WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Michael Arnold, Lorimax Pty Ltd v. Tolling Customer Ombudsman Pty Ltd

Case No. DAU2016-0036

1. The Parties

The Complainant is Michael Arnold, Lorimax Pty Ltd of Cheltenham, Victoria, Australia, represented by Gilbert & Tobin Lawyers, Australia.

The Respondent is Tolling Customer Ombudsman Pty Ltd of Biggera Waters, Queensland, Australia, internally-represented.

2. The Domain Name and Registrar

The disputed domain name <tollingcustomerombudsman.com.au> (the "Domain Name") is registered with Web Address Registration Pty Ltd (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2016, 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"), 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 proceeding commenced on September 22, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2016. The Respondent sent an email communication to the Center on October 5, 2016. The Response was filed with the Center on October 12, 2016.

The Center appointed Nicholas Smith as the sole panelist in this matter on October 14, 2016. 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 Michael Arnold, an individual who through his service company Lorimax Pty Ltd has been contractually appointed by a number entities that operate toll roads (including CityLink, EastLink and the M5 South West Motorway) in Australia to provide a complaints and alternative dispute resolution mechanism for customers of those toll roads. The Complainant appears to have provided its services from the website "www.tollingombudsman.com.au" (the "Complainant's Website") under the name "The Tolling Ombudsman" since 2008, although it appears that the domain name <tollingombudsman.com.au> was previously registered by Transurban Limited, the owner of the CityLink motorway and several other motorways, and has only recently been transferred to the Complainant.

The Complainant has applied to register two trade marks that feature the words "Tolling Customer Ombudsman" being the word mark TOLLING CUSTOMER OMBUDSMAN (the "Word Mark") and for a composite mark featuring the words "Tolling Customer Ombudsman" and two curved stripes (the "Composite Mark") (collectively, the "Complainant's Marks"). Each of these marks was applied for on September 12, 2016, and neither has been approved or rejected by the Trade Marks Registrar.

The Domain Name was created on September 2, 2016. The Respondent itself was registered on the same day. It presently resolves to a website (the "Respondent's Website") that offers a free service that will allow individuals to file a complaint with toll road operator Transurban Limited. The Respondent's Website contains a disclaimer set out below, although the Complainant indicates that such a disclaimer was not put up until September 13, 2016.

"ATTENTION! We do not claim to be an Ombudsman and we do not investigate complaints or make decisions. We are completely independent, meaning we have no agreement with any level of Government or any toll road operator. We do not purport to be or attempt to pass our reporting service off as Michael Arnold (Lorimax Pty Ltd), who has an arrangement to offer Tolling Ombudsman services to toll road operators and motorists. Tolling Customer Ombudsman is simply our business name, and we offer this service to anyone who has been unsuccessful in resolving their toll road complaint using traditional means, and would like to register their concerns with Transurban management and relevant Government stakeholders."

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant's Marks;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the contractually appointed Tolling Customer Ombudsman who provides free and independent alternative dispute resolution processes in relation to tolling issues for customers of various toll roads, through agreements with the operators of the toll roads. The Complainant has operated its services from the Complainant's Website since 2008. The Complainant has used, through its website, the Complainant's Marks since 2008 and has common-law rights to those marks. The Complainant owns pending trade mark applications for the Complainant's Marks.

The Domain Name <tollingcustomerombudsman.com.au> is confusingly similar to the Complainant's Marks and in particular contains the Word Mark in its entirety.

The Respondent has no rights or legitimate interests in the Domain Name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Domain Name that incorporates the Complainant's Marks. The Respondent uses the Domain Name to resolve to a website that offers identical or similar services to the Complainant as it purports to allow visitors to the Respondent's Website to lodge complaints about tolling operators. The Domain Name contains the term "ombudsman" despite the fact that the Respondent has no agreement with tolling providers to hear complaints on behalf of customers and adjudicate or otherwise act as an intermediary in associated disputes. As such the Respondent, by suggesting that it is an ombudsman is engaging in conduct that is likely to be misleading or deceptive.

The Respondent is not commonly known by the Domain Name and is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent was only registered on September 2, 2016, in circumstances where Michael Fraser, the Respondent's Director was aware of the Complainant. Furthermore the fact that the Respondent is not an ombudsman means that the Respondent's use of the Domain Name cannot be descriptive in nature, nor is the choice of the Respondent's Name anything other than an attempt by the Respondent to acquire some kind of interest in the Domain Name. The Respondent, until September 12, 2016, was offering its services and soliciting payment for its services in circumstances where its use of the Domain Name was both misleading (as the Respondent is not an ombudsman) and was calculated to cause confusion with the Complainant.

