mgm.com.au

MGM Home Entertainment, Metro-Goldwyn-Mayer Lion Corporation, Metro-Goldwyn-Mayer Studios Inc. v. McIlroy Group Management Pty Ltd.

Case No. DAU2003-0006

The Complainant is MGM Home Entertainment, of Sydney, New South Wales, Australia, Metro-Goldwyn-Mayer Lion Corporation and Metro-Goldwyn-Mayer Studios Inc., both of Los Angeles, California, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

The Respondent is McIlroy Group Management Pty Ltd., of Somerville, Victoria, Australia.

The disputed domain name <mgm.com.au> (hereafter "the domain name") is registered with Melbourne IT, trading as "Internet Name Worldwide" (hereafter "Melbourne IT").

The domain name was registered on April 4, 2001.

The Complaint was filed with the WIPO Arbitration and Mediation Center (hereafter the "Center") on November 14, 2003. On November 17, 2003, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On November 19, 2003, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact 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 November 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2003.

The Center appointed Dan Hunter as the sole panelist in this matter on December 19, 2003. 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 language of the proceedings is English.

No details are given in the Complaint about the Complainants.

The second-named Complainant is the registered proprietor in Australia of four trade marks for the word-mark "MGM" in classes 9, 41 and 42. The other Complainants appear to be related to the registered proprietor of the trade marks, though the Complaint is silent as to the relationship.

No Response was filed.

At the time of the Complaint the domain name did not resolve to any active web page.

The Complainants assert that the Respondent’s domain name is identical to the Complainant’s mark.

The Complainants assert that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainants assert:

(1) The trademark MGM is world famous and is universally held to represent the products and services uniquely provided by the Complainant.

The Company MGM (Metro-Goldwyn-Mayer) has been producing and distributing films to a worldwide audience including Australia since as early as 1924, claiming the first Academy Award awarded to a musical with "The Broadway Melody" in 1929.

(2) MGM is extraordinarily well known in Australia. Any person who typed the url "www.mgm.com.au" into a internet browser would expect to be presented with information regarding MGM films, TV programs, interactive games, DVDs and other MGM products and services from MGM. Currently, this is not the case.

(3) The domain <mgm.com.au> was registered April 4, 2001. This domain name was registered without the authorization of MGM, the true owner of the MGM trademark. MGM feels that the domain has been registered since April 4, 2001, with no web site associated to the domain. This action seems to be an indication of the registrant’s intent to block MGM from registering this domain name. MGM believes that the use of this domain name by Respondent will cause confusion in the marketplace as to the true source of the goods and services offered by Respondent and create a situation where the public will believe that there is some connection between MGM and Respondent, when such is not the case.

The Complainants assert that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainants assert:

(1) Respondent has stated that it would be willing to sell the domain name <mgm.com.au> to MGM for $100,000. Respondent has also stated that it has at least one other party interested in purchasing the domain <mgm.com.au>. These actions quite clearly show that Respondent has registered the domain for the purpose of selling it back to the legitimate trademark owner or another interested party for a sum substantially greater than the documented out-of-pocket expenses related to the registration and maintenance of this domain name.

(2) It is MGM’s belief that when the Respondent registered the domain <mgm.com.au> it knew MGM was a registered trade-mark of the complainant and did not abide by the terms and conditions set out by auDA which clearly states the Licensee (here, the Respondent) warrants that neither the registration of the Domain Name nor the manner in which the Domain Name is directly or indirectly used infringes the legal rights of a third party trade mark. Respondent clearly violated this provision of the terms and conditions of the domain name registration agreement.

Accordingly, the Complainants submit that the Panel should order that the domain name be transferred to the first-named Complainant.

The Respondent did not reply to the Complainant’s contentions.

The Dispute Resolution Policy for the <.au> namespace adopted by the auDA Board on August 13, 2001, on the recommendation of auDA's Dispute Resolution Working Group, applies to domain name registrations made in the <.com.au> namespace. Domain names within the <.com.au> namespace are subject to mandatory administrative review, and an affected complainant may seek transfer of a name registered in this namespace. For the transfer to take place, paragraph 4(a) of the Policy requires the Complainant to make out three elements:

1. The Complainant has rights in a name, trademark or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and

3. The Respondent registered or is subsequently using the domain name in bad faith (Paragraph 4(a)(iii)).

There are two elements that a Complainant must establish under this paragraph; that it has rights in a name, a trade mark or a service mark, and that the domain name is identical or confusingly similar to the name or mark.

