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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems
Case No. D2001-0932
1. The Parties
The Complainant is Sydney Markets Limited, an unlisted public company incorporated in the State of New South Wales, Australia, having its principal place of business at Eastern & Building D, Sydney Markets, New South Wales, 2129, Australia.
The Respondent is named as Nick Rakis, trading as Shell Information Systems, of 18 Casuarina Road, Alfords Point, New South Wales, 2234, Australia.
2. The Domain Name and Registrar
The contested domain name is <sydneymarkets.com>.
The registrar is Internet Names Worldwide, a division of Melbourne IT Limited, of Level 2, 120 King Street, Melbourne, Victoria, 3000, Australia.
3. Procedural History
The electronic version of the Complaint was filed on July 23, 2001. The hardcopy of the Complaint was received on July 19, 2001.
On July 26, 2001, the Center transmitted via email to Internet Names Worldwide, a division of Melbourne IT. a request for registrar verification in connection with this case and on July 27, 2001 the Center received a verification response confirming that the domain name is registered with Internet Names Worldwide, a division of Melbourne IT and that the Registrant for the domain names is the Respondent."
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On August 1, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
In accordance with the ICANN Rules, the last day for submitting a Response was August 21, 2001. On August 20, 2001, the Respondent filed a request for an extension of time to submit the Response. On August 21, 2001, the Center informed the parties that the Respondent’s request for an extension was granted and the last day for filing the Response was September 2, 2001. The Respondent filed a Response on September 2, 2001.
On September 24, 2001, the parties were notified that Mr. Swinson had been appointed as the sole panelist and that a decision was to be handed down by October 8, 2001 (save exceptional circumstances).
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent electronically filed a copy of the Response within the extended timeframe allowed by the Center; the Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the owner of the following Australian registered trademarks:
- word and image trademark SYDNEY FRESH FOOD MARKET, registration number 731129, in class 35 (Filing Date: April 1, 1997);
- word and image trademark SYDNEY PADDY’S MARKET, registration number 821218, in class 35 (Filing Date: January 25, 2000);
- word and image trademark SYDNEY SWAP & SELL MARKET, registration number 792535, in class 35 (Filing Date: April 28, 1999); and
- word trademark PADDY’S MARKET, registration number 586862, in class 42.
The Complainant has filed the following Australian trademark applications, which are pending:
- word trademark SYDNEY FLOWER MARKET, application number 816617, in class 35;
- word and image trademark SYDNEY FLOWER MARKET, application number 821217, in class 35;
- word and image trademark SYDNEY FLOWER MARKET, application number 786127, in class 35;
- word and image trademark SYDNEY FRESH FOOD MARKET, application number 821215, in class 35;
- word and image trademark SYDNEY GROWERS MARKET, application number 821214, in class 35;
- word trademark for the series SYDNEY MARKET/SYDNEY MARKETS, application number 821222, in class 35, examination of which has been deferred (Filing Date: January 25, 2000);
- word and image trademark SYDNEY MARKETS, application number 821221, in class 35, examination of which has been deferred (Filing Date: January 25, 2000);
- word and image trademark SYDNEY PRODUCE MARKET, application number 821213, in class 35;
- word and image trademark SYDNEY SWAP AND SELL MARKET, application number 821216, in class 35; and
- word and image trademarks ADELAIDE’S PADDY’S MARKETS; PERTH’S PADDY’S MARKETS; CAIRNS’ PADDY’S MARKETS; TOWNSVILLE’S PADDY’S MARKETS; HOBART’S PADDY’S MARKETS, application number 832095, in class 35.
The Complainant, as the successor of the Sydney Market Authority, is the registrant of the domain name <sydneymarkets.com.au> (although the whois record still lists Sydney Market Authority as the registered owner of this domain name). The panel notes that the Complainant became the registrant of the domain name <sydneymarkets.org> on May 24, 2000.
The Respondent became the registrant of the domain name <sydneymarkets.com> on February 10, 2000. The panel notes that the Respondent became the registrant of the domain name <shellinfosystems.com> on August 7, 2001.
