WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keep Australia Beautiful National Association Ltd v. Keep Australia Beautiful Council Qld Inc, Community Projects Queensland Ltd (also known as Keep Queensland Beautiful)

Case No. DAU2020-0016

1. The Parties

The Complainant is Keep Australia Beautiful National Association Ltd of Australia, represented by Corrs Chambers Westgarth, Australia.

The Respondents are Keep Australia Beautiful Council Qld Inc, of Australia (the “First Respondent”), and Community Projects Queensland Ltd, also known as Keep Queensland Beautiful, of Australia (the “Second Respondent”).

2. The Domain Names and Registrars

The disputed domain names are:

- <keepaustraliabeautiful.org.au> (the “First Disputed Domain Name”), registered with Web Address Registration Pty Ltd; and

- <tidytowns.com.au> (the “Second Disputed Domain Name”), registered with GoDaddy.com, LLC,
collectively, the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to Web Address Registration Pty Ltd. and GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Names. On July 20, 2020, Web Address Registration Pty Ltd. and GoDaddy.com, LLC transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. On August 11, 2020, the Center requested and the Complainant provided a clarification regarding 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 Respondents of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2020. On August 21, 2020, the Center received an email communication from the Respondents, requesting an extension of time in which to submit a Response. The Center extended the Response due date to September 6, 2020. The Response was filed with the Center on September 6, 2020.

The Complainant submitted a supplemental filing on September 24, 2020 (the “Supplemental Filing”).

The Center appointed John Swinson as the sole panelist in this matter on October 2, 2020. 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 Keep Australia Beautiful National Association Ltd, a company incorporated in Australia and a registered charity with the Australian Charities and Not-for-Profits Commission. A number of organisations are members of the Complainant, with each member being a charity representing a State or Territory of Australia. The Complainant was incorporated on December 24, 2013. The Complainant states that it has operated in Australia since 1971 and organises a wide variety of environmental education services, community awards and advertising in connection with environmental issues. According to the Complaint, the Complainant has organised a number of litter prevention programs including Tidy Towns and Keep Australia Beautiful Week and is recognised as Australia’s independent litter prevention thought and practice leader.

The Complainant is the owner of several registered trade marks in Australia including Trade Mark Registration No. 1304123 for KEEP AUSTRALIA BEAUTIFUL (logo) registered on June 15, 2009 (the “First Trade Mark”) and Trade Mark Registration No. 1517815 for TIDY TOWNS registered on October 3, 2012 (the “Second Trade Mark”) (collectively, the “Trade Marks”).

The First Respondent is Keep Australia Beautiful Council Qld Inc, a charity and an incorporated association registered in Queensland, Australia on August 26, 1994. According to the Response, the First Respondent has operated in various forms since 1966 and has delivered environmental programs in Queensland for over 50 years. The First Respondent was a member of the Complainant until 2016.

In 2015, the First Respondent began a merger process with two other organisations under the auspices of the Second Respondent. The First Respondent and Second Respondent entered into a licensing agreement and a transition plan was implemented during 2016.

The Second Respondent is a company registered in Australia and a charity registered with the Australian Charities and Not-for-Profits Commission. The Second Respondent currently owns and operates under the registered business name “Keep Queensland Beautiful”.

The First Respondent registered the First Disputed Domain Name on April 3, 2008. The First Disputed Domain Name redirects to <keepqueenslandbeautiful.org.au/keep-australia-beautiful> which resolves to the First Respondent’s website. The Second Respondent registered the Second Disputed Domain Name on August 16, 2016. The Second Disputed Domain Name resolves to a website which promotes Queensland towns that participate in the Respondents’ Tidy Towns program.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

A domain name which incorporates a trade mark in its entirety is considered confusingly similar to the trade mark. The First Disputed Domain Name is confusingly similar to the First Trade Mark and the Complainant’s registered company name. The Second Disputed Domain Name is confusingly similar to the Second Trade Mark. Upon viewing the Disputed Domain Names, consumers are likely to expect an association with the Complainant.

Rights or Legitimate Interests

The Respondents have no current affiliation with the Complainant. The First Respondent was expelled as a member of the Complainant on March 30, 2016. The Complainant’s Constitution states that rights cannot be transferred from a member (such as the First Respondent) to another organisation (such as the Second Respondent). If an entity uses a domain name under a licence, that entity’s rights or legitimate interests in the domain name end upon termination of the licence.

The Respondents do not have any rights or legitimate interests in the Disputed Domain Names.