The Respondent registered the Domain Name with actual knowledge of the Complainant's Marks in advance of registering it. The Respondent uses the Domain Name to operate a website from which it offers or purports to offer services that directly compete with the Complainant. Mr. Fraser, the director of the Respondent, has engaged in a pattern of conduct of preventing trade mark owners from registering domain names that correspond with their trade marks, including numerous domain names that correspond with the names of toll roads in Australia. Mr. Fraser already operates websites from which it offers its services using other domain names, including <fighttollfees.info> and <tollsupportorg.com.au> which indicates that Mr. Fraser has registered and is using viable alternative domain names for his purposes. The registration of the Domain Name, in circumstances where the Respondent acknowledges that it is not an ombudsman, can have no good faith justification. Furthermore the presence of the disclaimer on the Respondent's Website does not cure bad faith, as "initial interest confusion" will still arise. The Respondent has both registered and uses the Domain Name in bad faith.

B. Respondent

The Complainant's domain name <tollingombudsman.com.au> was until at least September 14, 2016 owned by Transurban Limited, and was only transferred to the Complainant after that date. It therefore is incorrect for the Complainant to say that it has operated the website at "www.tollingombudsman.com.au" since 2008. Transurban Limited was the first registrant of this domain name and created and published all the content on the Complainant's Website. There is no evidence in the Complaint that Transurban Limited acknowledges the existence of any of the Complainant's Marks or has assigned any of the goodwill it may have in the Complainant's Marks or the Complainant's Website to the Complainant. The Complainant applied to register the Complainant's Marks as trade marks after the Domain Name was registered and in any event a pending trade mark application does not of itself confer any trade mark rights on the trade mark applicant.

The statement in the Complaint that "The Complainant has invested a significant amount of time and resources to develop and promote the Trade Marks and Services under the Trade Mark" is an attempt to mislead the Panel. The Complainant has not published any presentations on the Complainant's Website since 2009 and at no point before September 12, 2016 has the Complainant registered any business or trading names. The Complainant's Website is badly out of date with content that has not been updated for many years.

The Complainant has provided no evidence in support of the statement that "Members of the Australian public who use toll roads associate the Trade Marks with the Complainant's Services provided under the Trade Marks". Unless members of the public had a serious toll complaint, or went to the Complainant's last presentation in 2009, it is highly unlikely that they would be aware of the Complainant's existence.

The Domain Name is not misleading or deceptive, rather it reflects the Respondent's registered business name. There is no evidence that the Respondent's use of the Domain Name damages the Complainant's reputation. The Respondent's Website contains a clear disclaimer that it is not associated with the Complainant. Contrary to the Complainant's submissions the Respondent has never received and does not receive payment for the operation of the Respondent's Website. The Respondent also notes that there is no legislation governing which entity may use the term ombudsman and suggests that its use of such term is not misleading and deceptive.

The Respondent has not registered or used the Domain Name in bad faith. In particular, the Complainant's statement that the Respondent's director, Mr. Fraser has registered a large number of domain names is misleading as the Complainant's reverse WhoIs search would identify all domain names whose registrant is "Michael Fraser", not just the Respondent's director. Furthermore the Complainant has failed to identify how the Respondent's Website diverts traffic from the Complainant's Website.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have a name, trade mark or service mark and the Domain Name must be identical or confusingly similar to the Complainant's name trade or service mark.

In the present case the Complainant's names are not identical or confusingly similar to the Domain Name. Therefore the Complainant's prospects under this element rest upon establishing trade mark rights. The Complainant does not own any registered trade marks though it has applied to register the Complainant's Marks as trade marks in Australia.

The auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDRP Overview"), states in response to the question "Does ownership of an application to register a trademark in Australia to which the domain name is identical or confusingly similar automatically satisfy the requirements of paragraph 4(a)(i) of the auDRP?" states:

"The general position is the same as that under the [Uniform Domain Name Dispute Resolution Policy ("UDRP")].

Most of the panels considering the issue have expressed the view that an application (even an accepted application) for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. For the complainant to satisfy that requirement, the trademark that is the subject of the application must either: (i) satisfy the test for being a common law or unregistered trademark [see question 1.7 below]; or (ii) constitute a 'name' within Note 1 of the Policy – i.e., be the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority, or be the complainant's personal name.

One panel has come to a different view, on the basis that an application for an Australian registered trade mark is treated as conferring sufficient rights to support the grant of a domain name licence under the auDA domain name eligibility and allocation rules (currently '2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs'). However, all subsequent cases have unequivocally reached the opposite conclusion. The reasons given by the later cases include: that the basis on which a domain name is granted to a respondent is not the same as the basis on which a complainant may assert its rights under the Policy; that paragraph 4(a)(i) of the Policy is not stated to have any relationship with auDA's eligibility rule; that there is nothing in the terms of the Policy indicating that a mere trademark application may support a complainant's rights under paragraph 4(a)(i); that the Policy generally contains notes where there are substantive differences with the UDRP and there is no note on this issue; and that such an approach would be contrary to the great majority of decisions under the UDRP."

The Panel adopts the position of the auDRP Overview and finds that the Complainant does not have rights in the Complainant's Marks by reason of the application to register the marks. It is then necessary to consider whether the Complainant has common-law rights in the Complainant's Marks.

