The Complainant is The Commonwealth of Australia of Melbourne, Victoria, Australia, internally represented.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Quang Truong of Da Nang City, Viet Nam.
The disputed domain name, <theaustralianarmy.com> (the “Domain Name”), is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2017. On October 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 28, 2017. 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 invitation to the Complainant to amend the Complaint stemmed from the fact that the second above named Respondent registered the Domain Name in the name of a privacy service, the first above named Respondent. For the purposes of this decision the Panel treats them as one. Henceforth the term “Respondent” is used to refer to them both.
The Department of Defence of the Commonwealth of Australia includes the Australian Defence Force, which in turn includes inter alia the Australian Army. The unchallenged evidence of the Complainant is that “The Australian Army” is the name by which the Australian Army has been known since 1901.
The Complainant is the registered proprietor of the following Rising Sun Device trade marks:
Australian Trade Mark Registration No. 1246791 dated June 16, 2008 and entered on the register on January 27, 2009 in a wide variety of classes for goods and services ranging from swords to umbrellas and clothing to medical services.
United States Trade Mark Registration Serial No. 79144679 dated December 13, 2013 in classes 14 and 26 for inter alia jewellery, military badges, buttons and brooches.
The United States registration describes the Rising Sun device in the following terms: “The mark consists of an unfurling scroll with the word “AUSTRALIAN” written in the bottom portion of the scroll, the word “THE” written on the upper left-hand side of the scroll, and the word “ARMY” written on the upper right-hand side of the scroll, above which is a Queen’s Crown that is encircled by a semicircle that depicts the rising sun, extending from all sides of the semicircle are sunrays of varying lengths.”
The only textual element of the device is the name “The Australian Army”. The United States registration contains a disclaimer of the words “AUSTRALIAN ARMY” apart from the mark as shown. The annex depicting details of the Australian registration does not indicate any such disclaimer.
The Complainant operates an online “Army Shop”. The Rising Sun Device appears prominently alongside the name “ArmyShop”. The device also appears prominently at the head of the Australian Army notepaper alongside the name “AUSTRALIAN ARMY”.
The Domain Name was registered on January 3, 2017. In April 2017 it was connected to a website featuring the Rising Sun device alongside the word “Army” and a copyright notice reading “© 2017 Copyright The Australian Army. All Rights Reserved.” The website also featured an “Army Shop” retailing Army Watches, “Lest We Forget” banners and poppy brooches. The website appears to be an official website of the Australian Army.
On June 14, 2017 the Complainant wrote to the Respondent drawing the Respondent’s attention inter alia to its trade mark rights and seeking inter alia transfer of the Domain Name. Not having received a reply the Complainant sent a ‘chaser’ on September 1, 2017. Again, the Respondent failed to reply. A further ‘chaser’ was sent by email on September 8, 2017, but, again, no response.
In August 2017 and September 2017 the Complainant entered into correspondence with the company hosting the Respondent’s website as a result of which the website was closed down. The home page now contains a notice reading “Sorry, this shop is currently unavailable.”
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
While the Complainant claims registered trade mark rights in its Rising Sun device, there is a disclaimer in respect of “Australian Army” on the United States record for the United States registration albeit that in Australia, the Panel notes from the evidence of the Complainant that under Australian defence legislation it is a criminal offence in Australia for any unauthorized entity to use the name “Australian Army” and/or possess any badges or emblems associated with the Australian Army. Thus it would appear that in Australia the Complainant’s rights in the name are exclusive.
Nonetheless, the Panel prefers to deal with the case on the basis that the Complainant’s continuous use of the name “The Australian Army” since 1901 is sufficient to have given the Complainant unregistered trade mark rights in respect of the name for purposes of the Policy.
Plainly, the Domain Name is identical or confusingly similar to the Complainant’s THE AUSTRALIAN ARMY trade mark and the Panel so finds.
The Complainant’s evidence supported by screenshots of the Respondent’s website and communications from members of the public who were understandably misled into thinking that the Respondent’s website was an official website of the Complainant satisfies the Panel that the Respondent registered the Domain Name for the purpose for which the Respondent originally used it, namely to impersonate the Complainant and to derive revenue from sales of merchandise through the Respondent’s website. The Panel notes that the Respondent has not sought to counter the Complainant’s allegations.
On no basis could this use of the Domain Name give rise to any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
By the same reasoning previously indicated in section 6(C) of this decision, the Panel finds that the Respondent registered the Domain Name and has been using it in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <theaustralianarmy.com>, be transferred to the Complainant.
Date: December 4, 2017
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