The Complainant is Sydney Theatre Company Ltd of Walsh Bay, New South Wales, Australia, represented by Allens Linklaters, Australia.
The Respondent is Blogger Pty Ltd of Chatswood, New South Wales, Australia.
The disputed domain name <sydneytheatrecompany.com.au> (the “Disputed Domain Name”) is registered with Netfleet.com.au (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2014. On June 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20, 2014, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au 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 on June 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2014.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 21, 2014. 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.
The Disputed Domain Name was registered on February 28, 2007. As at the date of filing of the Complaint the Disputed Domain Name resolved to a webpage headed “Welcome to STC” providing information about the Complainant and also links to third party websites. The website contains a statement that it is “[…] not the official website of the Sydney Theatre Company, rather a website with the aim of giving information about the company and related information to performance and drama in Australia”. It also displays links to unrelated third party websites.
The Complainant was incorporated in January, 1979; it operates as the State Theatre of New South Wales and is recognized as one of Australia’s leading theatre companies. Since 1978 it has produced over 1,400 plays and other events and attracts annual audiences in excess of 300,000 to performances by leading Australian and international performers. In 2006 it earned income in excess of 24 million AUD and has maintained revenue of a similar order up to the present time. Its performances have been widely publicized and promoted throughout that period including, since at least 2000, at the Complainant’s website at “www.sydneytheatre.com.au”. The Complainant has pending applications for registration of trade marks comprising the words SYDNEY THEATRE COMPANY.
No information is available about the Respondent save that it has been the Respondent in at least three prior complaints under the Policy; all of the complaints were successful.
The Complainant’s contentions include the following:
- It is well known and has established substantial common law rights in its name and trade mark SYDNEY THEATRE COMPANY and in the abbreviation STC.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. It has no association with the Complainant and is not authorized by the Complainant to use its name and trademark and is not known by the Disputed Domain Name.
- The use which the Respondent is making of the Disputed Domain Name is not a bona fide use in the offering of goods or services. That use misleadingly suggests an association or affiliation with the Complainant which is not negatived by the disclaimer.
- The Disputed Domain Name is being monetised through the presence on the website of “pay-per-click” advertising and is being used to mislead and divert customers from the Complaint’s legitimate website for commercial gain.
- The Respondent is not eligible to hold the Disputed Domain Name under the Domain Name Eligibility and Allocation Policy Rules of the Policy (the “Eligibility Rules”) in that it is not an exact match, abbreviation or acronym of the Respondent’s name or trademark, nor is it otherwise closely and substantially connected to the Registrant as required by the Guidelines to the Policy.
- The Respondent has failed to respond to several letters of demand sent on behalf of the Complainant and has not attempted in any way to establish its rights or legitimate interests in the Disputed Domain Name.
- At the time of registration of the Disputed Domain Name the Complainant’s name was well and widely known and had established a substantial reputation which was known to the Respondent.
- The Respondent has been the Respondent in at least three prior successful complaints under the Policy.
- The Respondent has knowingly acted in bad faith as its sole director and secretary is employed by the Registrar of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant is not yet the owner of trade mark registrations for the trade mark SYDNEY THEATRE COMPANY. It has, however, provided evidence tending to establish that it has established unregistered or common law rights in Australia in that mark. Further, the Complainant can satisfy the requirements of paragraph 4(a)(i) of the Policy on the basis of its name. The Complainant is incorporated under the name Sydney Theatre Company Ltd and therefore satisfies that requirement. The Disputed Domain Name is identical to the Complainant’s name and mark and accordingly the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The Complainant asserts that the Respondent is not in any way associated with the Complainant and is not authorised to use the Complainant’s name and trade mark. The Complainant’s evidence shows that prior to the date of registration of the Disputed Domain Name, the Complainant had a well established reputation in its name and that the Respondent would have been well aware of that reputation. Indeed the contents of the Respondent’s website make it clear that that was the case.
The Complainant’s Annex 17 shows that while the Respondent’s website contains information about the Complainant that information is static and does not appear to have changed materially since 2007. Otherwise it provides links to third party websites including websites which have no relation at all to the Complainant or its activities, for example, “Sydney Visitors”, “Sydney Flights”, “Campervan Hire Sydney”, “Sydney Car Brokers”. It is a reasonable assumption that these links are provided on a pay-per-click basis and accordingly the Respondent’s use of the Disputed Domain Name to provide these links is neither a non commercial nor fair use of the Disputed Domain Name nor is it a bona fide use in the offering of goods or services. The Respondent has had several opportunities to assert a claim to a right or legitimate interest in response to communications from the Complainant’s lawyers and by response to the Complaint but it has failed to do so. The Complainant asserts that it has received no response to its letters to the Respondent. Further, as submitted by the Complainant, the Respondent does not appear to be entitled to hold the Disputed Domain Name in the .au domain space under the auDA Eligibility Rules. The Disputed Domain Name has no relation to the name of the Respondent nor does the Respondent have a close and substantial connection with the Disputed Domain Name in accordance with the criteria specified in paragraph 10.5 of the Guidelines on the interpretation of Policy Rules for open 2 LD’s published by auDA. The Disputed Domain Name is not closely or substantially connected with a product or service that the Respondent provides nor to an event, activity or venue that it organises, facilitates or operates nor to a profession that its employees practise. Whilst the Eligibility Rules also permit registration of a domain name for the purpose of monetisation, it is a condition of registration that the domain name “must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered”. Plainly, the Disputed Domain Name does not satisfy that criterion.
The Complainant has established a strong prima face case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent has failed to rebut that prima face case. The Panel therefore finds that the requirements of paragraph 4(a)(ii) of the Policy are met.
The website at the Disputed Domain Name is structured so as to strongly suggest that it is an information site associated in some way with the Complainant. It starts for example with the statement “Welcome to STC”. The fact that the statement is followed by a statement that it is not the “official” website of the Complainant is not sufficient to negative the implication that the site has some connection with the Complainant. Further, as noted by the learned panel in another case involving the present Respondent, GM Holden Ltd v. Blogger Pty Ltd, WIPO Case No. DAU2008-0016, “it does not matter that an internet user, on visiting the Respondent’s website, might become aware that the website is not that of the Complainant as a result of the use of a disclaimer”. Thelikelihood of confusion is apparent from a simple comparison between the Complainant’s name and the Disputed Domain Name. The use of it is to divert to a webpage displaying “pay-per-click” links to third party websites in no way connected with the Complainant or its activities is further evidence that the Respondent is attempting to attract Internet users to its website by creating confusion with the name of the Complainant and is doing so for commercial reward.
Finally, as it appears that the Respondent is not eligible to hold the Disputed Domain Name it must have made false representations and warranties pursuant to paragraph 2 of the Policy in order to register and subsequently renew the Disputed Domain Name.
The Panel therefore finds that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant satisfies the Eligibility Rules to hold the Disputed Domain Name and accordingly, for all 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 <sydneytheatrecompany.com.au> be transferred to the Complainant.
Desmond J. Ryan
Sole Panelist
Date: July 28, 2014