WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orient Express Travel Group Pty Ltd v. Mookstar Media Pty Ltd (ACN 083 167 293)
Case No. DAU2015-0004
1. The Parties
The Complainant is Orient Express Travel Group Pty Ltd of Melbourne, Victoria, Australia, represented by Norgate McLean Dolphin, Australia.
The Respondent is Mookstar Media Pty Ltd (ACN 083 167 293) of Glenside, South Australia, represented by Cooper Mills Lawyers, Australia.
2. The Domain Name and Registrar
The disputed domain name <etg.com.au> (the "Domain Name") is registered with Drop.com.au Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2015, 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 .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 Respondent of the Complaint, and the proceedings commenced on February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. The Response was filed with the Center on March 18, 2015.
The Center appointed David Levin Q.C., Nicholas Smith and John Swinson as panelists in this matter on April 9, 2015. 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 an independent travel agency group that since 1983 has traded under the name "Orient Express Travel Group". The Complainant issues over 500,000 travel tickets annually, including tickets for Cathay Pacific Airways, Singapore Airlines, Malaysia Airlines and Thai Airlines. Since 2004 the Complainant has provided a number of goods and services using the prefix "Express". It presently operates a website (the Complainant's Website) from "www.etg.travel" which displays a logo that consists of an eight-point star, the letters "ETG", and below that the words "Express Travel Group". There is no evidence as to the page displayed at the Complainant's Website as at the date of the Complaint. The Complainant issues and sells airplane tickets from the Complainant's Website.
On December 9, 2014, the Complainant applied for an Australian Trade Mark registration for the acronym ETG (the "ETG Mark") for goods and services relating to travel organisations. It owns numerous registered trade marks for marks that consist of or feature the word "express" (the "EXPRESS Marks") and had previously applied for an Australian Trade Mark for the words "Express Travel Group" (the "EXPRESS TRAVEL GROUP Mark").
The Domain Name <etg.com.au> was created by the Respondent on March 4, 2008. The Domain Name redirected to a website which consists of a stylized knife and fork, the acronym "ETG" and a contact link (the "Respondent's Website"). The contact link sends the visitor from the Respondent's Website to a website that appears to be operated by the Respondent and consists of a page where people are invited to contact the Respondent. The Respondent owns over 1071 registered domains including 335 domain names consisting of three-letter acronyms.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's ETG or EXPRESS TRAVEL GROUP Marks;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant has traded under the name "Orient Express Travel Group" since 1983. In early 2014 the Complainant decided to adopt the EXPRESS TRAVEL GROUP and ETG Mark. Later in 2014 it apparently decided to adopt the acronym ETG in association with the EXPRESS TRAVEL GROUP name. The Complainant has applied to register EXPRESS TRAVEL GROUP and ETG as trade marks and has developed common law rights in each of these marks by way of the registration of the domain name <etg.travel>, registering a twitter account using the handle "@etg_Travel", registering a Facebook account under the name "Express Travel Group – ETG", sending notifications of this change to various travel agents and operating the Complainant's Website.
The Domain Name <etg.com.au> is confusingly similar to the EXPRESS TRAVEL GROUP and ETG Marks.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for "ETG" or any similar trade mark. The Respondent is not licensed or authorized by the Complainant to register the Domain Name. The Respondent does not have any other apparent rights in the Domain Name, nor does he appear to be commonly known by the Domain Name. The Domain Name is presently used in association with a holding page with the Respondent's associated business being in domain name trading. Furthermore, to the extent that the Respondent submits that it is using the Domain Name for providing a service of Australian restaurant listings referred to as the "E Taste Guide", there is no evidence of the development of a website, brand or business in the six years since the Domain Name was first registered.
The Domain Name was registered or is being used in bad faith. The Respondent has a history of registering domain names consisting of three-letter acronyms as well as deliberate misspellings of large and prominent business enterprises. The Respondent has been subject of adverse findings under auDRP proceedings and been the subject of online complaints relating to its conduct.
The Respondent submits that the Complainant is not known as ETG. The Complainant has not registered any such trading name nor has it (at the time of the Complaint) registered any such trade mark. The Complainant has only ever used ETG as part of its broader purported trading name EXPRESS TRAVEL GROUP (ETG). It has not established that it has common law rights in the ETG Mark. The EXPRESS TRAVEL GROUP (ETG) mark is clearly not identical or confusingly similar to the Domain Name. The mere fact that the Complainant's name could be abbreviated to ETG does not mean that it is confusingly similar.
The Respondent has made demonstrable preparations to use the Domain Name, as part of a business known as "E Taste Guide". The director of the Respondent has travelled the world and taken numerous Instagram shots of food for the purposes of the E Taste Guide. Furthermore the Respondent has prepared a logo for the E Taste Guide which is currently on the Respondent's Website.