On April 5, 2001, the Complainant by its lawyers wrote to the Respondent. The Respondent did not respond to that letter.
By letter dated April 24, 2001, the Complainant by its lawyers wrote to the Respondent. The letter was returned as "Address Unknown". The panel notes that Complainant did not include a copy of that letter in its Complaint.
On April 26, 2001, the Complainant by its lawyers wrote to the Respondent’s lawyers. The Respondent’s Solicitor, Brock Partners, telephoned the Complainant’s Solicitor, Griffith Hack Lawyers, on May 25, 2001. On June 18, 2001, the Complainant by its lawyers wrote to the Respondent’s lawyers. The Respondent’s lawyers responded to the Complainant’s lawyers by letter dated June 21, 2001.
The Respondent’s lawyers letter dated June 21, 2001 claimed that the Respondent’s "use of the domain is for e-business and consultancy in information technology".
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
The Complainant is an unlisted public company which assumed the business of operating the Sydney Markets which was previously operated by the State owned enterprise, Sydney Market Authority.
The Sydney Market Authority was constituted under the Sydney Market Authority Act 1968 (NSW). This legislation was passed through the New South Wales Parliament in April 1968 and enabled the government to set up the Sydney Market Authority to run the business of the Sydney Markets. Prior to that time, the Sydney Markets had been administered by the Sydney City Council and the purpose of the Sydney Market Authority Act 1968 was to empower the new Sydney Market Authority to have the sole right to run wholesale markets in the county of Cumberland. At the time that the Sydney Market Authority Act was enacted, the Sydney Markets were situated in the Haymarket area of central Sydney, where the modern day Paddy’s Market is situated. The current central site for the Sydney Markets is on Parramatta Road in the suburb "Sydney Markets" and the Sydney Markets occupy the entire suburb "Sydney Markets". The suburb was previously known, until 1996, as "Flemington". This site was purchased in 1958 by the New South Wales Government and in 1975 the main Sydney Markets moved to the Sydney Markets site at Flemington.
The Complainant was incorporated on 21 January 1997. A Heads of Agreement was executed between the Complainant and the NSW State Government on March 3, 1997 dealing with the transfer of the Sydney Markets business to the Complainant. The Sydney Market Authority (Dissolution) Act 1997 (NSW) and the Sydney Market Authority (Sale of Business Undertaking) Act 1997 (NSW) facilitated the dissolution of the Sydney Market Authority and the transfer of its business to the Complainant. The Complainant leases the Sydney Market Site from the NSW State Government.
The shareholders of the Complainant are the tenants of Sydney Markets. A prospectus for the Complainant was issued in February 1998 offering each tenant at the Sydney Markets a share, the equity of which share was calculated on the value of their individual space holding. This offer was only open to tenants of the Sydney Markets. Accordingly, the only shareholders of the Complainant are the tenants, and Perpetual Trustees hold shares that remain unallocated until they are allocated to tenants.
The role of the Complainant is primarily as a property and facility management company. In this role, it manages the Sydney Markets site at Sydney Markets and the Haymarket site, collects levies and rents from space holders, pays outgoings, maintains the Sydney Markets’ sites and promotes the Sydney Markets. As the operator of the largest wholesale market in Australia, the Complainant’s activities also involve lobbying in relation to issues relevant to the Sydney Markets and its shareholders, and promotion of produce sold at the Sydney Markets.
The Complainant manages and administers as part of the Sydney Markets the following individual markets:
Sydney Produce Market
Sydney Market site
(Monday to Friday)
Wholesalers selling fresh produce and mainly catering for the professional buyers from supermarkets, restaurants and green grocers but also open to the public
Sydney Flower Market
Sydney Market site
(Monday – Saturday)
Flower Growers selling fresh cut flowers, flower gift accessories (ribbon etc), catering for the professional buyers from florist, restaurants and green grocers but also open to the public
Sydney Growers Market
Sydney Market site
5 days a week (Monday – Friday)
Growers selling fresh fruit and vegetables and herbs
Sydney’s Paddy’s Markets
Sydney Market site and Haymarket site
4 days at Haymarket (open Thursday, Friday, Saturday and Sunday) and 2 days at Sydney Market site (open Friday and Sunday)
Sydney Fresh Food Market
Sydney Market site
Sellers selling fresh produce (including fruit and vegetables, farm eggs, seafood, honey, deli meats, bread etc in small quantities or in bulk
Sydney Swap and Sell Market
Sydney Market site
The biggest garage sale in Australia with over 250 stands selling pre-loved treasures, including electrical goods, clothing, tools, fishing lines, books and nick knacks.
