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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Orlando Wyndham Group Pty. Limited v. Resource Capital Australia Pty. Limited

Case No. D2002-0729

 

1. The Parties

The Complainant is Orlando Wyndham Group Pty. Limited, an Australian corporation, with its principal place of business at Devon Park, South Australia, Australia. The Complainant is represented by its legal officer, Ms. Nicole Botsman.

The Respondent is Resource Capital Australia Pty. Limited, an Australian corporation, with its principal place of business at Sydney, New South Wales, Australia. The Respondent is represented by a Director, Mr. Marcus Boland.

 

2. The Domain Names and Registrar

The domain name at issue is <orlandowyndham.com>.

The domain name is registered with Melbourne IT Limited (dba Internet Names Worldwide) of Melbourne, Victoria, Australia (the "Registrar"). The domain name was registered by the Respondent on September 26, 2001.

 

3. Procedural History

A Complaint submitted by the above Complainant was received on August 2, 2002, (email) and August 5, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center (the "Center").

On August 2, 2002, a request for Registrar verification was transmitted by the Center to the Registrar, requesting it to:

confirm that a copy of the Complaint was sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (UDRP) paragraph 4(b);

confirm that the domain name <orlandowyndham.com> is registered with it;

confirm that the Respondent is the current registrant of the domain name;

provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), email address(es)) that are available in your WHOIS database for the domain name registrant, technical contact, administrative contact and billing contact, for the domain name;

confirm that the UDRP applies to the disputed domain name;

indicate the current status of the disputed domain name;

indicate the specific language of the registration agreement as used by the registrant for the disputed domain name;

indicate whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the disputed domain name.

By email dated August 12, 2002, the Registrar advised the Center as follows:

A copy of the Complaint was sent to the Registrar.

It is the Registrar of the domain name registration <orlandowyndham.com>.

The Respondent is shown as the "current registrant" of the domain name. Mr. Marcus Boland is the administrative contact.

The domain name registrations are currently in "active" status.

The Registrar has currently incorporated in its agreements the UDRP adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the the "Policy").

The language of the Registration agreement is English.

The domain name registrant has submitted his Registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of domain names.

By virtue of the registration agreement, the Respondent is bound by the provisions of the Policy.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy (the "Rules"), the Center on August 12, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint.

The Complainant elected to have its Complaint resolved by a sole Panelist; it has duly paid the amount required of it to the Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response on September 6, 2002.

On September 10, 2002, the Complainant forwarded a fax to the Center attaching proof of the renewal of the Australian trademarks mentioned in its Complaint. Although the Complainant did not seek leave from the Panel to admit this further information, as it should have, the Panel has decided to admit this evidence which is purely a matter of public record. The Respondent had pointed out in its Response that the Australian trademarks referred to in the Complaint showed, on their face, that they had expired in 1999, and had not been renewed.

The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a Statement of Acceptance and requested a declaration of impartiality and independence.

The Panelist duly advised acceptance and forwarded to the Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On September 18, 2002, Center forwarded to the Panel by courier the relevant submissions and the record. The projected decision date is October 2, 2002.

The Panel has independently determined and agrees with the assessment of Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is the owner of Australian trademarks in Class 32, 572062 and 573876 for the name ‘Orlando Wyndham’ (plus an encircled letter ‘W’ as a device). These trademarks were first registered in 1992 and now expire in 2009.

It also has an interest in trademarks over the same name – either filed for registration or awaiting registration in Greece, Italy and Portugal.

It has registered several related domain names such as <orlandowines.com>, <orlandowyndham.org>, <orlandowyndhamgroup.com> and <orlandowyndhamgroup.com.au>.

Complainant was formed in 1990 as a combination of Orlando Wines of South Australia and Wyndham Estate wines in the Hunter Valley, New South Wales – Australia’s oldest operating winery. Complainant is Australia’s largest wine and spirit company and its products have enjoyed critical acclaim in Australia and elsewhere. It produces the well-known ‘Jacob’s Creek’ range of wines. Complainant did not authorise Respondent to use the disputed domain name.

The Respondent is the owner of the registered Business Name "Orlando Wyndham Australia" with registration issued by the Department of Fair Trading in the State of New South Wales on September 26, 2001.

There is currently no developed website using the disputed domain name.

 

5. Parties’ Contentions

Complainant:

The disputed domain name is identical to Complainant’s registered trademarks.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave it none.

