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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

St Martins Victoria Pty Ltd, Grollo Australia Pty Ltd v. Texas International Property Associates

Case No. D2008-1464

1. The Parties

The Complainants are St Martins Victoria Pty Ltd and Grollo Australia Pty Ltd, both of Melbourne, Victoria, Australia, represented by Middletons, Australia.

The Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <melbournedeck.com> (“the Domain Name”) is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2008. On September 29, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Name. On September 30, 2008, Compana LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. The Response was filed with the Center on November 6, 2008.

The Center appointed Warwick Smith as the sole panelist in this matter on November 20, 2008. 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.

4. Factual Background

The Complainants

The Complainants are the co-owners of the Rialto Towers, located in Melbourne, Australia. The Rialto Towers is one of the tallest buildings in the Southern Hemisphere. Within the Rialto Towers, the Complainants operate a popular tourist attraction, opened in 1996 under the original name “Rialto Observation Deck” and renamed “Melbourne 360º Melbourne Observation Deck” in 2001. For convenience, the Panel will refer to the Complainant’s deck in this decision as “the Melbourne Observation Deck”.

The Melbourne Observation Deck is located on Level 55 of the Rialto Towers, and, as its full name suggests, offers 360Вє views of Melbourne. The Complainants say that the Melbourne Observation Deck has become an internationally known tourist attraction, with thousands of international visitors and locals visiting each year.

The Complainants are jointly registered as proprietors of a number of Australian-registered trademarks which incorporate the expression “Melbourne Observation Deck”. The first is a device mark MELBOURNE OBSERVATION DECK + Design, consisting of those words superimposed over a dark rectangle with concave sides and curved stripes beneath the underside of the rectangle. The word “Melbourne” is in small font immediately above the (concave) upper side of the rectangle, while the word “observation” is superimposed over the dark concave rectangle, in bold white capitals. The word “Deck” appears in dark capital letters, immediately to the right of the rectangle. This mark has been in force in Australia since March 29, 2001, and it covers various goods in international classes 16, 25 and 28.

The second such mark has been registered with effect from July 19, 2005, and covers a variety of goods and services in international classes 9, 16, 25, 28, 35, and 43. This mark consists of a different dark rectangle device, but with similar format used for the words (“Melbourne” appears in small font immediately above a large, prominent upper case “OBSERVATION”, with the word “DECK” immediately to the right of the word “Observation”). The third device mark consists of the expression “MELBOURNE 360 MELBOURNE OBSERVATION DECK Rialto”, with a device consisting of a disk with lines radiating out from the disk in a 360º radius. The digit “360” is superimposed on the disk at the center of the device, and the word elements are immediately to the left of the disk. This third disk device mark is owned solely by the Complainant Grollo Australia Pty Ltd., and has been registered with effect from July 19, 2006.

The Complainants have an application pending for registration in Australia of the word mark MELBOURNE OBSERVATION DECK.

In addition to their trademarks, the Complainants own a number of registered business names in the State of Victoria, Australia. These names include the name “Melbourne Observation Deck”, which has been registered since March 20, 2000.

The Complainants say that, since 2000, they have built up a substantial reputation in the above-described trademarks. The Complainants’ promotional activities have included radio and television advertising, advertisements in brochures, posters, and on official maps of Melbourne, and the production and marketing of merchandise, souvenirs, stationery, writing instruments and other items featuring the trademarks. The Complainants have also acted in partnership with Government tourism agencies in Australia, using their trademarks to promote the Rialto Towers, and the Melbourne Observation Deck in particular. The Melbourne Observation Deck has been promoted as a tourist attraction at national and international trade shows.

The Complainants have produced as exhibits copies of a number of examples of their use of their device marks, including the concave rectangle device marks. The examples include use on stationery, on a Melbourne City Souvenir DVD, and on a souvenir cloth bag. They have also produced documents demonstrating the use of one or other of the concave rectangle device marks in Australian or Victoria State trade or tourism promotions.

