for inter alia advisory services relating to environmental pollution, registered on April 17, 2019 (the “Trade Mark”). The Complainant is also the owner of the domain name <biodiversityaust.com.au>.The Complainant is Biodiversity Australia Pty Ltd, Australia, represented by Cameron Law, Australia.
The Respondent is Rob Barnaby, Biodiversity Solutions Australia Pty Ltd, Australia, self-represented.
The disputed domain name <biodiversityaustralia.com.au> (the “Disputed Domain Name”) is registered with Synergy Wholesale Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On February 24, 2021, Synergy Wholesale Pty Ltd 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 proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2021. The Response was filed with the Center on March 16, 2021.
The Center appointed John Swinson as the sole panelist in this matter on March 24, 2021. 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 Complainant is Biodiversity Australia Pty Ltd, a company incorporated in Australia. According to the Complaint, the Complainant provides specialist environmental consulting services and has traded under the name Biodiversity Australia Pty Ltd since it was incorporated on August 21, 2007.
The Complainant is the owner of Australian registered trade mark number 2001422 for inter alia advisory services relating to environmental pollution, registered on April 17, 2019 (the “Trade Mark”). The Complainant is also the owner of the domain name <biodiversityaust.com.au>.
The Respondent is Biodiversity Solutions Australia Pty Ltd, a company incorporated in Australia. The Respondent was incorporated on May 5, 2015, under the name Zerorisk International Pty Ltd. On July 24, 2017, the Respondent changed its name to Biodiversity Solutions Australia Pty Ltd.
According to the Response, the Respondent assists landowners and developers with the New South Wales Biodiversity Offsets Scheme, as well as other biodiversity schemes. The Respondent provides solutions to stakeholders participating in biodiversity schemes and acts as a broker to assist participants to buy and sell biodiversity credits.
The Disputed Domain Name was registered on July 11, 2017, by the Respondent, just prior to the Respondent changing its name as set out above.
The Complainant makes the following submissions.
The Complainant was incorporated as a company on August 21, 2007, under the name Biodiversity Australia Pty Ltd. The Complainant has traded under the name Biodiversity Australia Pty Ltd since that time. The Complainant owns the domain name <biodiversityaust.com.au> which resolves to the Complainant’s website. The Complainant owns the Trade Mark and uses the Trade Mark in connection with specialist environmental consulting services. In light of the above, the Complainant asserts rights in the name “Biodiversity Australia”.
The Disputed Domain Name is identical to the Complainant’s registered company name and the textual elements of the Trade Mark.
The Respondent was incorporated on May 5, 2015, under the registered name Zerorisk International Pty Ltd and on July 24, 2017, changed its registered name to Biodiversity Solutions Australia Pty Ltd. The Respondent hosts its website at the domain name <biodiversitysolutionsaustralia.com.au>. At the time of the Complaint, the Respondent’s sole use of the Disputed Domain Name is to redirect users to its website at <biodiversitysolutionsaustralia.com.au>.
The Complainant became aware of the Respondent in or about May 2018 when the Respondent requested a fee proposal for certain services. In about March 2019, the Complainant became aware that the Respondent was trying to pass itself off as the Complainant in dealings with the Port Macquarie-Hastings Council. On March 13, 2019, the Complainant’s legal representatives wrote to the Respondent’s sole director about these matters and asked the Respondent to cease and desist.
As far as the Complainant is aware, the Respondent has never been known by the name “Biodiversity Australia” other than in the course of attempts to pass itself off as the Complainant. The Complainant owns the trade mark rights to the words “Biodiversity Australia” by virtue of the Trade Mark and the Respondent is unable to register the business name “Biodiversity Australia” because that is the registered company name of the Complainant.
The Respondent cannot demonstrate bona fide use of the Disputed Domain Name in connection with an offering of goods or services because:
- the Disputed Domain Name is identical to the Complainant’s registered company name and Trade Mark;
- the Respondent has been aware of the Complainant and the nature of its goods and services since at least May 2018;
- there is a high likelihood of the Complainant’s customers becoming confused due to the similarity of the goods and services offered by the Complainant and Respondent and the use of the word “biodiversity” on the homepage of the Respondent’s website to which the Disputed Domain Name redirects; and
- the Respondent’s sole use of the Disputed Domain Name has been to redirect users to its own website at the domain name <biodiversitysolutionsaustralia.com.au>.