The Complainant has not satisfied its burden to show that the Respondent registered the Domain Name in bad faith. The Complainant did not use Express Travel Group and ETG until well after the Domain Name was registered. Furthermore the Respondent's conduct does not fall within any of the circumstances under the Policy that amount to examples of bad faith. The Respondent did not register the Domain Name for the purposes of selling the Domain Name, preventing the owner of a mark from reflecting that mark in the Domain Name, to disrupt the business of a competitor, or to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant's name or mark.
The Panel should make a finding of Reverse Domain Name Hijacking against the Complainant. The Complainant has sought to recover a domain name consisting of a generic three-letter acronym which it adopted many years after the registration of the Domain Name. It attempted to purchase the Domain Name from the Respondent and withheld evidence of this attempted purchase and the Respondent's rejection. There was no reasonable prospect of the Complainant succeeding and on this basis the Panel ought to make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's name, trade or service mark.
The Complainant does not own a registered trade mark for the ETG Mark, rather it relies on its common law rights which arise from the launch of its new website at "www.etg.travel", its communication of its ETG brand to its travel agents and its development of business collateral. In particular the Complainant submits that, through its services, over 500,000 tickets are booked annually. The Complainant claims to have adopted the ETG and EXPRESS TRAVEL GROUP Marks. It says the use of its website at "www.etg.travel" is critical to its business, and refers to 500,000 travel tickets booked through its business. It refers to its substantial investment in "developing, promoting and launching its ETG brand."
The auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0") states, in response to the question "What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?" that:
"The requirement that the complainant has rights in a trademark or service mark is satisfied where the complainant can show that a name has acquired "secondary meaning" and become a distinctive identifier associated with the complainant or its goods or services – i.e., that it is a common law or unregistered trademark. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the name, surveys of consumer recognition of the name, and media references to the name. In at least one case, the panel treated as determinative of the issue the findings of an IP Australia Trade Marks Hearing Officer to the effect that the complainant had common law rights in an unregistered trademark.
To constitute a common law or unregistered trademark, the name does not need to be famous or well known. The key requirement is that the name has sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the complainant from those of other traders. However, merely trading under a name does not make that name distinctive. Where the complainant's alleged unregistered trademark consists of a generic or descriptive word, a strong case will be required to show that the word has become associated with the complainant and its goods or services. Operating a website which corresponds to an unregistered mark, and using that website in connection with business, will not necessarily give common law rights in that mark. Merely appending the domain name to an advertisement alongside other contact details will not suffice."
The Panel has closely reviewed the evidence in the Complaint regarding the transition to the ETG Brand. It appears from the Complaint that business cards with the ETG Mark were not due to arrive until '4/2', apparently February 4, 2015. The Complaint contains a rebranding announcement to airlines, agents and wholesalers which was sent on January 30, 2015 with the re-brand to be launched on February 2, 2015.
The Complainant in this Complaint filed on February 9, 2015, has submitted that common law rights arise by reason of its use of its website at "www.etg.travel". The domain name <etg.travel> was registered on September 9, 2014 and the website was not launched until February 2, 2015. While the Panel accepts that the Complainant sells 500,000 tickets a year to travel agents, the Complaint indicates that the travel agents purchase tickets from the Complainant using its Express Ticketing System. There is no basis to presume that those agents necessarily use the website at "www.etg.travel" to do so, nor that any reputation the Complainant has with those travel agents is found in the ETG Mark as opposed to the Complainant's reputation in and registered mark for EXPRESS TICKETING.
The Complainant has produced as an Annexure what it describes as a "Google Analytics audience overview report" for the Complainant's Website. Examination of that Annexure reveals that it purports to be an analysis of the Complainant's websites at "www.orientexpress.com.au", "www.selectravelgroup.com.au", "www.independentagents.com" and what is described as the "italktravel Member Platform". It does not purport to analyse <etg.travel>; indeed much of the Google Analytics report is for traffic in January 2015, before the launch of the website at "www.etg.travel".
The evidence of the Complainant is that the ETG Mark has only been used by it for a very limited period of time. Indeed at the date of this Complaint the acronym ETG in association with the name Express Travel Group had only been notified to the Complainant's agents and associates for just over a week. It is difficult to conclude, on the basis of the evidence before the Panel, that the ETG Mark has acquired "secondary meaning" and become a distinctive identifier associated with the Complainant or its goods or services in the one week between the launch of the ETG Mark and the filing of the Complainant. The Complainant has not established to the satisfaction of the Panel that it holds any common law rights in the ETG Mark.