The Complainants promote the Melbourne Observation Deck through a website at “www.melbournedeck.com.au”. The Complainants have produced pages from this website printed on September 5, 2008, and they prominently feature the Complainants’ disk and radiating lines device mark.

The Complainants have also produced extracts from a number of websites which appear to be concerned with tourism in the State of Victoria and in Melbourne City, in which the Melbourne Observation Deck has been promoted. One article refers to the Melbourne Observation Deck as the “Melbourne 360 or the Melbourne Observation Deck”. A web page from the website at “www.melbourne.vic.gov.au”, printed on August 5, 2008, includes the words: “Melbourne 360, the Observation Deck at Rialto Melbourne 360 offers breathtaking views.” A page from another website, “www.3.visitvictoria.com”, refers to “Melbourne 360 the Melbourne Observation Deck at Rialto”. The various third party web pages produced by the Complainants all appear to have been downloaded in early-to-mid August 2008.

The Complainants say that they have spent in excess of AUD 2 million promoting the trademarks and the services to which they relate, in Australia and around the world.

The Respondent and the Domain Name

The Domain Name was registered on June 16, 2005. Web pages from the website at the Domain Name (“the Respondent’s website”), printed on July 18, 2008, show that the Respondent operates a fairly typical landing page website, consisting primarily of click-on search categories and click-through links to sponsored third party websites. The Respondent’s web site contains a prominent statement near the top of the page “For ads on Melbourne and Australia”, and a list of click-on “Related Searches” which are all related to travel in Australia in one way or another. Clicking on “Melbourne” in the “Related Searches” list, takes the site visitor to a list of links to various websites associated with the City of Melbourne. All appear to be third party sites unrelated to the Respondent.

The Respondent says in its Response that it is the registrant of thousands of domain names, consisting of electronically registered generic words. It provides a number of examples. It goes on to say that, as part of its business of providing targeted advertising searches to Internet users, it contracts with an organization called Hitfarm, which connects its own websites to the Domain Name. The Respondent says that the links in question (i.e. the sponsored links on the Respondent’s website) are provided pursuant to Yahoo or Google’s terms, and are triggered by search requests entered by Internet users. The Respondent says that it has no control over what terms advertisers bid on at Google or Yahoo, or over what terms appear on the Respondent’s website.

The Respondent says further that Hitfarm provides an email link service, so that third parties like the Complainants can lodge complaints about advertising on websites which Hitfarm services with advertising content. The Respondent says that, on receiving complaints from third party trademark owners, Hitfarm has always removed the offending posts. The Respondent says that the Complainants have never made a complaint to Hitfarm about the content of the pages on the Respondent’s website.

The Respondent says that it had no knowledge of the Complainant at the time the Domain Name was registered. It notes that it is located some 9,000 miles away from the Complainants.

In their Complaint, the Complainants refer to the numerous previous UDRP panel decisions in which the Respondent has been found to have been guilty of bad faith registration and use under the Policy. The Complainants produced a list of approximately 60 cases involving the Respondent in the period 2007 to 2008, and they allege that in each of the 60 cases the Respondent was ordered to transfer the disputed domain name to the complainant. The Complainants also produced an extract from a Dallas Morning newspaper article published in May of 2007, entitled “Cashing in on Human Error”. The article referred to the Respondent’s practise of registering domain names similar to the trade or service marks of others, and referred to dozens of companies which had taken legal action against the Respondent to force it to surrender “typo” domain names. The article noted that most of the Complainants in those cases had won the rights to the relevant domain names after successfully alleging trademark infringement.

In response, the Respondent says that in 44 of the decisions referred to by the Complainants it consented to the transfer and made no responsive arguments. In others, the Respondent says that it did argue its case. Of the 44 cases in which the Respondent consented to transfer the disputed domain names to the complainants, the Respondent says that panels made no findings of any kind (and in particular, made no findings of bad faith on the part of the Respondent) in 24 cases. The Respondent then refers to its superior success rate in cases before the National Arbitration Forum, where the Respondent says that it has prevailed in 11 decisions (while being “on the losing end of a number as well”).

