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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Melbourne 2006 Commonwealth Games Corporation v. B & M Group Of Companies Pty Ltd

Case No. D2005-0366

1. The Parties

1.1 The Complainant is Melbourne 2006 Commonwealth Games Corporation, Melbourne, Victoria, Australia.

1.2 The Respondent is B & M Group Of Companies Pty Ltd, Warnambool, Victoria, Australia.

2. The Domain Names and Registrar

2.1 The disputed domain names are <melbourne-2006.com>, <melbourne2006.com>, <melbourne2006.info>, <melb2006.com> and <melb2006.info> (collectively the “disputed domain names”).

2.2 The disputed domain names are registered with eNom, Inc., Bellevue, WA, United States of America.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 11, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On April 12, 2005, eNom transmitted by email to the Center its verification response confirming that the domain names had been placed under lock status to prevent transfers or changes to the registration information during the proceedings. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2005.

3.3 The Center appointed Andrew Frederick Christie as the sole panelist in this matter on June 1, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

3.4 On May 11, 2005, the Respondent sent a fax to the Center stating that it had sent the Center an email on May 10, 2005, (the due date for filing a Response) that appeared not to have been received by the Center due to its large size. The fax also stated that the documents contained in the fax were a “full transcript of that intended email”. On May 16, 2005, the Respondent sent an email to the Center, attaching a purported earlier email to the Center (of unspecified date) which stated in part: “While I respect that the deadline has passed it is clear that in order for me to present a fair case an extension would have to be made, in the event it is granted I envisage a minimum two week extension would be required”. By email dated May 17, 2005, the Center replied that it would not grant an extension of time to file a Response. The Center’s email further stated that if the Respondent wished to submit a late response it would be transmitted to the Panel, and the Panel would have sole discretion to decide whether or not to consider it, under its general powers under the Rules, paragraph 10.

3.5 On May 19, 2005, the Complainant sent an email to the Center referring to the Respondent’s fax of May 11, 2005, making various responses to the matters raised by the documents in the Respondent’s fax, and requesting that the Panel exercise its discretion under the Rules, paragraph 12 to request the Respondent to substantiate certain of those matters. On May 20, 2005, the Complainant sent an email to the Center stating that it had that day received from the Respondent a bundle of documents, comprising the documents faxed by the Respondent to the Center on May 11, 2005, and additional documents. The Complainant noted that the Panel may in its discretion consider the additional documents and may also ask the parties to respond to the issues raised by these documents. On May 23, 2005, the Respondent sent by fax a further bundle of documents to the Center, purporting to respond to certain of the matters raised in the Complainant’s email to the Center of May 19, 2005. All of the above correspondences by the parties were supplied to the Panel as part of the case file for this dispute.

3.6 The Panel has resolved to treat the documents faxed by the Respondent to the Center on May 11, 2005, to be the Respondent’s formal Response, and accordingly has considered those documents in making this Decision. Further, the Panel has exercised its discretion to consider the additional documents sent by the Respondent to the Complainant on May 20 and May 23, 2005. However, because the Panel does not regard any of those additional documents as detrimental to the interests of the Complainant in this dispute, it has resolved that it is unnecessary for the Complainant to be given a chance to respond to those additional documents.

4. Factual Background

4.1 The Complainant was established under Part 1A of the Commonwealth Games Arrangements Act 2001 (Vic) of the State of Victoria, Australia (the “Act”), as the entity responsible for the planning, organization and delivery of the Melbourne 2006 Commonwealth Games, together with the Commonwealth Games Federation (the “CGF”) and the Australian Commonwealth Games Association (the “ACGA”). The Complainant is the successor in title to the assets and liabilities of Melbourne 2006 Commonwealth Games Pty Ltd, which in turn was the successor in title to the assets and liabilities of Melbourne 2006 Commonwealth Games Bid Pty Ltd.

