WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Datacom Group Limited v. Datacom Communications Pty Ltd
Case No. DAU2019-0032
1. The Parties
The Complainant is Datacom Group Limited, Australia, represented by Norton Rose Fulbright LLP, Australia.
The Respondent is Datacom Communications Pty Ltd, Australia, internally represented.
2. The Domain Names and Registrar
The disputed domain name <datacomaccounting.net.au> and <datacom.net.au> are registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2019. On November 28, 2019, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain names. On December 20, 2019, TPP 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 received various emails on December 20, 24, and 27, from a third party claiming to own the websites at the disputed domain names. On December 27, 2019, the Center emailed the third party requesting that it clarify its relationship to the Respondent. The third party did not provide response to the Center’s request.
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 and the third party of the Complaint, and the proceedings commenced on January 2, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was January 22, 2020. On January 4, 2020, the third party emailed the Center requesting an extension to the Response due date. Accordingly, pursuant to paragraph 5(d) of the Rules, the due date for Response was extended until January 29, 2020. The Response was filed with the Center on January 29, 2020.
The Center appointed Alistair Payne as the sole panelist in this matter on January 30, 2020. 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.
The Panel issued a Procedural Order on February 11, 2020 as follows:
“The Panel notes that the Response has purportedly been filed by a third party, identified solely as ‘Michael K’, upon the behalf of either Respondent; however, the Response does not identify the third party as an authorized representative in accordance with the relevant rules, nor does it comply with the relevant rules in certain other respects.
Under paragraph 5.2 of the 2016-01 .AU Dispute Resolution Policy (the ‘auDRP’), a Respondent is required to comply with the Rules for .AU Dispute Resolution Policy as set out in Schedule B (‘Schedule B’) to the auDRP. Paragraph 5(b)(ii) of Schedule B requires that the Response shall:
‘Provide the name, postal and email addresses, and the telephone and fax numbers of the Respondent (domain name holder) and of any representative authorised to act for the Respondent in the administrative proceeding’.
Further, paragraph 5(b)(viii) of Schedule B requires that the Response shall:
‘Conclude with the following statement followed by the signature of the Respondent or its authorised representative:
‘Respondent agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the complainant and waives all such claims and remedies against (a) the dispute resolution Provider and Panellists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) auDA, as well as their directors, officers, employees, and agents.
Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response 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 Panel hereby requires that the Respondents file all details necessary to comply with paragraphs 5(b)(ii) of Schedule B and also to file the signed certification required by paragraph 5(b)(viii) of Schedule B, before or on February 25, 2020.
If the Respondents fail to comply and to file the necessary identification details and certification by February 25, 2020, then the Panel may in its discretion proceed to issue a decision on the basis that the Response has not been submitted in accordance with Schedule B and auDRP, and thus should not be considered as admissible in the proceedings.
Further, the Panel hereby extends the Decision due date to March 4, 2020.”
The Respondent filed acceptable identification and certification with the Center on February 24, 2020.
4. Factual Background
The Complainant is an information technology services company, providing management and consulting services, cloud services, data centre services, custom software development, procurement services, business process management, and payroll services, first founded in New Zealand in 1964. It has traded since 1994 in Australia under the trade mark DATACOM. It owns Australian trade mark registration 1922536 for DATACOM SYSTEMS, filed on April 26, 2018, and its related entities own various other registered trade marks that contain its DATACOM mark, including in particular Datacom Australia Holdings Pty Limited that owns trade mark registration 1321499 for DATACOM, filed on September 17, 2009.
The disputed domain name <datacom.net.au> was registered on November 6, 1997, and the disputed domain name <datacomaccounting.net.au> was registered on September 15, 2002. Both disputed domain names appear to redirect to websites for businesses operated by the Respondent.
5. Parties’ Contentions
The Complainant submits that it is the owner of the DATACOM mark in Australia and that it owns registered rights in Australia in the mark as noted above. It says that the disputed domain name <datacom.net.au> wholly contains its DATACOM mark and that this disputed domain name should therefore be considered as being identical or confusingly similar to it. In relation to the disputed domain name <datacomaccounting.net.au>, the Complainant says that its DATACOM mark is incorporated into it in its entirety together with the word “accounting” which is common or descriptive and does not distinguish the disputed domain name and is insufficient to differentiate the disputed domain name from its DATACOM mark.