In addition, by using the Disputed Domain Name for the sole purpose of redirecting to another domain name, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, and is misleadingly diverting consumers to its own website with the intent of commercial gain.
The words “or subsequent use” in paragraph 4(a)(ii) of the Policy mean that the date on which the Respondent registered or renewed the Disputed Domain Name becomes largely irrelevant provided the use which is being complained of is ongoing at the date of the Complaint.
The Respondent’s registration of the Disputed Domain Name, which is identical to the Complainant’s name and Trade Mark, has the effect of preventing the Complainant from reflecting its name or Trade Mark in that domain name and disrupts the business of the Complainant.
Where a domain name is identical or confusingly similar to a trade mark or name in which a complainant has rights, use of that domain name by a respondent to resolve to a website (whether of the respondent or a third party) is use in bad faith. The Disputed Domain Name is being used to redirect users to the Respondent’s own website, which is evidence of subsequent use in bad faith.
The Respondent makes the following submissions.
The Complainant registered the Trade Mark 21 months after the Respondent registered the Disputed Domain Name.
The Respondent asserts rights in the name “Biodiversity Australia” for the reasons outlined below.
The Respondent changed its name to Biodiversity Solutions Australia Pty Ltd on July 24, 2017, and has traded as “Biodiversity Solutions Australia” since that time in New South Wales, Australia. At the time the Respondent changed its name, the Respondent was unaware of the Complainant’s business, which is based in Queensland, Australia.
At or about the time that the Respondent changed its name, the Respondent registered the Disputed Domain Name, along with seven other domain names relevant to the Respondent’s business, including <biodiversitysolutionsaustralia.com.au>, <biodiversitycredits.com.au>, <bdsaustralia.com.au>, and <biodiversityexchange.com.au>. All of these domain names direct to the Respondent’s principal domain name <biodiversitysolutionsaustralia.com.au>. The Respondent registered the Disputed Domain Name at least nine months before the Respondent became aware of the Complainant. The Complainant was aware of the Respondent’s business prior to May 2018, as the Respondent had met with a representative of the Complainant prior to this date. The Complainant was operating under the name “Naturecall Environmental” at that time.
The Respondent assists landowners and developers with biodiversity offset schemes and acts as a broker for parties buying and selling biodiversity credits. The Respondent’s business is entirely different to the Complainant’s business, which involves specialist environmental consultancy services.
The Disputed Domain Name is exact match or abbreviation of the Respondent’s name.
The Respondent has never attempted to pass itself off as the Complainant.
There has never been any confusion in relation to the Complainant and Respondent’s respective businesses (which are headquartered in different states of Australia) or their business or domain names, given each provides distinctly different services. In relation to the passing off alleged by the Complainant, the use of the name “Biodiversity Australia” in a social media post made by an employee of Port Macquarie-Hastings Council was a typographical error for which the Port Macquarie-Hastings Council apologised to both the Complainant and Respondent.
For the reasons outlined above, the Respondent is making a legitimate and fair use of the Disputed Domain Name in connection with its business activities, without intent to mislead or divert customers.
The Respondent registered the Disputed Domain Name on July 11, 2017, in accordance with the .au Domain Administration Ltd’s (“auDA”) Domain Name Eligibility and Allocation Policy Rules. The Complainant registered the Trade Mark 21 months later. The Disputed Domain Name has been used continuously in connection with the Respondent’s legitimate business activities since its registration.
The Respondent was not aware of the Complainant’s existence at the time it registered the Disputed Domain Name, along with seven other related domain names. The Complainant did not raise any concerns about the Disputed Domain Name with the Respondent when the Complainant became aware of the Respondent’s business in May 2018 or in its cease and desist letter to the Respondent dated March 13, 2019. In the Respondent’s reply to the Complainant on March 26, 2019, the Respondent offered to meet the Complainant to discuss the misunderstanding but the Complainant never responded to this offer.
