WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Discovery Holiday Parks Pty Ltd. v. B2B Network Pty Ltd

Case No. DAU2021-0027

1. The Parties

The Complainant is Discovery Holiday Parks Pty Ltd., Australia, represented by MinterEllison, Australia.

The Respondent is B2B Network Pty Ltd, Australia.

2. The Domain Name and Registrar

The disputed domain name <gday.net.au> 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 June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, 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 June 30, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2021. The Response was filed with the Center on July 20, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on August 5, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company established in 2004. It states it is the largest operator of caravan, holiday, and resort parks in Australia. Since 2017, the Complainant has registered numerous trade marks incorporating the word G’DAY for various goods and services, which include advertising and promotional services, food and beverage services, and retail services.

The Complainant is the proprietor in Australia of several trade mark registrations or applications for G’DAY or incorporating G’DAY, including the following:

The disputed domain name was registered on May 31, 2021 following deletion of the previous website hosted on the Disputed Domain Name in accordance with the previously in force auDA Domain Renewal, Expiry and Delete Policy. The deletion was initiated by the Complainant. (As discussed below, these rules have been replaced by the new Licensing Rules which came into effect on 12 April 2021.)

The Registrar of the Disputed Domain Name, Drop.com.au Pty Ltd, operates a "drop-catching" website, www.drop.com.au. Drop-catching involves the drop-catching site hosting an auction for soon to be deleted domain names, which it then subsequently registers in the name of the winning bidder. The Respondent submitted as evidence an invoice from the Registrar for providing a “Daily Drop Catch – gday.net.au.”

At the date of the Complaint of this decision, the disputed domain name resolved to an inactive webpage.

5. Parties’ Contentions

A. Complainant

In its Complaint the Complainant contended that:

(a) the disputed domain name is confusingly similar to its trade marks. The removal of the apostrophe in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;

(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization to use the Complainant’s trade mark. The Respondent has not acquired any Australian trade or service mark rights relating to the disputed domain name. The Respondent is also not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and

(c) The disputed domain name was registered and is being used in bad faith. The Respondent should have been aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and is using it as an opportunity to generate potential profit from the Complainant. The Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

In its Supplemental Filing after the Respondent responded, the Complainant contended that the Respondent’s registration was in bad faith because the trust created by the trust deed produced by the Respondent as a matter of interpretation could not be relied upon, was invalid or was entered into in bad faith. These grounds are considered in detail below.

B. Respondent

The Respondent contends that the Complaint should be denied under the following grounds:

(a) The Complainant has not shown any evidence of use or reputation of the G’DAY trade mark and has no sole claim to the word “g’day”. The Complainant does not hold a majority of the trade marks registered in Australia for the word “g’day” and it would be unfair and unreasonable if the disputed domain name were transferred to the Complainant.

(b) The Respondent has a right and legitimate interest in the disputed domain name. The Complainant has failed to make out its case that the Respondent does not have any right or interest in the disputed domain name, but only asserts that it has a better claim. The Respondent relied on a trust deed creating a trust named GDAY to assert it had rights and legitimate interests.

(c) The Respondent submits that the registration of the disputed domain name was not made in bad faith. The Respondent was never aware of the Complainant’s business or the goods and/or services provided by the Complainant in relation to the disputed domain name. The Respondent has not attempted to use the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks.

The Respondent also contends that the Complaint was brought in an attempt for reverse domain name hijacking.

6. Discussion and Findings

6.1. Preliminary Issues – Supplemental Filings

Paragraphs 12 of the Rules grants the Panel sole discretion to determine the admissibility of further statements or documents received from either Party.

The submissions of the Respondent that the Respondent registered the disputed domain name pursuant to a discretionary trust of which it was a trustee raises knowledge of a matter (on the Complainant’s part) that arose after the Complaint was filed. The trust deed provided by the Respondent cannot be accessed through any public sources and could not have been dealt with in the Complaint. Therefore, the Panel finds it appropriate for the Complainant to make its Supplemental Filing in relation to the discretionary trust. The Complainant also made some brief submissions as to the number of trade marks incorporating G’DAY and the effect of search results owned by the Complainant and others. The Panel has given no weight to these submissions (other than the confirmation by the Complainant that a number of other entities own trade marks incorporating G’DAY).

In light of the above, the Panel accepts the Complainant’s Supplemental Submissions dated July 27, 2021 relating to the alleged trust.

The Respondent did not seek to respond to the supplemental filing. Given the filing was almost solely in response to the new issue related to the alleged trust raised in the Response, the Panel does not in any event consider it necessary to offer the Respondent an opportunity to respond to the Supplemental Filing.

