truelocal.com.au

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited

Case No. DAU2006-0003

1. The Parties

The Complainants are TrueLocal Inc. of Guelph, Ontario, Canada; Geosign Technologies Inc. of Warrens, St. Michaels, Barbados; and True Local Limited of Hull, East Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Clayton Utz Solicitors, Australia.

The Respondent is News Interactive Pty Limited, Surry Hills, New South Wales, Australia, represented by Allens Arthur Robinson, Australia.

2. The Domain Name and Registrar

The disputed domain name <truelocal.com.au> is registered with TPP Internet.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 7, 2006, the Center transmitted by email to TPP Internet a request for registrar verification in connection with the domain name at issue. On April 12, 2006, TPP Internet 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 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 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2006. The Response was filed with the Center on May 9, 2006.

The Center appointed James A. Barker as the sole panelist in this matter on May 16, 2006. 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.

Supplementary Submission

On May 23, 2006, the Center received a supplementary submission from the Complainant, and on that same day an email from the Respondent requesting that it be allowed to file a supplementary submission if the Complainant’s were allowed.

Panels have held that additional submissions are inappropriate, except in rare circumstances such as where evidence is not available at the time of the party’s original submission. (See, in relation to the Policy, The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001.) There was nothing in the Complainant’s email (enclosing its supplementary submission) that indicated that any such circumstances exist. As such, the Panel did not consider the supplementary submission.

Consolidation

Paragraph 4(f) of the Policy provides that, in the event of multiple disputes between a complainant and respondent, either party may make a petition to the Administrative Panel to consolidate the disputes before a single Administrative Panel. Paragraph 10(e) of the Rules provides that a Panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and Rules.

This case was filed with the Center simultaneously with another complaint (TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0004). That complaint involves the same Complainant, closely related respondents, the same Policy, substantially similar domain names, and virtually identical arguments. However, no petition has been made by either party to consolidate those disputes. Paragraph 4(f) of the Policy and 10(e) of the Rules does not appear to allow the consolidation of disputes without such a petition. So this decision is made separately.

4. Factual Background

The following facts are not contested.

The Complaint is jointly made by 3 complainants, each of which are legally separate entities. The Complainants are respectively incorporated in Canada (TrueLocal Inc.), Barbados (Geosign Technologies), and England (True Local Limited).

Geosign Technologies is the registered owner of the domain name <truelocal.com>, which TrueLocal Inc. is exclusively entitled to use. Truelocal Limited is the owner of the Benelux registered trademark TRUELOCAL. The TrueLocal business was conceived by Geosign Technologies in 2001 and run as a division of Geosign until December 31, 2005, when TrueLocal Inc. was incorporated.

TrueLocal Inc. operates a search engine facility and online directory service from its website, available at the domain name <truelocal.com> which the Complainant registered on January 5, 2002. The Complainant states that “commercial use” of its website at that address began in April 2004.

The Respondent is a member of the News Corporation group of companies. The Respondent registered the domain name <truelocal.com.au> on June 26, 2005, and launched a website at that address on January 30, 2006. The website provides search and directory services.

The Respondent has lodged trade mark applications for Australian registered trademarks that include TRUELOCAL but has, at the date of the Response, no registered rights in those marks.

The Complainant first became aware of the Respondent’s intention to launch a website at the disputed domain name following an email from the Respondent of January 10, 2006, advising it of that intention.

In this case, the Complaint has been made by three complainants - each of which are legally separate, but apparently related, entities. For convenience, references to “the Complainant” in this decision are references to all of those entities which have joined in making the Complaint.

On the date prior to this decision the Complainant’s website advises users that “TrueLocal Australia is launching soon!”, provides some bare information about “TrueLocal”, and a search service. (The Panel visited that site on May 28, 2006, because no evidence of the content of the Complainant’s website was provided in either the Complainant or Response.)

5. Parties’ Contentions

A. The Complainant

The following is summarised from the Complaint.

The Respondent has gone out of its way to not only replicate the successful business model of the Complainant but has intentionally misappropriated the Complainant’s brand and knowingly registered a domain name in bad faith that is identical or confusingly similar to both the Complainant’s trademark and domain name.