The auDRP Overview states in response to the question "What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?"

"The general position is the same as that under the UDRP.

The requirement that the complainant has rights in a trademark or service mark is satisfied where the complainant can show that a name has acquired 'secondary meaning' and become a distinctive identifier associated with the complainant or its goods or services – i.e., that it is a common law or unregistered trademark. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the name, surveys of consumer recognition of the name, and media references to the name. In at least one case, the panel treated as determinative of the issue the findings of an IP Australia Trade Marks Hearing Officer to the effect that the complainant had common law rights in an unregistered trademark.

To constitute a common law or unregistered trademark, the name does not need to be famous or well known. The key requirement is that the name has sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the complainant from those of other traders. However, merely trading under a name does not make that name distinctive. Where the complainant's alleged unregistered trademark consists of a generic or descriptive word, a strong case will be required to show that the word has become associated with the complainant and its goods or services. Operating a website which corresponds to an unregistered mark, and using that website in connection with business, will not necessarily give common law rights in that mark. Merely appending the domain name to an advertisement alongside other contact details will not suffice.

Where the complainant's trading name has not acquired secondary meaning as a trademark, it will not provide auDRP-relevant rights unless it is registered with the relevant Australian government authority (and thereby is a name within the Note 1 definition).

The Complaint addresses the question of whether the Complainant has unregistered trade mark rights in its entirety as follows:

"The Complainant has invested a significant amount of time and resources to develop and promote the Trade Marks and Services under the Trade Marks. As a result of this extensive use, the Complainant has acquired a valuable and exclusive reputation and goodwill in the Trade Marks in Australia, in relation to the Services.

Members of the Australian public who use toll roads associate the Trade Marks with the Complainant's Services provided under the Trade Marks."

The Complainant must show that the Complainant's Marks have, through use, acquired secondary meaning and become a distinctive identifier associated with the Complainant or its goods or services. This is a difficult task here since the Word Mark is a descriptive term that describes the services offered by the Complainant, namely ombudsman services for customers of toll roads. The Composite Mark consists of the Word Mark, which is by far the dominant element, and a small device element. It is entirely foreseeable that another entity providing similar services for other toll roads in Australia (or, in the event that the Complainant's contracts with the various entities that it services are not renewed, for those toll roads) would seek to use the phrase "tolling customer ombudsman" to describe its services.

The Complainant bears the burden of proof to show that the Complainant's Marks have become distinctively associated with the Complainant. WOW Audio Visual Superstores Pty Ltd v. Comonoz Pty Ltd, WIPO Case No. DAU2007-0003. As the phrase "tolling customer ombudsman" is a descriptive phrase, in order to rely on common law or unregistered rights, clear evidence will be required to show that the phrase has become associated with the Complainant and its services.

The Complaint indicates that the Complainant has provided its services since 2008, but provides no evidence as to the number of services or interactions with the public provided by the Complainant under the Complainant's Marks, any advertising used to promote the Complainant using the Complainant's Marks, surveys of consumer recognition of the Complainant's Mark's or media references to the Complainant's Mark. The Complainant is an individual with a service company: There is no evidence of staff employed, turnover or indeed anything that would suggest that a consumer would come to associate "Tolling Customer Ombudsman" with the Complainant, rather than as a descriptive term for whichever individual or entity happened to be providing ombudsman services for tolling customers of a particular toll road. The auDRP Overview notes that operating a website which corresponds to an unregistered mark, and using that website in connection with a business, will not necessarily give common-law rights in that mark in the absence of specific evidence showing secondary meaning, as opposed to assertions that the Complainant has acquired a valuable and exclusive reputation and goodwill in the Complainant's Marks. Based on the record before it in this proceeding, the Panel finds that the Complainant has not satisfied its burden to show unregistered or common-law rights to the Complainant's Marks.

This conclusion is strengthened by the issue unaddressed in the Complaint (despite it being raised by the Respondent by letter to the Complainant's representatives prior to the filing of the Complaint), that the domain name that the Complainant's Website is operated from was until recently owned by Transurban Limited. It is unclear (and unaddressed in the Complaint) whether the any reputation that existed in the Complainant's Marks was owned by the Complainant itself, or owned by the various toll companies that have contracted the Complainant to provide tolling customer ombudsman services, or owned by Transurban Limited, who previously registered and owned the Domain Name from which the Complainant now provides its services.

On finely balanced facts and circumstances, the Panel here ultimately concludes that the Complainant has failed to prove, on the available record before it, that the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights. However, the Panel notes that in the event that the Complainant were able to successfully register the Complainant's Marks as trade marks, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

B. Rights or Legitimate Interests

In the light of the Panel's finding that the Complainant has failed to prove that the Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights and so as not to prejudice any future filing, it is unnecessary to consider this ground.

C. Registered or Subsequently Used in Bad Faith

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nicholas Smith
Sole Panelist
Date: October 18, 2016