6.2. Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;

(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 is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must show that it has rights in the G’DAY trade mark and secondly that such trade mark is identical or confusingly similar to the disputed domain name.

In the present case, the Complainant relies on various registered trade marks for G’DAY. The Panel only need consider the Complainant’s G’DAY word marks. The disputed domain name incorporates the Complainant’s G’DAY trade mark with only the apostrophe removed. The mere removal of the apostrophe (which in any event is not possible to display in a domain name) does not eliminate the overall impression of that the trade mark and the disputed domain name are similar.

The generic Top-Level Domain (“gTLD”) “.net” and the country code Top-Level Domain (“ccTLD”) “.au” are generally disregarded when considering the first element.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade marks.

The Panel also notes that the Complainant has also relied on pending G’DAY trade mark applications to establish its rights. For the purposes of this decision it is not necessary to rely on these applications as the registered trade mark rights relied upon are sufficient to find for the Complainant in relation to the first element.

The Panel finds that the Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant submits the Respondent does not have rights and legitimate interests for the following reasons:

(a) the Respondent has acquired no Australian trade mark or service rights relating to the disputed domain name;
(b) the Respondent has acquired no Australian company name or business name relating to the disputed domain name;
(c) the Respondent is not and has never been commonly known as "gday" nor has the Respondent ever utilised the term "gday", "g'day" or other derivatives of that term in any of its business offerings;
(d) the term "g'day" is not a match or synonym for any goods or services offered by the Respondents; (Citing to paragraph 2.4.4(f) of the Licensing Rules – defined below)
(e) the Complainant has never authorised the use of its registered G'DAY Trade Marks in the disputed domain name and there is no indication that the Respondent, or any of its goods or services, is commonly known by the term "g'day"; and
(f) through the use of a known drop-catching website and the current lack of active use of the disputed domain name, the Respondent has the sole intention of reselling the disputed domain name for profit, evidencing the lack of bona fide use of a domain in connection with offering goods or services.

The general principle applied to date in both UDRP cases and auDRP cases is as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, namely:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
or legitimate interests, the burden shifts to the respondent to prove rights and legitimate interests.”

While this general principle remains correct, for .au domain names since April 12, 2021 the .au Domain Administration Rules: Licensing (“Licensing Rules”) have come into effect. The Licensing Rules are a consolidation of more than 30 policy and guidelines that previously applied to .au domain name licences and cover all aspects of domain names in the .au ccTLD for both registrants and registrars.¹ Paragraph 1.1.3 of the Licensing Rules states that “Registrants and Registrars must comply with the Rules”. The Object of the Rules are stated in paragraph 1.3.1 to ensure that a Licensing system is established which:

(1) is transparent, responsive, accountable, accessible, and efficient;
(2) improves the utility of the .au ccTLD for all Australians;
(3) promotes consumer protection, fair trading and competition;
(4) provides those protections necessary to maintain the integrity, stability, utility and public confidence in the .au ccTLD;
(5) expresses licence terms and conditions in objective and not subjective terms;
(6) implements clear, predictable and reliable complaint processes; and
(7) preserves the fundamental principles of no proprietary rights in a domain name, first come, first served, and no hierarchy of rights.

For each .au namespace specific rules as to eligibility to apply for a domain name are set out.

In light of these rules, the Panel considers that in order for a domain name applicant to have rights and legitimate interests, it must be able to establish it falls within the eligibility requirements of the Licensing Rules. It may also rely on those matters within paragraph 4(c) of the Policy but must also comply with the Licensing Rules.

The Respondent relies on three grounds to establish its rights or legitimate interests:

(a) that it is a trustee of a trust called GDAY. It produces a trust deed to prove this. (This is a reliance on Para 2.4.4(2)(e)(ii) of the Licensing Rules)
(b) that it has never attempted to sell the domain name and registration of a domain name for the purpose of resale is not in itself illegitimate citing to Cross Optical Group, Inc. v. Electric Online, Inc. Claim Number: FA1206001449605 and Voys B.V., Voys United B.V. v. Thomas Zou, WIPO Case No. D2017-2136 both decided under the UDRP.
(c) that the word “G’Day” is generic.

The Panel will deal with points (b) and (c) first.

