WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

News Digital Media Pty Limited v. Steve Tope

Case No. D2010-1608

1. The Parties

The Complainant is News Digital Media Pty Limited, of Surry Hills, New South Wales, Australia, represented by Allens Arthur Robinson, Australia.

The Respondent is Steve Tope, of Fremantle, Western Australia, Australia.

2. The Domain Name and Registrar

The disputed domain name <truelocalaustralia.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2010. On September 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 24, 2010, GoDaddy.com, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 October 8, 2010

The initial due date for filing a Response to the Complaint was October 28, 2010. No Response was received by the Centre and a Notification of Respondent default was sent to the electronic address as confirmed by the Registrar, GoDaddy.com. However, on November 1, 2010, it came to the attention of the Centre that a communication received on October 22, 2010, from Steven Tope, stating that he had been notified of a complaint against him and requesting information concerning the Complaint, had been overlooked and therefore the deadline to respond was extended by the Centre until November 4, 2010. The email addresses as listed in the Registrar’s Verification Response and the Complaint were used to send these communications. The email address used was “Steve Tope”, <XXXXXXXXXX@live.com>.

On November 8, 2010, an email was received from Andrew Steven, advising the Centre of a possible settlement. Copied within Mr. Steven’s email, apologizing for missing the Response deadline as extended on November 1, 2010, and alerting the Centre to his willingness to settle, were prior email correspondences sent from the Centre to both the Complainant and a <XXXXX@humantraffic.com.au> email address. Mr. Steven responded from an email address, <XXXXXXXXXXXXX@searchworld.com>, which was previously unknown to the Centre. On the same day the Centre requested clarification of whether Mr. Steven was acting on behalf of the Respondent and he confirmed that this was the case. The Complainant was then informed of the possibility of settlement by email.

On November 9, 2010, Mr. Tope responded to the Notification of Possible Settlement from the <XXXXXXXXXX@live.com> email address stating that Mr. Steven had no authority to act on his behalf and that he was the owner of the domain. Mr. Tope confirmed that the <XXXXX@humantraffic.com.au> email address was not his email address.

On November 9, 2010, Mr. Tope, further to his communication stating that Andrew Steven was not authorized to make decisions on his behalf, requested that Andrew Steven be removed from communications relating to the dispute. Mr. Tope also requested that the Centre only use only the address <XXXXXXXXXX@live.com> and that the Centre discontinue sending Respondent communications to other email addresses. In such circumstances it was decided such action was appropriate and correspondence was sent notifying the parties of this.

Due to the increasing confusion surrounding who the parties contacting the Centre were in relation to the disputed domain name, as well as the number of emails on which it appeared all parties were not copied or had not received, an email containing all prior communications was sent to all parties, extending the deadline for a response to November 14, 2010. Automatically generated return receipts indicated all parties received this communication.

The Response was filed with the Center on November 14, 2010.

The Center appointed John Swinson, Warwick A. Rothnie and Nick J. Gardner as panelists in this matter on December 20, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 29, 2010, the Panel issued Procedural Order No. 01 requesting the parties provide further information and file a supplementary filing within 14 days of the Procedural Order. The parties were permitted to respond to the other’s supplementary filing within 7 days of receipt of that filing. The due date for the decision was then extended to be due 10 days after the last filing of a party in accordance with the timetable set out in the Procedural Order.

On December 30, 2010, due to the Christmas/New Year holiday period the Complainant requested an extension of one week to furnish the information requested. This request was not contested.

On January 6, 2011, the Panel issued Procedural Order No. 02 allowing an extension of the deadlines for filing of supplementary material such that the parties were given 13 days from the date of Procedural Order No. 02, that is until January 19, 2011, to file its supplementary materials. Each party was allowed 7 days to respond to the other’s materials. In light of the extensions, it was decided that the decision date would be extended.

The Complainant and Respondent filed their Supplementary Submissions on January 19, 2011.