As the Complainant’s role is as the industry-owned provider of space to the tenants of the Sydney Markets and the operator and administrator of the Sydney Markets, its revenue is raised primarily by rents, dues and fees. Its expenditure is also similarly comprised primarily of rents and rates and other property management expenses.
However, the Complainant estimates that the actual "throughput" for the Sydney Markets in terms of produce and goods per annum, based on anecdotal evidence from sources such as trades, historical survey figures and the market reporting service (publication of prices, analysis of tonnages/prices by the market reporting service which is conducted by NSW Agriculture), is as follows:
- Fresh fruit & vegetables $1.8 billion
- Fresh cut flowers $90 million
- Other goods $300-400 million
The Complainant advertises and obtains publicity for the Sydney Markets, and through this marketing, the markets it conducts being known generally under the banner "Sydney Markets", the Complainant (and its predecessor in business, Sydney Market Authority ("SMA")) developed and maintained a reputation in the common law mark, Sydney Markets.
Sydney Markets and its predecessor SMA have published, and Sydney Markets continues to publish, various promotional material and informational materials for the users of the Sydney Markets. The publications promote the sale of fresh produce through the markets conducted by Sydney Markets and access to the markets by the growers, stall holders and market users. The publications are distributed to the stall holders and attendees of Sydney Markets, as well as the growers and industry bodies.
Since at least 1994, Sydney Markets has published and continues to publish a newsletter, originally called the Gazette and now called the Leader. These publications are distributed to stall holders and attendees at Sydney Markets as well as growers and industry bodies including the Minister of Agriculture. The publications inform readers about events at Sydney Markets, current and upcoming promotions of Sydney Markets and various other information of about Sydney Markets. There have been 24 issues since 1994 with a circulation of approximately 2,000 copies per issue.
The Complainant has a far reaching and valuable Australian reputation for the provision of goods and services under the name "Sydney Markets" and generally under the trademarks listed which pertain to individual markets operated.
The contested domain name is identical or confusingly similar to the Australian registered trademark or service mark in which the Complainant has rights, i.e. SYDNEY FRESH FOOD MARKETS (731129), SYDNEY SWAP AND SELL MARKETS (792535) and SYDNEY’S PADDYS MARKETS (821218) and its pending Australian trademark application, SYDNEY MARKETS.
The Respondent has no connection with Sydney Markets or the Complainant. To the Complainant’s knowledge, the Respondent works in information technology. The Respondent has not legitimately traded under the name Sydney Markets nor, in light of the Complainant’s registered trademarks and the reputation the complainant has in association with those trademarks. The Respondent has no rights or legitimate interest in respect of the domain name.
Due to the Complainant’s reputation, the unauthorised use by the Respondent of Sydney Markets mark in conjunction with the <sydneymarkets.com> website constitutes representations that:
- the services provided by the Respondent on the website are the same as the services provided by the Complainant or its members;
- the Respondent and the services are somehow connected to the Complainant or its members;
- the Respondent has the authority of the Complainant to use the Sydney Markets trademark and to conduct the services that it is providing on the website under that trademark;
- the Respondent has the approval of, or an affiliation with, the Complainant;
- the services provided by the Respondent are of a particular standard and quality that the Complainant’s customers have come to expect as services provided by the Complainant’s members.
These representations are misleading and deceptive within the meaning of section 42 of the Fair Trading Act (NSW) which provides: "A person shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive". Further, by adopting the contested domain name, the Respondent is seeking to benefit from the goodwill of the Complainant and pass itself off as a business of the Complainant or its licensees or affiliated with the Complainant.