Registered or Used in Bad Faith

The Respondents were not authorised to register the Disputed Domain Names and the Disputed Domain Names were registered after the respective Trade Marks.

The Respondents’ failure to return the Disputed Domain Names is motivated by a desire to prevent the Complainant using the Disputed Domain Names and to mislead the public into thinking that the Respondents are affiliated with the Complainant.

Previous panels have found that continued use of a domain name that is the subject of a licence or distribution agreement by an entity after the expiry of the relevant agreement constitutes use in bad faith. Similarly, the First Respondent failed to return the First Disputed Domain Name after being expelled as a member of the Complainant and this constitutes use in bad faith.

The First Respondent’s use of the First Disputed Domain Name to redirect to the Respondent’s main website and business is further evidence of bad faith.

B. Respondent

The Respondent makes the following contentions.

Background

The First Respondent owned the following Australian trade marks:

- Trade Mark Registration No. 830845 for TIDY TOWNS, which was registered on April 6, 2000 and expired on April 6, 2010; and
- Trade Mark Registration No. 896290 for KEEP AUSTRALIA BEAUTIFUL (logo), which was registered on November 27, 2001 and expired on November 27, 2011.

The First Respondent licensed these marks to the Complainant under a document titled “Trademark Licensing Agreement” on March 6, 2003. On June 24, 2011, the term of the Trademark Licensing Agreement was extended to June 30, 2021. Trade Mark Registration No. 896290 was assigned to the Complainant on March 18, 2003. This seemingly occurred under the Trademark Licensing Agreement, however the Trademark Licensing Agreement does not make express provision for assignment.

In addition, the First Respondent:

- owned the business name “Keep Australia Beautiful Qld – Tidy Towns” from its registration on July 23, 1999 until its expiry on June 13, 2001;
- has owned the domain name <kabq.org.au> since its registration in October 1999;
- owned the business name “Keep Australia Beautiful” from its registration on April 4, 2002 until its expiry on July 24, 2012;
- rebranded to become known as “Keep Queensland Beautiful” in 2013;
- owned the business name “Keep Queensland Beautiful” from its registration on March 12, 2013 until it was cancelled on July 21, 2016 to allow the Second Respondent to register the same;
- has owned the domain name <keepqueenslandbeautiful.org.au> since its registration on March 13, 2013;
- restructured the Tidy Towns program in Queensland in 2014; and
- has owned the domain name <tidytowns.net> since its registration on June 17, 2014.

The First Respondent was not expelled as a member of the Complainant. The First Respondent instead resigned its membership by way of a letter to the Complainant dated June 2, 2016.

The First Respondent initially registered the Second Disputed Domain Name on March 13, 2008. Between 2011 and 2014, the Second Disputed Domain Name was owned by the Complainant. On August 17, 2016, the Second Respondent registered the Second Disputed Domain Name to protect the intellectual property covered by the Trademark Licensing Agreement and to promote the Tidy Towns program.

The Second Respondent has owned and operated under the business name “Keep Queensland Beautiful” since January 21, 2017.

The Respondents stated that they have commenced legal proceedings against the Complainant in respect of one matter and that they intend to commence further proceedings in respect of other matters.

Identical or Confusingly Similar

The Panel should not make a judgment in this case and does not have the jurisdiction to do so due to the existence of the Trademark Licensing Agreement, the ownership history of the Disputed Domain Names, the registration of current and former business names by the Respondents, and the existence of a number of similarly named incorporated associations (i.e., the other State and Territory members of the Complainant).

Rights or Legitimate Interests

The First Respondent is the licensor of the Trade Mark Registration Nos. 830845 and 896290 to the Complainant under the Trademark Licensing Agreement. The fact that the First Respondent is no longer a member of the Complainant does not diminish its legal rights in respect of the Trademark Licensing Agreement, its intellectual property and its various programs.

The First Respondent was responsible for the creation of the Queensland Tidy Towns program in 1974. Since that time, the First Respondent has continued to develop its Tidy Towns program, including the introduction of accreditation and the registration of the Second Disputed Domain Name and <tidytowns.net> to promote participating Queensland towns.

The evidence demonstrates that:

- prior to receiving notice of the dispute, the Respondents have made bona fide use of the Disputed Domain Names, as well as business names and trade marks which correspond to the Disputed Domain Names, in connection with an offering of goods or services;
- the Respondents have been known by the Disputed Domain Names; and
- the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or tarnish the Trade Marks.