4. Factual Background

The Complainant is News Digital Media Pty Limited, a company in the News group of companies, which operates a diversified entertainment business including movies, television, magazines, newspapers and book publishing primarily in Australia, the United States of America, continental Europe, the United Kingdom, and the Pacific Basin.

The Complainant is the owner of Australian registered trademark Nos. 1079107 and 1079166 comprising stylized versions of TRUELOCAL.COM.AU and TRUELOCAL.COM.AU SEARCH LOCAL. GET LOCAL respectively. These trademarks were filed on October 5, 2005. The Complainant is also the owner of Australian trademark application No. 1303321 for TL TRUELOCAL.COM.AU.

The Respondent, Steven John Tope, is a sole trader who owns several online business directory websites and other Internet based businesses.

The disputed domain name <truelocalaustralia.com> was registered on February 4, 2006 by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

The Complainant is well-known to the Australian public as a result of significant sales, marketing, promotional and other commercial activities and significant press coverage. The Complainant manages the operation of a number of online businesses which are owned or partly owned by the News group of companies, including the “True Local” online business which began operations on January 30, 2006 from the domain name <truelocal.com.au>. The Complainant’s “True Local” business provides a search engine facility for Internet users seeking information on business, organizations and goods and service providers in Australia. The Complainant’s website has at all times since its launch featured the “True Local” name.

The Complainant has invested a very substantial amount in marketing and advertising its website and conducting promotional activities. The Complainant’s “True Local” business has also attracted a significant amount of media coverage over the years. The Complainant’s website receives a very large number of requests each month from Australian businesses that wish to promote their products and service. The website also has significant website visitation. Therefore, the Complainant is well-known in Australia and has a strong reputation and goodwill in the “True Local” name there. The Complainant has therefore established common law rights in the “True Local” name from the launch of the website on January 30, 2006.

The Complainant is the registered owner of Australian trademark Nos. 1079107 and 1079166 for TRUELOCAL.COM.AU and TRUELOCAL.COM.AU SEARCH LOCAL. GET LOCAL, both with the letter “O” stylized as a magnifying glass and trademark application No. 1303321 for TL TRUELOCAL.COM.AU.

The Complainant has registered the business names “TRUELOCAL” and “TRUELOCALS” through related bodies corporate in various States of Australia at various times throughout 2005. The Complainant also registered various domain names throughout 2005 including <truelocal.net.au>, <truelocal.com.au> and <trulocal.com.au>.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainants trademarks. The Complainant submits that it is the registered owner of the above trademark registrations, which both have a priority of date of October 5, 2005. Further, the Complainant submits that it also has had common law rights in respect of the “True Local” name since January 30, 2006. Therefore, the Complainant contends that its registered and unregistered trademark rights predate the respondents registration of the disputed domain name on February 4, 2006.

The Complainant argues that the disputed domain name is substantially identical with and/or deceptively similar to its registered and unregistered trademark rights in the term “True Local”. The disputed domain name incorporates the words “true and “local”, which constitute the essential distinguishing feature of the Complainant’s trademarks and the sole feature of the “True Local” business name. The Complainant relies on the case of PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 to support its contention that incorporating its trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar (see also South Cone v Casio Keisanki Kabushli Kaisha (2001) 54 IPR 81 (Reg) and De Codova v Vick Chemical Co (1951) 68 RPC 103 at 106).

The Complainant submits that the use of the word “Australia” is insufficient to alleviate the similarity between the disputed domain name and the Complainant’s marks and relies on cases such as Sanofi aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2009-0078.