With regards to point (b), while undoubtedly the principle that the registration of a domain name with the purpose of re-selling is not in itself illegitimate is correct under the UDRP and also correct for “.net.au” domain names, it does not assist the Respondent to establish rights or legitimate interests. All that has been found in the cases cited is that registration with a general intention to re-sell is not illegitimate in itself. (Under the Licensing Rules monetization of domain names other than com.au and net.au is prohibited so this argument would not apply to other .au namespaces in any event.)

With regard to the argument “G’day” is generic, the Panel notes that strictly speaking “G’day” is not generic of anything. It is, however, a salutation commonly used by Australians. It is a general rule that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning (see section 2.10.1 of WIPO Overview 3.0).

Under paragraph 4(c) of the Policy, a Respondent may demonstrate rights or legitimate interests in a domain name, in the following non-exclusive ways:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

At the date of the Complaint and this decision, the disputed domain name resolved to an inactive webpage. There is no evidence that the Respondent is using the disputed domain name in connection with any purpose. In addition, the Respondent has not put forth any evidence that it intends to use the disputed domain name for goods and services in connection with “G’day”. The sole evidence is that it is the trustee of a discretionary trust with the name GDAY.

It is, therefore, necessary to consider if this trust gives the Respondent any rights or legitimate interests.

The eligibility requirements for “.net.au” namespaces are set out in paragraph 2.4.4 of the Licensing Rules as follows (with emphasis added):

“2.4.4 A Person applying for a licence in the com.au and net.au namespaces must be:

1. a commercial entity; and
2. the domain name applied for must be:

(a) a match of the Person’s company, business, statutory or Personal name; or
(b) an acronym of the Person’s company, business, statutory or Personal name; or
(c) a match of the Person’s Australian Trade Mark; or
(d) a match to or an acronym of a name of a related body corporate or
(e) a match or an acronym of a name of:
(i) a partnership of which the Person is a partner;
(ii) a trust of which the Person is a trustee; or
(f) a match or synonym of the name of:
(i) a service that the Person provides;
(ii) goods that the Person sells (whether retail or wholesale);
(iii) an event that the Person registers or sponsors;
(iv) an activity that the Person facilitates, teaches or trains;
(v) premises which the Person operates

and which that Person is providing at the time of the application.”

The Respondent contends that the discretionary trust of which it is a trustee provides it rights and legitimate interests because it is eligible to hold the domain name license under the Licensing Rules. The question of whether the Respondent is eligible to hold the domain name license overlaps with consideration of bad faith under paragraph 4(b)(v) of the Policy in relation to representations made in the course of registration. The Panel, therefore, considers this argument in more detail under the issue of bad faith. The determination as to whether the application was in bad faith under paragraph 4(b)(v) will also determine if the Respondent has rights and legitimate interests.

C. Registered or Subsequently Used in Bad Faith

In order to determine whether a disputed domain name was registered and used in bad faith, the Complainant must establish one of the following grounds under paragraph 4(b) of the Policy:

“(i) circumstances indicating that the respondent has registered or the Respondent 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 a name, trademark or service mark from reflecting that name or 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 a 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 that website or location or of a product or service on that website or location; or
(v) if any of the respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.”

Sub-paragraph (v) is not found in the UDRP.

Paragraph 4(b)(i) to (iv) of the Policy

The Panel will deal first with paragraph 4(b)(i) to (iv) of the Policy.

The panel notes that under the auDRP, it is sufficient to find if a domain name has been registered or used in bad faith. It is not necessary to find if a domain name has been both registered and used in bad faith.

The Complainant has submitted that the Respondent was aware of the Complainant and its G’DAY trade mark when it registered the disputed domain name. The Respondent responded that it was not aware of the Complainant and their goods and services prior to the registration of the disputed domain name. Some panels have found that in the case of “drop-catching”, the registrant will be aware that the domain name in issue was held by another when registering that domain name and put them on notice that the immediately prior registrant may have rights. (See for example, Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540 and Town of Secaucus, New Jersey v. Martina Zammit, Oring Ltd. WIPO Case No. D2020-0509.) In the case before the Panel, the previous license was cancelled because of a complaint by the Complainant. The Complainant was not the holder of the domain name. Nevertheless, it can be said the Respondent knew that others would be interested in the domain name. However, as noted “G’day” is a very common salutation in Australia and even if the Respondent did know of the Complainant, the Panel cannot say that registering the disputed domain name in with knowledge of the Complainant was, in itself, in bad faith. There are legitimate uses for “G’day” which would not infringe the Complainant’s rights. The issue of drop-catching is, however, relevant under paragraph 4(b)(v) of the Policy and the Panel will return to the issue below.

