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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Benalla Rural City Council v. Roy Turner

Case No. D2017-2331

1. The Parties

The Complainant is Benalla Rural City Council of Benalla, Victoria, Australia, represented by Maddocks, Australia.

The Respondent is Roy Turner of Southfield, Michigan, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name, <benallaartgallery.com> (the “Domain Name”), is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2017. On November 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2017, the Registrar 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 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 December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2017.

The Center appointed Tony Willoughby as the sole panelist in this matter on January 8, 2018. 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 is a Rural City Council in the State of Victoria, Australia. It is a body corporate with perpetual succession. It may sue or be sued in its corporate name. It is capable of acquiring, holding, dealing with or disposing of property for the purpose of performing its functions and exercising its powers.

One of the Complainant’s assets is the Benalla Art Gallery specializing in Australian art, which it has owned and operated since the gallery opened in 1975. The Complainant’s Annual Report for 2015-16 shows that in that year the Complainant spent AUD 487,000 in relation to the gallery and its activities (e.g. exhibitions, workshops and talks) and derived an income from it of AUD 180,000.

The Domain Name was registered on February 28, 2017, but does not appear to be connected to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name (absent the “.com” generic Top-Level Domain) is identical to the Complainant’s “Benalla Art Gallery” name and unregistered trade mark. It contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. In this respect it relies upon the decision in Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

Self-evidently the Domain Name is identical or confusingly similar to the name of the Complainant’s art gallery, the Benalla Art Gallery. The issue here is whether, in the absence of any trade mark registration, the Complainant has done enough to establish that that name is a trade mark of the Complainant.

Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which seeks to answer the question ‘What does a complainant need to show to successfully assert unregistered or common law trade marks rights?’ commences:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”

Further on the section contains the following paragraph:

“The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”

In this case the Complainant has produced evidence to demonstrate that the name has been in use since 1975, that the sales and expenditure on the gallery’s activities were substantial in the year 2015-16 and that the name is likely to be very well-known in the area covered by the Complainant’s area of responsibility and beyond. It is an unusual name, probably unique, and the Respondent has reproduced it in full in the Domain Name. There being no challenge to the Complainant’s contentions, it is the Panel’s view that the Respondent selected the Domain Name clearly targeting the name of the Complainant’s gallery.

The Panel is satisfied that for the purposes of this proceeding the Complainant can be said to hold unregistered trade mark rights in respect of the name of its gallery.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has unregistered rights.

C. Rights or Legitimate Interests

What possible reason could the Respondent put forward justifying his registration of the Domain Name? On the evidence before the Panel it is an unusual name, probably unique, and precisely replicates the name of the Complainant’s gallery. The Complainant has satisfied the Panel that it has made out a prima facie case under this element of the Policy and that the Respondent has a case to answer.

The Respondent has failed to provide an answer.

In the absence of an answer the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The Panel has already found that the Domain Name is substantially identical to the Complainant’s trade mark and that the Respondent registered the Domain Name targeting that trade mark and without any right or legitimate interests in respect of it.

What was the Respondent’s purpose in registering the Domain Name? The Respondent has had an opportunity of answering the Complainant’s contentions, but has not availed himself of that opportunity.

The Complainant, recognizing that it is incumbent upon it to prove use in bad faith as well as registration in bad faith and recognizing further that the Respondent is making no use of the Domain Name, relies upon the Telstra decision, the underlying principles of which are set out in Section 3.3 of WIPO Overview 3.0:

“Can the “passive holding” or non-use of a domain name support a finding of bad faith?

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The Respondent does not appear to have sought to conceal his identity, but the name of the Complainant’s gallery is highly distinctive, the Respondent has failed to submit a Response and, in the view of the Panel, it is difficult to see what justifiable use the Respondent could make of the Domain Name.

Looking at it another way, and on the basis that nobody registers a domain name for no reason, if the Respondent had a justifiable reason for registering the Domain Name he could and should have come forward with it in a Response, but he did not do so. In the view of the Panel, in such circumstances it is likely that the Respondent has no satisfactory answer to the Complainant’s contentions and registered the Domain Name to exploit the trade mark value of the Domain Name. In the Panel’s view, the current non-use of the Domain Name constitutes an abusive threat hanging over the head of the Complainant and, as such a continuing abusive use of the Domain Name.

The Panel finds that the Domain Name has been registered and is being used in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <benallaartgallery.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: January 12, 2018

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