The Complainant also alleges that there is a considerable risk that the use of the domain name <truelocalaustralia.com> is likely to mislead and deceive consumers into believing that the Respondent’s business is in some way sponsored, approved by, or affiliated with, the Complainant or the “True Local” business in circumstances where no affiliation exists. The Complainant relies on the similar nature of the websites in adding to this confusion. Further, given the significant profile of the Complainant’s services in Australia, the Complainant contends that Internet users would mistakenly use the disputed domain name instead of the Complainant’s website under the impression that the websites were related.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s use of the “True Local” business name and trademarks predates the Respondent’s use. The Respondent has no association with the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks in the disputed domain name. The Complainant submits that the Respondent’s use of the dispute domain name breaches section 120 of the Trade Marks Act 1995 (Cth). The Complainant submits that the Respondent is not commonly known by the disputed domain name and has made no attempt to become commonly known by it. The Respondent has conducted no business or marketing campaigns and has not registered any Australian business name in an attempt to become commonly known by the disputed domain name.

The Complainant submits that the Respondent has registered and continues to use the disputed domain name in bad faith. The Complainant submits that the Respondent is attracting Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s business. The Complainant submits that Internet users are likely to be confused between the disputed domain name and the Complainant’s trade marks. Further, the Complainant submits that the Respondent is intentionally using the “True Local” name to divert Internet traffic to the Respondent’s website and this is not a bone fide commercial use.

The Complainant also submits that the Respondent failed to respond to any of the correspondence sent by the Complainant and that this is indicative of bad faith (see Encyclopaedia Britannica v. Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party WIPO Case No. D2000-0330).

Therefore, the Complainant requests that in accordance with paragraph 4(i) of the Policy, the disputed domain name be transferred to the Complainant.

In the Complainant’s Supplementary Submissions, it contends that prior to February 3, 2006, the Complainant extensively publicized the launch of its “True Local” website and provided detailed evidence of such publicity.

B. Respondent

The Respondent submits that the disputed domain name is neither identical nor confusingly similar to the Complainant’s trademarks. The Complainant’s registered trademarks incorporate the entire web address and not the words “True Local”. These trademarks were not accepted until July 2006, which is five months after the Respondent registered the disputed domain name and the Respondent had no reasonable knowledge of the pending trademark.

The Respondent also argues that no common law trademark existed at the time the disputed domain name was registered. The Complainant did not commence operations in its “True Local” business until January 30, 2006 and the disputed domain name was registered on February 4, 2006. This, the Respondent contends, is an insufficient amount of time for a common law trademark to be established. A common law trademark in the words “True Local” does not exist today as all marketing efforts make reference to TRUELOCAL.COM.AU in its entirety.

The disputed domain name is not identical to the Complainant’s trademarks as the disputed domain name includes the word “Australia”.

The disputed domain name is not deceptively similar to the Complainant’s trademarks as the Respondent did not intend to deceive Internet users. This is clear because the Respondent has not titled the pages of the website “True Local”. The Respondent contends that the “title” of the website located at the disputed domain name is “Local Business Directory” and instead, the Respondent merely uses key words such as “advertise your website”.

When Internet users arrive at the Respondent’s website it will be clear that it is not the Complainant’s “True Local” website. Given the Complainant’s extensive marketing and the reputation of its business, Internet users will not be confused. The Complainant uses consistent design and stylistic features to identify the “True Local” business and these are not incorporated into the Respondent’s website. Further, there is no reference to “True Local” as being the name of the Respondent’s business. Therefore, the disputed domain name is not confusingly similar to the Complainant’s trademarks.

The Respondent contends it does have legitimate interests and rights in the disputed domain name. The Respondent has a long established history of operating directory businesses. After operating such businesses, the Respondent wanted to establish other localized business directories and registered alternative regional domain names including the disputed domain name. The Respondent had no intention of misleading Internet users and simply wanted to assure users that the site would produce local results. The Respondent especially wanted to distinguish itself from another competitor, Yellow Pages online.

“True Local” is a commonly used colloquial term to describe something as authentically local (see The Church in Houston v. Jim Moran, Light of Truth Ministries, WIPO Case No. D2001-0683, TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003 and TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0004).