The Respondent’s solicitor claimed that the Respondent’s "use of the domain is for e-business and consultancy in information technology". However, to the Complainant’s knowledge, the Respondent has not used the domain name for that purpose, or any purpose.
On a date unknown to the Complainant, the Respondent disabled its website, but it remains registered in the Respondent’s name until October 2, 2002.
The Complainant alleges that the Respondent is not entitled to legitimately trade under "Sydney Markets" and therefore it can assume that the Respondent acquired the contested domain name in bad faith for one of the following purposes:
- to prevent the Complainant from reflecting its trademarks in a corresponding domain name;
- to disrupt the business of the Complainant;
- to establish (in the future) a website and attract for commercial gain, Internet users to the website or other on-line location by creating a confusion with the Complainant’s mark;
- to sell the contested domain name to a competitor of the Complainant; or
- to sell the domain name to the Complainant for valuable consideration in excess of the costs incurred in acquiring the contested domain name.
The Complainant further alleges that the Respondent is not using the contested domain name in connection with its own business and the Respondent has no connection with the business or goods or services provided by the Complainant.
The Respondent was unrepresented in this dispute.
The Respondent alleges that the Complainant’s conduct "amounts to blatant and constant harassment by a multimillion dollar company against an (sic) small operator - a small business entity."
The Respondent also made the following statements in his Response:
"Flemington Markets legal counsel is correct in stating how important and how rich they are. They do own a whole suburb in the Sydney outskirts and it has it's own postcode 2129. It used to be called Flemington Markets and they have been given a parliamentary ruling to do with the site whatever they wish, for the next 40 years. They now call the site Sydney Markets, even though <whitepages.com.au> continues to call them Flemington Markets, the road maps continue to call then Flemington Markets. I am lead to believe that they are aggressively working towards establishing an international presence as <SydneyMarkets.com> which seems to be is a better option.
I on the other hand, owned prior to the Sydney Olympics 2000, the website called <Sydneymarkets.com> as you are now aware. I created the website to promote my IT business prior to the Sydney Olympics. I do not have a multimillion-dollar real estate, I do not have an influential board or influential share holders and I do not have government backing. Also I do not have a multimillion dollar legal budget to use to attack other business entities or small businessmen in Sydney Australia or anywhere else in the world that happen to be making a living using a domain name which could be called "sydneymarkets.anything" and happen to sell goods or provide services that have nothing to do with "Flemington Fruit & Vegetable Markets", suburb 2129, Sydney Australia. Flemington Markets are the wholesalers of fruit and vegetables to the rest of the Sydney retailers for many many years and this is exactly what the NSW government wants them to continue doing from that site.
This is the only opportunity that I am given to prove that I did not act in bad faith. I did not register, I had no intend to use their reputation or operated the website with the intention of bad faith towards Flemington Markets and their trademark. I consider their stand arrogant and hostile. Their standover tactics are nothing less that legal bulling; a big operator systematically working towards smashing a small IT Consultancy website, just because they can. Right now I have nothing but contempt for them, their legal advisors due to their total lack of ethics.
Their marketing teams just now, June 2001 - two years after my web presence - has a little project to complete before summer. They need to exploit a new domain name for their multimillion dollar company. Domain name <SydneyMarkets.com> is required for the project. It belongs to a small IT consultancy. So I have to be smashed, removed, send broke, whatever it takes. Their first attempt was to demand from me to sign it over without any explanation or valid reason, using a very rude lawyer to do it, via registered mail and over the phone, she said to me "sign it over or see you in court, you are in Sydney Australia you are not in the USA, therefore your are using our client's trademark and it will [be] a matter of time before we take <sydneymarkets.com> off you". Their second attempt is now resting with you[r] ruling, which is an international ruling, therefore it does not matter if I am operating <SydneyMarkets.com> in Sydney Australia or in the USA.
I am not a lawyer, I don't sell fruit & vegetables I am in IT and that is what I do with this website."
6. Discussion and Findings
Firstly, the panel has not considered the Complainant’s allegations that the Respondent is in breach of the Fair Trading Act (NSW). The Complainant’s submissions on this point are not relevant to these proceedings.