In accordance with Rules, para. 3(b)(ix), the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint for the reasons set out below. In addressing this issue the Complainant has paid particular attention to relevant aspects of Policy, para. 4(c) ie:

(i) whether before any notice to the Respondent of the dispute, there is any evidence of 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.

(ii) whether the domain name Respondent is an individual, business, or other organisation has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.

(iii) whether the domain name Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has been unable to discover any evidence of the Respondent’s use of or intention to use the domain name in connection with a legitimate offering of goods or services. The Complainant believes that the Respondent is a business that offers financial services including corporate advisory services and as such there is no obvious link to the wine industry and specifically to the production of wine. The domain name in dispute is not in operation.

The Complainant is very well known in the Australian wine industry and is commonly referred to as one of the top 4 producers of wine in Australia.

To the Complainant’s knowledge the only entities operating under or using the name ORLANDO WYNDHAM are those owned by the Complainant.

The Complainant has not been able to obtain any evidence that indicates the existence of a business operated under the name ORLANDO WYNDHAM or any other organisation conducted by the Respondent utilising the name ORLANDO WYNDHAM. Accordingly, in the absence of any evidence to the contrary, the Complainant asserts that there is no such entity or organisation owned or operated by the Respondent.

The Respondent has chosen to register the name of the Complainant which is a successful, internationally-recognized wine company. The Complainant also asserts that the Respondent has registered the disputed domain name rather than <orlandowyndham.com.au> as, at the time the domain name in issue was registered, the law in Australia was such that a .COM.AU domain name could only be registered if evidence of registration of a business name or company name could be provided.

In the event that the Complainant is successful in its application to obtain ownership of the disputed domain name, it would immediately utilise that domain name as its corporate website in place of <orlandowyndhamgroup.com.au> which it currently uses.

In accordance with para. 3(b)(ix) of the Rules, the disputed domain name should be considered as having been registered and used in bad faith for the reasons set out below. In addressing this issue the Complainant has paid particular attention to relevant aspects of the Policy, para. 4(b) including:

whether the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the domain name Respondent has engaged in a pattern of such conduct.

The Complainant asserts that the domain name was registered to prevent the Complainant as the owner of the trademark ORLANDO WYNDHAM (and other associated trademarks) from reflecting its mark in a corresponding domain name. The Complainant also asserts, based on the findings of WIPO Case No.D2001-1393, Southcorpwines Pty Ltd & J.Y. Tulloch & Sons Pty. Ltd v. Resource Capital Australia Pty Ltd, that the Respondent engages in a pattern of such conduct.

The Southcorp case also involved Resource Capital Australia Pty Ltd as the respondent. In that case, the Respondent registered the domain name <tullochwines.com> which was held to be confusingly similar to the trademark TULLOCH in which the Complainant had rights. The Complainants in that case were both wholly-owned subsidiaries of Southcorp Limited, a direct competitor of the Complainant.

In the Southcorp case, after registering the domain name in issue, Respondent sought to sell that domain name to the Complainant for $A50,000 with a threat to offer the domain name for sale to others if its offer were not accepted. It was held by the Panel in Southcorp that "There could be no clearer case of cybersquatting."

Respondent must have had constructive notice of the existence of business of Complainant and, as it did in the Southcorp case, registered the disputed domain name in bad faith.

Complainant also relies on WIPO Case No. D2000-0396 Laurent Perrier SA and Champagne Laurent Perrier SA v Laurentperrier.com, Mr. L. Perrier and M.L. Perrier.

Respondent:

The Response is diffuse and difficult to summarise. In essence, the substantive points made by the Respondent are as follows:

(a) The facts here are not similar to those in the Southcorp decision.

(b) In any event, Respondent does not accept the validity of that decision because the Respondent had not been allowed to file an affidavit in evidence which would have proved that the Respondent had been acting on the instructions of a third party that had derived the disputed domain name from the name of a famous racehorse. No trademarks were alleged by the Respondent to have been breached in respect of its search. The Panel in the Southcorp case "glossed over" that fact in its decision.

(c) The Respondent was "vehemently endeavouring to induce in Southcorp a sense of appropriate responsibility in regards to their intellectual property obligation and thereby logical and natural ultimate positive effort and responsibility to shareholder value." This point was said to have been overlooked by the Panelist.

(d) The Southcorp case was not a clear example of cybersquatting. The decision contained only selective references to diminutive points in Respondent’s case. The decision was thus one-sided, prejudicial and provides no precedent or negative inference.