The Complainant registered and continues to use the domain name <biodiversityaust.com.au>, which is similar to the Disputed Doman Name, and the business of the Complainant has not been disrupted.
The Respondent offered to sell the Disputed Domain Name to the Complainant on reasonable commercial terms, but the Complainant provided an unreasonable and noncommercial response. The Respondent has tried to contact the Complainant and the Complainant’s legal representatives at other times and the Complainant did not respond.
For the reasons outlined above, the Disputed Domain Name was not registered or used in bad faith as alleged in the Complaint.
The Respondent requests a finding of Reverse Domain Name Hijacking.
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 Name is identical or confusingly similar to a name, trade mark 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 has subsequently been used in bad faith.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
Generally, the test for identity or confusing similarity involves a 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 auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”)).
The Disputed Domain Name incorporates the entirety of the textual elements of the Trade Mark, with no additional elements. The design elements of the Trade Mark are largely disregarded under the first element (see section 1.11 of the auDA auDRP Overview 1.0). Accordingly, the Panel considers the Disputed Domain Name to be identical to the Trade Mark.
The Trade Mark was registered after Disputed Domain Name was registered. This is not relevant to the Panel’s decision under this element. The relevant time by which the Complainant must establish its rights is at the time of the filing of the Complaint (see section 1.4 of the auDA auDRP Overview 1.0).
In addition, the Complainant has traded under its company name Biodiversity Australia Pty Ltd since it was incorporated on August 21, 2007. As a result, the Complainant has developed rights in the name Biodiversity Australia Pty Ltd for the purposes of paragraph 4(a)(i) of the Policy and the Panel considers the Disputed Domain Name to be identical to this name, apart from the words “Pty Ltd” which are required under legislation.
The Complainant is successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Respondent has provided evidence that it has operated a legitimate business assisting stakeholders with biodiversity offset schemes under the name “Biodiversity Solutions Australia” since July 24, 2017, shortly after the Respondent registered the Disputed Domain Name. The Panel considers the Respondent’s evidence that it was not aware of the Complainant at that time to be entirely plausible, and the Complainant has provided no evidence to the contrary.
The Respondent also provided evidence that it registered a number of similar domain names in connection with its business and trading name “Biodiversity Solutions Australia” around this time. Although the Disputed Domain Name is identical to the textual elements of the Trade Mark, the Disputed Domain Name was registered prior to the Trade Mark and is comprised of two words in the Respondent’s trading name. The Complainant did not provide any evidence to demonstrate that it held unregistered or common law rights in the Trade Mark at the time the Disputed Domain Name was registered or that the Disputed Domain Name was registered to target the Complainant.
The Respondent is using the Disputed Domain Name to redirect to the Respondent’s website at <biodiversitysolutionsaustralia.com.au>, which advertises its business. As outlined above, there is no evidence to suggest that the Respondent’s business is not legitimate.
In the Panel’s view, the Complainant’s claim of passing off by the Respondent have not been substantiated. The Complainant’s claim in this regard relates to a single incident in which the Port Macquarie-Hastings Council referred to the Respondent as “Biodiversity Australia” in a social media post. According to the Respondent, this was a mistake on the part of the Port Macquarie-Hastings Council for which the Port Macquarie-Hastings Council later apologised. The Respondent provided a letter it sent to the Complainant shortly after the incident and the contents of this letter are consistent with the Respondent’s account. In the absence of any further evidence that the Respondent has impersonated, targeted or passed itself of as the Complainant, it appears that the Respondent has been operating a legitimate business under the company name “Biodiversity Solutions Australia” since on or about July 24, 2017.
Other than the instance outlined above, the Complainant has provided no evidence of its reputation in respect of the name “Biodiversity Australia”. In these circumstances, the Panel is satisfied that in accordance with paragraph 4(c)(i) of the Policy, the Respondent was making a bona fide use of the Disputed Domain Name in connection with a legitimate offering of goods or services before notice to it of the subject matter of this dispute. The Respondent has therefore rebutted the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Complainant is unsuccessful on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered or used the Disputed Domain Name in bad faith.
