WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Royal Queensland Lawn Tennis Association Limited v. Newmarket Tennis Club Inc.

Case No. D2002-0175

1.1 The complainant is Royal Queensland Lawn Tennis Association Limited of Milton, Queensland, Australia ("Complainant").

1.2 The respondent is Newmarket Tennis Club Inc., of Newmarket, Queensland, Australia ("Respondent").

2.1 The domain name upon which the Complaint is based is <tennisqueensland.com> ("Disputed Domain"). The registrar of the Disputed Domain as at the date of the Complaint is TUCOWS, Inc. of 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada ("Registrar").

3.1 A complaint was made by the Complainant about the Disputed Domain pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect from December 1, 1999 ("Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") by facsimile on February 20, 2002, and by post on February 26, 2002. WIPO is approved by ICANN as a dispute-resolution service provider. The fees prescribed under the Supplemental Rules have been paid by the Complainant.

3.3 Under paragraph 4 of the Policy, the Complaint is a dispute for which the Respondent must submit to a mandatory administrative proceeding. In the administrative proceeding, the Complainant must prove that each of the elements in paragraph 4(a) of the Policy are present. Under paragraph 1 of the Policy, the mandatory administrative proceeding must be conducted in accordance with the Rules and the Supplemental Rules.

3.4On March 1, 2002, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.5 The Center sent a request for registrar verification to the Registrar on March 6, 2002, by email. The Registrar responded to the Center’s request on March 6, 2002, by email, confirming the following:

(a) the Registrar had received a copy of the Complaint from the Complainant;

(b) the Disputed Domain is registered with the Registrar;

(c) the Respondent is the current registrant of the Disputed Domain;

(d) the Respondent’s contact details;

(e) the Disputed Domain is on hold in the Registrar’s system to ensure that no changes occur to the ownership or registrar for the duration of the dispute; and

(f) the Policy applies to the Disputed Domain because under clause 7 of the agreement between the Respondent and the Registrar for the registration of the Disputed Domain ("Registration Agreement") the Respondent agreed to be bound by the Policy.

3.6 On March 11, 2002, the Center notified the Complainant by email of a deficiency with the Complaint because the Complaint was not submitted in electronic format as required by paragraph 3(b) of the Rules. On March 12, 2002, the solicitors for the Complainant sent the Complaint in electronic form by email to the Center.

3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding and the Complaint on March 12, 2002, to the Respondent by courier and by email, and copied to the Complainant by email.

3.8 On March 12, 2002, R. C. Savill sent an email to the Center stating that he acknowledged "recite (sic) of proceedings against me. Please proceed with only one (1) Administrative Panel member to oversee my case".

3.9 On March 12, 2002, the Center replied by email to R. C. Savill stating, amongst other things, that a Response was not due until April 1, 2002 and that after April 1, 2002, "the Center will proceed to appoint the Panel to decide this case". The Respondent failed to file a response in the time allowed and has not filed a response to date.

3.10 A notification of Respondent Default was sent by the Center to the Respondent by email and copied to the Complainant’s solicitors by email on April 4, 2002. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its response in the domain name dispute.

3.11 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to each of the Complainant and Respondent by email on April 22, 2002.

3.12 The Center sent a Transmission of Case File to the Administrative Panel by email on April 22, 2002. The complete case file was received in hard copy by the Panel on April 26, 2002 in Sydney, Australia.

3.13 All other procedural requirements appear to have been satisfied.

The following information is asserted as fact in the Complaint and remains uncontested.

Since July 27, 1990, the Complainant has carried on business under the name "Tennis Queensland". The Complainant has over 22,000 members and provides various services connected with tennis to its members.

The following information is asserted as fact in the Complaint and remains uncontested.

The Complainant states that it has been the registered owner of the business name "Tennis Queensland" (registration number BN 404 3467) since July 27, 1990.

The Complainant states that in 1999, it became the registrant of the domain name <tennisqueensland.com.au>.

The Complainant asserts that it has an interest in the unregistered trademark "Tennis Queensland".

Except as referred to in paragraph 3.8 above, no response to the Complaint has been filed.

No information as to the activities of the Respondent is asserted in the Complaint.

The panel has reviewed (as authorised by paragraph 10 of the Rules) the Respondents’ website. It appears to be used to provide information connected with tennis activities in the Australian State of Queensland. The website contains a disclaimer stating "please be aware that this site and it’s [sic] content has no connection whatsoever with <www.tennisqueensland.com.au>. It is solely owned by The Newmarket Tennis Club Inc. Helping to keep Tennis alive in Queensland!".