The Respondent has invested considerable time and resources in establishing its directory businesses. The Respondent therefore has a legitimate interest in the disputed domain name. The fact that the Respondent does not earn considerable revenue from the business and does not have a large budget to engage in marketing activities should not deny the Respondent of its rights in the disputed domain name.

The Respondent denies that it registered and used the disputed domain name in bad faith. The Respondent has registered many domain names with the intention of developing future businesses on these domains. The Respondent also has established a particular interest in the online directory business. “True Local” is a commonly used term. Therefore, the Respondent denies he is intentionally attempting to attract Internet users for commercial gain to its website by creating confusion with the Complainant’s mark as to affiliation with the Respondent’s website.

The Respondent further argues that there was no bad faith on his part as the Complainant had no reputation at the time the Respondent registered the disputed domain name.

The Respondent has registered many domain names incorporating the term ‘True Local’ which have not yet been put into use. It is unreasonable to say that the Respondent has registered all these names in an effort to deceive Internet users by confusing them as to the relationship between these websites and the Complainant’s trademarks. The Respondent has a bona fide use for the disputed domain name given the Respondent has operated online business directory businesses that predate the Complainant’s. Therefore, the Respondent has not registered and used the disputed domain name in bad faith.

Finally, the fact that the Respondent failed to respond to the Complainant’s correspondence does not indicate bad faith on the Respondent’s part. The Respondent did not receive the initial correspondence as it was sent to an email address the Respondent did not have access to and further no postal correspondence was sent. Upon becoming aware of the Complaint, the Respondent proactively contacted both the Complainant and the Centre.

The Respondent requests that the Panel dismiss the Complaint and make a finding of reverse domain name hijacking.

In the Respondent’s Supplementary Submissions he states that he has not branded his services “True Local” or “True Local Australia”, however considerable resources have been applied to build his website as a “local business directory”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of three Australian registered trademarks. These trademarks include stylized versions of the term “truelocal.com.au”. The words “truelocal” are the dominant part of the trademark, with “true” in bold. The “o” in “local” includes a representation of a magnifying glass as part of the “o”.

The Panel agrees that the Complainant has a common law trademark in the term “True Local”. Extensive media coverage regarding a named business may be sufficient to establish common law trade marks in such business name for the purpose of the Policy (see e.g., EasyGroup IP Licensing Limited v. Mobiel Group (MG), WIPO Case No. D2005-0671). The Complainant has engaged in extensive marketing and promotional activities: there has been thorough media coverage and there is a strong reputation and awareness amongst the Australian public in relation to the “True Local” business and name. These rights can arise from the date of commencement of operations under the name, in this case January 30, 2006 (see e.g., Commissioner of Taxation (Cth) v. Murry (1998) 193 CLR 605).

For the Complainant to succeed in this element, it must also show that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Panel find that the disputed domain name is confusingly similar to both the Complainant’s registered and common law trademarks. The disputed domain name includes the words “True Local” and therefore is confusingly similar to the Complainant’s common law trademark at the very least. However, the Panel also agrees that “True Local” is the essential distinguishing feature of the Complainant’s registered trademarks and as such, by incorporating this term into the disputed domain name, it is confusingly similar to the Complainant’s registered trademarks. While the words “true” and “local” may be generic, the combination of these words does serve to distinguish the Complainant’s services from those of other directory (and similar) providers. The inclusion of the word “Australia” does nothing to alleviate this confusion (see e.g. Sanofi aventis v. Pluto Domain Services Private Limited, WIPO Case No. D2009-0078).

The absence of the ‘.au’ suffix is also insufficient to distinguish the disputed domain name from the Complainant’s trademarks.

Finally, the Respondent relies on the fact that the design, layout and style of its website is different to that of the Complainant’s website so that Internet users will not be confused. However, the content of the website is irrelevant when considering whether the domain name is confusingly similar (see, e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and accordingly, the first element has been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not have a license from the Complainant to use the Complainant’s trademarks or register the domain name. Further, the Respondent is not commonly known as “True Local” or a variation of this term and has not made any attempts to become known by this name. By the Respondent’s own admission in his Supplementary Submissions as well as in his Response, the Respondent has never at anytime branded or used the name “True Local” in promoting his business or website. The Respondent’s website is merely titled “Local Business Directory”.

