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									                WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

             WebFarm Ltd. v. Fopoco Pty Ltd. trading as “Free Parking”

                                 Case No. DAU2006-0007




1.   The Parties

     The Complainant is WebFarm Ltd., of Plymouth, New Zealand, represented by Guy &
     Hinton, Solicitors, Australia.

     The Respondent is Fopoco Pty Ltd. trading as “Free Parking”, David Geoffrey Frake,
     of Victoria, Australia, represented by Mallesons Stephen Jaques, Australia.


2.   The Domain Name and Registrar

     The disputed domain name <freeparking.com.au> is registered with
     Domain Directors Pty Ltd.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center
     (the “Center”) on June 30, 2006. On July 3, 2006, the Center transmitted by email to
     Domain Directors Pty Ltd. a request for registrar verification in connection with the
     domain name at issue. On July 11, 2006, Domain Directors Pty Ltd. 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 administrative, billing, and
     technical contact. The Center verified that the Complaint satisfied the formal
     requirements of the “.au” Domain Name Dispute Resolution Policy (the “Policy”), the
     Rules for “.au” Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO
     Supplemental Rules for “.au” 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 August 14, 2006. In
     accordance with the Rules, paragraph 5(a), the due date for Response was
     September 3, 2006.



                                            page 1
     On August 30, 2006, the Respondent applied to the Center for an extension of time in
     which to file its Response. On August 31, 2006, the Center granted an extension of
     time to September 6, 2006. The Response was filed with the Center on
     September 6, 2006.

     The Center appointed Professor Michael Pryles,
     The Honourable Neil Anthony Brown QC and Dr. Dan Hunter as panelists in this
     matter on September 28, 2006. The Panel finds that it was properly constituted.
     Each member of the Panel has submitted a 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 Complainant is a company incorporated under the laws of New Zealand. It has an
     Australian Business Number which is ABN 55 067 341 058. It operates a business in
     New Zealand, Australia and internationally, although mainly in the Asia/Pacific region,
     in the field of Internet web hosting, domain name registration and the provision of
     associated Internet services and products. It owns several domain names itself, namely
     <freeparking.biz>, <freeparking.co.nz>, <freeparking.net.au>, <freeparking.org.nz>,
     <free-parking.com.au> and <freeparking.com.sg>, through which it conducts its
     business.

     The Complainant has the following trademark registrations in its name:

     (a)   Trademark registered number 636450 for the word mark FREEPARKING,
           registered with the Intellectual Property Office of New Zealand;

     (b)   Trademark registered number 655029 for the device mark FREE PARKING,
           registered with the Intellectual Property Office of New Zealand;

     (c)   Trademark registered number 655030 for the device mark FREE PARKING
           registered with the Intellectual Property Office of New Zealand;

     (d)   Trademark registered number 975211 for the word mark FREE PARKING
           registered with IP Australia.

     The Respondent is a company incorporated under the laws of Australia. It has an
     Australian Company Number which is ACN 006 409 347 and an Australian Business
     Number which is ABN 14 006 409 347. It registered the domain name
     <freeparking.com.au> on July 13, 2000.


5.   Parties’ Contentions

     A.    Complainant

     The Complainant alleges that the contentious domain name <freeparking.com.au>
     should no longer be registered with the Respondent and that it should be transferred to
     the Complainant.

     It contends that this should be done because, within the meaning of paragraph 4 of the
     Policy, the domain name is identical or confusingly similar to the Complainant‟s

                                           page 2
     registered trademarks, that the Respondent has no rights or legitimate interests in the
     domain name and that the domain name has been registered and subsequently used in
     bad faith. The Complainant maintains that it can prove all three of these requirements
     and that the appropriate remedy is to transfer the domain name to the Complainant.

     Identical or confusingly similar

     In support of its case on the first of these three elements, the Complainant relies on the
     registered New Zealand and Australian FREE PARKING and FREEPARKING
     trademarks to which reference has already been made. It then says that it is self- evident
     that the domain name <freeparking.com.au> is identical to or similarly confusing (sic)
     to those marks. The Panel assumes that by this last submission the Complainant means
     that the domain name is confusingly similar to the trademarks.

     The Complainant also relies on common law trademark rights, as well as its registered
     trademarks. In support of this proposition it says that it has been using the name
     “Freeparking” in its business since it was launched on July 1, 2000 and that since then
     it has become widely known for its internet services under that name. In preparation
     for its launch it registered the domain name <freeparking.co.nz> on May 22, 2000, and
     it received its first customer on June 2, 2000, and its first Australian customer on
     July 31, 2000. Since its launch it has advertised in Australia and promoted its business
     by using the domain name <free-parking.com.au> which resolves to the Complainant‟s
     website at “www.freeparking.biz”. In New Zealand it has become very successful, has
     about 15% of the market and now manages over 40,000 domain names.

