WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mark Livesey QC and The New South Wales Bar Association v. Derek Minus and Dispute Resolution Associates Pty Ltd.
Case No. DAU2014-0011
1. The Parties
The Complainants are Mark Livesey QC (“First Complainant”), authorised to act on behalf of the Australian Bar Association, and The New South Wales Bar Association (“Second Complainant”), both of Sydney, New South Wales, Australia, both represented by Worthy of the Name Pty Ltd, Australia.
The Respondents are Derek Minus (“First Respondent”) and Dispute Resolution Associates Pty Ltd. (“Second Respondent”), both of Turramurra, New South Wales, Australia, both represented by the First Respondent.
2. The Domain Names and Registrar
The disputed domain names <austbar.com.au> and <baradr.com.au> are registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2014. On April 23, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On May 2, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the respective Respondents are listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on May 6, 2014.
The First Respondent sent an email communication, and submitted a letter, on April 28 and 30, 2014 respectively.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2014. On May 20, 2014, the Second Respondent filed a request for extension of the Response due date. On May 23, 2014, the First Respondent submitted a letter. On the same day, the Complainant objected to the Second Respondent’s request for extension of the Response due date. On May 23, 2014, the Center extended the Response due date to June 2, 2014. On May 25, 2014, the First Respondent submitted a letter. Both the First Respondent’s Response and the Second Respondent’s Response were filed with the Center on June 2, 2014.
On June 16, 2014, the Respondents submitted a supplemental filing. On June 25, 2014, the Complainants submitted a supplemental filing in reply to the Respondent’s supplemental filing.
The Center appointed Michael J. Spence, Mary Padbury and Andrew F. Christie as panelists in this matter on July 21, 2014. The Panel finds that it was properly constituted. Each member of 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 July 29 and 30, 2014, further email communications from the Respondents were sent to the Center. On August 15, 2014, the Respondents submitted a further supplemental filing.
4. Factual Background
The First Complainant is the President of the Australian Bar Association (the “ABA”), and is authorized to act on its behalf. The ABA was formed in 1962 and is the peak representative body for Australian barristers. It is an unincorporated association, and thus does not have legal personality under Australian law (i.e., it is not capable of holding property, suing or being sued in its own name). The First Complainant, as trustee for the ABA, is a joint owner, along with numerous other individuals, of: (i) an Australian trade mark registration for AUSTRALIAN BAR ASSOCIATION, registered from December 18, 2013; (ii) an Australian trade mark registration for ABA AUSTRALIAN BAR ASSOCIATION (with image of scales in annulus), registered from May 21, 2013; (iii) an accepted Australian trade mark application for AUSTRALIAN BAR ASSOCIATION, accepted on January 6, 2014; and (iv) an accepted, but under opposition, Australian trade mark application for AUSTBAR, accepted on August 7, 2013.
The Second Complainant is a voluntary association of practicing barristers and an Australian public company limited by guarantee. On April 12, 2011, the Second Complainant registered the business name BARADR. The ABA states that it represents the Second Complainant (and its members) at the national level.
The First Respondent is a barrister-at-law who has been practicing in Australia for over 22 years. Called to the Bar in 1991, he was accredited as a mediator in 1992 and qualified as a Chartered Arbitrator in 2002. The First Respondent is the registrant of the disputed domain name <baradr.com.au>, which was registered on March 18, 2011. Neither the amended Complaint nor the First Respondent’s Response make fully clear to what use, exactly, that disputed domain name has been put since registration. The amended Complaint simply states that the First Respondent placed an advertisement “promoting ABC and joint ‘profile listings’ on austbar.com.au and baradr.com.au for a fee”. The First Respondent’s Response states that “the outline of a website” was established "to provide information about ADR services offered by barristers in Australia”. As at the date of this decision, the disputed domain name <baradr.com.au> resolved to a website, the pages of which appeared to have no substantive content.
The Second Respondent is an Australian company incorporated on December 9, 1999 and apparently controlled by the First Respondent. For over 15 years it has provided dispute resolution services to the Australian marketplace. The Second Respondent is the registrant of the disputed domain name <austbar.com.au>. That disputed domain name was first registered on July 7, 2011, by Australasian Barrister Chambers Pty Ltd (“ABC”). On some date that is unspecified, the Second Respondent became the registrant of that disputed domain name. That disputed domain name resolves to a website on which appears, among other things: the name “Australasian Barrister Chambers”; information about the practice of barristers in Australia; a mechanism for searching for barristers Australia-wide by name, state association, phone number or chambers; and a list of a small number of barristers with details of their areas of practice and expertise.
