WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
R S Capital Partners Pty Ltd t/a My SMSF v. Adviser IT Ltd
Case No. DAU2019-0007
1. The Parties
The Complainant is R S Capital Partners Pty Ltd trading as My SMSF of North Sydney, New South Wales, Australia, represented by Gupta & Co. Pty Ltd., Australia.
The Respondent is Adviser IT Ltd of Miranda, New South Wales, Australia
2. The Domain Name and Registrar
The disputed domain name <mysmsf.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2019. On the same day, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 28, 2019, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent was the current registrant but disclosing contact information for the disputed domain name that differed from that provided in the Complaint. The Center sent an email communication to the Complainant on April 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant replied in an email communication on April 16, 2019, declining to amend the Complaint.
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 proceedings commenced on April 16, 2019. The Respondent’s IT supplier, the Complainant and the Complainant’s authorized representative exchanged a series of emails regarding the matter on April 18, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2019. The Response was filed with the Center on April 28, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 8, 2019. 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 creates deeds and associated documentation for self-managed super funds (“SMSFs”). It also advises in relation to the creation, maintenance and management of SMSFs, particularly in relation to SMSF investment. The Complainant registered the business name “My SMSF” on May 13, 2015. The Complainant is the owner of Australian registered trademark number 1865433 for MY SMSF, registered from August 11, 2017, in respect of services in class 36 including self-managed superannuation fund administration. A related company named My SMSF Pty Ltd was registered on January 17, 2019.
The Respondent is Adviser IT Limited, an unlisted Australian public company. Its former names are Adviser IT Pty Ltd and Prospera Pty Ltd. It was registered on October 21, 2003.
The disputed domain name was registered on April 22, 2005. The disputed domain name does not resolve to any active website, rather, it is passively held.
A “self managed superannuation fund”1 is a type of fund defined in sections 17A and 17B of the Australian Superannuation Industry (Supervision) Act 1993. The acronym “SMSF” is used to refer to a self-managed superannuation fund in certain other defined terms in that Act and on the website of the Australian Taxation Office, which regulates this type of fund.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s MY SMSF trademark. An ordinary person dealing with the Complainant’s business “My SMSF” would expect the business’s website to be located at the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not appear to operate any business and, even if it does, there is no evidence to suggest that the Respondent’s business deals specifically with the creation and management of SMSFs or related investments. The Respondent and its businesses have never traded as, or been commonly referred to, as “My SMSF” or any derivative names. The Respondent does not hold any registered business names or trademarks in the name of “My SMSF” or any derivative names. There is no legitimate reason why the Respondent should hold the disputed domain name, especially if it is not using it to direct to website content.
The disputed domain name was registered or is subsequently being used in bad faith. It has never resolved to an active website. The Complainant contacted the previous owner of the disputed domain name, SmartPlanner Pty Ltd, trading as Prospera, to negotiate the transfer of the disputed domain name but did not receive any reply. The Complainant then filed a complaint to .au Domain Administration Ltd (“auDA”) in relation to the disputed domain name on July 20, 2018. The disputed domain name was transferred to the Respondent in January 2019. Regardless of whether or not the previous owner/the Respondent registered/acquired the disputed domain name in bad faith or for the purpose of obstructing other parties in their legitimate business or any other impermissible reason, the fact that the previous owner/the Respondent has failed to make any reasonable showing to negotiate the transfer of the disputed domain name indicates that it is continuing to hold the disputed domain name, despite not using it, which is an act of deliberate frustration of the Complainant’s business. The previous owner was aware of the Complainant’s position and its complaint to auDA and decided to transfer the disputed domain name to the Respondent, who has no business activities, phone numbers, e-mail addresses or any other contact information. This shows bad faith on the part of the previous owner/the Respondent and further attempts to frustrate the Complainant’s right to acquire the disputed domain name. The previous owner is related to the Respondent, as its trading name is Prospera and the Respondent was formerly named Prospera Pty Ltd.
B. Respondent
The Response was filed by Prospera. Prospera has been a fully operating business in Australia for over ten years. It is managed under a group structure that includes SmartPlanner Group (a subsidiary of Adviser IT), SmartPlanner Asset Management and SmartPlanner Solutions. This business holds the ownership of the disputed domain name and has done so for a number of years. Prospera has been in the business of providing software subscription services to the financial advice and financial planning industry since its inception. It does not operate a superannuation business but includes self-managed super funds as part of its modelling functions. Its website address is “www.prospera.com.au”.
In Australia, “smsf” is the well-used acronym for self-managed super funds, which are retirement savings and management entities. This well-recognised acronym is used by banks, governments and other financial institutions. It is also used in Australian stock market publications. The Australian Tax Office website includes a series of pages devoted to Self-Managed Super Funds. There is no trademark for SMSF.
The “my” in the disputed domain name refers to the self and is specific to the user or individual. Many insurance companies as well as financial institutions and other businesses use this prefix when referring specifically to a customer’s policies or holdings. Examples include <mynrma.com.au> and <myallianz.com.au>.
The Respondent is the legitimate owner of the disputed domain name and has every right to retain ownership and continue with its plans to use the disputed domain name. The Respondent holds other domain names that it uses in various contexts to attract potential customers to its business through the Internet. An Internet search for “mysmsf” generates a variety of results which clearly show that this acronym is entrenched in the Australian vocabulary. The Respondent sees no reason not to retain ownership.