Registered or Used in Bad Faith

The First Disputed Domain Name was registered by the First Respondent in April 2008 and provided a map for the public to find their relevant State or Territory office until October 2019 when the Complainant ceased contributing to web hosting costs. As a result of this (and the First Respondent ceasing to be a member of the Complainant) the First Respondent redirected the First Disputed Domain Name to a page of its website at “www.keepqueenslandbeautiful.org.au/keep-australia-beautiful”.

The Disputed Domain Names were registered in accordance with the Trademark Licensing Agreement, which states that the First Respondent owns the intellectual property in the Trade Mark Registration No. 830845 and 896290 and has only granted a limited licence to the Complainant.

The Disputed Domain Names were not registered primarily for the purpose of sale, rent or transfer to another person. The First Respondent financed the registration and hosting of the First Disputed Domain Name in good faith and used the Second Disputed Domain Name to promote its Tidy Towns program for many years.

The Disputed Domain Names were not registered to prevent the Complainant from reflecting the Trade Marks in corresponding domain names or to disrupt the business activities of the Complainant or its members. Each member of the Complainant promotes their programs via their own website. In addition, the Complainant has ceased using the logo which only featured the words “Tidy Towns” for its relevant program and now uses a logo which features the words “Sustainable Communities Tidy Towns”.

The Disputed Domain Names were not registered in an intentional attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names or of a product or service on those Disputed Domain Names. The Second Disputed Domain Name promotes only Queensland towns and not a program operated nationally or by another State or Territory.

Reverse Domain Name Hijacking

The Respondents seek a finding of Reverse Domain Name Hijacking (“RDNH”) against the Complainant.

6. Discussion and Findings

The Complaint and Response set forth various claims, from contentions regarding the nature of the relationship between the Parties and the termination of this relationship, to allegations of defamation and passing off. However, most of these claims are beyond the scope of the Policy, which addresses only questions of abusive cybersquatting. Accordingly, this Panel will limit its decision to the Complainant’s claims that the Respondents are guilty of abusive cybersquatting. Any other claims and counterclaims among the Parties will have to be pursued in other, more appropriate, fora (Estate of Francis Newton Souza v. ZWYX.org Ltd., WIPO Case No. D2007-0221).

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered or subsequently used in bad faith.

A. Procedural Matters

A.1 Supplemental Filing

The Rules do not expressly provide for additional filings and generally, panels will only accept supplemental filings in “exceptional” circumstances. The Complainant has not demonstrated the presence of any exceptional circumstance justifying the admission of the Supplemental Filing and many of the matters raised in the Supplemental Filing could have reasonably been anticipated by the Complainant at the time it filed the Complaint.

Nevertheless, the Panel has considered the Complainant’s Supplemental Filing due to the complex factual scenario to ensure the Panel is fully aware of the relevant factual issues.

A.2 Multiple Respondents

Paragraph 3(c) of the auDRP Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain holder. auDRP panels have come to different views on whether the proviso in paragraph 3(c) has the effect of prohibiting consolidation of a single complaint against multiple respondents that are not the same entity as the registrant of the domain names (see section 4.16(ii) of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition
(“auDRP Overview”)).

In this case, the Disputed Domain Names are held by different entities. However, the Panel is satisfied that the First Respondent and Second Respondent are sufficiently closely related to mean that the Disputed Domain Names are subject to common control. The Respondents have not denied this relationship and in fact provided further detail as to its nature in the Response. Accordingly, the Panel finds it appropriate to accept the Complaint in respect of both Respondents and both Disputed Domain Names (see also Smart Voucher Ltd T/A Ukash v. Chowdhury, MD Abu Russel and Sydney Business & Technology Group Pty Ltd, WIPO Case No. DAU2013-0006).

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a name or trade mark in which the Complainant has rights.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognisable within the domain name (see section 1.2 of the auDRP Overview).

The First Disputed Domain Name is <keepaustraliabeautiful.org.au>. The Complainant’s registered company name is Keep Australia Beautiful National Association Ltd, and this name is clearly recognisable within the First Disputed Domain Name. A registered company name is a “name” for the purposes of the Policy. The Panel finds that the First Disputed Domain Name is confusingly similar to a name in which the Complainant has rights.

It is not necessary for the Panel to determine whether the First Disputed Domain Name is identical or confusingly similar to the First Trade Mark, but the Complainant notes that the design elements of the First Trade Mark can be disregarded in certain circumstances in respect of the first element (section 1.11 of the auDRP Overview) and accordingly, if the Panel were required to decide, it would find that the First Disputed Domain Name was identical to the First Trade Mark.