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
6.1 Identical or confusingly similar to a trademark or service mark
In light of the evidence presented by the Complainant, in order for the Complainant to satisfy this requirement, the panel must find that either:
(i) the Complainant has unregistered trademark rights in the words "SYDNEY MARKETS" and the contested domain name is identical to that unregistered trademark; or
(ii) the Complainant’s registered trademarks are confusingly similar to the contested domain name.
Does the Complainant Have Unregistered Trademark Rights?
It is well established that Paragraph 4(a)(i) of the ICANN Policy does not require the Complainant to have registered trademark rights. A Complainant may rely on an unregistered word, phrase or string of characters, provided that the unregistered mark is and performs the function of a "trademark". The unregistered mark must perform the function of distinguishing the goods and services of one person in trade from the goods or services of any other person in trade. See Brisbane City Council v. Joyce Russ Advertising Pty Limited WIPO Case No. D2001-0069; Brisbane City Council v. Warren Bolton Consulting Pty Ltd WIPO Case No. D2001-0047; Realmark Cape Harbour L.L.C v. Lawrence S. Lewis WIPO Case No. D2000-1435; Oshawa Centre Holdings Inc. v. M. Bharwani eResolution Case No. AF-0820; Web2You Inc. v. MyDotCom eResolution Case No. AF-0268; Daydream Island Resort Investments Pty Ltd v. Alessandro Sorbello eResolution Case No. AF-0586.
The Complainant’s evidence shows that it and its predecessors, the Sydney Market Authority and the Sydney City Council, have been operating the Sydney Markets for many decades. The Complainant has been using the term "Sydney Markets" since the Sydney Markets business was transferred to it in 1997. The Complainant provided newspaper articles and brochures that used the term "Sydney Markets" to refer to the markets operated by the Complainant.
Prima facie, the evidence shows that Complainant has used the words "Sydney Markets" as a trademark, and that the Complainant has reputation in this mark sufficient to satisfy Paragraph 4(a)(i) of the ICANN Policy.
In March 2000, the Complainant adopted a new set of logos. One of the logos incorporated the words "Sydney Markets" as a dominate feature, with a line in the shape of an elongated "S" going under the word "Sydney" and over the word "Markets". This logo has been used by the Complainant as a trademark since at least mid-2000.
In the panel’s opinion, the inclusion of a logo in a trademark does not prevent the Complainant from relying on that trademark for the purpose of a successful proceeding under the ICANN Policy. See Oshawa Centre Holdings Inc. v. M. Bharwani eResolution Case No. AF-0820. Here, the panel finds that the use by the Complainant of the Sydney Market logo is also sufficient to satisfy Paragraph 4(a)(i) of the ICANN Policy.
The panel recognises that the Complainant has two pending trademark applications that are relevant to this dispute, and that these applications have been rejected by IP Australia (the Australian Trademarks Office). The panel finds it disturbing that the Complainant did not provide any information as to why these applications were rejected. Nor did the Complainant disclose that this applications, although still pending, were rejected. However, merely because a pending trademark application has been rejected is not sufficient to show that the corresponding mark does not have common law rights. As the Respondent did not raise this issue, the panel will not consider this point further.
A number of other issues are raised in this dispute. First, is "Sydney Markets" a geographic term, and if so, what is the effect of this? Second, "Sydney Markets" is the trade name of the Complainant, so what is the effect of this?
The Complainant states that "Sydney Markets" has become known as a suburb of Sydney, a suburb that, until 1996, was known as "Flemington". The Complainant’s also states that the Complainant’s markets occupy the entire suburb "Sydney Markets". The Complainant listed the suburb "Sydney Markets" and the postcode "2129" as part of its contact details for this administrative proceeding.
The Respondent contends that <whitepages.com.au> and the road maps continue to call the markets "Flemington Markets".
The panel reviewed the Australia Post Postcode Search database and found one entry for postcode 2129, being "Sydney Markets".