6. Discussion and Findings
6.1 Identity of the Respondent
Paragraph 1 of the Rules provides that “ Respondent means the registered holder of a domain name against which a complaint is initiated”. The Complaint identifies the Respondent as Adviser IT Ltd. TPP Wholesale Pty Ltd confirmed that the Respondent is the current registrant of the disputed domain name but provided contact details showing that the registrant contact name is “IT Admin” and the organization name is “Prospera Pty Ltd”. In an email dated April 16, 2019, the Complainant declined to amend its Complaint on the grounds that Prospera Pty Ltd is a related company of the Respondent.
The Panel notes that TPP Wholesale Pty Ltd has confirmed that the Respondent is the current registrant of the disputed domain name. According to an extract from the Australian Securities & Investments Commission database provided by the Complainant, “Prospera Pty Ltd” is a former corporate name of the Respondent. Accordingly, the Panel is satisfied that the Respondent is the registrant of the disputed domain name.
6.2 Substantive Issues
Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MY SMSF mark.
The disputed domain name incorporates the MY SMSF mark, omitting only the space between “my” and “smsf” because spaces do not form part of domain names.
The disputed domain name also includes the open Second-Level Domain (“2LD”) suffix “.com.au”. This element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd, WIPO Case No. DAU2008-0023.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.
B. Rights or Legitimate Interests
Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); 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.
In the present dispute, the disputed domain name is only passively held. It is not used in connection with an offering of goods or services and there is no evidence of any preparations to do so within the terms of paragraph 4(c)(i) of the auDRP. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the auDRP.
The evidence shows that none of the Respondent’s current and former corporate names is “mysmsf”. Nothing on the record indicates that the Respondent has been commonly known by the disputed domain name either within the terms of paragraph 4(c)(ii) of the auDRP.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent submits that it is the legitimate owner of the disputed domain name and has every right to retain ownership and continue with its plans to use the disputed domain name. While the Respondent draws attention to the meaning of the word “my” and the acronym “smsf” in the disputed domain name, it does not elaborate on what its plans are to use the disputed domain name, nor does it provide evidence of any preparations to realize those plans.
Accordingly, the Panel does not find that the Respondent has demonstrated any rights or legitimate interests in respect of the disputed domain name for the purposes of paragraph 4(a)(ii) of the auDRP. The Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, the Complainant has satisfied the second element in paragraph 4(a) of the auDRP.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the auDRP uses the conjunction “or”, which indicates that the Complainant may satisfy this element by showing either that the disputed domain name has been registered in bad faith, or that it has been subsequently used in bad faith, without necessarily demonstrating both.
Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although they do not constitute an exhaustive list. The second and third of these circumstances are as follows:
(ii) [the respondent has] registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name;
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or activities of another person.
Both these circumstances raise issues of motivation. In the present dispute, the registration of the disputed domain name does, in fact, prevent the Complainant from reflecting its MY SMSF trademark in the 2LD “.com.au” but the issue arises as to whether the disputed domain name was registered “in order to” achieve that result. Similarly, the inability to reflect the Complainant’s MY SMSF trademark in the 2LD “.com.au” may disrupt the Complainant’s business but the question remains whether that was the primary purpose of the registration of the disputed domain name.
The disputed domain name was registered in 2005, long before the priority date of the MY SMSF trademark registration in 2017. Nothing on the record indicates that the registration of the disputed domain name in 2005 was in anticipation of the Complainant’s rights in the MY SMSF trademark. The Complainant did not register the business name “My SMSF” until 2015 and there is no evidence that it used that name any earlier. There is a plausible alternative explanation for the registration of the disputed domain name in 2005, based on the fact that “my SMSF” is a term that a member of a self-managed super fund may use to refer to his or her own fund.
There is no evidence on the record that the Respondent acquired the disputed domain name at any time later than 2005. The Complainant alleges that the previous registrant of the disputed domain name was SmartPlanner Pty Ltd and that the disputed domain name was transferred to the Respondent in January 2019 but it does not substantiate these allegations.
Accordingly, on the basis of the record of this proceeding, the Panel does not find that the Respondent’s registration of the disputed domain name was intended to prevent the Complainant from reflecting its trademark in the 2LD “.com.au” or to disrupt the Complainant’s business in the terms contemplated by paragraph 4(b)(ii) and (iii), respectively, of the auDRP. The Complainant does not raise any other circumstances that would indicate that the disputed domain name has been registered in bad faith.
As to subsequent use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith, depending on all the circumstances of the Respondent’s behavior. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-00032 .
The disputed domain name is identical to the Complainant’s mark (minus the space in the trademark, and plus the 2LD suffix). The disputed domain name has not been actively used for a lengthy period of time (14 years), including two years since the priority date of the Complainant’s trademark registration. However, the trademark consists of the possessive “my” and the widely-used acronym “SMSF”. The Complainant does not contend that it coined the combination “my SMSF” and the evidence shows that this phrase is used on the Internet by other parties besides the Complainant. The Complainant does not submit evidence indicating the extent of its reputation in its trademark, or how it uses that trademark, from which the Panel could infer that it is more likely than not that the Respondent’s continued passive holding of the disputed domain name has in any way targeted the Complainant’s mark.
The Complainant submits that it received no reply to its correspondence regarding a possible transfer of the disputed domain name, but that correspondence is not in the record of this proceeding. Although there is no requirement in the auDRP that the Complainant demonstrate that the Respondent has engaged in a pattern of blocking registrations, the Panel notes that there is no evidence that the Respondent has ever abusively registered or used a domain name.
Accordingly, after weighing the evidence on the record of this proceeding, the Panel does not find that the disputed domain name has been used in bad faith.
Therefore, the Complainant has failed to satisfy the third element in paragraph 4(a) of the auDRP.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Matthew Kennedy
Sole Panelist
Date: May 22, 2019
1 The statutory definition does not contain a hyphen.