(e) The Australian trademarks registrations exhibited to the present Complaint have expired. The other marks referred to in other countries exhibited relevant dates after the registration of the disputed domain name.

(f) The Australian trademark database shows that the Complainant’s marks apply either to Orlando wines or to Wyndham wines.

(g) The Complainant has no corporate or business name registration under the name ‘Orlando Wyndham Group’.

(h) The Complaint’s domain names containing the words ‘orlandowyndham’ were registered after the disputed domain name. The Complainant has evidenced no preparations to use the disputed domain name. Its Complaint is mischievous, abusive and in bad faith.

(i) Respondent owns the business name ‘Orlando Wyndham Australia’ which is evidence of its intended use of the disputed domain name in connection with a legitimate offering of services before notice to the Respondent of the Complaint.

(j) The disputed domain name is designed to be used in a "non-commercial, benevolent and progressive manner by way of an e-commerce business owned and being developed by the Respondent and known as Winebrands."

(k) A <winebrands.com.au> site is under construction and represents the physical culmination of Respondent’s strategy which is to provide a free non-commercial listing service available to all Australian wine products. The website envisages an electronic e-commerce directory hoped to be the best available to producers and the public, promoting the interests of both major producers like the Complainant as well as smaller wineries, with a link provided to a UK website. Through this means, knowledge and recognition of Australian winemakers will be disseminated worldwide. A new effective outlet for wine sales for registrants will be provided.

(l) Confidentiality is sought by the Respondent for this proposal. It is said to have been the first of many worldwide.

(m) Respondent, as stated in the Southcorp decision, has interests in the wine industry through Traminer Park Vineyard. It also carries out IP and e-commerce development work website construction and small business assistance.

(n) Complainant has never contacted Respondent regarding the disputed domain name. It has not attempted to sell the name.

(o) There is banner advertising at <classaction.com.au> for the winebrands site.

(p) Respondent registered the business name ‘Orlando Wyndham Australia" to meet the requirements of the Registrar that all domain registrations made through Australian registrars must accord with a registered business name or company incorporation.

(q) The business name was evolved as a link address business providing the service of a link between consumers and the attaching website, which in this case is <Winebrands.com.au>." The disputed domain name is a link in the chain of competitive advantage and functionability of the larger website behind it. It will not tarnish Complainant’s marks or reputation. Its products will not be able to be purchased on Respondent’s site and will merely be listed ‘in a most notable and respectful way’.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

The disputed domain names are identical to the marks in which Complainant has an interest. The first criterion is proved. The Complainant’s supplementary filing indicates that registration is current. Even if it had not been, the Complainant would have had a common law mark based on the expired marks and its exposure to the Australian market as one of the largest wine producers.

As to the second criterion, the Complainant gave the Respondent no legitimate rights or interests in respect of the domain names. The burden then shifts to the Respondent. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, should demonstrate a Respondent’s rights or legitimate interests to a domain name. These provisions of the Policy have been cited in the account of the Complainant’s submission. All 3 provisions of paragraph 4(c) appear to have been raised by the Respondent.

In essence, the Respondent’s claim is that:

(i) It has made demonstrable preparation to use the disputed domain name in connection with the bona fide offering of goods and service, i.e. a website directory for Australian wines operating at no costs to wine producers under <winebrands.com.au>.

(ii) It owns a business name registration for Orlando Wyndham Australia. Therefore, it is commonly known by the disputed domain name.

(iii) It is making a legitimate non-commercial and fair use of the disputed domain name without intent for commercial gain misleadingly to divert customers or tarnish the Complainant’s marks.

In all the lengthy Response document, the Panel cannot find a valid reason why the Respondent registered the disputed domain name which Respondent must have known was that of a major Australian wine producer. The compilation of a website, listing various brands of wine, is one thing and could be quite a legitimate activity, although care would have to be exercised over the treatment of trademarked names. For such an exercise <winebrands.co.au> could be perfectly legitimate. However, it is quite another thing to register the trademarked name of a well-known wine producer as a domain name. Respondent’s known interest in the Australian wine industry creates the compelling inference that it must have known of the Complainant’s distinctive name and its reputation as a producer at the time of registration.

The evidence provided by the Respondent shows, at best for the Respondent, demonstrable preparations for the preparation of a <winebrands.com.au> site. The evidence of demonstrable preparations even for this is far from strong.