4.2 The Complainant is the registered trademark owner in Australia of numerous trademarks relating to the Melbourne 2006 Commonwealth Games, evidence of which is annexed to the Complaint. These trademarks, which were registered with effect from March 14, 2003, include:

(a) the words “MELBOURNE 2006 XVIII COMMONWEALTH GAMES AUSTRALIA” and the words “MELBOURNE 2006 XVIII COMMONWEALTH GAMES”, both in conjunction with a stylized depiction of two athletes and the term “Melbourne 2006” featuring prominently;

(b) the words “COMMONWEALTH GAMES MELBOURNE 2006”, without accompanying images or design;

(c) the term “MELBOURNE 2006”, without accompanying images or design.

4.3 Section 56M of the Act came into effect on October 7, 2003. Subsection (1) of that section prohibits an unauthorized person from using “Games related indicia or images or anything that is substantially identical to or deceptively similar to Games related indicia or images” for commercial purposes. The phrase “Games related indicia or images” is defined in the Act to include “a Commonwealth Games reference”. That phrase is defined, in turn, to include a number of phrases including “Melbourne 2006 Commonwealth Games”, “Melbourne 2006 Games” and “Melbourne2006”.

4.4 The Complainant is the registered proprietor of a number of domain names, all of which were registered by a predecessor in title and transferred to the Complainant, including: <melbourne2006.com.au>, registered on January 22, 1997; <melbourne2006.net> registered on May 5, 2001; <melbourne2006.org> registered on May 5, 2001; and <melb2006.com.au> registered on November 21, 2002.

4.5 On October 18, 1996, an agreement was signed between the ACGA and the State of Victoria, Australia confirming that the ACGA would bid for the 18th Commonwealth Games with the support of the State of Victoria. On or shortly after this date there was a public announcement that Melbourne, the capital of the State of Victoria, would bid internationally for the 18th Commonwealth Games. On October 10, 1999, a Host City Contract was signed between the CGF, the ACGA and the Complainant’s predecessor in title, formalizing the right to host the 18th Commonwealth Games. On or around this date there was a public announcement that Melbourne had won the right to host the 18th Commonwealth Games.

4.6 According to Whois searches (copies of which are annexed to the Complaint), the disputed domain names were registered on the following dates:

(a) <melbourne2006.com> September 11, 1997
(b) <melbourne-2006.com> June 11, 2004
(c) <melbourne2006.info> March 7, 2004
(d) <melb2006.com> July 11, 2004
(e) <melb2006.info> September 28, 2004

4.7 On January 28, 2005, Brendan McKenna, sole director/secretary of the Respondent, and the administrative, billing, technical and registrant contact for the disputed domain names, sent a letter to the Honourable Steve Bracks, Premier of Victoria (a copy of which is annexed to the Complaint). This letter stated in part:

“My company [the Respondent] has managed to acquire the web site www.melbourne2006.com. I have contacted the Melbourne Commonwealth Games on a number of occasions, who have shown no interest in the use of the Domain Name. I am aware that Melbourne 2006 is a registered trademark in relation to commonwealth games. … I will use the site for my own purposes should I not get any reply indicating any interest in the use of the Domain name or site whatsoever. I will allow 14 working days for a response.”

4.8 On March 16, 2005, the Complainant’s Legal Counsel sent a letter to the Respondent by email, facsimile and mail (a copy of which is annexed to the Complaint), stating that the term “melbourne2006” is protected under the Act; that registration and use of the domain name <melbourne2006.com> constitutes an infringement of the Complainant’s registered trademark for MELBOURNE 2006; that consumers are likely to be confused by thinking that <melbourne2006.com> is associated with, or endorsed by, the Complainant, which constitutes deceptive or misleading conduct under the Trade Practices Act 1974 (Cth); that the Complainant would seek to have the domain name <melbourne2006.com> transferred to it under the Policy; and demanding immediate removal of the website and the transfer of the domain name <melbourne2006.com> to the Complainant.

4.9 On March 16, 2005, Brendan McKenna responded to the letter from the Complainant’s Legal Counsel by email (a copy of which is annexed to the Complaint), requesting the Legal Counsel to contact him regarding the domain name <melbourne2006.com>. On the same day, the Complainant’s Legal Counsel telephoned Brendan McKenna, and Brendan McKenna proposed renting the domain name to the Complainant. On the same day, Brendan McKenna sent a second email to the Complainant’s Legal Counsel (a copy of which is annexed to the Complaint), stating “Negotiations for rental of www.melbourne2006.com, referred (sic) to Premier Steve Bracks office for negotiation”.