The Complainant further asserted that the Respondent registered the disputed domain name to sell it for more than its out of pocket expenses. There is limited evidence of this. The domain name has been registered by an entity whose only claim to legitimate interests is a trust created on the day the domain name was registered. The Respondent did not deny it might re-sell the domain name and, indeed, argued this was legitimate. As dealt with above, the Panel agrees that even if the Respondent did register the disputed domain name with the intention of re-selling it, the registration of a domain name with a general intention to re-sell is not illegitimate (or bad faith) in itself. There must be an intention to target a trade mark owner. Given “G’day: is a common salutation, the Panel cannot find there was a specific intention to target a trademark owner. There are any number of entities who would possibly want to buy the disputed domain name.

The Complainant has also submitted that the Respondent is using the disputed domain name in bad faith. The disputed domain name at the date of the complaint resolved to an inactive website, and at the date of this decision also resolved to an inactive website. It is well established that the lack of use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. However, in order to establish passive holding in bad faith, it is necessary to establish that the reputation of the Complainant is such that the application for the registration of disputed domain name must have been in bad faith. Again, given “G’day” is common Australian salutation, this cannot be said in this case. Indeed, the Complainant acknowledges that other entities also have trade mark registrations incorporating “G’day”.

For these reasons, the Panel does not consider there is sufficient evidence to find any of the grounds for bad faith in paragraphs 4(b)(i) to (iv) of the Policy are present.

This remaining question is whether bad faith is established under paragraph 4(b)(v) of the Policy.

Paragraph 4(b)(v) of the Policy

Paragraph 4(b)(v) of the Policy provides that an application is in bad faith “if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner”.

auDA Overview of Panel Views on Selected auDRP Questions

The auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) in Paragraph 3.2A discusses paragraph 4(b)(v):

“3.2A Does the respondent’s failure to meet the eligibility requirements for registration of a domain name amount to registration or use in bad faith?

“The issue does not arise under the UDRP.

“A domain name will have been registered or used in bad faith where the respondent registered the domain name despite not meeting the applicable eligibility requirements (currently set out in auDA Policy ‘2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs’). Paragraph 2 of the auDRP states that by applying to register the domain name, or by requesting maintenance or renewal of the domain name registration, the respondent warrants that statements made in the domain name application are complete and accurate, including those as to the respondent’s eligibility for a domain name in the open second-level domains (2LDs).

“Where the respondent does not meet the relevant eligibility requirement, the respondent is in breach of the paragraph 2 warranty. auDRP panels have found this breach satisfies the paragraph 4(a)(iii) requirement that the domain name has been registered or subsequently used in bad faith.

“One panel has made an exception in the case of a “technical” rather than a “knowing” breach of the warranty. Where the respondent was ineligible to register the domain name but had a bona fide belief in its eligibility to do so, a panel has found that such a belief precluded a finding that the registration constituted bad faith use.”

The auDA auDRP Overview 1.0, which was draft by Prof. Andrew Christie, was last updated in 2014. However it is still referenced on the .auDA website.

In 2020, paragraph 4(b)(v) was considered in Peachbulk Pty Ltd v. Domain Boutique Pty Ltd WIPO Case No. DAU2020-0013 by a three member panel made up Australia’s leading domain name panelists: Andrew Christie (Presiding Panelist), The Hon. Neil Brown Q.C. and John Swinson. (Mr Swinson chaired the Policy Review Panel that created the new Licensing Rules and Prof. Christie was on the Panel.)² The facts of the case were quite similar to the one before the Panel. Messrs Christie and Swinson issued a majority decision to cancel. Mr Brown in a dissenting opinion would have denied the complaint.

The facts of that case bear some consideration. The disputed domain name in that case was <bromance.com.au>. “Bromance” is a portmanteau of “brother” and “romance” and used in casual speech to refer to a close but platonic relationship between two men. It is a relatively common word to which no one person or entity can claim a right. The Respondent in that case had registered <bromance.com.au> on March 3, 2018. The Complainant was the owner of several trademark registrations for the word trademark BROMANCE in class 3 in respect of body care and related products, including Australian Registration No. 1904495 (filed on February 2, 2018; accepted on March 15, 2018; entered on register on September 5, 2018), and International Registration No. 1422822 designating a range of countries. The Complainant said it intended to release products under the brand but had not yet done so.

On May 12, 2020, the Complainant contacted the Respondent about purchasing the domain name. Three days later, on May 15, 2020, the Respondent registered the business name ‘“Bromance E Foods” and, the next day, on May 16, 2020 filed two Australian trademark applications for BROMANCE and BROMANCE EROTIC FOODS and a stylized drawing of a half-peeled banana.

