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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ARN Broadcasting Pty Ltd v. Bonoel Productions Pty Ltd
Case No. D2000-1601
1. The Parties
The Complainant is ARN Broadcasting Pty Ltd of 2 Leabons Lane, Seven Hills, New South Wales 2147, Australia, and carrying on business at Level 2, 21-31 Goodwood Street, Richmond, Victoria 3121, Australia.
Represented by White Cleland, Solicitors and Notaries, of PO Box 318, Frankston, Victoria 3199, Australia.
The Respondent is Bonoel Productions Pty Ltd, of 165 Bank Street, South Melbourne, Victoria 3205, Australia.
Respondent is represented by Peter Corbett of Bonoel Productions Pty Ltd.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <goldfm.com>.
The Registrar with which the domain name is registered is Melbourne IT Ltd., of Level 2, 120 King Street, Melbourne 3000, Australia.
3. Procedural History
3.1 A Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 29, 2000 and November 20, 2000 respectively.
3.2 On November 28, 2000 the Registrar verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that the Policy applies to the domain name;
(iv) that the domain name is in "licensed" status;
(v) Respondent's Administrative Contact and Technical Contact is Peter Corbett of 165 Bank Street, South Melbourne, Victoria 3205, Australia.
3.3 On November 30, 2000, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center were found to be in compliance with the applicable ICANN Policy, ICANN Rules, and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On November 30, 2000, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding as follows.
(i) by post and by e-mail to Respondent, the Administrative Contact and the Technical Contact;
(ii) by e-mail to the postmaster at the domain name.
3.4.1 The record shows that:
(i) the Center has satisfied the provisions of each of paragraphs (i)(A), (B), (ii)(A), (ii)(B) and (iii) of the Rule 2(a);
(ii) the domain name did not resolve to an active web-site;
(iii) Respondent has not notified any preferred address to WIPO Center;
(iv) A Response has been filed.
3.4.2 The Panel therefore finds that the obligation imposed on the Center with respect to Notification of the Complaint and the Commencement of the Administrative Proceeding has been satisfied, and that there has been actual service on Respondent.
3.5 The Administrative Proceeding commenced on November 30, 2000 and the Response was timely filed on December 15, 2000 by e-mail and on December 19, 2000 in hardcopy.
3.6 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as sole panelist on January 5, 2001.
3.7 The Panel therefore proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint and the Response.
4. Factual Background
4.1 Complainant is an Australian radio broadcasting company licensed by the Australia Broadcasting Authority under the Broadcast Services Act 1992 to provide commercial broadcast services (Complaint Annex 4).
Complainant operates a broadcasting station in the Melbourne area in the State of Victoria. Complainant asserts that it is licensed to operate under the callsign "goldfm", however the licence forming Annex 4 to the Complaint shows the callsign to be 3KKZ.
4.2 The Complainant is the registrant of the domain name <1043goldfm.com.au> and has an active web-site at that location.
4.3 The domain name <goldfm.com> does not resolve to a web-site.
4.4 Respondent is an Australian company with its registered office in Portland, Victoria, but having its principal place of business in South Melbourne, Victoria. Respondent was incorporated in 1971. Its current directors are Karen Lorraine Corbett and Peter James Corbett.
4.5 Respondent describes itself as a multi-media and digital production company specialising in digital media production, web-streaming and associated activities and states that it has operated in media production since 1986.
4.6 The domain name was registered on May 19, 1999. There is some ambiguity as to this date. Complainant contends the date of registration was August 15, 2000, and this is the date shown in the registrar's response to enquiry from the Center. Respondent contends that the domain name was created and registered on May 19, 1999. This date appears to be the correct date and is so shown on the NSI WHOIS data base and is otherwise consistent with the facts of this case. Though nothing ultimately turns on this date, the Panel accepts the date May 19, 1999 as the date of registration of the domain name.
4.7 In or about July 2000, Mr David McDonald, General Manager of Complainant telephoned Mr Peter Corbett of Respondent and offered to purchase the domain name for 1,000 Australian Dollars. Complainant and Respondent agree that Mr Corbett said that he would have to discuss the offer with his partner and that Mr Corbett subsequently called Mr McDonald declining the offer. There is a conflict of evidence between Complainant's assertion that Mr Corbett's call to Mr McDonald declining the offer was made the following day and Respondent's assertion that the call was made one week later. Also, according to Complainant's version, Mr Corbett said he would be "holding on to the domain name for the time being", whereas Respondent asserts that Mr Corbett told Mr McDonald that he would be developing the web-site and that it was not for sale to anyone.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name Respondent accepts the dispute resolution policy adopted by the Registrar. Registrar's current policy set out in its domain name registration agreement. is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the domain name has been registered and is being used in bad faith.
6. Parties’ Contentions
6.1 Complainant contends that it has developed a substantial reputation throughout the Melbourne region of the State of Victoria for its extensive broadcasting, advertising and other related activities under the "goldfm", "104.3" and "gold104.3" trade marks.
6.1.1 Complainant contends that it has expended approximately 1.2 million Australian dollars per year externally, and committed over 6 million Australian dollars per year of its own air time on advertising and promotional expenditure for its station. It claims an average cumulative audience of 600,000 people per week.
6.1.2 Complainant contends that it can provide evidence of the extent of its cross media of the "gold", "goldfm" and "104.3goldfm" trade marks and that it has established common law trade mark rights in each of those marks.
6.1.3 Complainant contends that the domain name is identical to Complainant's "goldfm" mark and is nearly identical and/or confusingly similar to its "gold" and "104.3goldfm" marks, and that by registering the domain name Respondent is representing a connection or association with Complainant.