5. Parties’ Contentions
Because the Panel’s determination of the preliminary procedural issue of consolidation (see below, section 6) results in this Complaint being denied, the Panel sets out below only those of the parties’ contentions that concern the issue of consolidation.
The amended Complaint requests “consolidation of the complaints” on the grounds that consolidation is procedurally efficient, and fair and equitable to all parties, and fulfills the purpose of paragraph 1.2 of the Policy to provide a cheaper, speedier alternative to litigation.
The amended Complaint asserts that the disputed domain names “are the subject of common control”, on the basis that: (i) the First Respondent is the sole director of the Second Respondent; (ii) the “Registrant and Tech” contact name for both disputed domain names is the First Respondent; (iii) both disputed domain names are with the same Registrar; (iv) for both disputed domain names, the website to which each resolves contains a copyright notice in which appears the name of ABC (of which the First Respondent is the sole director); (v) the principal business address of the First Respondent, the Second Respondent and ABC are the same; and (vi) the websites to which each disputed domain name resolves causes the URL bar of a web browser to display the same favicon (i.e., a small graphic that precedes the website’s URL).
The Complainants’ supplemental filing of May 23, 2014, asserts that the Complainants “have a related and common interest” in the disputed domain names, based on the facts that: (i) the “Constituent Bodies” of the ABA under its Constitution include, along with the other State and the Territory Bar Associations of Australia, the Second Complainant; and (ii) the Second Complainant, along with the other Constituent Bodies of the ABA, are the authorized users of the ABA’s trademarks.
In communications filed prior to the filing of their formal Responses, the Respondents contested the Complainants’ request to consolidate the complaints for the two disputed domain names, “on policy, process and prejudice grounds”. The Respondents’ grounds for resisting consolidation are that: (i) allowing the Complainants to file multiple claims against multiple respondents without any common interest will not achieve the Policy’s objective of a cheaper, speedier alternative to litigation, but rather will increase the time, costs, and complexity of the process; (ii) proceeding with the disparate claims will overburden the panel, by requiring it to consider voluminous material to determine what is relevant; (iii) there is cause for confusion of the panel where one claimant has a trademark and the other does not, where one claimant is incorporated and the other is not, where one complainant is national and the other is not, and where one claimant is eligible to hold a domain name and the other is not; and (iv) the Respondents should not have to respond to irrelevant material that is of prejudicial effect but of no evidential value.
6. Preliminary Procedural Issue: Consolidation of Complaints
The Complaint has been filed by two complainants, against two respondents, in respect of two domain names. It is clear that neither paragraph 4(f) of the Policy nor paragraph 3(c) of the Rules (both or which are discussed in section 6A immediately following) expressly permits the manner in which the Complaint has been brought. The Panel is therefore required to determine, as a preliminary matter, whether the filing of the Complaint in this form is to be permitted. This raises three, separate, issues: (i) the issue of a single complaint being filed in respect of multiple domain names; (ii) the issue of a single complaint being filed against multiple respondents; and (iii) the issue of a single complaint being filed by multiple complainants.
A. Single complaint filed in respect of multiple domain names
The Policy and the Rules make limited express provision for the filing of a complaint in respect of multiple domain names. Under paragraph 4(f) of the Policy, where there are multiple complaints by the same complainant against the same respondent, either party may petition to consolidate the disputes before a single administrative panel. Under paragraph 3(c) of the Rules, it is possible for a single complaint to relate to more than one domain name, provided the domain names are registered by “the same domain name holder”. It can be seen, therefore, that the Policy and the Rules expressly permit the filing of a complaint in respect of more than one domain name in the situation where the holder of the domain names is the one and the same entity. By implication, the Policy and the Rules do not permit the consolidation of complaints in respect of domain names the holders of which are different, i.e., legally connected entities.