With regards to paragraph 4(b)(v) of the auDRP, the Complainant alleged the Respondent had made false or misleading statements when registering the domain name in issue and as described by the majority:

“[The Respondent] took steps designed to create an illusion that it has a legitimate connection to the disputed domain name by applying to register a corresponding trademark for the word BROMANCE, causing the disputed domain name to resolve to a very basic ‘shopify’ website that purports to sell certain ‘erotic foods’, confined in number to five only, one of which is a pasta product labelled as having been imported exclusively for the major retailer Woolworths Ltd, and thus unlikely to be authorized for retail outside of the Woolworths’ network of stores.”

The panel found that the Respondent was in breach of eligibility requirements under the auDA Policy No. 2012-04 Domain Name Eligibility and Allocation Policy Rules for Open 2LDs then in force (“Former auDA Eligibility Policy”).

At the time of registration, the domain name in issue was not was not an exact match, abbreviation or acronym of the registrant’s name, was not otherwise closely and substantially connected to the registrant, and was not registered for the purpose of domain monetization.

The majority therefore concluded:

“Given that the Respondent was not eligible to initially register (or to renew) the disputed domain name prior to May 2020, it follows that the warranty as to eligibility that was made by the Respondent upon registration (and renewal) of the disputed domain name was false. According, to paragraph 4(b)(v) of the auDRP, this is evidence of registration and use of the disputed domain name in bad faith.”

With regard to the subsequent business registration and trademark applications, the majority found:

“[T]hese applications and registration were obtained by the Respondent for the purpose of attempting to ‘shore up’ a claim to entitlement to the disputed domain name, rather than being in preparation for a bona fide trading use of the disputed domain name. This attempt did not, and could not, succeed. The facts show that, at the time it registered the disputed domain name, the Respondent was not eligible to do so, meaning its warranty as eligibility was false.”

The minority considered the eligibility requirements were satisfied because “bromance” could be said to be closely and substantially connected to the business of the Respondent.

The allegations in this case

While in the case before this Panel the actual representations of the Respondent made when registering the disputed domain name are not available to the Panel, from the submissions of the Respondent and evidence filed it is clear that the Respondent must have represented that it was entitled to registration as a trustee under a trust. The Complainant argues that this was false or misleading on three bases:

(a) A discretionary private trust is incapable of satisfying the licensing rules as a matter of construction; and,
(b) The trust is invalid as a matter of Western Australian law.
(c) Further, “having regard the surrounding circumstances …. the Complainant submits that it is reasonable to infer that the Respondent has created the G'DAY Trust in bad faith, as an artificial device by which to claim eligibility for the Disputed Domain Name.”

The Respondent does not identify a legal ground under the Policy for the submission under (c) but the Panel takes it that the arguments are:

(a) the Respondent representations made when registering the domain name were not true and accurate as required by paragraph 2(a) of the Policy;
(b) the Respondent submitted false or misleading information to the Registrar when registering the disputed domain name under paragraph 4(b)(v) of the policy.

The issues are considered in order below.

Construction of the Licensing Rules: Can a discretionary private trust satisfy the rules?

As to construction of the Licensing Rules, the Complainant argues under Rule 2.4.4 (1) and (2)(e)(ii) of the Licensing Rules eligibility for a domain name in connection with a trust, can be established as follows:

“A Person applying for a licence in the com.au and net.au namespaces must be
(1) a commercial entity; and
(2) the domain name is:
(e) a match or an acronym of a name of:
(ii) a trust of which the Person is a trustee.”

The Complainant submits that eligibility under the above rules, is limited to situations where the domain name is a match or acronym for a commercial trust specifically, one that is issued with an Australian Business Number, and excludes any charitable trust or private ancillary fund (which is the nature of the GDAY Trust that the Respondent seeks to rely on).

The Complainant submits that this is the only permissible and logical interpretation of the Licensing Rules, having regard to:

(a) the technical construction of Rule 2.4.4 itself (as outlined below);
(b) the rationale for adding the concept of Trusts to the Licensing Rules (and the additional new concept of “Partnership”);
(c) the overall objective and function of “.com.au” and “.net.au” domain names; and
(d) the results that would follow if the word "Trust" was given a broader interpretation (i.e., to include private trusts that are not registered with any governing body and therefore have no oversight).