The Second Disputed Domain Name is <tidytowns.com.au>. The Complainant’s Second Trade Mark is TIDY TOWNS. The top-level suffix in the domain name (“.com.au”) is to be disregarded under the confusing similarity test. Accordingly, the Second Disputed Domain Name is identical to the Second Trade Mark.

The Complainant is successful on the first element of the Policy in respect of both Disputed Domain Names.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.

First Disputed Domain Name

According to the Response, the First Respondent first became known as the “Keep Australia Beautiful Council (Qld)” in 1971 and became a registered incorporated association under that name in 1994.

On November 27, 2001, the First Respondent applied to register Australian Trade Mark Registration No. 896290 for KEEP AUSTRALIA BEAUTIFUL (logo). By Deed of Assignment dated March 6, 2003, this application was recorded in the Australian Trade Marks Register as assigned by the First Respondent to the Complainant (who at that time, had the same address for service as the First Respondent according to the Trade Marks Register). This trade mark application was then accepted on May 28, 2003.

This trade mark registration expired on November 27, 2011. (In this decision, this registration is called “Trade Mark Registration No. 896290”.)

On March 6, 2003, which is the date of the Deed of Assignment referred to above, the First Respondent and the Complainant entered into a document titled “Trademark Licensing Agreement” which granted the Complainant rights in both Trade Mark Registration No. 896290 and Trade Mark Registration No. 830845 for TIDY TOWNS (“Trade Mark Registration No. 830845”). The Complainant does not dispute these facts.

It is somewhat unclear exactly what rights were granted to the Complainant under the Trademark Licensing Agreement. The Trademark Licensing Agreement refers to the First Respondent as the “Assignor or Licensor” and the Complainant as the “Assignee or Licensee” and includes the following provisions:

- “In accordance with this Agreement, the Licensor grants the Assignee a non-exclusive limited license to use the Authored Work as outlined in this Agreement.” The Authored Works are defined to be Trade Mark Registration Nos. 896290 and 830845.
- “This License provides the limited right to reproduce, publicly display and distribute the Authored Work only for the agreed upon terms set forth in this Agreement and signed by both Parties.”
- “The Licensor retains absolute ownership of the Authored Work.”
- “If this Agreement is terminated, the Licensee (Assignee) must lodge a full change of ownership form to the Trade Marks Office within 7 business days’ of the termination date.”
- “Upon termination, the Licensor is the exclusive title holder of the Authored Work.”
- “The signatories to this Licensing Agreement must be the same signatories to the Deed of Assignment.”
- “The Deed of Assignment is subject to the terms of this Licensing Agreement.”

Although the Trademark Licensing Agreement treats Trade Mark Registration Nos. 896290 and 830845 in a similar fashion, this Agreement was not implemented in the same way for each of these two trade marks. For example, the First Respondent and Complainant entered into the Deed of Assignment contemplated by the Trademark Licensing Agreement in respect of Trade Mark Registration No. 896290 (as outlined above) but there is no evidence that this was done in respect of Trade Mark Registration No. 830845. (The Deed of Assignment was not provided to the Panel by any party to this dispute.)

In view of the Deed of Assignment, it is unclear whether the Trademark Licensing Agreement is in fact a licence. It seems to be internally inconsistent. The same party is called both a Licensor and Assignor, which adds to the confusion. The use of the term “Authored Work” and the use of the terms “reproduce, publicly display and distribute” suggests that this would be a copyright-focused agreement, but the title of the agreement refers to trade marks and there is reference to the Trade Marks Office.

It is possible that the Trademark Licensing Agreement is in fact a trade mark licence. In respect of Trade Mark Registration No. 896290, the license may have been implemented in the form of an assignment with the obligation to assign back at the termination of the licence. See for example Transport Tyre Sales Pty Ltd v Montana Tyres Rims & Tubes Pty Ltd, [1999] FCA 329; 93 FCR 421. But this is not entirely clear.

To further complicate matters, Trade Mark Registration Nos. 896290 and 830845 expired due to non-payment of renewal fees on April 6, 2010 and November 27, 2011, respectively. The Complainant contends that any rights the First Respondent may have had in Trade Mark Registration Nos. 896290 and 830845 ended upon this expiry and submits that, in any case, Trade Mark Registration No. 896290 had been assigned to the Complainant. However, on June 24, 2011 (after Trade Mark Registration Nos. 896290 and and 830845 had expired) the First Respondent and the Complainant executed a document extending the term of Trademark Licensing Agreement until June 30, 2021.