The Domain Name <etg.com.au> consists of the acronym ETG and the country code Top-Level Domain suffix ".com.au". Disregarding the ".com.au" suffix, the Domain Name is identical to the acronym ETG being used by the Complainant. Notwithstanding this identicality, the requirement of paragraph 4(a)(i) of the Policy is not satisfied as the Complainant has not established "any name, trademark or service mark in which it has rights."
The Complainant also submits that it has rights in the EXPRESS TRAVEL GROUP Mark and that mark is confusingly similar to the Domain Name. In the Uniform Domain Name Dispute Resolution Policy ("UDRP") case of ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034,1 the Panel was asked to find the domain names <wc2002.com> and <wc02.com> were confusingly similar to the then complainant's WORLD CUP and WORLD CUP JAPAN 2002 Marks. In that case the Panel found that:
"The fact that domain names (14) and (15) both contain the letters <WC> is insufficient to satisfy the requirement of paragraph 4(a)(i) of the Uniform Policy. Whilst it can be argued that <WC> is an abbreviation of <WORLD CUP>, this Administrative Panel does not consider that this is the likely meaning which most people would give to these letters. These letters are open to being interpreted as meaning any number of things, as well as meaning nothing at all. There is nothing in the context of the use of these letters in the domain names that suggests they are an abbreviation of anything. Even if the context of their use did make clear that the letters <WC> were an abbreviation, it is quite likely many native speakers of the English language would consider they were an abbreviation either for "water closet" (and hence an allusion to "toilet") or "West Central" (see Concise Oxford English Dictionary, entry for "WC"), or for "without charge" (see Merriam-Webster's Collegiate Dictionary, entry for "WC"). As for how native speakers of other languages using the Romanised alphabet would most likely interpret these letters as an abbreviation, this Administrative Panel is unable to decide. In short, the letters <WC>, even in conjunction with the year <2002> or the year abbreviation <02>, do not likely suggest <WORLD CUP>, and hence domain names (14) and (15) are not confusingly similar to any of the trademarks referred to in paragraph 4.4 above."
The same reasoning applies to the present case. Even if the Complainant were to establish rights in the EXPRESS TRAVEL GROUP Mark (and the Panel does not reach a conclusion on this question), the mere fact that "ETG" is used by the Complainant as an acronym of "Express Travel Group" is not enough to establish confusing similarity. These letters are open to being interpreted as meaning any number of things, as well as meaning nothing at all. The Domain Name is not confusingly similar to the EXPRESS TRAVEL GROUP Mark and the Complainant has not satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of proof shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the acronym ETG. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used the Domain Name in connection with a legitimate non-commercial use.
The Respondent has submitted that it registered the Domain Name to provide a food review website under the name "E Taste Guide". The Respondent, in its Response, explains its supposed purpose and provides, as evidence of preparations to use the Domain Name, a series of Instagram pictures of food that was purportedly taken by the director of the Respondent. However, beyond the Instagram photos, the Response provides no documentary evidence of demonstrable preparations to use the Domain Name for a bona fide purpose. The Domain Name has been registered for almost seven years. The Respondent has provided no evidence that it has hired a developer, created a draft website, registered any rights for "E Taste Guide" or supplied any business documentation normally associated with the creation of a website or a new business. The Response contained no evidence that the Respondent had created written reviews or records of various restaurants that the Respondent's director has visited for the purpose of creating a food review website. Alternatively, given that the Domain Name has been registered for almost seven years, the Respondent has provided no explanation or evidence of circumstances that may have resulted in a delay in creating of the E Taste Guide website.
In summary, neither the Respondent's Website nor the evidence in the Response provides a basis for concluding that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name for a bona fide use.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests. It has failed to supply sufficient evidence in support of its claims of legitimate interests and has not succeeded in rebutting the presumption.
C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
There is no evidence before the Panel to suggest that at the time the Domain Name was registered (in 2008) the Respondent registered it in contemplation of the Complainant. The Complainant had no registered or unregistered rights in ETG at the time of filing this Complaint. Indeed the Complainant only lodged its application for the registration of ETG as a mark in December 2014. The Panel finds that the Domain Name was not registered by the Respondent in 2008 in bad faith. However, the requirement under the Policy that the Domain Name be registered or used in bad faith means that a finding that the Domain Name was registered prior to the Complainant acquiring rights in its mark or name will not protect the Respondent from a finding that the third requirement is satisfied where it is established that the Respondent subsequently used the domain name in bad faith.
There is no evidence that there are circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to another person for valuable consideration in excess of its documented out‑of-pocket costs directly related to the Domain Name. There is no evidence that the Domain Name has been offered for sale. Indeed, it appears to the Panel that prior to the filing of this Complaint the Complainant made an unsolicited offer to the Respondent to purchase the Domain Name, an offer that was rejected.