4.10 On March 21, 2005, Brendan McKenna sent a letter to the Honourable Steve Bracks, Premier of Victoria (a copy of which is annexed to the Complaint), stating in part:

“We have put a package together with a flat rate of $49,000 per month Aus plus GST. You will get full exclusive use of all sites below [being the disputed domain names] for 14 months or more.”

4.11 On March 21, 2005, Brendan McKenna sent a facsimile to the Complainant’s Legal Counsel (a copy of which is annexed to the Complaint), in which he acknowledged that MELBOURNE 2006 is a registered trademark protected by the Act; acknowledged that <www.melbourne2006.com> had received misdirected inquiries from parties interested in the Melbourne 2006 Commonwealth Games; stated that <www.melbourne2006.com> was “Premium advertising space, in fact nothing short of a world wide billboard”; and stated that he was “well known as a World Wide collector of Premium Domain Sites” with “some 200+ Domain names” in his possession.

4.12 The Respondent operated a website at the domain name <melbourne2006.com>, which stated prominently “www.Melbourne2006.com [i]s in negotiation for use with the Commonwealth Games”. A screenshot of this website as at March 31, 2005 is provided as an annex to the Complaint. The domain names <melbourne2006.info>, <melbourne-2006.com> and <melb2006.com> when used as URLs resolved to the Complainant’s registration service provider’s home page at <www.budgetweb.com.au>. The domain name <melb2006.info> when used as a URL resolved to a generic search engine. Copies of screenshots of the webpages to which the domain names resolved are annexed to the Complaint.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that, in addition to its registered trademark rights, it has unregistered trademark rights to the trademark MELBOURNE 2006. These unregistered trademark rights arose some time after October 18, 1996, the day on which Melbourne’s bid for the Commonwealth Games was publicly announced, by virtue of the fact that: (i) like the Olympic Games, the Commonwealth Games are traditionally known by the name of the host city followed by the year of the games; (ii) the term “Melbourne 2006” became a well known symbol of the Melbourne bid to host the 2006 Commonwealth Games; and (iii) the term “Melbourne 2006” has been used regularly in the media and by the Complainant in advertising and on Commonwealth Games-related merchandise. The Complainant contends that these unregistered trademark rights subsisted until the trademark MELBOURNE 2006 was registered with the Australian TradeMarks Office with effect from March 14, 2003.

5.2 The Complainant contends that all of the disputed domain names are identical or confusingly similar to its registered or unregistered trademarks, and in particular to its registered and unregistered trademark rights in the term “Melbourne 2006”.

5.3 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, because its trademark rights in the term “Melbourne 2006” predate the registration of the disputed domain names by the Respondent and because the Respondent has no association with the Complainant. In particular, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain names incorporating any of those trademarks.

5.4 The Complainant contends that the Respondent must have acquired the domain name <melbourne2006.com> on or after its formation as a company on April 8, 2003. The Complainant contends that the Respondent acquired the disputed domain names primarily for the purpose of “renting” them to the Complainant for valuable consideration in excess of its documented out-of-pocket expenses directly related to the domain names, that being evidence of the Respondent registering and using the domain names in bad faith pursuant to paragraph 4(b)(i) of the Policy. The Complainant further contends that the Respondent registered the disputed domain names knowing of the legitimate interest of the Complainant or its predecessor-in-title in the trademark MELBOURNE 2006, and has thereby engaged in a pattern of conduct to prevent the Complainant from reflecting the trademark in a corresponding domain name, that being further evidence of the Respondent registering and using the domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy.

B. Respondent

5.5 The Response consisted of a nine page facsimile, comprising a one page letter dated May 11, 2005 addressed to the Center, stating that the documents following were the full transcript of an unsuccessful email transmission of the previous day; a two-page letter dated May 10, 2005, addressed to the Center; a one-page letter dated March 7, 2005, addressed to the CEO of Qantas; a two-page letter dated March 21, 2005, addressed to the Premier of Victoria; and a three-page letter dated March 21, 2005, addressed to the Legal Counsel of the Complainant.