The Complainant further submits that the Respondent has no registered trade mark rights in the disputed domain names and submits evidence from the Australian Trade Mark Register in this regard. It says that it is accepted that the fact that a respondent has registered a business name or company name does not of itself establish that the respondent has rights or legitimate interests in a disputed domain name that corresponds to the business name. It says that a registered business name does not provide proprietary rights in the name and accordingly, the fact that the Respondent has registered various business names with similar elements to the disputed domain names does not establish the Respondent’s legitimate interest.
As far as bad faith is concerned, the Complainant submits that the Respondent has used the disputed domain names in bad faith in order to disrupt the business activities of the Complainant. It says that the disputed domain names contain a word identical to the Complainant’s DATACOM trade mark in respect of which the Complainant has established a substantial reputation in connection with the Complainant’s services and the services allegedly offered through the Respondent’s websites are the same if not highly similar to the Complainant’s services. As a result, says the Complainant, it is inconceivable that the Respondent chose to incorporate the DATACOM name in the disputed domain names by coincidence.
The Complainant submits that on the contrary the Respondent did so in order to confuse and deceive potential consumers with an aim of disrupting the Complainant’s business. In this case, says the Complainant, the registration of the disputed domain names clearly disrupts the Complainant’s business in Australia by creating the potential for confusion amongst consumers and potentially attracting potential consumers of the Complainant’s services to instead purchase the Respondent’s services. In this sense, intention to divert trade from the Complainant, in bad faith, can be inferred from the fact that the Complainant's mark and the disputed domain names are identical and that the Complainant and the Respondent are in identical fields of trade and in similar markets.
Similarly, submits the Complainant, the Respondent has registered the disputed domain names in bad faith for the purpose of attracting Internet users to the Respondent’s websites, rather than the websites of the Complainant, for the express purpose of making a commercial gain (being to divert potential consumers of the Complainant’s and to encourage them to purchase the Respondent’s services rather than the Complainant’s Services). This, says the Complainant, is use in bad faith under paragraph 4(b)(iv) of the Policy.
Finally, the Complainant submits that the Panel should also take into account the clear absence of rights or legitimate interests in the disputed domain names in light of the submissions above, together with the lack of any credible explanation for the Respondent’s choice of the disputed domain names as indicative that the Respondent has registered and is using the disputed domain names in bad faith.
The Respondent asserts that it had never heard of the Complainant prior to these proceedings and did not register the disputed domain name in order to disrupt the Complainant’s business nor to divert Internet users from the Complainant’s websites.
The Respondent maintains that it has made a bona fide registration and use of <datacomaccounting.net.au> and <datacom.net.au> and has been trading under the “Datacom” name since 1987.
The Respondent submits that it has made a legitimate and bona fide use of the disputed domain names and has been trading under the “Datacom” name since 1987. The Respondent has provided in support of this submission a newspaper article from May 1988 that it says shows its bona fide use of the “Datacom” name since 1987 in connection with its Datacom Technologies, Datacom Communications, and Datacom Accounting Services businesses, the latter of which it says evolved as a financial and accounting service arm to the “Datacom” brands.
This activity, submits the Respondent, was 13-20 years before the Complainant entered the Australian market according to the ASIC records, which indicates that the earliest of the Complainant’s entities, Datacom Australia Holdings Pty Ltd, was registered on August 22, 2000. In addition, the Respondent submits that it has been operating and using the “Datacom” names for 22 years before the Complainant’s September 2009 trade mark application. The Respondent notes that the Complainant acknowledged this in its correspondence of September 10, 2019, in which it noted “[r]est assured our client has taken into account your client’s use of Datacom over time” but that the Complainant never sought to contact the Respondent in 2009 when it filed its trade mark, nor earlier on when it made its corporate ASIC registrations.