In regards to the technical construction of Rule 2.4.4 itself, the Complainant observes that:

(a) the term “Commercial Entity” is defined in the Licensing Rules as including "a Trust issued with an Australian Business Number, but does not include a charitable trust or a public or private ancillary fund" (the Complainant’s emphasis);
(b) the requirements under Rule 2.4.4(1) and 2.4.4(2) are conjunctive, so both requirements must be met; and
(c) given the above, the meaning of Trust as applies in relation to Rule 2.4.4(1) should be imputed to Rule 2.4.4(2)(e)(ii) (i.e., the trust must have a commercial purpose).

The Complainant further submits that this interpretation of Rule 2.4.4(2)(e)(ii) is supported by broader policy considerations, such as the auDA's reasons for introducing the “Trust” concept to the eligibility criteria, and the fact that “.com.au” and “.net.au” domain names are specifically for use for the carrying on of commercial enterprise (and understood by consumers as such).

Shortly put, the Complainant argues that on proper construction of the rules and considering public policy, in order to be eligible as a trustee it must be registered with a governing body and not just a simple trust.

The Panel does not consider it is in a position to decide this point. On a plain reading of the rules, the Respondent is a registered commercial entity, and it is, subject, to considering of the validity or bona fides of the trust, a trustee. The Complainant may be correct in its analysis, but the best place for this to be considered would be in a complaint filed under Part 3 of the Licensing Rules which provide for a complaints procedure where a complaint may be made to the Registrar of record with multiple levels of review. One of the purposes of the Licensing Rules to implement “clear, predictable and reliable complaint processes”.

The auDRP (and all domain dispute resolution policies) are designed to resolve relatively simple disputes. The Panel has set out the Complainant’s arguments in full above. They are not relatively simple arguments but instead rely on principles of statutory construction and public policy. Further, in this case there is a venue that is clearly more suitable for deciding the issue of construction raised. A panel established under the Licensing Rules will be in a position to consider the proper construction of the rules far better than this Panel and is the appropriate body to do so.

This leaves the questions of (1) if the trust is invalid or (2) if the trust is an “artificial device” to register the disputed domain name and, as such, there has the disputed domain name been registered in bad faith?

Alleged invalidity of trust deed

The Complainant argues the trust deed is invalid because:

(1) the Trust Deed has been signed electronically by one or more of the parties, which is not permitted for a trust deed under the Electronic Transaction Act 2011 (WA) and the Electronic Transaction Regulations 2012 (WA) at Reg 3(1);
(2) the Settlor's signature was not independently witnessed, but witnessed by the director of the Respondent (which is a breach of s 9(1)(b) of the Property Law Act 1969 (WA));
(3) the Trust Deed does not identify by name the signatories for the Respondent; and
(4) the Trust Deed has not been dated by hand by the parties, or timestamped, at the point of execution.

Given the above, the Complainant submits that:

(1) the Trust Deed is invalid and inoperable;
(2) the alleged G'DAY Trust was not validly created at the time of registration of the Disputed Domain Name; and
(3) therefore, the Respondent had no rights or legitimate interests in the Disputed Domain Name at the time of registration.

The trust deed provides it is to be interpreted under the laws of Western Australia.

The Panel is not prepared to consider issues of Western Australian law as to electronic signatories or witnessing. These are matters that go way beyond the scope of the Policy. In any event, it is not clear there is an electronic signature and, on the face of the deed, the witness may not have been a director of the Respondent, but could have been its secretary. The document is not hand-dated but also on its face states its date to be May 31, 2020. The Panel is therefore not able to find that the trust is invalid on its face.

Representations made when registering the disputed domain name

The key matters to be considered in relation to the representations made by the Respondent are:

1. The Respondent registered the disputed domain name by way of drop catching on 31 May 2021.
2. It is reasonable to infer that the Respondent made a request to the Registrar to drop catch the domain name prior to 31 May 2021.³
3. The Respondent has not alleged that prior to 31 May 2021, the Respondent was eligible to register the disputed domain name under the Licensing Rules.

With regard to the trust deed, first and foremost it was dated May 31, 2021, the very date the disputed domain name was registered (May 31, 2021). Second, the trust name is stated, for no apparent reason, to be GDAY. Neither the settlor nor the beneficiary are named GDAY or have initials that read GDAY. This to the Panel raises an immediate doubt as to eligibility. The trust deed appears to have been created solely so the Respondent can claim to be a trustee of a trust with the name GDAY and thus be eligible under the Licensing Rules.