"Sydney" is the name of a well-known place in Australia. "Markets" is a generic word meaning "a meeting of people for selling and buying", "an open space or a covered building where such meetings are held", "a body of persons trading in a particular commodity", "demand for a commodity" or "an area where anything is or may be sold" (The Pocket Macquarie Dictionary).
WIPO recently issued a report titled "THE RECOGNITION OF RIGHTS AND THE USE OF NAMES IN THE INTERNET DOMAIN NAME SYSTEM" Report of the Second WIPO Internet Domain Name Process <http://wipo2.wipo.int> September 3, 2001. This report has a helpful discussion of the protection of geographical terms per se in the DNS.
The panel is generally aware of and has reviewed the following ICANN decisions, that relate to domain name disputes where the disputed domain name had some geographic connotation (only the first of which was cited by the parties in these proceedings):
- Brisbane City Council v. Warren Bolton Consulting Pty Ltd WIPO Case No. D2001-0047;
- Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224;
- Brisbane City Council v. Joyce Russ Advertising Pty Limited WIPO Case No. D2001-0069;
- Realmark Cape Harbour L.L.C v. Lawrence S. Lewis WIPO Case No. D2000-1435;
- Oshawa Centre Holdings Inc. v. M. Bharwani eResolution Case No. AF-0820;
- Daydream Island Resort Investments Pty Ltd v. Alessandro Sorbello eResolution Case No. AF-0586;
- Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699;
- Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. WIPO Case No. D2000-0505 (currently the subject of a pending court action in the United States);
- Burgernetzverein Bamberg e.V. v. Marcel Stenzel AF0267a; AF0267b;
- Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd WIPO Case No. D2000-1384;
- Melbourne IT Limited v. Grant Matthew Stafford WIPO Case No. D2000-1167;
- Oceanwalk Properties, Ltd. v Virtual Reality Mall Inc. NAF FA 95044;
- Glenmaura v. American Distribution Systems, Inc. NAF FA 0144;
- Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638;
- Wembley National Stadium Limited .v. Bob Thomson [aka <Wembleystadium.net>], WIPO Case No. D2000-1233;
- <portofhelsinki.com> WIPO Case D2001-0001; and
- <portofhamina.com> WIPO Case D2001-0002.
The present dispute is somewhat unique. Here, the place "Sydney Markets" was named after the Complainant.
The panel does not, therefore, consider this to be a dispute regarding a geographical term per se, such as Barcelona, Brisbane or St. Mortiz. This dispute is more akin to prior cases involving domain names that comprises a geographical name followed by a generic word, such as <oshawacenter.com>, <manchesterairport.com> or <wembleystadium.net>. In these cases, even though the contested domain name represented the name of something that existed in the real world (a shopping centre, an airport or a building), what was important was whether or not the Complainant had properly demonstrated that it had trademark rights.
In short, merely because the contested domain name has a geographic connotation does not mean that the Complainant should fail.
The Complainant’s name is "Sydney Markets Limited." A number of exhibits supplied by the Complainant use the term "Sydney Markets" to refer to that legal entity, rather than showing use of these words in the pure trademark sense.
In the WIPO report discussed above (titled "THE RECOGNITION OF RIGHTS AND THE USE OF NAMES IN THE INTERNET DOMAIN NAME SYSTEM"), Chapter 7, considered the protection of trade names per se in the DNS. In particular, paragraph 298 stated:
"A trade name is the designation adopted by a commercial enterprise to describe itself and to distinguish it from other businesses and enterprises. Trade names are also referred to variously as company, corporate, business or firm names, although each of these identifiers may sometimes attract slightly different legal or regulatory conditions. Common examples of familiar trade names are Ericsson, General Motors, Holiday Inn, Lego, Microsoft, Nestlé, Philips, Procter & Gamble and Sony. A trade name may also be registered and separately protected as a trademark, as most of the foregoing examples are."
This dispute does not involve a trademark per se. The Complainant uses "Sydney Markets" both as a trademark and as its name. In fact, the evidence shows that during the 1997 privatization, the Complainant incorporated under a name that mirrored its common law trademark because of the fame of "Sydney Markets" mark.
Thus, the panel finds that the Complainant is not merely relying upon a trade name, but upon a common law trademark.