The Panel is not required to consider this element as the Complainant has failed to satisfy the second element. Nonetheless, the Panel is satisfied that the Disputed Domain Name was not registered or used in bad faith by the Respondent for the reasons set out below.
The Complainant contends that because the Disputed Domain Name is identical to the Complainant’s company name and Trade Mark, the Respondent’s registration of the Disputed Domain Name has the effect of preventing the Complainant from reflecting its name or Trade Mark in that domain name and disrupts the business of the Complainant.
Under paragraphs 4(b)(ii) and (iii) of the Policy, bad faith registration and use of a domain name will be evidenced by a respondent registering a domain name to prevent the owner of a name, trade mark or service mark from reflecting that name or mark in a corresponding domain name, or by a respondent registering a domain name primarily for the purpose of disrupting the business or activities of another person.
The Disputed Domain Name is similar to the Trade Mark and identical to the name ‘Biodiversity Australia Pty Ltd’ in which the Complainant has rights. However, there is no evidence that the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting its company name or Trade Mark in the Disputed Domain Name or that the Respondent’s primary purpose in registering the Disputed Domain Name was to disrupt the business or activities of the Complainant.
To the contrary, the Respondent provided evidence that it registered the Disputed Domain Name and a number of similar domain names in connection with its business and trading name “Biodiversity Solutions Australia” around the time that it changed its company name on July 24, 2017. The Respondent’s evidence is credible. There is no evidence before the Panel to suggest that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name and the Trade Mark was not registered until November 25, 2019.
The Complainant also contends that because the Disputed Domain Name is identical to the Complainant’s name and Trade Mark, the Respondent’s use of the Disputed Domain Name to resolve to its own website is use in bad faith. The Complainant cited GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001 in support of its contention. According to the panel in that case:
“ […] re-direction is not of itself evidence sufficient to satisfy 4(a)(iii) of the Policy. However, where the Respondent is using a “virtually identical” or “confusingly similar” name to redirect customers to a competitor of the Complainant, and no response or evidence of any legitimate use of the Disputed Domains is provided, the Panel can draw adverse inferences against the Respondent.”
Here, evidence of legitimate use has been provided by the Respondent. The Disputed Domain Name redirects to the Respondent’s primary domain name <biodiversitysolutionsaustralia.com.au>, which resolves to a website promoting the Respondent’s business. There is no evidence to suggest that the Respondent’s business in not legitimate or that customers of the Complainant have accessed the Disputed Domain Name believing it to be associated with the Complainant. The Respondent and Complainant both operate businesses in the same field but the services that they offer are different and the Respondent’s website, to which the Disputed Domain Name redirects, is not similar to the Complainant’s website at <biodiversityaust.com.au>.
The words “Biodiversity Australia” are descriptive of the field and territory in which both the Complainant and Respondent operate. The words “Biodiversity” and “Australia” appear in the Respondent’s trading name and there is no evidence that the Respondent included these words in the Disputed Domain Name to target the Complainant or redirect customers of the Complainant to the Respondent’s website. The Respondent provided evidence that it registered the Disputed Domain Name because it is an abbreviation of the Respondent’s trading name, “Biodiversity Solutions Australia”.
The Complainant is unsuccessful on the third element of the Policy.
The Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”). Under the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Complainant contended that a social media post by the Port Macquarie-Hastings Council was evidence that the Respondent was passing itself off as the Complainant. The Complainant provided a copy of the cease and desist letter it sent to the Respondent in relation to this incident but failed to provide a copy of the letter it received from the Respondent in response. The Respondent’s letter indicated that the reference to the Respondent as “Biodiversity Australia” in the post was a mistake on the part of the Port Macquarie-Hastings Council.
The Complainant ought to have provided a copy of the Respondent’s letter to this Panel. However, although the Complainant was ultimately unsuccessful, some aspects of the Complaint had merit. In these circumstances, the Panel does not consider this to be an appropriate case in which to make a finding of RDNH.
For all the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: April 7, 2021