Further, while in form the trust deed is stated to create a trust; in substance it does not. (To use an Australian expression, it is a “Claytons Trust”) The following points are of note:

1. The purpose of the deed is stated to be to provide benefits to the beneficiaries;
2. The sole named beneficiary is the same person who acted as the representative of the Respondent to file the Response;
3. The Settlement Sum is $10 (Ten Dollars) which is such a small amount of money that it cannot provide any actual benefit to the beneficiary;
4. The Respondent does not claim that it acts as a trustee in its day to day business; and
5. There are numerous boilerplate clauses running to multiple pages, which give the impression of a genuine trust but given the small size of the settlement sum serve no actual purpose.

In sum, it is a vehicle (or as the Complainant called it an “artificial device”) for the Respondent to claim to be a trustee to satisfy the Licensing Rules. The Panel cannot think of any plausible legitimate reason why the trustee a $10 discretionary trust would want to actually use any domain name in relation to the trust.

With regard to drop catching, the Panel agrees with the general principle enunciated in the cases cited above that when engaged in drop catching will be aware that there are others with an interest in the domain name. While in this case, the Panel was not willing to consider this meant the Respondent had knowledge of the Complainant’s marks sufficient to make a finding under sub-paragraphs 4(b)(i)-(iv) of the Policy, it certainly meant that the Respondent knew it was registering a domain name that others wish to register and put it on notice that it should make true and accurate statements when registering the disputed domain name.

The facts of this case are similar to that in Peachbulk Pty Ltd v. Domain Boutique Pty Ltd and in this Panel’s view more egregious. The majority in Peachbulk considered subsequent applications for business name registrations as attempts to “shore up” eligibility and rejected this. In this case, the Respondent was not eligible when it first sought to “drop catch” the disputed domain name. It went beyond “shoring up” eligibility to creating eligibility under the purported trust deed.

Therefore, the Panel considers the disputed domain to be been registered in bad faith. The Panel considers it is bad faith to apply to drop catch a domain name when: (a) the applicant is not eligible to register the domain name; and (b) only when the domain name is drop caught create a trust that is clearly of no substance so as to make it appear it is eligible to hold a license. This is creating eligibility after the fact and cannot be considered to be in good faith. The Panel does not consider the representations made when registering the disputed domain name to have been true and accurate – the Respondent was not in substance a trustee. The representation as to eligibility as also, at the least, misleading for the same reason. Referring back to the auDA auDRP Overview 1.0 this was a “knowing” breach and not a “technical breach”.

This conclusion also means that the Respondent did not have rights and legitimate interests when registering the disputed domain name. The Panel does not consider it legitimate to seek to circumvent the Licensing Rules by creating a trust of no substance on the very day in which a party successful drop catches a domain name.

The Panel notes it did give consideration as to whether this issue should also be determined by a review under Part 3 of the Licensing Rules. The Licensing Rules are intended to cover all aspects of domain names in the .au ccTLD for both registrants and registrars. However, unlike questions of construction of the Licensing Rules, which the panel has declined to consider, the Policy includes in paragraph 4(b)(v) a clear power to an auDRP panel to consider whether a domain name has been registered in the bad faith, including whether (1) true and accurate representations have been made or (2) false or misleading statements as to eligibility has been made. The is confirmed by the auDA auDRP Overview 1.0.

As part of the process of promulgating of the Licensing Rules, paragraph 4(b)(v) was not removed from the Policy nor was the auDA auDRP Overview 1.0 amended. Indeed, the Licensing Rules provided in paragraph 2.11.13 that any domain name license holder must agree to be bound by any decision under either the Part 3 Complaints process or under the auDRP.⁴

Given the new complaints process under the Licensing Rules, it may be rare that the auDRP panel will elect to decide an eligibility issue. However, in this case, the Panel is more than satisfied that on the facts are clear a misleading representation has been made as to eligibility which does not raise any complex issues as to construction or eligibility.

In conclusion, the panel therefore finds there that the Respondent did not have rights and legitimate interests when registering the dispute domain name and the registration was in bad faith.

The Complainant has therefore satisfied the second and third elements under paragraph 4(a) of the Policy.

7. Remedy

In Peachbulk, the majority of the panel ordered cancellation of the domain name in issue on the basis that it could not be said the Complainant had an exclusive right to BROMANCE nor an established reputation under the trademark. The majority said:

“The peculiar circumstances of this case require the majority of the Panel to consider carefully what is the appropriate remedy to order. Of significance to the majority of the Panel is the fact that the Complainant has not to date used its registered word trademark BROMANCE, and hence does not have any reputation in that trademark. Moreover, the Complainant did not provide any evidence to support its claim to a proposed future use of the trademark. Furthermore, the term “bromance” is a dictionary term, and other traders are using it – including one who has a prior registration for a trademark that incorporates the term (Australian Registration No. 1902930). Thus, the Complainant’s right to exclusive use of the term “bromance” is neither wide nor strong.