The Complainant has registered and common law trademark rights in TRUELOCAL, and has always been known as “TrueLocal”, to which the disputed domain name is identical. The Complainant has established significant reputation and goodwill in the trademark TRUELOCAL both globally and in Australia.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent knew of the Complainant’s website and had visited it at least as early as January 2005. Users with IP addresses owned by the Respondent visited the Complainant’s website numerous times from January 2005, before the registration of the disputed domain name by the Respondent. As such, and as a result of the Complainant’s marketing activities, the Respondent was aware of the Complainant’s website and domain name at <truelocal.com>.

The factual circumstances of this case indicate that the Respondent registered, and is using, the disputed domain name in bad faith. The Respondent’s visits to the Complainant’s website in August 2005, indicate that the Respondent was researching the Complainant’s website to copy it. As such, the Respondent knew or ought to have known of the Complainant’s rights. The Respondent’s registration of the disputed domain name will create confusion among Internet users.

B. The Respondent

The Respondent denies each of the contentions of the Complainant. In that connection, the following is summarised from the Response.

The Complainant does not have the requisite level of rights for the purpose of paragraph 4(a)(i) of the Policy, noting that the Complainant, TrueLocal Inc., was only incorporated on December 31, 2005, 6 months after the Respondent registered the disputed domain name. The Complainant has not developed a global reputation in the trademark TRUELOCAL and does not have common law trademark rights in Australia.

The Respondent has legitimate interests and rights in the disputed domain name. The Respondent has, for the purpose of paragraph 4(a)(ii) of the Policy, made bona fide and extensive preparation to use the disputed domain name in connection with the offering of goods or services, prior to receiving notice of this dispute. The Complainant’s rights in the USA (which are not in any case conceded by the Respondent) do not in any way impact on the Respondent’s legitimate rights and interests in the disputed domain name. The Respondent also denies that it copied the Complainant’s website by registering the disputed domain name, and points to its research and activities leading up to its decision to register the disputed domain name.

The Respondent further denies that the website visitation data submitted by the Complainant demonstrates that the Respondent deliberately copied its site. The Respondent states that the visits were “insubstantial” and most not made by employees of the Respondent itself, but rather employees in corporate entities related to the Respondent, including News Limited. Except for one visit on March 20, 2005, all other visits made by employees of the Respondent were made on or after August 22, 2005, when the Respondent was first made aware of the Complainant’s existence.

The Respondent submits that it did not register, and has not used, the disputed domain name in bad faith. The Respondent did not know and could not reasonably have been expected to know of the Complainant prior to registering the disputed domain name.

The Respondent submits that the Complaint was filed in bad faith and requests a finding of reverse domain name hijacking.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

- the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

- the Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and

- the domain name was registered or subsequently used in bad faith (paragraph 4(a)(iii)).

It follows that, if the Complainant does not demonstrate any one of these three elements, the Complaint will fail.

These three elements are addressed below. In doing so, the Panel notes that, with some substantive differences, the Policy is in similar terms to the Uniform Domain Name Dispute Resolution Policy (UDRP) on which it is based. As such, past proceedings which applied the Policy have referred to relevant decisions and authority under the UDRP. The Panel has similarly applied relevant past decisions under the UDRP to this case.

A. Identical or Confusingly Similar

The Complainant

The Complaint has been made by three complainants. Each of them are legally separate entities. On its face, the terms of the Policy appear to contemplate only a single complainant (e.g. paragraph 4(a)(i) relates to a name or mark in which “the complainant” has rights). Despite this, there is nothing explicit in the Policy prohibiting multiple complainants joining in making a complaint. Previous decisions under the Policy have clearly allowed multiple complainants (See e.g. Jupitermedia Corporation and Australia.Internet.com Pty Ltd v. Spotpress Pty Ltd. trading as Internet Printing, WIPO Case No. DAU2003-0005). This is so even though it is apparent that there may only be one respondent, which is the holder of the domain name registration (see definition of “Respondent” in the Rules).

Accordingly, in relation to paragraph 4(a)(i), the relevant “rights” of the Complainant are the cumulative rights of all the parties that might choose to join in a single complaint. For this reason, references to the Complainant are, unless indicated otherwise, references to all the parties that have filed this Complaint.

