ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
National Australia Day Council Limited v. Domain Technicians, WorldInternetAuthority.com
Case No. D2021-0854
1. The Parties
The Complainant is National Australia Day Council Limited, Australia, represented by Minter Ellison, Australia.
The Respondent is Domain Technicians, WorldInternetAuthority.com, Australia, represented internally.
2. The Domain Name and Registrar
The disputed domain name <australianoftheyear.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit a formal response, but sent 21 emails to the Center between April 7, 2021 to April 22, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 3, 2021. 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 Complainant is a not-for-profit public company owned by the Commonwealth government, registered with the Australian Charities and Not-for-profits Commission. It receives its funding and administrative support through the Department of Prime Minister and Cabinet. As a publicly owned corporation, it reports to the Commonwealth Parliament under the Public Governance, Performance and Accountability Act 2013.
One of the Complainant’s activities is the administration and awarding of the “Australian of the Year” awards each year. The Australian of the Year award was first instituted in 1960 and has been awarded continuously since then by the Complainant or its predecessor organisations.
Each year the Complainant makes awards in four categories: the Australian of the Year, Senior Australian of the Year, Young Australian of the Year, and Australia’s Local Hero.
According to the Complaint, the awards process involves three stages:
(a) nominations are received from the public;
(b) a selection panel from each State and Territory identifies four nominees for each category; and
(c) the Complainant’s board selects the awardee for each category.
According to the Complaint, several thousand people are nominated for the awards each year. For example, 2,260 nominations were received for the 2020 awards. The awards ceremony is held on the night before January 26. It is broadcast live, nationally, on television and radio by the Australian Broadcasting Corporation and streamed via iView, Facebook and Youtube. The awards themselves are presented by the Prime Minister of Australia.
In January 2019, the Australian of the Year Awards received some 5,400 “mentions” in the media.
The Complainant promotes its activities and the Australian of the Year awards from a website to which the domain names:
(a) <australianoftheyear.org.au>; and
(b) <australianoftheyear.com.au>,
resolve. Google Analytics statistics show that the website <australianoftheyear.org.au> received some 60,000 visitors in January 2020.
Amongst other things, the Complainant owns Australian Registered Trade Mark No. 1304972, AUSTRALIAN OF THE YEAR, which has been registered since June 18, 2009 in respect of a range of goods and services in International Classes 16 and 41.
This trademark was registered on the basis of acquired distinctiveness.
The Complainant is also the owner of Australian Registered Trade Mark No. 1304969, “Australian of the Year Awards” and a device representing a map of Australia. This trademark has also been registered since June 18, 2009. It is registered in respect of a range of goods and services in International Classes 16, 26 and 41.
Thirdly, the Complainant owns Australian Registered Trade Mark No. 1874090, for a fancy version of “Australian of the Year > Awards” in which the “> Awards” are presented in larger, bold type than the other words. This trademark has been registered since July 15, 2019 in respect of goods and services in International Classes 16, 24, 25, 26 and 41.
The disputed domain name was first registered on January 22, 2010. One of the Respondent’s emails on April 21, 2021 states that it “bought” the disputed domain name through Sedo.com for USD 300 in 2011.
As at February 2021, the disputed domain name resolved to a website apparently hosted by the domain name market, Dan.com, which offered the disputed domain name for sale by “Private Seller” for USD 2,100,000,000.
In March 2021, the disputed domain name resolved to a website which featured a blue and white circular “logo” and the text:
“For Domain Name enquiries, Internet Licenses and Legal issues contact: Email [this being a link to the Respondent’s email]
“Please be advised that you will have to own an Internet License by the 01/01/2025.
“InternetLicense.com WorldInternetAuthority.com (WIA) is a registered trademark ®.”
At that time, the disputed domain name was also being offered for sale on the Dan.com website. No price was specified. Instead, the browser was invited to “Make an offer”. The Dan.com website has nine pages of listings of domain names being offered for sale by the particular “Private Seller”. Many of these might be considered essentially descriptive terms. Others cannot be so described. For example, <bankofamericas.com>, <facebookxxx.com>. Others appear to be associated with horse racing events in Australia including for example <theeverest.com>, <magicmillions.com>, <perthcup.com>.
Most of the emails from the Respondent received by the Center simply list one or other domain name, presumably owned by the Respondent. Examples include <jeffreycharlesgeaney.com>, <statutorily.com>, <theaustraliangovernment.com>, <wippa.com>, <400mgfortnightlyzuclopenthixol>, <northqld.com> and <didntdoitnobodysawmedoityoucantproveanything.com>.
Three include more content. Two are addressed in section 5A below. The third, dated April 22, 2021, stated:
“The Free Range untrademarked Domain Name AustralianOfTheYear.com is £10 Million. Either buy it or find another Aussie to market this verbal diarrhoea you are spitting at me!”
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark AUSTRALIAN OF THE YEAR, Australian Trade Mark No. 1304972. The Panel also recognises the proofs of ownership of the other two registered trademarks.
Disregarding the “.com” generic Top Level Domain (“gTLD”), therefore, the disputed domain name consists of the Complainant’s registered trademark, No. 1304972.
In one of the Respondent’s numerous emails, the Respondent demanded proof that the Complainant owned a registered trademark for the whole expression including the gTLD. In a subsequent email on April 15, 2021, the Respondent contends:
“The Trademarks Registration Numbers 1304969 and 1874090 pertain to the terms 'Australian of the Year Awards’ and not the specific term ‘Australian of the Year’
Case Dismissed!
“Now Fuck Off and leave me alone Paper Shredders!”
This attempt to dispute that the disputed domain name is identical with or confusingly similar to the Complainant’s trademark is misplaced.
First, it ignores the Complainant’s Registered Trade Mark No. 1304972.
Secondly, the second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademark(s). In undertaking that comparison, it is permissible to disregard the gTLD component as a functional aspect of the domain name system. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.11.
As the disputed domain name consists of the entirety of the Complainant’s registered trademark and nothing else relevant, therefore, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Despite sending some 21 emails, the Respondent has not disputed any of these matters.
The offering of the disputed domain name for sale in the manner noted in section 4 above does not qualify as legitimate noncommercial or fair use.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification.
The Respondent appears to contend its entitlement derives from its payment of USD 300 to Sedo.com for the disputed domain name in 2011 and, as discussed above, that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark.
The terms of the registration agreement, however, make it clear that the registration of the disputed domain name was and is subject to the Policy. The mere fact of payment to Sedo.com, therefore, does not confer any entitlement in the face of the Complainant’s trademark where, as the Panel has already found, the disputed domain name is identical with or confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the longstanding history of the Australian of the Year awards and the prominence they receive in the media around the time the awards are announced, the Panel considers it is highly unlikely that the Respondent was unaware when registering the disputed domain name that the expression Australian of the Year represented, and would be understood by a wide cross-section of the Australian public as referencing, the awards conducted by the Complainant.
The association of the expression with the Complainant’s awards appears to be reflected in the price(s) the Respondent has been seeking for the disputed domain name which the Respondent registered well after the Australian of the Year awards were instituted.
The Panel finds therefore that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
D. Reverse Domain Name Hijacking
In light of the Panel’s findings in sections 5A to 5C above, there is no basis for a finding reverse domain name hijacking as claimed by the Respondent.
6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <australianoftheyear.com> be transferred to the Complainant.
/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: May 17, 2021