6.1.4 Complainant further asserts that any use of the domain name would be ikely to be taken as an indication of a connection with Complainant and would dilute the value of Complainant's marks and adversely affect its rights and interest.
6.2 Complainant contends Respondent has no rights or legitimate interests in the domain name.
6.2.1 Complainant asserts that the Respondent is not commonly known by the domain name, has not acquired any trade mark or service mark rights in it and has produced no evidence of use or preparations for use of the name in connection with the bona fide offers of goods or services.
6.2.2 Complainant further asserts that searches of the Australian National Business Name Index and the Australian Trade Marks Register revealed no registrations of "goldfm" or any associated marks in the name of Respondent.
6.3 Complainant asserts that Respondent has registered and is using the domain name in bad faith.
6.3.1 Complainant contends that the domain name was registered or acquired by Respondent primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant or a competitor of the Complainant for consideration in excess of Respondent's out of pocket expenses. Complainant refers to the telephone conversations between Mr McDonald and Mr Corbett in July 2000 in support of this contention. It is implicit in the Complaint that Complainant did not license or authorise the use of the domain name by Respondent.
6.4 Respondent denies that the domain name is identical to or confusingly similar with Complainant's trade marks.
6.4.1 Respondent contends that:
Complainant has not demonstrated rights in a trade mark with which the domain name is identical or confusingly similar. Respondent points out that Complainant is not the proprietor of any registration of the trade marks in which Complainant asserts rights. As to the contention that Complainant has established common law rights in those trade marks Respondent points out that there are many radio stations throughout the world which have "gold" and/or "goldfm" as their callsign and that there are many domain names registered which have "gold' and/or "gold" plus the letters "fm" as, or as part of, the domain name. Respondent in particular points to the radio station on the Gold Coast of Queensland, Australia, which has the callsign "goldfm" and is the registered holder of the domain name "goldfm.com.au".
6.4.2 Respondent contests Complainant's assertion that its web-site makes extensive use of the "goldfm" mark and asserts that there is only minimal use of the phrases "goldfm" and "104.3goldfm" and that the references on the site are predominantly to "gold104.3". Respondent further contends that several weeks of monitoring indicate that the station's callsign is referred to only as "gold104.3".
6.4.3 Respondent concedes that there is similarity between the domain name and the unregistered marks of Complainant but denies that they are identical or that they are confusingly similar. Having regard to the minimal use to which those marks have been put compared to Complainant's "gold104.3" callsign, and to the many other radio stations which incorporate "gold" in their callsigns and/or their domain names, confusion with Complainant's marks is not likely to occur.
6.4.4 Respondent asserts legitimate rights or interests in the domain name on the basis that Respondent supplies online web-stream entertainment material to clients and plans to develop the site "along those lines". Respondent asserts that the web-site has not yet been activated as a business plan is still in development.
6.4.5 Respondent denies that the telephone communications between Mr McDonald and Mr Corbett evidence an intention to sell the domain name to Complainant and asserts that the domain name has never been offered to the Complainant or any of its competitors. Respondent has not been involved in the sale of domain names, and further submits that Complainant and Respondent are not competitors, and the domain name is not registered with intent to disrupt Complainant's business.
7. Dicussions and Findings
Identical or Confusingly Similar Trade Marks
7.1 The Panel finds that Complainant has failed to establish that the domain name is identical or confusingly similar to trade marks in which it has rights.
7.1.1 Complainant has not produced evidence to support its contention that it has extensively used "goldfm" either as its callsign or as its common law trade mark. Complainant's licence shows its callsign to be "3KKZ", and inspection of Complainant's web-site at "104.3fm.com.au" supports Respondent's contention that there is minimal, if any, use of "goldfm" on the web-site. The Panel therefore finds that Complainant has failed to discharge the onus upon it to show that "goldfm" is a trade mark in which it has rights.
7.1.2. As to "gold" and "104.3goldfm", Complainant has failed to establish that the domain name is confusingly similar to those marks having regard to Respondent's evidence of common use of "gold", including "goldfm", in callsigns for radio stations and domain names associated with them, including a station in another state of Australia.
The Panel therefore finds that Complainant has failed to establish the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights and as this is the necessary condition for the establishment of the Complaint, therefore the Complaint must be dismissed.
Respondents Rights or Legitimate Interests
7.2 The view of the finding of the Panel in relation to the identity or confusingly similarity of the domain name with Respondent's alleged trade marks is unnecessary to consider this next question. Whilst it may be open to question as to why Respondent chose the name "goldfm" Complainant has not adduced any evidence or asserted any facts to negate Respondent's asserted intention to establish a web-site under that domain name.
Registration and Use in Bad Faith
7.3 It is likewise unnecessary to consider this ground. However, the Panel comments that Complainant has failed to establish a prima facie case that the domain name was registered and is being used in bad faith. The mere fact that the domain name does not point to a web-site is insufficient to establish bad faith use and registration on the "passive use" test in Telstra v. Nuclear Marshmallows Case. The telephone discussions between Mr McDonald and Mr Corbett fall far short of showing that the domain name was registered with the primary intention of selling it, renting it or otherwise transferring it to Complainant or a competitor of Complainant. Even on Complainant's version of this conversation an opposite conclusion is clearly open.
The Panel finds and decides:
(i) Complainant has failed to establish that the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) Complainant has failed to establish that Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Complainant has failed to establish that the domain name has been registered and is being used in bad faith
(iv) The Complaint is therefore dismissed.
Dated: January 18, 2001