Rights in a name, trademark or service mark

For the purpose of paragraph 4(a)(i) of the Policy, the Complainant bases its rights on:

- its company and business name (TrueLocal Inc.);

- its applications for registered trademarks for TRUELOCAL in Australia, Canada, New Zealand, the USA, and the EU;

- common law trademark rights in TRUELOCAL; and

- its licence to use Benelux trademark registrations for TRUELOCAL and TRUELOCAL.COM.

The Panel finds that the first two of these bases are not sufficient for the Complainant to establish its rights. In relation to its company and business name, the note to paragraph 4(a)(i) of the Policy relevantly makes it clear that auDA has determined that a “name” in which the Complainant has rights refers to “the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority” (emphasis added). The Complainant provided no evidence that its company or business name was registered in Australia.

In relation to its trademark applications, the Complainant refers for support to GE Capital Finance Australasia Pty v. Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-0007 - a case also decided under the Policy. In that case, that Panel found that a trademark application was sufficient to establish “rights” for the purpose of paragraph 4(a)(i).

The Panel in the GE Capital Finance decision made its finding on the basis that auDA’s Domain Name Eligibility and Allocation Rules for the Open 2LDs allows that an application for a trademark is sufficient to support the grant of a domain name licence. However the basis on which a domain name is granted to a respondent is not the same as the basis on which a complainant may assert its rights under the Policy. Paragraph 4(a)(i) of the Policy is not stated to have any relationship with auDA’s eligibility rules.

Further, there is nothing in the terms of the Policy indicating that a mere trademark application may support a complainant’s rights under paragraph 4(a)(i). It is notable that the Policy is stated to be based on the UDRP, with some substantive differences, many of which are noted in the Policy. However there are no notes suggesting that a mere application for a trademark registration, on its own, is enough to meet the first element of the Policy. Such an approach would also be contrary to the great majority of decisions under the UDRP. For all these reasons, the Panel finds that a mere application for a registered trademark is not sufficient to establish rights under paragraph 4(a)(i) of the Policy.

The third basis for the rights asserted by the Complainant - its common law rights in TRUELOCAL - are problematic. Although there was no directly relevant argument in the Response or the Complaint, it is difficult to see how such obviously generic words, in the relatively short time they were used before the registration of the disputed domain name, acquired secondary meaning and distinctiveness as a common law mark. It is even more difficult for the Complainant to demonstrate that such a mark has acquired distinctiveness as a common law mark in Australia. The Complainant’s evidence of its reputation and visits to its website from IP addresses in Australia does not clearly demonstrate the distinctiveness of the mark itself. Merely trading under a name does not make that name distinctive. The Complainant makes no explicit argument that TRUELOCAL has acquired distinctiveness as a mark. For all of these reasons, there is insufficient evidence that those combined words give the Complainant common law trademark rights in them.

The fourth basis for the rights asserted by the Complainant are its rights as a licensee (in the case of TrueLocal Inc.) and owner (in the case of True Local Limited) of the Benelux trademark registrations for TRUELOCAL and TRUELOCAL.COM. These registrations give it sufficient rights for the purpose of paragraph 4(a)(i). The marks were registered on April 5, 2006. The fact that a trademark registration in the Benelux does not follow an examination does not matter. It is well-established that a trademark registration will usually give a complainant sufficient rights in a mark. (See item 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, and the cases relevantly cited in that overview.) Accordingly, on this ground, the Panel finds that the Complainant has rights in the mark TRUELOCAL.

Identical or confusingly similar

The disputed domain name is only different to the Complainant’s mark by the addition of the “.com.au” extension. It is well-accepted that the “.com.au” extension is not relevant to determine identicality or similarity. Accordingly, the Panel finds that the disputed domain name is identical to the mark in which the Complainant has rights. Being identical, the likelihood of confusion is obvious.

B. Rights or Legitimate Interests

General

Paragraph 4(c) of the Policy sets out a number of circumstances which, if found by the Panel to be proved, demonstrate a respondent’s rights or legitimate interests. This is not a matter of weighing up whether the Respondent has “better” (however defined) rights than the Complainant. For the Respondent to succeed under paragraph 4(c), it need only demonstrate that it has some rights or legitimate interests.