The Respondent does not in its Response explain how or why it chose the Domain Name, nor what steps (if any) it took, before registering the Domain Name, to ascertain whether or not the Domain Name was similar to any third party-owned trademark or serviced mark.

5. Parties’ Contentions

A. Complainants

The Complainants contend as follows:

1. The Domain Name is confusingly similar to the Complainants’ trademarks. The Domain Name contains the words “melbourne” and “deck”, which are also distinctive elements of the Complainants’ trademarks.

2. Upon viewing the Domain Name, Australians and people from other countries would expect that the Domain Name would be owned by the Complainants, especially given that the domain name <melbournedeck.com.au> is owned by the Complainants. Any person who omits the “.au” when attempting to access the Complainants’ domain name will be directed to the Respondent’s website.

3. The Respondent is not commonly known by the Domain Name, and there is no evidence of the Respondent’s use of the Domain Name in connection with the bona fide offering of goods or services.

4. The Respondent is not making any legitimate noncommercial use of the Domain Name. The Domain Name contains links to various sites relating to tourists and accommodation information in Melbourne and around Australia and the Melbourne Observation Deck is a significant tourist destination in that region.

5. Case law under the Policy has established that, when a domain name resolves to a website that consists of multiple advertising/promotional banners and click-through links, this does not support a finding that the respondent was or has been making a legitimate noncommercial or fair use of the disputed domain name. Rather, it suggests use of the disputed domain name for some type of commercial gain (citing EZ Pittsburg, Inc. v. James M. Van Johns, WIPO Case No. D2001-0612).

6. The Respondent has been guilty of bad faith registration and use, in that it has registered the Domain Name in order to prevent the Complainants from reflecting their trademark in a corresponding domain name, and has engaged in a pattern of such conduct.

7. The Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademark. The Respondent would not have legitimately used the combination of words “Melbourne Deck” for use in the Domain Name unless it was attempting to trade off the Complainants’ rights in its trademarks and cause confusion. The fact that the Respondent is offering links to tourist sites on the Respondent’s website the same type of service the Complainants provide indicates that the Respondent would have known of the Complainants’ use of their trademarks. Furthermore, as the Complainants own the <melbournedeck.com.au> domain name, consumers are likely to be misled or confused as to the Complainants’ relationship to, affiliation with, or endorsement of, the tourist and accommodation websites that can be accessed through the Domain Name.

B. Respondent

The Respondent contends as follows:

1. The Domain Name is not confusingly similar to the Complainants’ marks. The Complainants’ marks contain the word “Observation”, and trademarks are to be read as a whole.

2. The Complainants have provided no evidence of any confusion.

3. The content of a website linked to a disputed domain name is irrelevant to the question of confusing similarity.

4. There has been no intent to target the Complainant. Rather, the intent has been to provide links for users seeking information about Australia.

5. Many panels have found that the provision of a click-through service constitutes a bona fide offering of the service, at least where the bona fides of the offering is not tainted by evidence of bad faith. Such services are now a common business practice (citing Super Supplements, Inc. v. Vertical Access, Inc., WIPO Case No. D2008-0244).

6. In this case, the Domain Name is descriptive or generic it consists of a geographic term combined with a generic dictionary word.

7. The Respondent has no control over what terms advertisers bid on at Google or Yahoo, and therefore no control over what terms appear on the Respondent’s website. Panels have recognized that a Domain Name holder is not responsible for potentially offending content where the Domain Name contractor has a contract with a third party, such as Google or Yahoo, that controls that content (Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241, and Experimental Aircraft Association (EAA) v. EAA.COM, Claim No. FA 206309).

8. The Complainant has never made a complaint about the content of the Respondent’s website to Hitfarm. That is evidence that the Complainant simply wants to hijack the Domain Name, which had been in operation for over 3 years prior to any comment by the Complainant.