Identical or confusingly similar
The panel finds that the contested domain name is identical to the Complainant’s unregistered common law mark "Sydney Markets". The only difference between the unregistered mark and the contested domain name is the addition of the generic top level domain name suffix ".com" and the deletion of the space between terms.
The panel finds that the contested domain name is confusingly similar to the Complainant’s unregistered common law logo for "Sydney Markets".
As a result, the panel finds that the Complainant has established this element.
It is unnecessary for the panel to consider whether the Complainant’s trademark registrations are confusingly similar to the contested domain name because of the above conclusion. However, the panel will briefly consider this point for the record.
The Complainant’s evidence shows that the Complainant has a number of Australian trademark registrations that include logos, together with the word "SYDNEY", the word "MARKET", and other words.
However, in the panel’s opinion, the Complainant’s registered trademarks are not identical or confusingly similar to the contested domain name. The panel has considered the Complainant’s three registered trademarks containing the word "SYDNEY" and the word "MARKET" and has decided that the words "SYDNEY MARKETS" are not the distinguishing features of those trademark registrations. The panel finds that:
- the distinguishing feature of trademark registration number 731129 are the words "FRESH FOOD" and the graphic;
- the distinguishing feature of trademark registration number 821218 is the word "PADDY’S"; and
- the distinguishing feature of trademark registration number 792535 are the words "SWAP & SELL".
In one of the letters exchanged between the parties prior to commencement of this proceeding, the Respondent’s then legal representative stated that the Respondent did not sell or provide any of the goods or services covered by the Complainant’s trademark registrations. In relation to Paragraph 4(a)(i) of the ICANN Policy, that is irrelevant. As stated in Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No. AF-0820 (three panel decision):
"The purpose of this test is that the Complainant must prove that it has trademark rights in words similar to the disputed domain name and is not making a spurious claim. The Complainant does not have to prove that it would succeed in a trademark infringement case against the Respondent. It is also irrelevant under this test that the Respondent may be in another jurisdiction where the Complainant does not have trademark rights.
In short, it is not a requirement for the Complainant to prove that the Complainant has the exclusive rights to its trademark in relation to all types of goods and services in all countries in the world. There is no requirement that the Respondent is infringing or may infringe those trademark rights. For this test, it is irrelevant whether or not the Respondent knew of the Complainant's trademark."
As a result, the panel finds that the contested domain name is confusingly similar to the Complainant’s common law trademarks.
Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.
The Respondent has provided no evidence to satisfy any of the above three criteria, other than to state that the Respondent owned the "website" prior to Complainant’s notification of the dispute, and that the Respondent has been using the website to "promote my IT business."
It is clear on the evidence that the Respondent has not at any time been commonly known by the domain name within the meaning of the policy. The whois database search reveals that the Respondent is known as "Shell Information Systems", a name which has no connection with "Sydney Markets." There is no evidence revealing that the Complainant has licensed or otherwise authorised the Respondent to use its name in the contested domain name.
The Respondent has not provided any evidence of its use of, or demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute. The term "demonstrable preparations to use" in Rule 4(c)(i) requires real preparations "that are calculated to result in deployment of an operational website addressed by that name". Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA0010000095856. The Respondent has not provided the panel with a business plan, proof of registration of a business name incorporating the words "Sydney Markets", or any other evidence to show that it has invested any time, money or energy in preparing for use and actual use of the contested domain name in connection with a bona fide offering of goods and services.
The only evidence available to the panel regarding the Respondent’s use of the contested domain name was obtained by the panel visiting the website accessible by the contested domain name. (The Complainant states that there was no website in existence when it filed the Complaint in this matter, and so the current use may not be use "prior to notification of the dispute" as required by the ICANN Policy.) The panel visited the website accessible by the contested domain name and found a simple "mock up" website consisting of about two webpages. The first webpage contained plain text under the heading "Welcome to Sydney I.T. Markets". The webpage stated that the Respondent’s business specialised in "IT Development Project Management Services and IT Operations services for Solaris systems." This webpage also stated: "With over 15 years experience in the Sydney Market you can rest assured your project is in good hands and you are kept informed." The second webpage listed the Respondent’s contact details as "Sydney Markets, P.O. Box 511, Matraville, NSW, 2036, Australia or email@example.com."