5.6 The substance of the letter dated May 10, 2005 addressed to the Center was as follows. The Complainant’s trademarks and associated laws “monopolies (sic) all events in Melbourne during 2006”. The Complainant has had more than enough time to acquire the domain name <melbourne2006.com> legally “by purchase through sale prior to my acquisition”, but has only shown an interest in it after utilizing the domain name <melbourne2006.com.au>. The Respondent “came across the legal owner” of the domain name in late 2003. Aware of the trademark, the Respondent notified “the Games administration immediately several times” and prepared an agreement to transfer the domain name to the Complainant for a “brokerage fee that would barely cover our costs”. However, “the administration was so adamant it did not want the site, they refused to give me a person to address my concerns with”. The Respondent is “planning a series of events to be held in Melbourne during 2006 and felt as the Games clearly did not want the site, I would purchase the site”.

5.7 The substance of the letter dated March 7, 2005 to the CEO of Qantas stated: “I would like to offer Qantas the possibility of exclusive use of the site for a negotiable term” in the event that the Premier of Victoria was not interested acquiring exclusive use of the domain name <melbourne2006.com>.

5.8 The letter dated March 21, 2005 to the Premier of Victoria stated the Respondent had managed to acquire the domain name <melbourne2006.com>, and has “put a package together with a flat rate of $49,000 per month Aus plus GST”, under which the Premier would “get exclusive use of all sites below [being the disputed domain names] for 14 months or more”.

5.9 The substance of the letter dated March 21, 2005 to the Complainant’s Legal Counsel acknowledged that “Melbourne 2006” had been trademarked and protected by the Commonwealth Games legislation; stated that the Respondent had “attempted to act as a Broker so the domain name [<melbourne2006.com>] could be transferred across swiftly”; claimed that the Respondent had attempted negotiations as far back as 15 months earlier but received no positive response; stated that the domain name had been linked to the Complainant’s site at <www.melbourne2006.com.au> because “we were by default receiving mis-directed enquiries”; stated that the Respondent is “well known as a World Wide collector of Premium Domain Sites [w]ith some 200+ Domain names in my possession to date” and listing numerous domain names including the word “melbourne” together with a year beginning “20”.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 The Complainant has rights in trademarks registered in Australia that consist of, or include, the term “MELBOURNE 2006”. The rights in these registered trademarks took effect from March 14, 2003. The Panel considers each of the disputed domain names to be either identical or confusingly to at least one of the trademarks in which the Complainant has rights. In particular, the domain names <melbourne-2006.com>, <melbourne2006.com> and <melbourne2006.info> are identical to the Complainant’s registered trademark MELBOURNE 2006. This is because the absence of the space, or the substitution of hyphen for the space, in the domain name compared with the trademark is immaterial (and, of course, the presence of the gTLD in the domain name is irrelevant). Further, the domain names <melb2006.com> and <melb.2006.info> are confusingly similar to the Complainant’s registered trademark MELBOURNE 2006. This is because it is a widely recognized convention in Australia to shorten the name “Melbourne” to “Melb”. A member of the public seeing the term “melb2006” would consider this to be a reference to the term “Melbourne2006”.

6.2 Accordingly, the Panel finds that the Complainant has establish the requirement of paragraph 4(a)(i) of the Policy, namely that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

6.3 The Respondent has not established that it has a right or legitimate interest in any of the disputed domain names. Putting the best possible interpretation on a confused Response, the Respondent’s claim seems to be that it acquired the domain names for the purpose of transferring these to the Complainant for a modest brokerage fee, essentially as a matter of “Good Public Relations”. The Respondent did not, however, provide any persuasive evidence in support of this assertion. The only potentially relevant material provided by the Respondent was in the post-Response additional materials sent by the Respondent to the Complainant on May 20, 2005, being a purported printout of records of telephone calls made by the Respondent to the Complainant’s telephone number in November, 2003 and June, 2004. These records show the date, time and duration of the call, and were annotated by the Respondent in handwriting with words purporting to record the content of the telephone conversation.