     Legitimate right or inte rest

     The Complainant then contends, to establish the second element, that the Respondent
     has no rights or interests in the domain name, that all that the Respondent has done is
     register the domain name and also register a Victorian Business Name in the name
     “Free Parking” and that these acts alone cannot constitute a right or legitimate interest
     in a domain name.

     Moreover, there is no evidence that the Respondent could bring itself within any of the
     provisions of paragraph 4(c) of the Policy, i.e. there is no evidence that the Respondent,
     before notice of the dispute, used the domain name to offer goods and services in a
     business and no evidence that its name is “Free Parking” or that it had developed a
     reputation in that name.

     The Complainant also contends that the Respondent has shown a pattern of behaviour
     in breach of the Policy, for on the same day that it registered <freeparking.com.au>, it
     also registered <melways.com.au>, invoking the name of the famous Melbourne street
     directory. This registration was transferred to the Complainant in auDRP proceedings
     brought against the Respondent by the publisher of the street directory, Melway
     Publishing Pty Ltd 1 , when the Panel found that the conduct of the Respondent had been
     in breach of the Policy.

     The Complainant also submits that the fact that the Respondent registered the Business
     Name “FreeParking” shows in itself that the Respondent has no rights or legitimate
     interests in the domain name as this is a colourable device to create a false sense of


1
     Melway Publishing Pty Ltd. V Fopoco Pty Ltd. Trading as Melways Advertising, WIPO
Case No. DAU2006-0005

                                            page 3
business activity and hence a right or legitimate interest in the name. This is not
supported by the facts, the Complainant contends, as
      “… the Respondent‟s conduct of registering a Business Name without a bona fide
      intention to trade under the name constitutes nothing more than a sophisticated
      cyber-squatting technique designed to cynically manipulate the intention of the
      Policy governing domain name registration. Furthermore, such co nduct attempts
      to circumvent the law protecting trademark holder‟s rights on the Internet and
      Internet users generally from misleading and deceptive conduct.”

Bad faith

Finally, the Complainant contends that the domain name was registered and/or is being
used in bad faith.

It contends that the facts bring the case within the provisions of paragraph 4(b)(i) of the
Policy, for they show that the Respondent‟s primary intention in registering the domain
name was to sell it for a profit or deal with it in so me other way to make money.

The Complainant also says that the case comes within paragraph 4(b)(ii) of the Policy
as the registration of the domain name has had the effect of preventing “the owner of
the name, trademark or service mark from reflecting (it) in a corresponding domain
name”. This, it is said, can be inferred from the fact that the Respondent registered the
domain name on July 13, 2000, but not in the course of carrying on or establishing a
legitimate business. In this regard, the Complainant again relies on the conduct of the
Respondent exhibited in the auDRP proceedings referred to above concerning
<melways.com.au>.

The Complainant also relies on the fact that the timing of the relevant events is “so
convenient”, for:

      “… the Respondent could not reasonably have “accidentally” chosen a domain
      identical to the mark in which the Complainant had legitimate rights, and so soon
      after the Complainant had launched its mark.”

In addition,

      “The point is, that the Respondent has chosen a domain na me identical to the
      mark the Complainant has legitimate rights and interests in and choose (sic) it so
      soon after the Complainant officially launched its own mark.”

The Complainant also contends that the registration of the Business Name
“Freeparking” is a device, which is in itself evidence of bad faith registration.

Turning to bad faith use, the Complainant contends that the case comes within
paragraph 4(b)(iv) of the Policy because the facts show an intention to attract users to
the Respondent‟s site by causing confusion with the Complainant‟s trademark. The
evidence of this is said to be that the Respondent set up a website to which
<freeparking.com.au> resolved and carried advertisements on it, but did so in
late 2004 and only after communications from the Complainant and referral to the
auDA Policy. Accordingly, it is argued, this is:

      “…a cynical and calculated attempt attract for commercial gain, Internet users to
      the domain in question, by creating a likelihood of confusion with the


                                       page 4
      complainant's name, which under paragraph 4(b)(iv) is evidence of bad faith
      registration.”