The panel notes that the business name referred to on the website is "Sydney I.T. Markets" not "Sydney Markets". The Respondent appears to also use the term "Sydney Market" to refer to Sydney information technology business community. The panel concludes that the Respondent is not now using the contested domain name in connection with a bona fide offering of goods or services.
Additionally, in the panel’s opinion, a "mock up" prototype website is not adequate evidence to show that the Respondent has used, or made demonstrable preparations to use, the contested domain name in connection with a bona fide offering of goods and services, or that the Respondent is making a legitimate noncommercial or fair use of the contested domain name. The panel believes that this evidence is particularly cogent when the Respondent is allegedly an information technology services provider.
On the evidence available, the panel is unable to conclude that the Respondent is using, or preparing to use, the contested domain name in connection with a bona fide offering of goods or services nor is the panel able to conclude that the Respondent is making a legitimate non-commercial or fair use of the contested domain name.
As a result, the panel finds that the Respondent has no rights or legitimate interests in the contested domain name.
6.3 Bad Faith
The Complainant’s submission on this point was primarily directed to non-use of the contested domain name by the Respondent. The Complainant relied on the well-known Nuclear Marshmallows case (WIPO Case No. D2000-0003) that found that non-use of the contested domain name may, in some instances, amount to bad faith. The facts of the present dispute are not as strong for the Complainant as in the Nuclear Marshmallows case, which involved the famous "Telstra" mark.
The Respondent’s only discussion of bad faith was as follows "I did not register, I had no intend to use their reputation or operated the website with the intention of bad faith towards Flemington Markets and their trademark. I consider their stand arrogant and hostile."
There is no evidence here that the Respondent has offered to sell the contested domain name to the Complainant, or to a competitor of the Complainant, or that the Respondent registered the domain name with that purpose.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent trademark owners from using them.
There is no evidence that the Respondent registered the contested domain name primarily for the purpose of disrupting the business of a competitor, or even that the Complainant was a competitor of the Respondent.
The panel concludes that the Complainant has satisfied Paragraph 4(b)(iv) of the ICANN Policy. The panel finds that the only reasonable inference that can be drawn from the facts of this case is that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The tests set out in paragraph 4(b) of the ICANN Policy are not exhaustive. If any one of the tests is satisfied, the Respondent will be found to have registered and used the domain name in bad faith. However, the Panel may determine that the domain name was registered and is being used in bad faith without any of the tests in paragraph 4(b) of the ICANN Policy being satisfied. All the evidence before the panel, when taken as a whole, leads the panel to the conclusion that the Respondent registered the contested domain name for the purpose of causing confusion with the Complainant and for the purpose of benefiting from that confusion.
First, the Respondent is located in Sydney, New South Wales and would have been aware of the Complainant’s use of the mark "Sydney Markets" prior to registering the contested domain name. A computer specialist with a university degree in Applied Science who resides in Sydney controls the Respondent.
Second, the Respondent’s business name, and the business allegedly being conducted by the Respondent, has no connection with the words "Sydney Markets". The website accessible by the contested domain name is headed "Sydney I.T. Markets", but the Respondent has not established any marketplace. There is no apparent reason why the Respondent selected "Sydney Markets" as its domain name, and the brief materials on the Respondent’s website show that the Respondent’s use of "Sydney Markets" is inconsistent and confusing.
Third, the evidence suggests that the Respondent created a mock-up website after the Complaint was filed in these proceedings. The panel believes the Respondent did this to try to confuse the panel and to rebut the Complainant’s submissions.
Finally, the Respondent registered the domain name over 18 months ago, but has not (until this dispute) used the domain name in connection with a bona fide offering of goods or services.
As a result, the panel finds that the Complainant has satisfied this element.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and 14 of the ICANN Rules, the Panel orders that the contested domain name <sydneymarkets.com> be transferred to the Complainant.
Dated: October 8, 2001