6.4 It is not necessary for the Panel to reach a concluded view on the probity of the Respondent’s supplementary material, for the simple reason that even if the material is accepted as evidence in support of the Respondent’s assertions, those assertions do not establish that the Respondent has a right or legitimate interest in the disputed domain names. Even if it is the case that the Respondent offered, and the Complainant declined the Respondent’s offer, to act as a “broker” for the transfer of the domain name <melbourne2006.com> to the Complainant, this does not amount to the Respondent having a legitimate interest in either that domain name or the other disputed domain names. As the Respondent itself stated a number of times, it was aware that the phrase “Melbourne 2006” was a trademark owned by the Complainant (and, indeed, protected by the Commonwealth Games legislation), and was aware of this prior to the Respondent’s acquisition of the domain name <melbourne2006.com>. Thus, the Respondent was fully aware that it could not legitimately use the disputed domain names, whether or not the Complainant wished to have the Respondent act as a broker in the acquisition of the domain name <melbourne2006.com>.

6.5 The Respondent also asserted that “As I am originally from Melbourne, I had also been planning a series of events to be held in Melbourne during 2006”. This assertion is simply implausible. However, even if true, the assertion does not establish that the Respondent has a legitimate right or interest in the disputed domain names. As noted above, the Respondent on a number of occasions stated that it was aware of the Complainant’s trademark (and statutory) rights to the phrase “Melbourne 2006”. A use by the Respondent of the disputed domain names in relation to an offering of unspecified events in Melbourne during 2006 would not have been legitimate, and so an intention to so use the disputed domain names does not give rise to a legitimate right or interest in them.

6.6 Accordingly, the Panel finds that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

6.7 It is generally accepted that the relevant date for determining whether the respondent to a domain name dispute under the Policy registered the domain name in bad faith is the date on which the respondent first acquired the domain name. The domain names <melbourne2006.info>, <melbourne-2006.com>, <melb2006.com> and <melb2006.info> were first registered on March 7, 2004, June 11, 2004, July 11, 2004 and September 28, 2004, respectively. While the Complainant was unable to establish the precise date on which the Respondent acquired the domain name <melbourne2006.com>, it asserted, and the Panel accepts, that it must have been on or after the date on which the Respondent was registered as an Australian proprietary company, namely April 8, 2003. The Respondent itself stated that it “came across the legal owner of the [domain name] late 2003”.

6.8 The Complainant’s registered trademarks were registered in Australia with effect from March 14, 2003. This is earlier than each of the dates on which the Respondent acquired the disputed domain names. The Panel has not, therefore, felt it necessary to reach a decision on the issue of whether the Complainant had unregistered trademark rights in the phrase “Melbourne 2006” prior to the registration of that phrase as a trademark.

6.9 The Complainant asserted, and the Respondent did not deny, that the Respondent spoke to the Complainant’s Legal Counsel in March 2005 and proposed to “rent” the domain name <melbourne2006.com> to the Complainant for AUD 50,000 per month. In addition, the Respondent acknowledged that later in March 2005 it wrote to the Premier of Victoria offering to “rent” the disputed domain names for a flat rate of AUD 49,000 per month. The Panel considers these acts are evidence that the Respondent registered, and is using, the disputed domain names in bad faith. In particular, these acts are circumstances indicating that the Respondent acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names. Further, the Respondent’s registration of five domain names (being the disputed domain names), each of which contains in part or in the full the Complainant’s trademark MELBOURNE 2006, constitutes a pattern of conduct of registering domain names in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. Pursuant to paragraph 4(b)(i) and paragraph 4(b)(ii), respectively, of the Policy, these circumstances are evidence that the Respondent registered and is using the disputed domain names in bad faith.

7. Decision

7.1 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 names <melbourne-2006.com>, <melbourne2006.com>, <melbourne2006.info>, <melb2006.com> and <melb2006.info> be transferred to the Complainant.

Andrew Frederick Christie
Sole Panelist

Date: June 16, 2005