WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Rugby Union Limited v. Domain Manager / Domain Services Pty Ltd
Case No. DAU2018-0037
1. The Parties
The Complainant is Australian Rugby Union Limited of St Leonards, New South Wales, Australia, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Domain Manager, Domain Services Pty Ltd of Melbourne, Victoria, Australia, represented by Registry Australia Pty Ltd, Australia.
2. The Domain Name and Registrar
The disputed domain name <wallabies.com.au> is registered with Synergy Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. The following day, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 10, 2018, Synergy Wholesale Pty Ltd 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 “auDRP” or “Policy”), the Rules for .au Dispute Resolution Policy (the “auDRP Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the auDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 11, 2018. In accordance with paragraph 5(a) of the auDRP Rules, the due date for Response was December 31, 2018. The Response was filed with the Center on December 31, 2018. On February 1, 2019, the Center received a supplemental filing from the Complainant. That same day, the Center received an email communication from the Respondent objecting to the filing of further submissions.
The Center appointed Matthew Kennedy, Sebastian M.W. Hughes, and the Hon. Neil Brown Q.C. as panelists in this matter on February 6, 2019. 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 auDRP Rules, paragraph 7.
4. Factual Background
The Complainant is the governing body of rugby union in Australia. “Australian Rugby Union Limited” is a trading name of Rugby Australia Ltd and also the former corporate name of that company. The Complainant controls the Australian men’s rugby union team, known as the “Wallabies”. The Complainant owns multiple trademark registrations, including Australian trademark registrations numbers 534532 and 1015802, both for WALLABY; WALLABIES, registered from May 18, 1990 and August 11, 2004, respectively, collectively specifying goods and services in classes 25, 28 and 39; Australian trademark registrations numbers 929072, 1104540, and 1110626, each for WALLABIES, registered from September 30, 2002, March 10, 2006, and April 18, 2006, respectively, collectively specifying various goods and services in classes 9, 28, 38 and 43. The Complainant also owns United States of America trademark registration number 2456561 for WALLABIES in a stylized script, registered on June 5, 2001, specifying goods in class 25. All those trademark registrations remain current. According to information provided by the Complainant, it also registered the domain names <rugby.com.au> in 2002, <rugbyaustralia.com.au> in 2008, and <wallabiesrugby.com.au> and <wallabiesrugby.net.au>, both in 2012. The Complainant uses these domain names in connection with an official website where it provides information about itself and the rugby union, including the Wallabies team.
The Respondent is the registrant of the disputed domain name. It changed its corporate name to “eBusiness Pty Ltd” in 2012. Craig Oehlers is a director of the Respondent. Mr. Oehlers filed the Respondent’s application for the disputed domain name, which was registered on November 22, 2006. Two days later, on November 24, 2006, the Respondent registered the Australian business name “Wallabies Online”. The business name registration described the business as a “Wallabies online portal”, listed the disputed domain name as the associated Internet site and provided a business address in South Perth, Western Australia. The business name registration was cancelled on May 28, 2016. The Respondent registered the same business name again on December 30, 2018, the day before it filed its Response.
The word “wallabies” is the plural form of “wallaby” which can be defined as follows:
“any of various small and medium-sized kangaroos of the genera Macropus, Thylogale, Petrogale, etc., some of which are no larger than rabbits: several species are endangered”. (See Dictionary.com).
According to the evidence on record, from 2006 to July 2018 the disputed domain name resolved to a webpage that displayed one image of a wallaby together with a brief description of wallabies, plus a contact email address and a copyright notice. At some point thereafter and prior to the filing of the Complaint, the disputed domain name resolved to a blank webpage. At the time when this proceeding commenced, the disputed domain name resolved to a webpage that displayed logos for domain name service providers, one of which includes the words “under construction” and “or maybe for sale?”
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s WALLABIES trademark. The second level domain in the disputed domain name consists solely of that trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not sponsored by, or affiliated with, the Complainant in any way. The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark. The Respondent is using the disputed domain name to redirect Internet users to a website that resolves to a blank page and lacks content. The Respondent has failed to make use of that website and has not demonstrated any attempt to make legitimate use of the disputed domain name or the website. It is difficult to ascertain when the Respondent first gained possession of the disputed domain name as the registration has been masked through the use of a privacy service. Regardless of when the Respondent became the registrant of the disputed domain name, the Complainant asks the Panel to note the dates of registration of the Complainant’s domain names.
The Complainant and its WALLABIES trademark are known internationally, with trademark registrations across numerous countries including Australia and the United States of America. The Complainant has marketed and sold its goods and services using these trademarks since May 18, 1990, which is well before the Respondent’s registration of the disputed domain name, which, while unclear, is confirmed by evidence to be no earlier than December 8, 2008. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks. Internet searches for “wallabies” and “Australia” return multiple links referencing the Complainant and its business. The disputed domain name currently resolves to an inactive site and is not being used. The disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name. The disputed domain name combines “wallabies” and the country code Top-Level Domain (“ccTLD”) suffix “.au”, making it very confusing for the general public, thus misleading the public to associate the website with the Complainant. There is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past panels have held can support an inference of bad faith registration and use.