9. A respondent may fairly use descriptive or generic terms, as well as surnames, as commercial domain names, and may use typos of such terms, regardless of whether they are the subject of federally-registered trademarks. Common words and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis”. As quoted in WIPO Case No. D2007-1415 by the panel GLB Servicos Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc), WIPO Case No. D2002-0189, “Respondent is accused of using what amounts to a generic phrase to connect these generic concepts with search keywords in order to provide advertisers with targeted customer traffic. This is a legitimate business.” To the same effect, see Miller Brewing Company v. Yunju Hong, Claim No. FA192732.

10. The Respondent registered and began using the Domain Name long before receiving notice of the present dispute.

11. The Respondent has not been guilty of bad faith registration and use. With reference to the Respondent’s previous cases under the Policy, the overall picture is much more nuanced than the picture portrayed by the Complainants. The Respondent has prevailed in a number of disputes, and merely comparing the number of complaints without considering the broader context is misleading.

12. The Respondent is the registrant of thousands of domain names which consist of electronically registered generic words to which no other party can claim exclusive use. That is a legitimate, good faith business practice, and the Domain Name should not be regarded as being in a different category.

13. There is no evidence that the Respondent was aware of the Complainants at the time the Domain Name was registered, and the Respondent in fact had no knowledge of the Complainants at that time. There can be no bad faith registration without such knowledge at the time of registration.

14. Pay-per-click websites are not in and of themselves unlawful or illegitimate, at least in the absence of evidence that a respondent has selected a disputed domain name for a free ride upon a complainant’s mark (citing McMullen Argus Publishing Inc. v. Moniker Privacy Services / Jay Bean, MDNH Inc, WIPO Case No. D2007-0676). Unless a complainant’s trademark is targeted by a disputed domain name registration, pay-per-click revenue does not constitute evidence of bad faith registration or use (Terana S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489 an inference of targeting may be drawn from the inherent distinctiveness of a complainant’s mark or from the circumstance that the mark is famous or well-known. There has been no showing of fame in this case.)

15. A complainant must proffer evidence that demonstrates that a respondent has specifically intended to confuse consumers seeking out the complainant (Drew Bernstein and Kill City d/b/a Lip Service v. Action Advertising, Inc., WIPO Case No. D2000-0706).

16. The Respondent did not register the Domain Name to sell it to the Complainants or any other party.

6. Discussion and Findings

A. What the Complainant must prove – General

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires 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.”

B. Identical or Confusingly Similar

The Complainants have sufficiently proved that they are the registered proprietors of Australian device marks which include the words “Melbourne Observation Deck”. The question is whether the Domain Name is confusingly similar to one or more of those device marks.

In the Panel’s view, it is. The most prominent feature of the first of the Complainants’ device marks is the expression “Melbourne Observation Deck”. Of course the figurative elements of a device mark cannot be incorporated into a domain name, and that might be thought to point against any finding of confusing similarity. But in this case the figurative elements play no significant role in conveying the idea which the mark conveys (a concave rectangle above some curved lines does nothing to suggest the nature of the services provided by the Complainants - the words “Melbourne Observation Deck” perform that function).

The use of the words “melbourne” and “deck” in the Domain Name immediately render the Domain Name at least similar to the first of the Complainants’ device marks. They are identical to two of the three words used in the first of the Complainants’ device marks, and they convey almost all of the meaning conveyed by the first of the Complainants’ device marks. A significant number of Internet users would undoubtedly associate the word “Melbourne” with the large Australian city of that name, and those Internet users would assume that the Domain Name was associated in some way with a “deck” in Melbourne. (The use of the singular form “deck” in the Domain Name, and not the plural “decks”, makes it less likely that those Internet users would consider the possibility that the Domain Name might be operated by a deck (or decking) supply business ─ the plural expression “decks” would have been a more likely expression for such a business owner to have chosen.)