The Respondent denies that it intentionally attempted to attract for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, affiliation or endorsement of that website or location or of a product or service on that website or location. The Respondent reiterates that it has never heard of the Datacom Group.
Finally, the Respondent asserts that this Complaint amounts to an attempt to hijack the disputed domain names and requests that the Panel rejects the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered Australian trade mark 1922536 for DATACOM SYSTEMS. Although the Complainant has submitted that various related entities own a family of other DATACOM marks and in particular that Datacom Australia Holdings Pty Limited owns trade mark registration 1321499 for DATACOM, it has not provided evidence either of the Complainant’s ownership of these entities or of an intra-group licence in favour of the Complainant in relation to these trade marks. As a result, the Panel will consider this element on the basis of the Complainant’s DATACOM SYSTEMS registered trade mark, which appears to be the only mark in which the Complainant has demonstrated in its Complaint that it owns rights under the Policy. The Panel notes for completeness that on the basis of the evidence on the record it does not consider that there is sufficient evidence of use in the Complaint to support a finding of common law rights in the DATACOM mark, however as noted below this is not material.
The key distinctive element of the Complainant’s DATACOM SYSTEMS registered mark is the first element DATACOM. The addition of the common descriptive word “systems” does not change the sense of the disputed domain name or distinguish it in any way. The key DATACOM element of the Complainant’s trade mark is wholly contained in each of the disputed domain names, namely <datacomaccounting.net.au> and <datacom.net.au>. One of the disputed domain names wholly incorporates the DATACOM element without any addition and the other only qualifies the DATACOM element by the addition of the word “accounting”. This latter word is a commonly used term that would be understood as being descriptive of the services for which it is being used.
Accordingly, the Panel finds that each of the disputed domain names are confusingly similar to the Complainant’s DATACOM SYSTEMS registered Australian trade mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The onus under this element of the Policy is for the Complainant to demonstrate on the balance of probabilities that the Respondent has no rights or legitimate interests in each of the disputed domain names.
The Complainant has submitted that the Respondent has no registered trade mark rights and that therefore the Complainant’s registered trade mark rights effectively trump the Respondent’s business name or common law usage rights. This is incorrect in principle as under this element of the Policy the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names, whether the Respondent owns supporting registered trade mark rights, or not.
The Respondent has submitted that it has made a legitimate and bona fide use of the disputed domain names and has been trading under the “Datacom” name since 1987. Based upon the Respondent’s submissions and annexed extracts from business name and corporate ASIC registers, which are unchallenged by the Complainant, it appears to the Panel that the Respondent, formerly called RYK Pty Ltd, asserts that it first traded under the name “Datacom Computers” since registration of this business name in Victoria on May 7, 1987, and that it subsequently changed its name to Datacom Communications Pty Ltd on December 9, 1994. It then registered the Victorian business names, Datacom Technologies on May 16, 1995, and Datacom Accounting Services on January 31, 2011, respectively.
The Respondent has provided evidence in support of this submission by way of an article from the May 1988 edition of “Australian Electronics Monthly” magazine authored by its director, Nigel Kukulka, that demonstrates the use of the “Datacom” name at that time in connection with a computer and communications business under the name or style “Datacom Computers”.
The evidence of initial business name registration and company registration under the “Datacom” name by the Respondent and of the article by the Respondent’s director under the business name “Datacom Computers” appears to be many years before the earliest of the Complainant’s entities, Datacom Australia Holdings Pty Ltd, was registered on August 22, 2000, and before the Complainant’s September 2009 Australian trade mark application. Even if the Panel accepts the Complainant’s unsupported contention that it first entered the Australian marketplace in 1994, the Respondent’s use pre-dates this period. The Panel also notes that the Complainant acknowledged some understanding of the Respondent’s prior rights in its reply of September 10, 2019, to the Respondent’s counsel in what appears to be “open” correspondence concerning a possible offer by the Complainant to acquire the disputed domain names. In this correspondence the Complainant’s counsel noted “[r]est assured our client has taken into account your client’s use of Datacom over time”.