As paragraph 4.8A of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDRP Overview 1.0”) explains, different auDRP panels have come to different views on when a single complaint can be filed in respect of multiple domain names. In the Panel’s opinion, the filing of a single complaint in respect of multiple domain names should be permitted only where the holder of each of the domain names is one and the same entity. That does not mean, however, that a single complaint can be brought in respect of multiple domain names only where the registrant of each domain name as disclosed by the WhoIs record is the same person. Paragraph 1 of the Rules defines “Respondent” to be “the holder of a domain name registration against which a complaint is initiated”. The use of the word “holder” rather than “registrant” suggests that the “holder” of a domain name may be someone other than the registrant of it. Indeed, this must be so because there are situations in which the registrant of a domain name is not in fact the person who holds the true interest in the domain name. As explained in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345 (“Kimberly-Clark”), the instances in which this is so include: (i) where a privacy or proxy registration service has been used, because in that situation it may be said that the person who engaged the privacy or proxy service (sometimes called the “underlying registrant” or “beneficial owner”) is a “holder” of the domain name since that person has the power to determine the use to which the domain name is put; (ii) where the registrant is in some way under the control of another person, because in that situation it seems appropriate to consider the other (i.e., the controlling) person as a holder of the disputed domain name; and (iii) where the different registrants of record are, in fact, one and the same entity (i.e., where the different registrant names are simply aliases for a single entity), because in that situation the “holder” of the disputed domain names is the single entity for which the names of the registrants of record are aliases.
The Complainants have asserted that the disputed domain names in this case “are the subject of common control” – which is the second of the three instances identified in the Kimberly-Clark case. The Panel considers that the evidence provided by the Complainants supports this assertion, and notes that the Respondents have not expressly denied the validity of the assertion. Accordingly, the Panel finds, for the purpose of the Complainants’ request to consolidate the complaints, that the holder of the disputed domain names is one and the same person – namely, the First Respondent. Thus, the Panel would not deny the Complainants’ request for consolidation simply on the basis that the Complaint has been filed in respect of more than one domain name.
B. Single complaint filed against multiple respondents
In many of the instances in which a single complaint is filed against multiple respondents, each respondent will be the registrant of a different domain name. In those instances, the issue of consolidation will be determined by the outcome of the preceding determination – i.e., by the determination of whether to permit the bringing of a single complaint in respect of multiple domain names. This case is one of those instances. Thus, because the Panel would not decline the Complainants’ request for consolidation simply on the basis that the Complaint has been filed against two domain names (as explained in section 6A immediately above), the Panel also would not deny the Complainants’ request for consolidation simply on the basis that the Complaint has been filed against more than one respondent.
C. Single complaint filed by multiple complainants
The question of whether – and, if so, when – a single complaint can be filed by multiple complainants under the Policy was considered at length in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021 (“National Dial A Word”). The general principles set out in the National Dial A Word case have been adopted by a number of subsequent panels, determining cases under both the UDRP and the Policy – see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16; and auDRP Overview 1.0, paragraph 4.8A, 4.16(i) and 4.16(ii). According to National Dial A Word, the filing of a single complaint by multiple complainants should be permitted where the complainants have a common grievance against the respondent, but only so long as the consolidation of the complaints is procedurally efficient and equitable. According to National Dial A Word, multiple complainants will have a common grievance against the respondent where, inter alia: (i) the complainants have a common legal interest in the rights on which the complaint is based; or (ii) where the respondent has engaged in common conduct against the complainants. Where the multiple complainants are unable to show they have a common legal interest that justifies consolidation of their various claims, they would need to make “a compelling case” that the respondent has engaged in common conduct that has affected their individual rights in like fashion for consolidation to be permitted.
(i) Common legal interest
The Complainants asserted that they “have a related and common interest in the disputed domain names”, because the Second Complainant is a constituent body of the ABA and the Second Complainant is an authorized user of the ABA’s trademarks. Although no evidence was provided in support of the assertion that the Second Complainant is an authorized user of the ABA’s trademarks, the Panel is willing to assume, for the purpose of the Complainants’ request for consolidation, that this is correct. Thus, the Panel is willing to assume that the First Complainant and the Second Complainant have a common legal interest in the trademarks on which the complaint in respect of the disputed domain name <austbar.com.au> is based. Such a common legal interest would, in the Panel’s opinion, support a finding that the First Complainant and the Second Complainant have a common grievance against the holder of the disputed domain name <austbar.com.au>.
That common legal interest does not, however, support a finding that the First Complainant and the Second Complainant have a common grievance against the holder of the other disputed domain name, <baradr.com.au>. According to the amended Complaint, the claim in respect of <baradr.com.au> is based on the assertion that the Second Complainant “had acquired a reputation and goodwill in BARADR through promotion since December 2010”. The amended Complaint does not assert that the First Complainant has any legal interest in the reputation and goodwill that the Second Complainant has allegedly acquired in its unregistered trademark BARADR. Thus, it appears that no claim is being made by the Complainants that they have a common legal interest in the unregistered trademark BARADR. Accordingly, if the Complainants are to have a common grievance in respect of the disputed domain name <baradr.com.au> it must be for some other reason, such as because the Respondents have engaged in common conduct against the Complainants.