5.1 The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 The Complainant asserts that the Disputed Domain "is identical to the business name and unregistered trademark of Tennis Queensland save for the use of the generic top level domain ".com" and is identical with the domain name registered by the Complainant, <tennisqueensland.com.au> save for the country code ‘au’."

5.3 The Complainant asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain because:

-the Disputed Domain was registered or acquired primarily for the purpose of selling or transferring the Disputed Domain to the Complainant (or to a competitor of the Complainant) for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the Disputed Domain;

-the Respondent has attempted to attract Internet users to the Respondent’s website at the Disputed Domain by intentionally creating a likelihood of confusion with "the Complainant’s business name, mark and domain name"; and

-the Respondent has no legitimate connection with Tennis Queensland and has not been commonly known by the Disputed Domain prior to registration of the Disputed Domain.

The Complainant has annexed to the Complaint:

-a letter dated October 29, 2001, from the Complainant’s solicitors to the Respondent stating, amongst other things, that the Respondent infringes the Complainant’s intellectual property rights and requesting that the Respondent remove various infringing images from its site and transfer the Disputed Domain to the Complainant;

-an undated letter from the Respondent to the Complainant’s solicitors in which the Respondent stated, amongst other things:

-"I have been advised that I am quite within my rights by law to acquire and hold in my possession [the Disputed Domain]".

-"[The Disputed Domain] was available for registration to anyone in the world without risk of retribution or knowingly braking [sic] any laws."

-"I think it is quite fortunate for me to be the one to have found it. My interest with all aspect’s [sic] on Tennis in Queensland and with my dismay with the lack of any progress by the so called administers [sic] of the sport here in Brisbane. I am compelled in my quest to support and assist the struggling clubs and centres in the hope that my efforts will somehow help with their prosperity. If your client had taken the time and contacted any of the tennis clubs featured on my site, they would have noticed that there have been absolutely no monetary transactions for my services to this point. I will continue in this vein and would welcome monitory [sic] support from any division but will still continue if none comes. Such is the love for the game."

-"You must be aware that the cost with setting up and delivering this kind of services [sic] to my already established un-paying clients/friends so far has cost me around $10,000.00 give or take a dollar or two. I am at this point on the threshold of launching an extensive advertising campaign for this very business."

-"I must decline your client’s request at this time. Of coarse [sic] I will be open for a substantial compensation payment for the [Disputed Domain] which will also cover all work that has been done so far to astonish [sic] it to this point. Shell [sic] we start at $25,000.00."

-"I will comply with all other requests your client has made with regards to infringement on copyrights. I will endeavour to remove all the offending items as soon as possible but I think you will find it has already be [sic] done."; and

-a letter dated January 21, 2002, from the Complainant’s solicitors to the Respondent stating, amongst other things, that:

-the Complainant is affiliated with Tennis Australia, "as are the following businesses in Australia: Tennis ACT; Tennis NSW; Tennis Victoria; Tennis NT; Tennis SA; Tennis Tasmania; Tennis Australia; and Tennis West."

-"Our client is greatly concerned that the [Disputed Domain] is being and will in the future be confused with our client’s domain name <www.tennisqueensland.com.au> since they are both currently being used in Queensland and Australia. Further, by using the [Disputed Domain] you have attempted to attract, for commercial gain, Internet users to your website by creating the likelihood of confusion with our client’s business name, trade mark and domain name or as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your web site or location."

-"Our client does not consider that you have any legitimate interest in the [Disputed Domain] and believes that you have registered the [Disputed Domain] specifically for the opportunistic purpose of selling it to our client and in bad faith knowing of our client’s interest in the business name, the trade mark and its domain name <tennisqueensland.com.au>."

-"Our client has instructed us to again demand that you transfer the [Disputed Domain] to our client. Unless we receive your written confirmation that you will do so, by close of business on 25 January 2001 [sic], we have instructions to file a complaint with [the Center], without further notice to you and furthermore, our client reserves its rights to issue proceedings against you in an appropriate court of competent jurisdiction, for damages and costs for misleading and deceptive conduct and for passing off.".

5.4 The Complainant asserts that because the Respondent has no legitimate interest in the Disputed Domain "the Respondent’s purpose must be to make commercial use of the Disputed Domain misleadingly to divert customers to his business, The Newmarket Tennis Club Inc. or as a means of demanding a large sum of money from the Complainant".