The Complainant’s trademark registrations only specify certain classes of goods. The Complainant has not advanced any evidence of use or reputation for any of those trademark classes. The Complainant has no sole claim in the world to use the word “wallabies”; it holds only roughly 25 percent of all Australian trademarks for the term “wallabies”. “Wallabies” is a generic word. The auDA Guidelines on the Interpretation of Policy Rules for the Open Second Level Domains (“2LDs”) refer to generic words in paragraph 11.4. The Respondent was eligible to register the disputed domain name in the 2LD “.com.au” by reason of its “corporate” name. The Complainant has waited at least 12 years before bringing any action.
The Respondent has a right and legitimate interest in the disputed domain name. The Respondent registered the disputed domain name because of its English generic-animal dictionary meaning to develop the website for the public interest in relation to the “wallaby marsupials” generic topic. The Respondent used the disputed domain name in relation to the generic meaning of “wallabies” for over ten years. The Complainant entirely fails to make out its case that the Respondent has no right or legitimate interest in the disputed domain name but rather asserts that it has a better claim. The Respondent cannot have only intended to cause confusion, mistake and deception when the Complainant itself only owns 25 percent of the “wallabies” trademarks. The Respondent has never tried to pass itself off as the Complainant. The Parties’ respective websites are starkly different.
The Respondent does not recall being aware of the Complainant’s business or goods and services in relation to “wallabies” at the time of registration of the disputed domain name in 2006. Rugby union was unpopular at that time in Perth, where the Respondent’s director had lived all his life, and it remains relatively unpopular in Western Australia. The Complainant never bothered to register a domain name incorporating the term “wallabies” until 2012, six years later. The Respondent did not employ a privacy service to hide its identity; it is not possible to employ a privacy service to registering a “.au” ccTLD domain name. The Respondent never approached or intended to approach the Complainant or a competitor of the Complainant for an excessive price. The Respondent’s conduct does not fall within any of the bad faith uses in paragraph 4(b) of the auDRP. The Complainant has made bold assertions without any proper evidentiary basis.
The Complaint is an abuse of process to acquire the disputed domain name without a proper basis to bring a complaint under the Policy. The Complainant is attempting to reverse domain name hijack.
6. Discussion and Findings
6.1 Supplemental Filing
The Complainant made an unsolicited supplemental filing after receipt of the Response. The Complainant urged the Panel to consider the arguments and evidence set out therein “[s]ubject to the Panels’ discretion on the admission of a supplemental filing”.
The Respondent objects to the filing of further submissions. It submits that the Complainant is sophisticated and professionally represented, and it ought to have raised all matters at the time it filed its Complaint.
Paragraph 12 of the auDRP Rules provides that “[i]n addition to the complaint and the response, the Panel may request or permit, in its sole discretion, further statements or documents from either of the Parties”. At the same time, paragraph 10(b) and (c) require the Panel to ensure that “each Party is given a fair opportunity to present its case” and that “the administrative proceeding takes place with due expedition”. The purpose of the auDRP is “to provide a simple, inexpensive and quick administrative procedure for dealing with domain name entitlement disputes”. See Brilliance Publishing, Inc. v. My Brilliance Pty Ltd / Ceinwen Schneider, WIPO Case No. DAU2013-0007. Accordingly, the Panel will only permit the supplemental filing in exceptional circumstances, such as new facts, newly available evidence, or a material allegation in the Response that could not reasonably have been anticipated at the time of the Complaint.
The Panel observes that the Complainant does not state any reason as to why the Panel should exercise its discretion to accept the supplemental filing.
The Panel notes that the Complaint alleged difficulties in ascertaining information due to the Respondent’s use of a privacy service. However, the Respondent did not use a privacy service. The Respondent provided both its corporate name and number in the application for registration of the disputed domain name, both of which appear in the WhoIs search results annexed to the Complaint. The Complainant also identified the Respondent in Section II and the header of the Complaint and could have conducted its searches regarding the Respondent prior to filing the Complaint. The Complainant mistakenly assumed that the Respondent was a privacy service. It also misunderstood the auDA WhoIs search results, which do not indicate the creation date of the disputed domain name. Therefore, the Panel finds that any difficulties that the Complainant experienced in ascertaining information were not due to the use of a privacy service.
The Panel has reviewed the supplemental filing and sees no exceptional circumstances that would justify accepting it. The Complainant waited until after receipt of the Response to provide more extensive information on its trademark portfolio, to conduct searches of the Respondent’s other domain name registrations and connect it to prior correspondence regarding a possible transfer of the disputed domain name, and to obtain metadata from the Respondent’s website. These are not new facts and that information was available to the Complainant earlier; the Complainant was able to ascertain that information as it included similar information on its own corporate name, domain names and website analytics in the Complaint. The supplemental filing also seeks to reply to an unexpected allegation regarding the alleged unpopularity of rugby union in Perth, but the supplemental filing does not address the reputation of the Complainant’s trademark at the time when the disputed domain name was registered, while the Complaint already addressed the game’s popularity throughout Australia today.