The Panel has difficulty in reconciling the purpose of the <classactions.com.au> site (which appears to be aimed at those contemplating participation in class-action lawsuits) with a site which is to be a directory of wine producers. Even if the <classactions.com.au> site is an access for the winebrands site, that does not constitute evidence of preparation for a site utilising the disputed domain name.

It may be laudable to extend awareness of Australian wines to Internet users, but this cannot be done by using wine producers’ registered trademarks as domain names without their consent.

The Panel is surprised that the Respondent could have achieved registration as a business name in New South Wales of "Orlando Wyndham Australia" when there was a company registration of Orlando Wyndham Group Pty Limited under the laws of South Australia. The Panel can envisage potential for action under the tort of ‘passing off’ or under trade practices litigation at the suit of the Complainant. Be that as it may, it can be no coincidence that the date of the business name registration is the same as that of the registration of the disputed domain name. The policy of the Registrar referred to in Respondent’s submissions meant that the Respondent had to acquire some business name or company registration before a domain name reflecting that name could be registered by an Australian Registrar. The business name registration strikes the Panel as a device. It certainly offers no proof which would justify a successful defence under paragraphs 4c(i) and (ii) of the Policy. There is just no evidence that Respondent is commonly known by the name ‘Orlando Wyndham Australia’.

As to paragraph 4c(iii), there can be no doubt that an Internet user typing in the disputed domain name will expect to receive some information from the Complainant. Instead, an enquiry may ultimately reveal some as yet unspecified mention in a wine brands directory, assuming that the project articulated becomes operational. The claim is made by Respondent that this project is non-commercial, as well as legitimate and fair. The Panel has difficulty in seeing how such a venture could be non-commercial. The Respondent claims that its mission is to assist small business and to carry out website development. It strains credulity that this whole operation for a winebrands website, involving expense as it must, is a purely selfless exercise which provides no financial reward, even indirect. Nor can the proposed use be said to be legitimate or fair for the reasons evident in this decision.

The panel adopts with respect the views of the Panelist in WIPO Case No. D2002-0651, Telstra Corporation Ltd v India Yellow Pages as appropriate in the present context:

"In the view of the Panel, registering a domain name in such circumstances, knowing of the potential for confusion, cannot give rise to a right or legitimate interest in respect of the domain name in question. The fact, if it be a fact, that visitors to the website to which the Domain Names are connected will immediately see that the site is not the Complainant’s site is not good enough. The Respondent will be deriving a potential business opportunity from those visiting the site expecting to find the Complainant’s site, who might not otherwise have visited the site."

The Panel therefore finds the second criterion provided.

As to bad faith registration and use, the Panel considers those elements demonstrated by reason of the above considerations in respect of the second criterion. The Respondent must be taken to have known it was using the mark and name of a large Australian wine producer at the time of registration of the disputed domain name without an iota of consent. The only relevance of the Southcorp decision to the present case is that the Respondent there targeted another Australian winemaker by using its trademark. One should have thought that if Respondent (or someone for whom he acted) had sought to capture in a domain name the name of a famous racehorse (which just happened to be the name of a well-known brand of wine) then it would have said so in its Response instead of seeking to file an affidavit out of time. A pattern of conduct is therefore demonstrated. The Panel notes there was no offer by the Respondent to sell the disputed domain name to the Complainant as there was in the Southcorp case.

The Panel notes that in the Southcorp decision, the Respondent had claimed to have registered a business name ‘Tulloch Wine Supply’ but did not, as in the present case, exhibit proof. The Panelist noted that there had been no explanation as to how the use of that name would not contravene fair trading/passing off laws. Again this shows a pattern of conduct by Respondent.

Accordingly, the Panel finds all criteria proved and the Complainant succeeds.

The Respondent sought confidentiality in respect of this administration proceeding. It claimed that any publicity would seriously affect its plans, "Unlike the Complainant, the Respondent is not a behemoth company armed with endless financial resources and the IT market deterioration over the past year or more has caused some delays in our overall site production plans."

The Panel knows of no provision whereby it can authorise the confidentiality sought. Registration of a domain name and the UDRP are very public processes. All WIPO decisions are publicised on the Internet. The Panel is unaware of any case where information provided in UDRP proceedings has been suppressed.

When a party such as the Respondent registers a domain name, it signs up to the UDRP. This means that if a Complaint is brought against that party, it will have to divulge information relevant to any Complaint.

The Respondent’s application for confidentiality is ill-founded and cannot succeed.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <orlandowyndham.com> is identical to the trademarks in which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the domain names has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <orlandowyndham.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: September 25 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0729.html

 

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