In the Panel’s view, the omission of the word “observation” from the Domain Name is not sufficient to alleviate the confusing similarity between the Domain Name and at least the first of the Complainants’ marks. The Domain Name consists of an internationally-known geographical indicator (the city of Melbourne), together with the singular form of the noun “deck”. What “deck” associated with Melbourne could the registrant of a domain name <melbournedeck.com> have had in mind? To anyone who knew of it, the obvious candidate would be the Melbourne Observation Deck, and the Panel is satisfied that a significant number of Internet users would think of the Melbourne Observation Deck when they saw the Domain Name.

For the foregoing reasons, the Panel is satisfied that the Domain Name is confusingly similar to the Complainants’ MELBOURNE OBSERVATION DECK mark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests on the part of the respondent, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the disputed domain name.

That approach is consistent with the consensus view of WIPO panels, as described at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”:

“A Complainant is required to make out prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP.”

In this case, the Complainants have established that the Domain Name is confusingly similar to a mark in which they have rights, and it is clear that they have not authorized the Respondent to use that mark (or any expression which is confusingly similar thereto) in the Domain Name. It is equally clear that the Respondent is not “commonly known by” the Domain Name, so there can be no right or legitimate interest under paragraph 4(c)(ii) of the Policy.

That combination of circumstances sufficiently establishes a prima facie case of “no rights or legitimate interests”, so the evidentiary onus shifts to the Respondent to demonstrate that it has some such right or legitimate interest. In the Panel’s view, the Respondent has failed to do so.

First, there is no question of any right or legitimate interest being claimed under paragraph 4(c)(iii) of the Policy: the Respondent’s use of the Domain Name has clearly been a commercial use, and accordingly it cannot be described as having been a “noncommercial” or “fair” use “without intent for commercial gain …”.

The Respondent’s primary argument is that it is entitled to rely on paragraph 4(c)(i) of the Policy. It says that, before it received any notice of the dispute, it had been using the Domain Name in connection with a bona fide offering of services, namely the provision to Internet users of targeted advertising searches, using the facilities provided by Google and Yahoo!.

The Panel accepts that the use of a disputed domain name in connection with the provision of such services can, in some circumstances, constitute a bona fide provision of services. But the respondent must have acted bona fide, and without intent to target the complainant’s trademark in some way e.g. by creating confusion with a complainant’s mark, in an attempt to divert Internet users looking for the complainant’s website to the respondent’s own website (thus taking a free ride on the back of the complainant’s goodwill in its mark). The Respondent acknowledges in its Response that the Paragraph 4(c)(i) defense is not available to a respondent who has acted with that intention.

In this case, the Respondent has failed to persuade the Panel that it has been acting bona fide, and that it did not intend to trade on the Complainant’s goodwill in its MELBOURNE OBSERVATION DECK device marks. Indeed, the Panel is satisfied that that was precisely what the Respondent intended.

The Panel’s starting point in reaching that conclusion, is that the Respondent has failed to offer any explanation for its choice of the Domain Name. It is all very well to say that the Complainants have not proved that the Respondent was aware of them or their marks, but in this part of the Policy the onus is on the Respondent (at least once the Complainants have made out a prima facie case). The expression “melbourne deck” is not the kind of expression the Panel would expect someone to simply pull out of the air. The Respondent must surely have appreciated that a huge number of Internet users would take the word “Melbourne” as a reference to the substantial Australian city of that name. The use of the singular form of the word “deck”, and the Australian tourism focus of the Respondent’s website, really gives the game away. What “deck” would Internet users be likely to associate with the city of Melbourne? On the evidence, there is only one answer, and that is the Complainant’s Melbourne Observation Deck.

If the Respondent’s answer on those issues is that the process by which the Domain Name was acquired was an automated one, without direct human involvement, the Respondent could have and should have provided full details of the instructions or parameters used by the Respondent in establishing the algorithm / “search and register” software the Respondent used when the Domain Name was acquired. The Respondent should also have provided details of the steps it took to ensure that it discharged its responsibility under paragraph 2 of the Policy to determine that by registering the Domain Name it would not infringe or violate someone else’s rights. In the Panel’s view, this is a case where some pre-registration enquiries (of the kind referred to in Media General Communications Inc. v. RareNames WebReg, WIPO Case No. D2006-0964, and Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448) were called for. The Respondent is in the business of bulk registration of thousands of domain names, and the combination of words “melbourne deck” is neither (solely) a geographic indicator nor an ordinary dictionary expression. It refers to a particular facility, just as, for example, the expressions “Sydney Opera House” and “Aberdeen Airport” do. Those who provide goods or services associated with such facilities will often own trademarks or service marks, whether registered or unregistered, covering their goods or services.