This is also said to be part of the Respondent‟s modus operandi of inaction or passive
holding, characterized as bad faith in Telstra Corporation v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. Thus it is argued that the Respondent has registered the
domain name and then „sat back‟ and done nothing, hoping that one day it may make a
windfall profit by selling the name. Additional colour is given to this modus operandi,
it is said, by the fact that:

      “The Respondent also took considerable steps to conceal their (sic) identity
      during registration, by not supplying their business name registration number and
      by supplying a false email address that could not be contacted.”

Thus it is said that the Complainant has made out all three of the elements that it must
establish to make out its case under paragraph 4(a) of the Policy.

B.    Respondent

Identical or confusingly similar

With respect to the first issue, the Respondent admits that the Complainant is the
registered owner of the word mark FREE PARKING in Australia. However, it says
that it is a non-descriptive term based on two generic words which cannot give rise to
an exclusive right to use the expression as a domain name.

Right or legitimate interest

Secondly, the Respondent says that it has a right or legitimate interest in the domain
name because, again, the constituent words are two generic words making a common
descriptive term which it uses and proposes to use in business.

It also says that it has a registered business name in the same name and was the first in
time to use the name in Australia as between the Complainant and the Respondent, at a
time when it had not heard of the Complainant and long before the Complainant
registered its trademark in Australia.

Moreover, it actually uses the domain name for its various current and proposed
businesses and to carry third party advertisements, which is a legitimate use of a
domain name. The Respondent concedes that it has been in discussions with the
Complainant concerning the sale of the Respondent‟s business (including the domain
name) since July 31, 2003, but that the Complainant did not make any written
allegations concerning the domain name until the Complainant was issued.

The Respondent also contends that it did not acquire the domain name to sell, rent or
otherwise transfer it. The Respondent summarises its position as follows:

      “In summary, the Respondent has a legitimate interest to use the domain name the
      subject of this dispute because it is a descriptive term, the domain name was
      registered long before the Complainant registered trademark rights in Australia
      and the Respondent has been engaged in a bona fide use of the domain name in
      connection with an offering of goods and services before the Respondent received
      notice of this dispute.”


                                      page 5
     Bad faith

     On the third issue, the Respondent contends that because of the sequence of events it
     could not have known of the Complainant‟s business when it, the Respondent,
     registered the domain name. Accordingly, the Respondent cannot be said to have
     registered the domain name with the intention of preventing the Complainant from
     reflecting the Complainant‟s trademark in a domain name.

     The Respondent also denies the allegation of having “targeted” the Complainant by
     registering the domain name, because the Complainant was not well-known in
     Australia at the time.

     The Respondent also contends that the Complainant and it are not competitors, and that
     it did not intend to disrupt the Complainant‟s business or register the domain name to
     resell it.

     As to the suggestion of an acquiescence to sell the domain name to the Complainant,
     the Respondent says that it did not initiate the discussions to sell and that its
     preparedness to sell is not evidence of bad faith.

     In summary, the Respondent contends that it neither registered or used the domain
     name in bad faith and that not only should the Complaint be dismissed, but the Panel
     should make a finding of reverse domain name hijack ing.


6.   Discussion and Findings

     Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the
     basis of the statements and documents submitted and in accordance with the Policy, the
     Rules and any rules and principles of law that it deems applicable.

     In doing so, the onus is on the Complainant to make out its case and both the Policy and
     many UDRP decisions have made it clear that a Complainant must show that all three
     elements of the Policy have been made out before any order can be made to cancel or
     transfer a domain name.

     The Panel therefore turns to discuss the various issues that arise for decision on the
     evidence.

     For the Complainants to succeed, they must prove, within the meaning of
     paragraph 4(a) of the Policy, that:

     A.    The domain name is identical or confusingly similar to a name, trademark or
           service mark in which the Complainant has rights (paragraph 4(a)(i)); and

     B.    The Respondent has no rights or legitimate interests in respect of the domain
           name (paragraph 4(a)(ii)); and

     C.    The domain name has been registered or subsequently used in bad faith
           (paragraph 4(a)(iii)).


                                            page 6
    The Panel will deal with each of these requirements in turn.


    A.    Identical or Confusingly Similar

    The Panel finds that the domain name is identical to the Complainant‟s registered New
    Zealand Trademark registered number 636450 for the word FREEPARKING,
    registered with the Intellectual Property Office of New Zealand. That is so because the
    entirety of the domain name consists of the trademark.