Notice of the dispute

One of the circumstances in paragraph 4(c)(i) is: “before any notice to you [the Respondent] of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name… in connection with an offering of goods or services.”

The Respondent first received a notice of demand by email on January 20, 2006. It is clear that notice of a dispute is provided by such a communication. (See, Final Report of the auDA Dispute Resolution Working Group, June 2001, Note 12: “a letter of demand or similar communication from the complainant is sufficient to constitute notice to the respondent of the subject matter of the dispute.” See also, for example, T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044.) Accordingly, the Respondent may demonstrate rights or legitimate interests by demonstrating a bona fide use of, or demonstrable preparations to relevantly use, the disputed domain name before January 20, 2006.

Bona fide use

There is no real dispute that the Respondent had at least made demonstrable preparations to use the disputed domain name before notice of the dispute on January 20, 2006. The Respondent provided substantial evidence of its preparations to use the domain name, including its market research which it says led it to choose the disputed domain name. The Complainant itself does not argue that the Respondent made no preparations to use the disputed domain name.

Rather, the dispute concerns whether the Respondent’s preparations and use of the disputed domain name were bona fide. The Complainant argues that the Respondent’s use of the disputed domain name was not bona fide, because the Respondent was aware of the Complainant’s business and deliberately copied its business model. On the other hand, the Respondent denies that it had any knowledge of the Complainant’s business when it began making preparations to use the disputed domain name. It claims that those preparations were in connection with a genuine and extensive investment in a website offering search and directory services.

The evidence of the Respondent’s knowledge of the Complainant’s business is equivocal. It seems at least coincidental that the Respondent registered an identical domain name for very similar services to those offered by the Respondent, and that it did not investigate the availability of identical domain names in what is obviously one of the most popular domain spaces, “.com”. But then the Complainant’s rights are not strong, given the generic nature of its business name, and the lack of strong evidence of its trademark rights other than its registered rights in the Benelux. It does not have registered rights in Australia, nor even in the USA or Canada where its business appears to be principally directed.

However, even if the Respondent was aware of the website and business of the Complainant, that by itself does not demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. In this case, it is important that the disputed domain name is comprised of generic words. Prior panel decisions have found that, if a respondent is using a generic word to describe its product/business or to profit from the generic value of the word without intending to take advantage of the complainant’s rightsin that word, then it has a legitimate interest. (See item 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the cases cited there.) In other words, it is not a general knowledge of the Complainant’s business that is important. It is knowledge of “the complainant’s rights in that word” (emphasis added).

As the Panel found above, the Complainant’s rights in the words “TrueLocal” can only clearly be based on Benelux registrations for the mark TRUELOCAL and TRUELOCAL.COM. Those marks were registered on April 5, 2006, one week before submission of the Complaint.

The Respondent was obviously not aware of those marks as such when the domain name was registered, nor before it received notice of this dispute on January 20, 2006. The disputed domain name was registered on June 26, 2005, well before registration of the Benelux marks. The Respondent’s rights are otherwise weak. There is little evidence that its mark has acquired distinctiveness in a trademark sense. As a general principle, the less distinctive the mark, the more likely is the Respondent’s legitimate interest.

For these reasons, together with the evidence of the Respondent’s substantial preparations to use the disputed domain name, and the generic nature of the disputed domain name, the Panel finds that the Respondent has rights and legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

Because of the Panel’s finding above, it is not necessary for the Panel to consider whether the disputed domain name was registered or used in bad faith.

D. Reverse Domain Name Hijacking

The Respondent seeks a finding of reverse domain name hijacking against the Respondent and that the Panel order the Complainant to pay the Respondent’s costs, which the Panel has no power to order.

The Panel makes no finding of reverse domain name hijacking. Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith” against a complainant. It is not clear that the Complainant has acted in bad faith. The Complainant takes pains to make an arguable case, and the facts do not support a finding that the Complainant brought the case despite knowing it was unsound.

E. National Court Proceedings

The Panel would like to point out that this finding does not in any way affect the outcome of any trademark application or dispute between the parties under the relevant national law.

7. Decision

For all the foregoing reasons, the Complaint is denied.

James A. Barker
Sole Panelist

Date: May 29, 2006