(ii) Common conduct
In the National Dial A Word case it was stated that the factors that are relevant to establishing common conduct against multiple complainants include: (i) the extent to which the complaint concerns domain names that appear to share readily identifiable commonalities; (ii) the extent to which any pattern of registration appears to underlie the complainants’ asserted common grievance, which may include the period of time over which the concerned domain names have been registered; (iii) the extent to which the disputed domain names are used for the same or similar purpose; (iv) the nature of the rights relied upon including whether the complainants rely on a single or multiple source of applicable rights; and (v) the extent to which the complainants’ substantive arguments made under each of the three elements of the Policy appear to be common to the disputed domain names.
The Panel is doubtful that the Complainants have established “a compelling case” that the Respondents have engaged in common conduct that has affected the Complainants’ rights in like manner. However, for the purpose of determining the consolidation issue, the Panel is willing to assume that the “holder” of the disputed domain names, the First Respondent, has engaged in common conduct towards the two Complainants. Accordingly, the Panel will proceed to determine whether, in the circumstances of this case, it would be procedurally efficient and equitable to permit consolidation of the complaints.
(iii) Procedurally efficient and equitable
The amended Complaint simply asserts that consolidation of the complaints is procedurally efficient, and fair and equitable to the parties. The Complainants’ supplemental filing adds simply: “If there are two separate complaints this will delay the proceedings and increase the costs and time required to resolve the Complaint.”
The Respondents’ submission resisting consolidation claims that allowing consolidation will: (i) “increase the time, costs and complexity of the dispute resolution process”; (ii) “overburden the panel and require it to wade through unnecessary material … [where] the complainants have already filed over 500 pages”; (iii) provide “great cause for confusion” for the panel due to the factually disparate nature of the complaints; and (iv) prejudice the Respondents by including “material that is irrelevant to the proper determination of the particular issues in dispute”.
The Panel is persuaded by the Respondents’ concerns about the effect of consolidation on the procedural efficiency of resolving the various disputes between the parties. Though within the prescribed word limit, the amended Complaint strikes the Panel as being convoluted and complex, largely because it seeks to cover two disputes that relate to rather different factual and legal issues (including because one complainant has a registered trademark while the other claims common law rights in an unregistered mark, and one complainant is incorporated while the other is an individual representing an unincorporated association). The fact that the Panel’s preliminary determination of the consolidation request has required such a lengthy decision of itself supports the Respondents’ position that consolidation will increase, not decrease, the time required to resolve the dispute. The Panel is strongly of the view the Complainants should never have contemplated consolidation of these two complaints, given the disparate factual and legal basis of them. The Panel concludes that it is not procedurally efficient to have the Complainants’ separate complaints against the Respondents resolved in a single Complaint. Accordingly, the Panel would deny the Complainants’ request for consolidation on the ground that it would be procedurally inefficient.
Separately, the Panel is of the view that consolidation of these complaints is not fair to the Respondents. While the Panel is willing to assume, for the purpose of the consolidation request, that each disputed domain name has a single “holder” (the First Respondent), it does not follow that the fact that each domain name has a different registrant is irrelevant to the claims. The First Respondent is entitled, as a matter of principle, to conduct his business interests through separate legal entities, and could normally expect claims against his separate legal entities to be considered separately. If consolidation of the claims were permitted, there is the potential for the Panel’s perceptions about the actions and intentions of one of the Respondents to “taint” the Panel’s perceptions of the other Respondent. Where there is the potential for such tainting to occur, consolidation of claims is likely to be unfair to the parties. Accordingly, the Panel would also deny the Complainants’ request for consolidation on the ground that it would be inequitable to the Respondents.
For all the foregoing reasons, the Complaint is denied. The denial of the Complaint is made subject to the right of the Complainants to file, in their individual capacity, should they wish to do so, a complaint against either of the Respondents in relation to either of the disputed domain names that are the subject of this Complaint.
Michael J. Spence
Andrew F. Christie
Date: August 25, 2014
The described use of the respective disputed domain names in section 4 above has been corrected as the order had initially been inadvertently switched.