National Council of The Young Men’s Christian Associations v. Einfo Pty. Ltd.
Case No. D2005-0897
1. The Parties
The Complainant is National Council of The Young Men’s Christian Associations, South Melbourne, Victoria, Australia, represented by Guy & Hinton, Solicitors, Australia.
The Respondent is Einfo Pty. Ltd., New South Wales, Australia, represented
by Dwyer & Co., Solicitors, Australia.
2. The Domain Names and Registrar
The disputed domain names <ymcaaustralia.com> and <ymcasaustralia.com>
are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2005. On August 23, 2005, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On August 24, 2005, Melbourne IT transmitted by email to the Center its verification response confirming:
(a) that it is the registrar of the domain names;
(b) that the domain names are registered to the Respondent;
(c) the Respondent’s contact details and those of its administrative, billing and technical contacts;
(d) the language of the registration agreement is English.
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”).
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 September 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2005. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent’s default on September 29, 2005.
It transpired, however, that there had been numerous communications between, or involving, the Complainant and the Respondent in an unsuccessful attempt to resolve the matter. These communications appear to have ceased on October 3, 2005.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 14, 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.
On October 21, 2005, the Respondent’s solicitors
submitted what purports to be a Response to the Complaint.
4. Factual Background
According to the Complaint, the Complainant is the national federation in Australia of the Young Men’s Christian Associations, or YMCAs. According to the Complaint, the Young Men’s Christian Association is a community and charity organization originating in England in the 1840s, before spreading to Europe, the Americas and Australia. An International Alliance of the associations was first formed in 1855.
The Complainant’s Annual Report included as an Annex to the Complaint claims that “YMCAs” have been operating in Australia for 150 years. The National Committee of the YMCAs of Australia was first formed in the 1920s. The Annual Report also claims that the YMCA Movement in Australia had a combined income of AUD$104 million in the financial year 2002/2003 and AUD$133 million in the financial year for 2003/2004. The Annual Report also claims that the YMCA Movement had just under 75,000 members in Australia in 2003/2004, employed 6,000 staff and had 2,700 volunteers.
The Complainant is the owner of numerous trade mark registrations and applications for YMCA and YMCA Australia in Australia. Limiting those to just the marks registered before the Respondent registered either domain name, they include:
(a) 21599 for YMCA and device for paper stationery in class 16 registered from 1917;
(b) 269241 for YMCA for stationery in class 16 registered from 1973;
(c) 289742 for YMCA for commercial and illuminated signs in class 9 registered from 1973;
(d) 341743 for YMCA for clothing in class 25 registered from 1980;
(e) 681371 for YMCA for a wide range of services in class 41 registered from 1995;
(f) 681372 for YMCA for childcare, camping, food and accommodation and related services in class 42 registered from 1995;
(g) 744060 for YMCA for a range of transport and travel related services in class 39 registered from 1997; and
(h) 727420 YMCA AUSSIE SLAMMERS and device for sporting and education related services in class 41 from 1997.
The Response does not seriously contest these matters.
According to the whois information included in the Complaint, the Respondent registered the domain name <ymcaaustralia.com> on October 26, 1999, and the domain name <ymcasaustralia.com> on July 3, 2004.
Since the dispute was notified, the website(s) to
which the domain names resolved appears to have become inactive.
5. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:-
(i) The domain name is identical or confusingly similar to a trade mark 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 Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
The Complainant has proved ownership of the registered trademarks referred to in section 4. above. In addition, the Complainant has satisfied the Panel that it also owns common law rights in at least the abbreviation YMCA in Australia. In this connection, the Panel notes that it is clear under Australian law that a community or charitable organisation can invoke rights in the nature of passing off and related actions in appropriate circumstances: see e.g. Holy Apostolic & Catholic Church of the East (Assyrian) Australian New South Wales Parish Association v Attorney-General; ex rel. Elisha (1989) 16 IPR 619 (CA NSW).
The evidence is less clear about the extent of use of the designation “YMCA Australia” and the Respondent expressly contends that the Complainant has been using that designation only in Victoria, a state of Australia, since December 2004. It is unnecessary to resolve this dispute, however, in light of the proved rights in YMCA alone.