Therefore, the Panel finds that the Complainant was already given a fair opportunity to present its case in the Complaint. In the interests of ensuring that this administrative proceeding takes place with due expedition, the Panel declines to accept the Complainant’s supplemental filing as part of the record of this proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the auDRP provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has 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 or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the WALLABIES trademark.
The disputed domain name wholly incorporates the WALLABIES trademark.
The disputed domain name also includes the open 2LD suffix “.com.au”. This element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd, WIPO Case No. DAU2008-0023.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.
B. Rights or Legitimate Interests
Given the Panel’s findings below on bad faith registration or use, it is not necessary to consider the element of rights or legitimate interests.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although they do not constitute an exhaustive list.
As regards registration, the disputed domain name wholly incorporates the WALLABIES trademark with no other element besides the 2LD suffix “.com.au”. The disputed domain name was registered many years after the Complainant obtained its earliest WALLABIES trademark registration. However, WALLABIES is not a coined word. The Complainant does not substantiate its assertion that it has marketed and sold its goods and services using the WALLABIES trademark since 1990. The disputed domain name was registered in 2006. The Complainant’s evidence concerns the reputation of the WALLABIES trademark today, i.e., twelve years later. The Panel can draw no inference from the evidence as to whether the Respondent knew or ought to have known of the WALLABIES trademark in 2006. The Complainant asks the Panel to take note of the dates of registration of its own domain names and, indeed, the Panel takes note that the Complainant did not register a domain name incorporating its WALLABIES trademark until 2012, six years after the Respondent registered the disputed domain name. The mere combination of “wallabies” and Australia’s ccTLD suffix “.au” does not mislead the public to associate the Respondent’s website with the Complainant, rather, it may reflect the fact that wallabies are native Australian animals, which is doubtless a reason why that word was chosen as a nickname for an Australian team. The Complainant also asserts that the Respondent used a privacy service and that this supports a finding of bad faith, but the Respondent did not use a privacy service. Therefore, the Complainant has failed to make a prima facie case that the Respondent targeted the WALLABIES trademark when it registered the disputed domain name. Accordingly, based on the record of this proceeding, the Panel is unable to conclude that the disputed domain name has been registered in bad faith.
As regards use, the Complaint shows that the disputed domain name resolved to a blank webpage at the time that the Complainant visited it prior to filing the Complaint. The Complainant has also provided evidence of its use of the WALLABIES trademark today. However, the disputed domain name consists of a single dictionary word and a 2LD suffix. It is not even an unusual word or combination of words. There is no evidence on the record that the disputed domain name is being used in connection with its trademark meaning. The evidence of the reputation of the WALLABIES mark does not give rise to such an inference. Nothing in the Complaint indicates any attempt to sell, rent or otherwise transfer the disputed domain name. There is no evidence that the disputed domain name has disrupted the business or activities of any person. Nothing on the Respondent’s website has referred to rugby union, the Complainant, or any of the goods and services specified in the Complainant’s trademark registrations. There is no evidence of actual customer confusion between the disputed domain name and the WALLABIES trademark. The Complainant has not alleged that any of the Respondent’s representations or warranties as to eligibility or third-party rights given on application or renewal are, or have subsequently become, false or misleading in any manner. Accordingly, based on the record of this proceeding, the Panel is unable to conclude that the disputed domain name has been used in bad faith.
Therefore, the Panel does not find that the disputed domain name has been registered or is being used in bad faith. The Complainant has failed to satisfy the third element in paragraph 4(a) of the auDRP.
D. Reverse Domain Name Hijacking
The Respondent requests that the Panel make a finding of reverse domain name hijacking in light of the following: (i) the Complainant has at no time served the Respondent with a cease-and-desist letter; (ii) the term “wallabies” is a generic term; (iii) the term “wallabies” is trademarked in Australia by 58 companies and the Complainant only accounts for 25 percent of those trademarks; (iv) the Complainant has attempted to use the auDRP to resolve a competing rights dispute rather than a cybersquatting dispute for which the Policy was created; (v) the Complainant has failed to make out any of the grounds of the auDRP; and (vi) the Complainant has used this process to harass and intimate the Respondent.
Paragraph 15(e) of the auDRP 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 auDRP 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 Panel has not accepted a number of assertions in the Complaint but does not consider that any of those assertions were made in bad faith. There is no duty to serve a cease-and-desist letter prior to filing a Complaint. The fact that the disputed domain name incorporates a dictionary word does not insulate it from challenge under the auDRP. The Panel considers that the Complainant was careless in the preparation of its case, as explained in section 6.1 above, but it does not consider that the Complaint or the supplemental filing were designed to harass or intimidate the Respondent.
Therefore, the Panel does not find that the Complaint was brought in bad faith nor that it constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Sebastian M. W. Hughes
The Hon. Neil Brown Q.C.
Date: February 15, 2019