In the absence of any explanation from the Respondent for its choice of the Domain Name, the Panel finds as a fact that the Respondent was targeting the Complainants and their marks, and that the Respondent did so with a view to free riding on the Complainants’ goodwill in their marks. As the Respondent itself acknowledges, that cannot be a use of the Domain Name in connection with a bona fide offering of services.

For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Substantially for the reasons set out in the preceding section of this decision, the Panel also finds that the Respondent has registered and used the Domain Name in bad faith. In brief summary, the Panel does not believe the Respondent’s assertion that it was unaware of the Complainants or the Melbourne Observation Deck when it registered the Domain Name. As mentioned above, the expression is simply too singular for it to be probable that the Respondent thought of the expression without any knowledge of the Complainants or the Melbourne Observation Deck. The situation, including the Australian tourism focus of the Respondent’s website, clearly cried out for an explanation for the choice of the Domain Name, showing that the Domain Name was not chosen because of its association with the Complainants or the Melbourne Observation Deck (if that was the case). The Respondent has elected not to offer any explanation, and the Panel can only infer that any explanation the Respondent might have offered would not have been helpful to its case.

For completeness, the Panel refers to the Respondent’s submission that it cannot be held responsible for advertising material or sponsored links placed on the Respondent’s website by third parties over whom the Respondent has no control. The Panel rejects that submission. The Respondent cannot disclaim responsibility for the advertisements and/or sponsored links which appear on websites at the domain names which it acquires.

The Respondent was the respondent in the case of Grundfos A/S v Texas International Property Associates, WIPO Case No. D2000-1448, where this Panel said the following:

The Respondent submits that it is not responsible for the sponsored links appearing on the Respondent’s website. It says that those links were chosen by Google or Yahoo!, without its knowledge or input. The Panel does not accept that the Respondent can disclaim responsibility for the various links on the Respondent’s website which are concerned either with the Complainant or with the field of commercial activity in which the Complainant is a major player. The Panel respectfully agrees with the Panelist in the Starwood Hotels and Resorts Worldwide Inc case, where it was found that the Respondent was “ultimately accountable for the use of the Domain Names, even if an employee (or algorithm) of an online affiliate advertising network selected the particular advertisements on display”. See too the decision of this Panel in NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ; WIPO Case No. D2007-1079, where the Panel held that the Respondent cannot escape responsibility for the advertising on the Respondent’s website, on the basis that it was generated by Google without any involvement on the Respondent’s part. The Panel in the NVT Birmingham case approved the following statement from the decision of the three-member Panel in Grisoft, s.r.o. v. Original Web Ventures Inc; WIPO Case No. D2006-1381:

Although the web pages were automatically generated by DomainSponosr’s software of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of Internet users who are confused where (as here) the second level domain (SLD) is identical to the mark of a company which has been used on a substantial scale for a number of years.

The Respondent is ultimately responsible for the content of the website generated by domain sponsor’s technology.

In summary, the Panel is satisfied that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain (by way of pay-per-click revenue derived from the sponsored links on the Respondent’s website), Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ marks, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The circumstances therefore fall within the example of bad faith registration and use provided at paragraph 4(b)(iv) of the Policy.

The Complainants having established all three elements required to be proved under paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainants.

7. Reverse Domain Name Hijacking

Having regard to the outcome of this case, the Respondent’s allegation of reverse domain named hijacking is dismissed.

8. Decision

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 name <melbournedeck.com> be transferred to the Complainants.

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Warwick Smith
Sole Panelist

Dated: December 4, 2008