    In this regard, the Panel should add, for it will become relevant later in this decision,
    that the Complaint alleges that the trademark was “registered and filed on
    April 20, 2001”. That is not correct, for an examination of the register at the
    Intellectual Property Office of New Zealand, or at least as disclosed on its website,
    shows that trademark number 636450 was filed on April 20, 2001, but was not
    registered until March 29, 2004.

    Nevertheless, the Complainant has shown that it has a trademark at the time the
    Complaint was lodged and that is sufficient to establish its standing for the purposes of
    paragraph 4(a)(i) of the Policy. Although the domain name was registered on
    July 13, 2000, and the trademark was registered on March 29, 2004, it has been held in
    many UDRP decisions that it is not necessary for the trademark to have been registered
    before the domain name, although that fact may, of course, become relevant when it is
    considered whether a respondent could have registered a domain name in bad fa ith at a
    time when no trademark in the same or a similar name had been registered. See, on this
    issue, the discussion and cases referred to in the useful WIPO Overview of WIPO Panel
    Views on Selected UDRP Questions 2 , where it is said:

          “1.4 Does the complainant have UDRP-relevant trademark rights in a mark
          that was registered, or in which the complainant acquired unregistered
          rights, after the disputed domain name was registered?

          Consensus view: Registration of a domain name before a complainant acquires
          trademark rights in a name does not prevent a finding of identity or confusing
          similarity. The UDRP makes no specific reference to the date of which the owner
          of the trade or service mark acquired rights. However it can be difficult to prove
          that the domain name was registered in bad faith as it is difficult to show that the
          domain name was registered with a future trademark in mind.

          Relevant decisions:

          Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
          AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer
          Iogen Corporation v. Iogen D2003-0544, Denied
          Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among
          others, Transfer.”

    The Panel also finds that the domain name is identical to the registered Australian
    trademark number 975211 and notes that that trademark, being registered on
    October 20, 2003, was also registered well after the domain name.



2
    http://www.wipo.int/amc/en/domains/search/overview/index.ht ml

                                              page 7
The Respondent has submitted that the Complaint should be dismissed because the
trademarks relied on consist solely of generic words which cannot distinguish the goods
and services of the Complainant and consequently cannot afford the Complainant any
exclusivity.
It is certainly true that the Complainant is relying on trademark rights in two generic
words and generic words have often been given little protection under the UDRP and
auDRP, whether they are used as a common law trademark (Postecom spa v.
smartphone sa File No. FA0204000110805 (NAF July 22, 2002), or even as registered
trademark (Rollerblade Inc. v. CBNO, WIPO Case No. D2000-0427).

The way in which this conflict has been resolved was expressed in Hewlett-Packard
Company v. Full System S.a.S., File No FA94637 (NAF, May 22, 2000) where,
although the domain name consisted of the same generic words as the registered
trademark OPENMAIL, the trademark had become synonymous with Hewlett-Packard
through its promotional efforts and, as the panel put it:

      “… (t)hese efforts have caused consumers throughout the United States and the
      rest of the world to recognize OPENMAIL marks as computer software products,
      which originate with Hewlett-Packard.”

Accordingly, the domain name in that case was held to be confusingly similar to the
trademark.

Applying the same approach to the present case, the evidence is that there is sufficient
association between the Complainant and the names FREEPARKING and FREE
PARKING in New Zealand and Australia to justify the Panel holding that the
Complainant may rely on the registered New Zealand and Australian trademarks.

The Panel finds, however, that the domain name is not identical to or confusingly
similar to the other two New Zealand trademarks relied on by the Complainant,
numbers 655029 and 655030, for they are both device marks and the domain name is
neither identical or confusingly similar to either of them.

Making a comparison between a domain name and a pictorial or figurative trademark
can sometimes be very difficult. That is so because opinions differ as to whether the
comparison should be between the domain name and either the words in the graphic
trademark or the entire graphic representation as well as the words. That issue was
considered recently in Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001,
where the panel had to compare the domain name <post.com> with a trademark
consisting of the word „post‟ together with a dominating representation of a post horn.
The panel concluded:

      “The better view, however, is to look at the overall impression or idea created
      respectively by the mark and the domain name, the approach that was take n
      recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091. Applying
      that test, the overall impression of the trademark in the present case is entirely
      different from that conveyed by the domain name. The pictorial representation of
      the horn is such a prominent and dominating part of the trademark that the result
      is a logo of the horn as well as the word “Post”. It is highly artificial to contend
      that this is a trademark for the word “Post” when it clearly is far more than that.”

Applying the same test in the present case, the Panel‟s view is that the representation of
the motor vehicles in the two trademarks is so dominant that there is no real similarity
between them and the domain name in question.