Paragraph 4(c)(i) of the Policy provides that the respondent may demonstrate rights or legitimate interests in a domain name by 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, before any notice to it of the dispute. However, the Respondent is using the disputed domain name for the very services covered by the Complainant’s rights in the territory and as such cannot be a bona fide offering of services. The discussion as to bad faith is also relevant in determining whether the Respondent is using the disputed domain name in connection with a bona fide offering of services.

In any event, the name “True Local” or any variation does not appear, to the Panel, to be integral to the offering of the Respondent’s services, and it appears to the Panel more likely than not that the domain name was chosen because of the Respondent’s awareness of the Complainant’s business than because of any perceived generic meaning, and as such no real bona fide interest exists in the name. It is one thing to use a generic or descriptive word in a domain name to describe a product or business, but it is quite another to do so with intent to take advantage of a competitor’s trade mark rights in such word. As discussed further below, the Panel finds the latter to be the more likely in this instance.

Therefore, the Panel’s finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.

The Complainant has demonstrated by its Supplementary Submissions that prior to February 3, 2006, the Complainant engaged in extensive, widespread publicity as to the launch of its website and service. In addition, the Respondent was already in the business of online local directories and has not proffered any evidence denying his knowledge of the Complainant’s business. As such, the Panel is satisfied that, most likely, that the Respondent registered the disputed domain with knowledge of the Complainant’s trademarks.

The Respondent is a competitor of the Complainant. The Complainant launched its business under the TRUELOCAL.COM.AU branding at the end of January 2006 with a blaze of publicity. The disputed domain name was registered on February 4, 2006. It appears highly likely that the Respondent registered the disputed domain name soon after the Complainant publicly launched or announced its new truelocal.com.au service, with knowledge of the Complainant’s activities. Compare Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236. See also Glaxo plc v. GlaxoWellcome Ltd [1996] FSR 388; 42 IPR 317, Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; [1982] FSR 1, both approved in British Telecom plc v One in a Million Ltd [1998] 4 All ER 476; 42 IPR 289 (Eng CA).

The Panel is also satisfied of the Complainant’s strong reputation and the public’s knowledge of its trademarks and business and this does not appear to be in contention. Therefore, the Panel finds that Internet users are likely to mistakenly believe there is an affiliation between the disputed domain name and the Complainant’s trademarks given the similarity between the two.

In light of this, the Panel finds that the Respondent intentionally chose the disputed domain name in order to cause confusion in the mind of Internet users as to the affiliation between the Respondent’s website and the Complainant’s trademarks and as such attract them to its website.

The commercial gain to the Respondent is to attract more advertisers and businesses to register for its services.

Therefore, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating confusion as to the affiliation between the Complainant’s trademarks and the Respondent’s website. See Anheuser-Busch Incorporated v. Gilina Rogers A/K/A Gilinda Granger, WIPO Case No. D2001-0134. As a corollary, the Respondent cannot be utilizing the disputed domain name in connection with a bona fide offering of services.

The Panel does not find that, in the circumstances, the Respondent’s failure to respond to the Complainant’s correspondence is indicative of bad faith.

D. Delay

Noting that the Complainant’s registered trademark No. 1303321 was accepted in May 2010 and registered only in September 2010, the Panel does not believe the Complainant’s delay in bringing the proceeding should negate its finding.

E. Reverse Domain Name Hijacking

The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant. The Panel finds that the Complaint was not brought in bad faith and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <truelocalaustralia.com> be transferred to the Complainant.

John Swinson
Presiding Panelist

Warwick A. Rothnie
Panelist

Nick J. Gardner
Panelist

Dated: February 3, 2011