The Complainants have provided the registration documents for its various "MGM" marks registered in Australia, in multiple classes and in respect of multiple products and services. These are all registered in the name of the second-named Complainant. I conclude that the second-named Complainant, as registered proprietor of those marks, has established rights in a trade mark, sufficient for the purposes of paragraph 4.a.(i).

The second element is that the domain name be identical or confusingly similar to the mark. The domain name is the second-named Complainant’s word mark, together with the <.com.au> second level domain signifier. By now it is well established in both the generic namespaces and in the <.au> namespaces that the top (or second) level signifier does not change the meaning of the name, see e.g. National Office of Information Economy v. Verisign Australia Limited, LEADER Case No. 02/2003; Advanced Book Exchange Inc. v. Argyle Emporium, WIPO Case No. DAU2003-0004. Hence I conclude that the domain name is, for the purposes of the Policy, identical to the Complainant’s marks.

The second-named Complainant has shown that it has rights in a trade mark, and that the domain name is identical to this mark. I conclude therefore that the second-named Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

The Complainants assert that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. Their assertions are, in essence, that Metro-Goldwyn Mayer is very well-known and therefore any registration of the <mgm.com.au> domain name must be seeking to block the registration of the Complainants. This pleading, in fact, goes to one of the exemplar cases of bad faith under Paragraph 4(b)(ii) of the Policy, and hence is largely unhelpful to the Complainants’ case on this issue of whether the Respondent has rights or legitimate interests in the domain name.

The Respondent has not filed a Response, which is regrettable. However, the Complaint provides significant evidence of the Respondent’s legitimate interest in the name. The Respondent is identified as "McIlroy Group Management Pty Ltd" and the Complaint discloses searches of telephone and other databases which establish the existence of this corporation. The contraction of a company’s or personal name to the initials of that person is a clear example of a prima facie legitimate interest in a domain name, see e.g. Japan Airlines Company Limited v. TransHost Associates, JAL Systems and John A Lettelleir, WIPO Case No. D2000-0573. On the basis of this, it would appear that the Respondent does have a legitimate interest in the domain name.

Of course this is not necessarily the end of the investigation. A Complainant might be able to establish reasons that rebut this prima facie evidence of legitimate interest. It might show, for example, that the corporation was only registered in order fraudulently to establish a legitimate interest; or some other equally compelling reason. In the case of PA Consulting Services Pty Ltd v. Joseph Barrington-Lew (WIPO Case No. DAU2003-0002) the panel quite rightly concluded that a business name registration for "Park Avenue Consulting" that was clear fiction did not confer a legitimate interest on the Respondent.

This case has aspects which might have been used by the Complainants to rebut the presumption of legitimate interest. It is relevant that the Respondent has failed to use the domain name, even for email usage (the email address given as a contact address is a hotmail account). Moreover, the Respondent has requested AUD100,000 to transfer the domain name to the Complainants. While this latter fact typically goes the bad faith requirement in Paragraph 4(a)(iii), it is possible that it might be used to rebut the presumption of the legitimate interest of the Respondent, though of course the salience of this evidence will depend on the facts of each case.

However it is for Complainants to make out a case on these points, and the Complaint utterly fails to make any substantive argument that the Respondent has no legitimate interest. It fails to address the clear evidence that the Respondent has a valid registration for a corporation. Having failed to make any pleadings on this point, I therefore consider that the Complainants have failed to rebut the presumption of legitimacy that the corporate registration confers.

I therefore conclude that the Respondent has a legitimate interest in the domain name. I conclude that the Complainant has not satisfied the requirements of paragraph 4(a)(ii) of the Policy.

The final issue is that of bad faith registration or bad faith ongoing use by the Respondent. I would have likely concluded that there is evidence that the Respondent has engaged in bad faith subsequent use, by virtue of the nature of the negotiations for the domain name. However, since the requirements of Paragraph 4.a. are conjunctive and the Complainants have failed on Paragraph 4(a)(ii), it is unnecessary for me to make any decision on the Paragraph 4(a)(iii) requirement.

Since the Complainants have failed to make out all of the conjunctive requirements of Paragraph 4(a) of the Policy, the Complaint is denied.