This section is structured by reference to the elements required by paragraph 4(a) of the Policy. As noted above, the Respondent has failed to file a (formal) Response to the Complaint. Accordingly, all assertions in the Complaint are uncontested and, under paragraph 5(e) of the Rules, the Panel is required to decide the dispute based upon the Complaint alone. Notwithstanding this rule, in order to be successful, the Complainant still bears the burden of proving, on the balance of probabilities, that all three elements are present, and this Panel reserves the right to rely upon paragraph 10 of the Rules to avail itself of such publicly available material as it deems appropriate to corroborate or substantiate any assertions made in the Complaint.

The Disputed Domain is <tennisqueensland.com>. The Complainant is in the business of providing services connected with tennis. The Complainant’s business activities are identified by its registered business name "Tennis Queensland". Although neither the Complainant’s registered business name nor its interest in the domain name <tennisqueensland.com.au> in themselves give rise to an interest in an unregistered trademark, the Panel is satisfied on the balance of probabilities that these factors together with evidence of their use (as provided in annexure 4 to the Complaint) are sufficient to give the Complainant a clear interest in "Tennis Queensland" as a common law trademark.

The Panel is satisfied that the Disputed Domain is confusingly similar if not identical to trademarks in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain for the reasons described in paragraph 5.3 above.

Most of the factors listed in the Complaint to support the Complainant’s assertion that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain are factors which are better suited to proving paragraph 4(a)(iii) of the Policy (bad faith).

The Respondent’s website contains an explicit statement that it is owned by the Respondent and disclaims any connection with <tennisqueensland.com.au>.

The Respondent is using the Disputed Domain to, amongst other things, convey information about tennis in Queensland and people connected with tennis in Queensland. The question is whether this is insufficient to give the Respondent a legitimate interest "in respect of" the Disputed Domain. It does not necessarily follow that because the Complainant has a legitimate interest in respect of the Disputed Domain, that the Respondent does not have a legitimate (concurrent) interest.

However, the Panel in this case inclines to the view that, if the Respondent cannot lawfully trade as Tennis Queensland, and cannot lawfully use Tennis Queensland as a trade mark, the fact that its website has content that relates to tennis in Queensland is too weak to be regarded as a "legitimate" interest. The Complainant has therefore made out paragraph 4(a)(ii) of the Policy.

The Complainant asserts that because the Respondent has no legitimate interest in the Disputed Domain the Respondent’s purpose in registering and using the Disputed Domain must be "to make commercial use of the [Disputed Domain] misleadingly to divert customers to his business, The Newmarket Tennis Club Inc. or as a means of demanding a large sum of money from the Complainant."

Paragraph 4(a)(iii) of the Policy is deemed to be proven if the Panel finds to be present any of paragraphs (4)(b)(i)-(iv) of the Policy. In this case, only paragraphs 4(b)(i) and 4(b)(iv) of the Policy are relevant.

Annexure 6 to the Complaint is an undated letter to the Complainant on behalf of the Respondent in which it is asserted that the Respondent would "be open for a substantial compensation payment for the [Disputed Domain]" and enquiring "Shell [sic] we start at $25,000.00."

The Panel finds that one purpose for which the Respondent registered the Disputed Domain was to sell the registration to the Complainant. However, the Complainant has provided insufficient evidence for the Panel to find that this was "the" purpose for which the Disputed Domain was registered.

The Panel accepts the Complainant’s uncontested evidence that the Respondent was using the Complainant’s unregistered trademark on the website located at the Disputed Domain. The Panel finds that given the Respondent’s close geographical proximity to the Complainant and its professed love of tennis (in Annexure 6), the Respondent well knew of the Complainant’s existence, role, membership, business name and common law trademark rights. The Panel finds that when the Respondent registered and first used the Disputed Domain, despite any other intentions it may also have had, it intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. The fact that the Respondent has since included an express disclaimer on its website of any connection with <tennisqueensland.com.au> and an express statement that the site is owned by the Respondent, does not remove it from the ambit of paragraph 4(b)(iv) of the Policy.

Accordingly the Panel finds, pursuant to paragraph 4(b)(iv) of the Policy, that the Disputed Domain was registered and is being used in bad faith and that the Complainant has proven paragraph 4(a)(iii) of the Policy.

The Complainant has proven all of the requirements of paragraph 4(a) of the Policy. The Panel orders that the domain name <tennisqueensland.com> be transferred to the Complainant.