The Respondent does not appear to be using the Domain Name to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. The Complainant and the Respondent are not competitors, the Respondent's Website contains no advertising or reference to the Complainant and the Domain Name consists of a commonly used acronym. There is no evidence before the Panel that the Respondent, prior to the Complaint (or at least the Complainant's complaint to auDA), had ever contemplated the operations of the Complainant or its possible use of the acronym "ETG" in its use of the Domain Name.
The Panel finds that there is no evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person or to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name. The Domain Name is a three-letter acronym that was registered six years before the Complainant applied for the registration of ETG as a trade mark in December 2014, a mark which it had not established as a common law mark at the date of this Complaint.
The Complaint submits that the Respondent is using the Domain Name in bad faith because:
a) the Respondent has a history of registering acronyms as domain names, with the Respondent having registered 335 domain names consisting of three-letter acronyms;
b) the Respondent has registered other Domain Names corresponding to trade marks; and
c) the Respondent and a related entity, DNS Advertising, have been the subject of online complaints.
The Panel is not prepared to accept unverified online complaints from 2006 as evidence that the Respondent registered or used the Domain Name in bad faith. Furthermore, while the Complainant may speculate as to the reasons why the Respondent registered other domain names it is necessary for the Panel to reach a conclusion as to whether the Domain Name that is the subject of the present proceeding was registered or used in bad faith. The conduct of the Respondent does not fall within the non-exclusive circumstances set out Paragraph 4(b) of the Policy, nor is there an obvious basis to assume bad faith outside these categories. The Respondent registered a Domain Name that did not correspond to any pre-existing trade mark of the Complainant and has not been shown to have used the Domain Name in bad faith.
Accordingly, the Panel finds that the Respondent did not register or use the Domain Name in bad faith.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if the Panel finds that the complaint "was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder", the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" to be "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name".
The auDA auDRP Overview 1.0 states, in response to the question "In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made?" that:
"Circumstances that panels have considered to be indicative of a complaint having been brought in bad faith include: (i) the complainant knew it had no rights in the trademark or name upon which it relied and nevertheless brought the complaint; (ii) the complainant had, by the time the complaint was filed, been informed of and had otherwise ascertained all the facts necessary, to establish that the respondent had legitimate interests in the disputed domain name; (iii) the complainant had, in communications with the respondent, expressly acknowledged that the respondent had rights to the domain name; (iv) the complainant had knowledge of the respondent's rights or legitimate interests in the domain name and engaged in harassment or similar conduct in the face of such knowledge (such as repeated cease-and-desist communications, or prolonging the dispute in order to exploit superior financial resources); (v) the complainant had known from the beginning that its rights in the domain name were not exclusive, that the domain name was generic, and that the domain name described the activities for which the respondent used it; (vi) the complainant knew that its trademark was limited to a narrow field, and that the respondent's registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith; and (vii) the complainant intentionally attempted to mislead the panel by omitting relevant evidence."
There are two aspects of the Complaint that raise the Panel's concern. The Complainant commenced an auDRP proceeding on October 2, 2014 in reliance on its "rights" in the three-letter acronym "ETG". As noted in the Response, the term ETG is an acronym that can be used by and may be used by a number of businesses in Australia (and globally). The Complainant does not have registered rights in ETG and relies on common law rights that could only be established from very late January 2015, almost six years after the Respondent registered the Domain Name. In the absence of any evidence that the Respondent was targeting the Complainant or had any awareness of the Complainant, the Complainant should have been aware that the Respondent's registration and use of the Domain Name could not, under any fair interpretation of the facts, constitute bad faith registration or use.
Equally concerning is the omission of relevant evidence in the Complaint, a fact that was drawn to the Panel's attention by the Respondent. Paragraph 3(b)(xiv) of the Rules requires the Complaint to include in its Complaint the following certification.
"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument."
The Complaint filed in the present proceeding was not complete and accurate and omitted the following relevant information:
a) That the Complainant's administrative complaint to auDA about the Respondent had been dismissed.
b) That the Complainant attempted to purchase the Domain Name from the Respondent and was rebuffed.
The Complainant made an offer to purchase the Domain Name from the Respondent. This was rejected. The Complainant then commenced a proceeding to acquire a Domain Name that was registered six years before it could have conceivably acquired trade mark rights. In that proceeding it failed to disclose relevant information to the Panel. For all of these reasons, the Panel concludes that the Complainant was brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
David Levin Q.C.
Date: April 17, 2015
1 The Panel notes that the Policy is, with some notable exceptions, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.