Based on this extension, it is plausible that in 2011, the Complainant accepted that the First Respondent retained rights (unregistered or otherwise) in the trade marks that were the subject matter of Trade Mark Registration Nos. 896290 and and 830845, even though the registrations had lapsed. This, together with the fact that the First Respondent’s current registered name incorporates the words from Trade Mark Registration No. 896290, appears to demonstrate that the First Respondent still has rights in respect of “KEEP AUSTRALIA BEAUTIFUL”.

However, the evidence provided by the Complainant and Respondents on this matter is insufficient for the Panel to reach a definitive conclusion and factual issues remain unresolved. The burden of proof is borne by the Complainant.

In these circumstances it is therefore appropriate for the Panel to conclude that the Respondents have presented sufficient evidence to cast doubt over the Complainant’s contentions and that, as a result, the Complainant has failed to meet its burden to prove that the First Respondent does not have rights or legitimate interests in the First Disputed Domain Name.

Second Disputed Domain Name

The evidence indicates that the First Respondent was involved in the creation and development of the Queensland Tidy Towns program in 1974 and that the Complainant’s national Tidy Towns program commenced in 1991. The First Respondent appears to have been responsible for the Queensland Tidy Towns program since 1974.

The First Respondent registered Trade Mark Registration No. 830845 for TIDY TOWNS on April 6, 2000. This application was filed by the First Respondent on April 6, 2000 (which is twelve years prior to Trade Mark Registration No. 1517815 for TIDY TOWNS registered on October 3, 2012 by the Complainant). It was removed from the register in 2010 because the renewal fee was not paid by the First Respondent. The First Respondent did not provide any explanation as to why it let this registration lapse.

As outlined above, Trade Mark Registration No. 830845 was one of the subjects of the Trademark Licensing Agreement from 2003. Unlike Trade Mark Registration No. 896290, Trade Mark Registration No. 830845 was not assigned to the Complainant.

Because the registration for Trade Mark Registration No. 830845 expired on April 6, 2010, the Complainant contends that the Respondents’ rights in respect of Trade Mark Registration No. 830845 ended at this time. If that is the case, the Complainant provides no explanation as to why the Complainant would have executed a document in 2011 extending the term of Trademark Licensing Agreement until June 30, 2021.

However, it appears that the First Respondent has operated the Queensland Tidy Towns program continuously since that time, including updating the program in 2014 to introduce an accreditation process and a dedicated website at “tidytowns.net”.

The Complainant appears to suggest that the First Respondent gained rights to use the Trade Marks by way of an express or implied licence from the Complainant as a member of the Complainant and that these rights ceased together with the First Respondent’s membership. However, the Complainant did not provide evidence of such a licence, or a copy of its Constitution.

The Trade Marks Register also shows that there was another TIDY TOWNS trade mark registration owned by the First Respondent (Australian Trade Mark Registration No. 874135) that was filed on May 1, 2001 and expired on May 1, 2011 for failure to pay registration fees. This registration is not referred to in the Complaint or the Response.

Moreover, the Complainant’s law firm in this dispute is on the record in the Australian Trade Marks Office as representing Keep Australia Beautiful Council (Victoria) in 1983 to 1986 in respect to three TIDY TOWNS trade mark applications that were not accepted. These applications are not referred to in the Complaint or the Response.

Despite the murky factual waters, the Panel is satisfied that the First Respondent has rights or legitimate interests in a name corresponding with the Second Disputed Domain Name based on its bona fide use of that name in connection with an offering of goods or services (i.e., the Queensland Tiny Towns program) since before it was notified of the subject matter of the dispute. Further, the Panel concludes that the Complainant recognised on more than one past occasion that the First Respondent had such rights. It is open to the Panel to infer that that the Trademark Licensing Agreement is still on foot today, and that, in accordance with that agreement, the First Respondent “retains absolute ownership of the Authored Work.” And while it would not change the result here, it may even be the case that the Complainant has an obligation to assign Trade Mark Registration No. 1517815 for TIDY TOWNS to the First Respondent in 2021.

The mechanism by which the Second Respondent is purported to have gained rights in respect of the Second Disputed Domain Name is unclear. The Respondents contend that the First Respondent merged with two organisations under the auspices of the Second Respondent and that the First Respondent and Second Respondent entered into a licensing agreement. While a copy of this agreement was not provided to the Panel, the Respondents imply that it included a licence of the First Respondent’s rights in Trade Mark Registration No. 830845 or the “Tidy Towns” name.