The question of resemblance for the purposes of the Policy requires a comparison
of the domain names to the trademark rights which have been proved. This is
a different test to that involved in trademark law where questions of the goods
or services covered by the trademark rights can be relevant to the likelihood
of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini,
Cupcake City and Cupcake Patrol, WIPO
Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,
WIPO Case No. D2002-0420. The question
of the scope of the Complainant’s trademark rights may of course be relevant
to the issues under paragraphs 4(b) and 4(c).
Both domain names differ from the proved trademark rights of the Complainant by the addition of the term “Australia” and the gTLD “.com”; the second domain name also includes the letter “s” between “ymca” and “Australia”. Panels have repeatedly recognised that the mere addition of a gTLD should be disregarded for the purposes of the comparison. Similarly, many Panels have also recognised that, in most circumstances, the mere addition of a geographical description is insufficient to avoid a finding of confusing similarity. Viewed as a whole, there can be little doubt that the primary distinctive element of both domain names is “ymca”. Accordingly, the Panel finds that the domain names are confusingly similar to the Complainant’s proved trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant contends that the Respondent is not, and has never been, known or identified by the style “YMCA” and, it is to be inferred, has not authorised the Respondent to use the style.
The Respondent contends that it is making a legitimate non-commercial and fair use of the domain names, without intent for commercial gain or misleadingly to divert consumers or to tarnish the trademarks in issue. It relies on its submissions in rebuttal of the bad faith requirement of the Policy in further support.
Insofar as they appear relevant to this issue, those submissions make two main points. First, the Respondent claims that the website which the domain names resolved to had been used as a means for the Complainant’s constituent members to list their contact and service details free of charge. Secondly, the Respondent argues that the Complainant has the domain names <ymca.com.au> and <ymca.org.au>, but the domain names the subject of this dispute are registered in the gTLD .com and, accordingly, relate to countries and jurisdictions outside Australia where the Complainant’s trademarks do not apply.
The Panel notes first that the first argument is not that the, or any, constituent members of the Complainant have authorised the Respondent to register the domain names, only that they use it. More importantly, Annex F submitted in the Complaint is an extract from a website “www.directoryaustralia.com.au” “HotSpots Order Page” downloaded in March 2005 which consists of a listing of the domain name <ymcaaustralia.com> against a range of “coverage areas” such as Australia-wide, New South Wales and other states and territories of Australia and then particular regions such as “Central West Region”, “Far West Region”, “Hunter Region” and “Illawarra Region” all in NSW. Against each of these coverage areas is listed a dollar amount under a heading “Price for 12 months” – the price for Australia-wide being $15,000, the price for the several states and territories ranging from $254.24 to $4,322.03 and the price for particular regions each being $254.24.
The Respondent’s bare assertion that it is making a legitimate non-commercial and fair use cannot override that hard, objective evidence.
The Respondent’s second argument is also misplaced. There is no requirement that a gTLD must or can only relate to territories outside Australia. Many Australian companies and businesses have registered and use domain names in .com in ways which are clearly related to business activities in Australia. See e.g. <telstra.com>, <colesmyer.com>, to give just two examples. Moreover, the argument is inconsistent with the “non-commercial” use that the Respondent claims it is making.
In the circumstances of this dispute, therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the domain names.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and is being used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“b.Evidence of Registration and Use in Bad Faith”.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.
In this connection, the Complainant relies on the use made by the Respondent evidenced by Annex F already referred to.
Apart from the matters already referred to, the Respondent argues that it registered the domain names before the Complainant applied to register its trademarks for “YMCA Australia”. While the Complainant’s applications for YMCA Australia trade marks, and registration of the business name YMCA Australia were made after the registration dates of the domain names, the Respondent’s argument overlooks the Complainant’s trademark rights in YMCA alone to which, as discussed above, the domain names are confusingly similar.
The Respondent also contends that it is not a competitor of the Complainant and it did not register the domain names in order to disrupt the Complainant’s business.
Finally, the Panel notes that the Response unequivocally states that the Respondent agrees to transfer the domain names to the Complainant after the dispute has been determined, but denies that it has in any way acted in bad faith.
In the absence of an explanation about Annex F – which on its face charges far in excess of registration costs for the use of or in connection with the domain names, however, the Respondent’s attempted rebuttal of the Complaint’s claims must fail.
Accordingly, the Panel finds that the domain names
were registered and are being used in bad faith.
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, <ymcaaustralia.com> and <ymcasaustralia.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 28, 2005