network Limited, a commercial free to air television broadcaster in Australia, and Seven West Media Limited which, amongst other things, publishes the West Australian newspaper. The Seven Network in particular has been the highest rated television network since 2005.
In his capacities as Chairman of those businesses, the Second Complainant is frequently referred to and quoted in the media.
The Second Complainant has received numerous awards and honours, having been awarded the Order of Australia in 1995 and made a Companion of the Order of Australia in 2008.
The Second Complainant also maintains an extensive and valuable art collection known as The Kerry Stokes Collection. The Kerry Stokes Collection is maintained by seven employees and often lends out part of its holdings for exhibitions at public galleries and museums. One such exhibition involved the loan of the Rothschild Prayerbook and 60 other artworks, many from the Flemish school, to the Ian Potter Museum at the University of Melbourne. Other exhibitions have featured items of indigenous art from the collection.
The disputed domain name appears to have been first registered on June 11, 2015. At or just before the Complaint was filed, it resolved to a website which made serious allegations against the Second Complainant, which the Complainants contend are false and defamatory.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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 and is being used in bad faith.
No response has been filed. The Complaint has been notified, however, to the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly notified to both Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
As the Registrar has confirmed that the second-named Respondent is the person who has registered the disputed domain name using the first-named Respondent’s service and the first-named Respondent does not claim any rights or interests in the disputed domain name independently of the second-named Respondent, it will be sufficient to refer to the second-named Respondent as the Respondent in the remainder of this decision.
A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
Neither of the Complainants has registered the name KERRY STOKES as a trademark.
As noted above, however, the Second Complainant is a very prominent Australian businessman and frequently referred to and quoted in the Australian media in connection with the business activities of the companies and charitable activities he is associated with. Although for the most part it does not appear that the Second Complainant has sought to exploit his name in connection with goods or services such as through character merchandising, the evidence in the Complaint does show that the Second Complainant’s name is associated with the marketing and promotion of exhibitions from The Kerry Stokes Collection. Having regard to the extent of the references to the Second Complainant in the media and these other activities, the Panel considers it likely that the Second Complainant has developed a reputation in Australia in the name KERRY STOKES which would be capable of protection by means of passing off or under the consumer protections against misleading or deceptive conduct. Accordingly, the Panel finds that the Second Complainant has rights in the name KERRY STOKES sufficient for the purposes of the Policy.
The Complainants also contend that the First Complainant has rights in the Second Complainant’s name. It is not exactly clear precisely how the First Complainant claims to have rights over the Second Complainant’s name but, having regard to the findings above, it is not necessary to resolve this issue.
Disregarding the “.com” generic Top-Level Domain Name (“gTLD”), the disputed domain name is identical to the Second Complainant’s protectable name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical to the Second Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainants 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 the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] 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 Complainants (in this case, at least the Second Complainant). Panels have recognized the difficulties inherent in proving 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, Third Edition.
The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with them in any relevant way. The disputed domain name is plainly not derived from the Respondent’s name. Having regard to the content of the website to which the disputed domain name resolves, none of these matters could be seriously disputed by the Respondent.
All of these factors combine to provide a sufficient basis to find a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Having regard to the content of the website to which the disputed domain name resolves, it could be argued that the Respondent could claim a right or interest in using the disputed domain name as some sort of criticism site.
First, the Panel notes that the Respondent in this proceeding has not sought to claim that her use is in fact a genuine noncommercial or otherwise fair use. Any finding that that is the case would need to be derived from inference from the nature of the use proved.
Secondly, the sample website print-outs included in the Complaint do include some click-through or pay-per-click advertisements. Not all the extracts from the Respondent’s website that have been included in the Complaint have been printed out in full. So it is difficult to fully assess the nature and extent of the pay-per-click advertising.
Thirdly, the Complainants claim that there is further evidence that the Respondent is indirectly seeking a commercial gain by reason of links from the disputed domain name website through to another website at “www.kangaroocourtofaustralia.com”. This website also appears to consist largely of “posts” about numerous legal battles between one Shane Dowling and the Complainants. Indeed, so far as the evidence in this dispute goes, it would appear that the material posted on the Respondent’s website at the disputed domain name was just material reposted from the website at “www.kangaroocourtofaustralia.com”.
The website at “www.kangaroocourtofaustralia.com” does offer for sale T-shirts emblazoned with “Kangaroo Court of Australia” and a device of a kangaroo. Some of the pages in evidence, however, also include pay-per-click advertisements including for “Kobo” e-books (including one about the Second Complainant) and for real estate agents.
The Panel would not be prepared to accept that the Respondent indirectly obtains a financial advantage from “www.kangaroocourtofaustralia.com” as the Complainants contend. In view of the apparent cross-posting between “www.kangaroocourtofaustralia.com” and the website to which the disputed domain name resolves, and the similarity of the page layouts and some of the pay-per-click advertisements on both sites, however, the Panel considers it likely that the nature and extent of the pay-per-click advertising on the website at “www.kangaroocourtofaustralia.com” is indicative of the pay-per-click advertising which was taking place on the Respondent’s website.
In the circumstances that the Respondent has not herself even sought to claim a legitimate interest in the disputed domain name and there is evidence that the Respondent was engaged in using pay-per-click advertising at the website to which the disputed domain name resolved and so was not making a non-commercial use of the disputed domain name, the Panel is not willing to find that the disputed domain name was being used for a genuine criticism site which would confer rights or legitimate interests under the Policy.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Panel would readily infer that the Second Complainant features so frequently in the media that it would be very unlikely that the Second Respondent did not know of the Second Complainant when registering the disputed domain name. The nature of the content at the website to which the disputed domain name resolved provides very strong support for the conclusion that the Respondent was very well aware of the Second Complainant.
That knowledge taken together with the absence of rights or a legitimate interest in the disputed domain name in the circumstances outlined in section 5B above leads to a finding that the Respondent registered the disputed domain name in bad faith under the Policy and has been using it in bad faith.
Accordingly, the Complainant has established the third requirement under the Policy.
For 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 <kerrystokes.net> be transferred to the Second Complainant, Kerry Stokes.
Warwick A. Rothnie
Date: June 12, 2017