Based upon all of this evidence, it appears to the Panel that the Respondent commenced use of its “Datacom” name long before the Complainant, in relation to its initial computer and communications business based in Victoria as referred to in the May 1988 newspaper article. As set out under Part A above the Panel considers that the key element in each of the disputed domain names is the “Datacom” name. The Panel finds that when the disputed domain name <datacom.net.au> was registered on November 6, 1997, for the Respondent’s Datacom Technologies and Datacom Communications businesses, and equally when the disputed domain name < datacomaccounting.net.au> was registered on September 15, 2002, for the Respondent’s Datacom Accounting Services business, which it says was an extension of and supported its other businesses, the Respondent had already been using the “Datacom” name in connection with its bona fide businesses for many years and its use predated the Complainant’s first use of the “Datacom” name in Australia.
As a result, the Panel finds that the Complainant has failed to meet the onus upon it under this element of the Policy to demonstrate that the Respondent has no rights or legitimate interests in each of the disputed domain names. Accordingly, the Complaint fails in relation to each of the disputed domain names under this element of the Policy.
C. Registered or Subsequently Used in Bad Faith
Although, based on the Panel’s findings under Part B above there is no requirement to make a finding under Part C of the Policy, the Panel notes that based upon its analysis above, it is apparent that the Respondent was using the “Datacom” name, being the key element of each of the disputed domain names, in relation to legitimate businesses before the Complainant company was registered on August 22, 2000, and also before the Complainant’s September 2009 Australian trade mark application and even before the Complainant’s alleged first use in Australia in 1994. This means that the Respondent could not have registered the earlier of the disputed domain names in bad faith and there is no additional evidence put forward by the Complainant to demonstrate that it set out to target the Complainant when it registered its second and later disputed domain name (<datacomaccounting.net.au>) for its supporting accounting business.
It seems to the Panel more likely than not that the Complainant, or its New Zealand group parent, was aware of the Respondent’s use of the “Datacom” name in relation to its computer and communications businesses from at least the time of its Australian incorporation as Datacom Australia Holdings Pty Ltd on August 22, 2000. At that time, either the Complainant or its agents would very likely have searched the ASIC register and would have found that Datacom Communications Pty Ltd had been on the register since 1994. Had the Complainant undertaken a domain name registration search at that time it would also have found that the disputed domain name <datacom.net.au> had been registered to the Respondent since November 6, 1997.
It appears from the apparently “open” correspondence submitted in evidence, that the parties have been in negotiation in relation to the Complainant’s request to acquire the disputed domain names. It was only after these negotiations did not move forward that the Complainant filed this Complaint and alleged bad faith by the Respondent and this is in spite of the acknowledgement in the Complainant’s correspondence, as noted above, that it recognized the Respondent’s prior use of the “Datacom” name.
While there is nothing wrong in principal with such discussions, if it appears that the Policy is subsequently being used by a complainant, following unsuccessful negotiations, in a final “last ditch” bid to secure domain names in circumstances that the complainant should have known that it could not succeed from the outset, then this amounts to reverse domain name hijacking. This appears to the Panel to be the scenario here.
The Complainant is legally represented by a large and well-known international legal firm. It is reasonable to assume that the Complainant was therefore advised that as the Respondent had been using the “Datacom” name at least since the incorporation of Datacom Communications Pty Ltd in 1994 and that also in circumstances that it had registered the first of the disputed domain names in 1997 and the second some ten years ago, both in relation to what appear to be a bona fide websites and long standing businesses in Victoria, it would not be possible to demonstrate that the Respondent had no rights or legitimate interests in the disputed domain names, as required under the second element of the Policy. The Panel’s view in this regard is only reinforced by the Complainant’s counsel’s confirmation in its correspondence on September 10, 2019, to the Respondent’s counsel in advance of negotiations, that “[r]est assured our client has taken into account your client’s use of Datacom over time”.
As a result, the Panel finds that this Complaint amounts to a case of attempted reverse domain name hijacking by the Complainant.
For all the foregoing reasons, the Complaint is denied.
Date: March 4, 2020