                                       page 8
However, as the domain name is identical to the New Zealand word mark, the Panel
concludes that the Complainant has made out the first of the three elements that it must
establish under paragraph 4(a) of the Policy.

B.    Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the
Respondent has no rights or legitimate interests in respect of the domain name.

But by virtue of paragraph 4(c) of the Policy, it is open to a Respondent to establish its
rights or legitimate interests in the domain name, among other circumstances, by
showing any of the following elements:

      “(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

Thus, if the Respondent proves any of these elements or indeed anything else that
shows it has a right or legitimate interest in the domain name, the Complainant will
have failed to discharge its onus and the complaint will fail.

The Respondent initially relies on paragraph 4(c)(i) of the Policy to show that it has a
right or legitimate interest in the disputed domain name.

The first question to resolve is when the Respondent received notice of the dispute.
Once that question is resolved it will be possible to decide whether, before that date, the
Respondent was using or making demonstrable preparations to use the domain name in
connection with a bona fide offering of goods and services.

The Complainant says that there is no evidence that before notice of the dispute the
Respondent was either using or making demonstrable preparations to use the domain
name for the specified purpose.

However, the Respondent has given evidence by way of a Statutory Declaration made
by its Managing Director Mr. Frake, in which he says that:

      “…it was not until I received official notice of the auDRP dispute that Webfarm
      set out their alleged rights in relation to the domain name.”

Mr. Frake concedes that he had had contact with the Complainant before then, but that
that contact had taken the form of the Complainant or someo ne one its behalf and then
Mr. James Guy contacting him and offering to buy his business and the domain name.
In other words, the substance of what Mr. Frake is saying is that the Complainant tried


                                       page 9
to buy the domain name, but did not make any claim to it and consequently did not give
notice of a dispute about it, until the proceedings were instituted.

The wording of the Complaint is even more specific and is as follows:

      “The Respondent received notice of the dispute regarding the domain name on
      receipt of the Complaint being August 14, 2006.”

The record does not show that the Complainant has lodged or sought leave to lodge a
supplementary filing or other material to refute what Mr. Frake and the Complainant
have said. Nor is there evidence of any of the cease and desist letters that are so
common in these cases, as one would expect them to be, where the Complainant‟s case
is set out, giving rise to a demand and a dispute if it is not acceded to and a date when
that dispute can be said to have been brought to the notice of the Respondent.

Consequently, the Panel concludes on the balance of probabilities that the Respondent
received notice of the dispute when the Complaint was received, namely on
August 14, 2006.

The Respondent‟s Statutory Declaration also provides that:

      “Since November 2005, I have been using “www.freeparking.com.au” to
      advertise Fopoco Pty Ltd, to sell personalized Victorian number plates and to sell
      advertising space. I believe that this is a legitimate business use of this domain
      name. The website was established independently by me and was not designed to
      look like any other website.”

The website is not available for the Panel to inspect, but Mr. Frake has deposed that this
was not due to anything he had done, but that it was apparently due to the lock that had
been put on the domain name when the proceedings commenced, that he had not
removed the website and in fact had been trying to reinstate it. Nor are any pages of
the website available to the Panel by using the Wayback Machine at
“www.archive.org”.

Again, there is no evidence from the Complainant to rebut or cast doubt on any of this
evidence. The evidence there is, is contained in Annex K to the Complaint, which
consists of extracts taken by the Complainant from the Respondent‟s website on
June 29, 2006, and which show advertisements for the Respondent, the sale of
personalized number plates, a mortgage broker and The Big Strawberry and an
invitation to advertise on the site.

All of the activities deposed to by Mr. Frake and demonstrated by Annex K are
“…in connection with a bona fide offering of goods or services; …”. Consequently,
they bring the Respondent within the provisions of paragraph 4(c)(i) of the Policy. As
the onus is on the Complainant to prove that the Respondent has no rights or legitimate
interest in the domain name, the Panel finds that the Complainant has not discharged
that onus.

In addition to all of this, it is clear that, quite apart from the provisions of
paragraph 4(c)(i) of the Policy, the Respondent has a right or legitimate interest in the
domain name. That right or legitimate interest comes from the fact that the Respondent
was entitled to register the domain name.



                                      page 10
    At the time the Respondent registered the domain name, on July 13, 2000, the
    Complainant had not registered its trademark or made any other claim to the name and
    certainly none in Australia where the Respondent was situated. It did not file its
    application for the trademark in New Zealand until April 20, 2001, and it was not
    registered until March 29, 2004. It did not obtain its Australian trademark until
    October 20, 2003, more than three years after the Respondent registered the domain
    name.