“As a result, the position of the Complainant is essentially the same as that of the Respondent – neither party has any established reputation in the trademark BROMANCE, neither has a strong exclusive right to use the term “bromance”, and hence neither has a persuasive claim of a greater entitlement to the disputed domain than the other. While the Respondent is disentitled to continue to hold the disputed domain name due to the false warranty it made when registering it, there is no compelling reason to consider that the Complainant has any stronger claim to the disputed domain name than does the Respondent. While acknowledging that it is an unusual step to do so, the majority of the Panel considers that the appropriate remedy in this unusual case is cancellation of the disputed domain name.”

The minority however indicated if the complaint was to be upheld transfer was the appropriate remedy in the grounds that there should be finality in a decision. (Although, to be fair, in large part this was a criticism of the finding of bad faith) He said:

“Moreover, the Parties were entitled to a remedy that would have brought the dispute to an end. Instead, after spending the time and cost of pursuing it through the auDA dispute resolution process, they are left with nothing or, rather, nothing but a perpetuation of the dispute. Presumably they will now have to contemplate judicial proceedings to obtain the finality they were entitled to expect here, but which they have been denied. The Complainant submitted only to the jurisdiction of the Cayman Islands courts as its chosen mutual jurisdiction, being the address of the Registrar and that is now the only venue where the Respondent can have confidence that it will find jurisdiction. This puts an unfair and unnecessary burden on the Respondent who is entitled to have this Complaint denied. Thus, the decision to cancel will come not only as a surprise to the Complainant but as a disappointment to those who see the UDRP and auDA processes as a quick and reasonably economical way of resolving domain name disputes and in particular to those who thought that buying a domain name at auction gave them at least some confidence. It is anything but that in the present case.”

The issue as to the Cayman Island courts is not relevant to this case.

In this case the Complainant has already successfully cancelled the disputed domain name once under the Former auDA Eligibility Policy. If a cancellation is ordered again, the Complainant will yet again run the risk of the domain name being drop caught by someone else. The Complainant has, unlike in Peachbulk, established a reputation in the word “G’day” albeit not exclusive. It is, however, not uncommon in domain name proceedings for a domain name to be transferred to a party who cannot claim exclusive right to the words that make up the domain name. Indeed, if the Panel had found the Respondent had targeted the Complainant in registering the disputed domain name, the remedy would have been a transfer.

Cancellation will mean that the domain name will become available for general registration and could well be registered by someone other than the Complainant. Nevertheless, the New Licensing Rules now provide a quick and reasonably economical way of obtaining a cancellation (but not a transfer) of a domain name if that registrant is not eligible. There appears to have been a policy decision to allow only a cancellation when a registrant is not eligible to register a domain name.

As the panel has not been satisfied the Respondent targeted the Complainant and there are others who have a legitimate claim to a domain name incorporating “G’day”, the panel considers, by a fine margin, that cancellation is the appropriate remedy.

It will, thus, order the domain name be cancelled.

8. Reverse Domain Name Hijacking

Given the conclusions of the Panel, the application for a finding of Reverse Domain Name Hijacking is rejected. Even if the Panel had found for the Respondent, given its sole substantive defence was a purported eligibility under a non-public trust deed of which the Complainant had no knowledge until the Response was filed, the Panel would not have been minded to make a finding of Reverse Domain Name Hijacking, in any event.

9. Decision

For all the foregoing reasons the Panel orders the Disputed Domain Name be cancelled.

Douglas Clark
Sole Panelist
Date: August 19, 2021

¹ See: “https://www.auda.org.au/au-domain-names/new-au-licensing-rules”

² See: http://achristie.com/auda-to-undertake-comprehensive-review-of-all-policies/

³ In paragraph 20 of the Complaint the Complainant described drop catching as: “Drop-catching involves the drop-catching site hosting an auction for soon to be deleted domain names, which it then subsequently registers in the name of the winning bidder.” This was not challenged by the Respondent. On the Registrar’s website it is stated: “A drop catching service allows a person to lodge a pre-application for a domain name before it is due to drop, and then uses a special software program to attempt to "catch" the domain name at the registry as soon as it drops."

⁴ Indeed as both Prof Christie and Mr Swinson, who were in the majority in the Peachbulk case, were on the panel that conducted the review of the rules, there can be no doubt that that panel was aware of the overlap with the au DRP.