The Complainant did not dispute these contentions, including in its Supplemental Finding. The Complainant’s main contention is that the Respondents do not have a licence to the Trade Marks from the Complainant. However, such a licence was unnecessary due to the Panel’s conclusion above that the First Respondent had its own rights or legitimate interests in a name corresponding with the Second Disputed Domain Name prior to this dispute (and which it was entitled to licence, and it appears to have in fact licensed, to the Second Respondent).

The Complainant also contends that the Keep Australia Beautiful Constitution shows that rights cannot be transferred from a state member to another organisation such as the Second Respondent, but the Complainant did not provide a copy of the Constitution to the Panel. And even if that were the case, it would speak to contractual matters outside of the scope of this cybersquatting dispute.

The Panel is satisfied that the First Respondent had rights or legitimate interests in a name corresponding with the Second Disputed Domain Name and that the Second Respondent acquired its own rights or legitimate interests in a name corresponding with the Second Disputed Domain Name by virtue of a licence from the First Respondent.

In light of the above, the Complainant does not succeed on the second element of the Policy in respect of either of the Disputed Domain Names.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered or subsequently used the Disputed Domain Names in bad faith.

Strictly speaking, the Panel is not required to consider this element as the Complainant has failed to satisfy the second element. If the Panel was required to consider the third element, the Complainant would not succeed on this third element in respect of either of the Disputed Domain Names for the following reasons.

In short, this is a dispute between a federal organisation and a former State branch, both of whom are operating programs for the public benefit under the same or similar names. There is no document provided by the Complainant that demonstrates that the Respondents were or are doing so under license from the Complainant or subject to any restrictions or control of the Complainant. In these circumstances, the Complainant has difficulty proving bad faith registration or use by the Respondents.

The onus is on the Complainant to show that the Respondents registered or are using the Disputed Domain Names in bad faith. “Keep Australia Beautiful” is part of the First Respondent’s name, and it traded under this name for a number of years. It appears that there are other ongoing disputes between the Parties that are not the subject of this domain name dispute. The Policy is intended to provide redress in clear cases of cybersquatting, and it is not at all clear to the Panel that this is such a case. The Carlyle Group v. Carlyle Coutts Capital Corporation, WIPO Case No. D2008-1960.

First Disputed Domain Name

The First Disputed Domain Name was registered in 2008. The evidence indicates that at this time the First Respondent was still operating under the “Keep Australia Beautiful” name and accordingly its registration of the First Disputed Domain Name did not occur in bad faith.

As outlined above, the Complainant failed to demonstrate that the First Respondent does not currently have rights in respect of the First Disputed Domain. Accordingly, the First Respondent’s choice to redirect the First Disputed Domain Name (a domain name in which they have appear to have rights) to their own website at “www.keepqueenslandbeautiful.org.au” is not bad faith use under the Policy as applied to the facts presented to the Panel in this case.

Second Disputed Domain Name

The Second Respondent registered the Second Disputed Domain Name on August 16, 2016, soon after the Second Respondent ceased to be a member of the Complainant. This timing suggests that the registration may have been motivated by some generalized bad faith.

However, as outlined above, Panel is satisfied that at this time, and under the Policy as applied to the facts presented to the Panel in this case, the First Respondent had rights or legitimate interests in a name corresponding with the Second Disputed Domain Name by virtue of its long running Queensland Tidy Towns program. The Panel is also satisfied that at this time the First Respondent had licensed these rights or legitimate interests to the Second Respondent. As a result, the Second Respondent’s registration of the Second Disputed Domain did not occur in bad faith.

Since its registration, the Second Respondent has used the Second Disputed Domain Name to promote Queensland towns that have received an award or accreditation as part of the Respondents’ Tidy Towns program. This does not here constitute bad faith.

E. RDNH

Paragraph 15(e) of the auDRP Rules provides that, if the panel finds that the complaint “was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the auDRP Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

The Complainant provided a brief and somewhat skewed explanation of its complex history, relationship and ongoing dispute with the Respondents. Previous panels have considered that intentional omission of relevant evidence may justify a finding of RDNH.

However, a finding of RNDH is rarely made where there is a genuine factual dispute (see section 4.17 of the auDRP Overview). Given the complicated factual nature of the dispute and the possibility of future court proceedings (including as to various other causes of action not covered by the Policy), the Panel does not consider this an appropriate case in which to make a finding of RDNH.

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist
Date: October 27, 2020