    The domain name that the Respondent registered consisted of two generic words. Its
    Managing Director says that he had in mind a business or two that might be suitable for
    invoking the name „Free Parking.‟ But even if it had not considered this, there is no
    prohibition on registering generic words as domain names absent an intention to take
    advantage of another party‟s rights in those words. Moreover, all other things being
    equal, the registration of a domain name that adopts generic words may in certain
    circumstances give rise to a legitimate right or interest by itself. See, for example, t he
    recent case cited by the Respondent, TrueLocal Inc., Geosign Technologies Inc. and
    True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003,
    where the generic domain name <truelocal.com.au> was in issue, in circumstances not
    dissimilar from the present case. The panel said:

          “In this case, it is important that the disputed domain name is comprised of
          generic words. Prior panel decisions have found that, if a respondent is using a
          generic word to describe its product/business or to profit from the generic value
          of the word without intending to take advantage of the complainant‟s rights in
          that word, then it has a legitimate interest. (See item 2.2, WIPO Overview of
          WIPO Panel Views on Selected UDRP Questions and the cases cited there.)
          In other words, it is not a general knowledge of the Complainant‟s business that is
          important. It is knowledge of “the complainant‟s rights in that word”
          (emphasis added).”

    The Complainant‟s evidence is that it had “used the name Freeparking as a major
    element and division of its web hosting business since launching on July 1, 2000”.
    This may be literally correct and, using the Wayback Machine at “www.archive.com”
    to look at the history of <freeparking.co.nz>, which seems to be the Complainant‟s
    principal domain name, its first press release was dated July 10, 2000, and announced
    “FreeParking launches to make buying a “.nz” Domain Name easy”.

    It would seem, therefore, that the Complainant had scarcely started its business, that the
    business was confined to New Zealand and that the Complainant had no proprietary
    interest in the name, at the time the Respondent registered the domain name in
    Australia. That being so, nothing that the Complainant points to can detract from the
    legitimacy of the Respondent‟s rights in respect of the disputed domain name in this
    case.

    The Complainant also asserts in effect that it staked out its Australian presence by
    registering “the Australian Business Name FreeParking on 1 November 1999
    (Annex H)”. This is not correct and the Complainant seems to be misdirected on this
    issue. The Complainant really registered an Australian Business Number or ABN
    which is a public number used in business dealings and not an “Australian Business
    Name”, as is alleged on page 8 of its Complaint. The ABN is not a registration process
    for names 3 . As the Complainant itself says in the Complaint, this registration “…was
    never intended nor does it establish any rights or legitimate interest in the name”.

3
    See:http://www.abr.business.gov.au/(xd5wvfeev2k00p55oeyvgeax)/ content.aspx?page=FAQabn#WhatIs

                                            page 11
     Nor has the Complainant registered a Business Name or Company name in Australia.
     Its Australian presence is thus confined to the registration of the trademark, which
     occurred on October 20, 2003, more than three years after the domain name was
     registered. None of those matters can detract from the legitimacy of the Respondent‟s
     rights in respect of the disputed domain name in this case.

     Accordingly, the Panel finds that the Respondent has a right or legitimate interest in
     respect of the disputed domain name.

     C.    Registered and Used in Bad Faith

     As the Panel has found that the Respondent has a right or legitimate interest in the
     domain name and as the Complaint must therefore fail, it is not necessary to address the
     third requirement of bad faith.

     D.    Reverse Domain Name Hijacking

     The Panel will not make a finding of reverse domain name hijacking for the following
     reasons. First, it is apparent that because of the work put in by the Complainant in
     establishing its business and its name, it genuinely believed that it had established a
     right to the domain name and brought the proceedings to further that genuine belief.
     Secondly, it has only been by a proper analysis of the evidence after all of the facts
     have became known that has enabled the conclusion to be reached that the Complaina nt
     does not have such a right. Even at that stage, some of the evidence was equivocal.
     The Panel‟s view, therefore, is that this is not an appropriate case for making a finding
     of reverse domain name hijacking.


7.   Decision

     For all the foregoing reasons, the Complaint is denied.




                             _________________________________
                                 Professor Michael Pryles
                                    Presiding Panelist




_________________________________                    _________________________________
The Honourable Neil Anthony Brown QC                            Dr. Dan Hunter
             Panelist                                              Panelist

                                  Dated: October 17, 2006




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