WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adjudicate Today Pty Limited v. The Institute of Arbitrators and Mediators

Case No. DAU2012-0033

1. The Parties

The Complainant is Adjudicate Today Pty Limited of Mona Vale, New South Wales, Australia represented by Moray & Agnew, Australia.

The Respondent is The Institute of Arbitrators and Mediators of Sydney, New South Wales, Australia, represented by Philip N Argy, Australia.

2. The Domain Name and Registrar

The disputed domain name <adjudicate.org.au> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2012. On December 20, 2012, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On December 21, 2012, Melbourne IT 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 January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. The Response was filed with the Center on February 5, 2013.

The Center appointed David Stone as the sole panelist in this matter on February 26, 2013. 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 was incorporated as an Australian company in 2004. It is a for-profit organisation whose primary business is to train and appoint adjudicators to make determinations in disputes under the Security of Payment legislation in six of the eight Australian states and territories (namely New South Wales, Queensland, Victoria, Tasmania, South Australia and the Australian Capital Territory).

The Respondent is a not-for-profit industry body whose roles include public and practitioner education in various areas of alternative dispute resolution. The services offered by the Respondent include arbitration, mediation and adjudication, including under the Security of Payment legislation in all eight Australian states and territories (Western Australia and the Northern Territory in addition to those listed above).

The disputed domain name <adjudicate.org.au> was registered in or around November, 2007. The disputed domain name directs to a website for “Adjudicate Australia”, which is a trading name used by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant claims common law rights in the name “Adjudicate Today” due to its becoming a distinctive identifier associated with the Complainant’s services, through use in Australia.

The Complainant submits that the distinctive portion of the Complainant’s name is “adjudicate” and that this term describes the Complainant’s business. The Complainant contends that the word “today” in the Complainant’s common law trade mark “Adjudicate Today” is merely a generic or descriptive element. Therefore, the Complainant submits that the disputed domain name is confusingly similar to its common law trade mark.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant further contends that the Respondent’s use of the disputed domain name is calculated to mislead and confuse the Complainant’s clients and potential clients with the intention of deriving advantage from user confusion.

The Complainant asserts that the disputed domain name was registered and is subsequently being used in bad faith and that it is being used to direct people to the Respondent’s services which directly compete with the Complainant’s services. Although the Respondent is a non-profit organisation, the Complainant questions whether Adjudicate Australia (as a trading name for the Respondent) is also a non-profit organisation. The Complainant asserts that the disputed domain name does not comply with the eligibility rules for the Domain Name Eligibility and Allocation Rules for the Open 2LDs.

The rules on “.org.au” domain names prevent the Complainant from registering the disputed domain name. The Complainant therefore requests that the disputed domain name be cancelled.

B. Respondent

The Respondent submits that the disputed domain name is neither identical nor confusingly similar to any name or trade mark in which the Complainant has rights. The Respondent contends that, since the Complainant is not eligible to obtain a domain name in the “.org.au” second-level domain then it cannot be argued that the disputed domain is confusingly similar to the common law trade mark which the Complainant claims.

The Respondent submits that the word “today” is generic, whereas the word “adjudicate” is common to the activity engaged in by those adjudicators designated under the Security of Payment Legislation in Australia.

The Respondent submits that it is making a noncommercial and fair use of the disputed domain name without any intent to divert consumers or to tarnish the Complainant’s business or claimed common law trade mark. The Respondent asserts that it is bona fide facilitating and arranging substantive adjudication activities across Australia and is therefore entitled to use the disputed domain name.

The Respondent submits that the business name “Adjudicate Australia” was registered in good faith in November, 2007 with the disputed domain name being registered shortly thereafter.

The Respondent also seeks a formal finding under paragraph 15(e) of the Rules that the present proceedings constitute Reverse Domain Name Hijacking. To further its case under paragraph 15(e) of the Rules, the Respondent filed correspondence between the representatives of the parties which was marked “without prejudice”. The Complainant objected to this correspondence being filed.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

(i) the domain name is identical or confusingly similar to a name, trademark 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 disputed domain name has been registered or subsequently used in bad faith.

A. Identical or Confusingly Similar

On its own case, the Complainant does not have any registered trade marks for ADJUDICATE or ADJUDICATE TODAY but instead seeks to establish that ADJUDICATE TODAY is a common law trade mark.

The Complainant does not seek to establish that it has common law rights in ADJUDICATE on its own. In any event, given the nature of the word “adjudicate”, the activities of the Complainant, and the use of the word “adjudication” in the Security of Payment legislation, there would be a heavy burden placed on the Complainant should it wish to establish rights in the word “adjudicate” in relation to adjudication services. For the avoidance of doubt, the Panel therefore finds that the Complainant has not established any common law rights in “adjudicate” on its own.

Note 1 to paragraph 4(a)(i) of the Policy indicates that the auDA Board has determined that a name in which the Complainant has rights refers to:

“a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

b) the complainant’s personal name.”

The Policy therefore contemplates a potentially wider range of rights providing the foundation for a complaint than under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).

The Complainant is entitled under the Policy simply to rely on its name without having to show any trade mark rights, registered or common law. The Panel therefore finds (and the Respondent in any event concedes) that the Complainant has rights in ADJUDICATE TODAY.

That, on its own, is insufficient to establish paragraph 4(a)(i) of the Policy: the Complaint must also demonstrate that the disputed domain name is identical or confusingly similar to its name. In this regard, the Complainant contends that the word “today” in “Adjudicate Today” is merely a generic or descriptive element and should be ignored. The Panel finds, including for the reasons set out above, that the word “today” is instead an integral part of the Complainant’s name, as “adjudicate” alone merely describes the field of adjudication, which is common to many operators in the alternative dispute resolution field.

The Panel therefore finds that the disputed domain name is not identical to the Complainant’s name. Nor is it confusingly similar. Whilst there are obvious aural, visual and conceptual similarities between “Adjudicate Today” and “Adjudicate”, as set out above, the “adjudicate” element is descriptive of the services of both the Complainant and the Respondent, as well as other traders offering adjudication services. A consumer of adjudication services is therefore not likely to be confused into believing that there is any connection in the course of trade between the disputed domain name and the Complainant. Moreover, applying a passing off analysis, even if there were the requisite goodwill, there is no misrepresentation and no damage to the Complainant.

The Panel therefore finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The Complainant asserts that the Respondent’s primary business is in mediation and arbitration, not adjudication and points to the fact that the word “adjudicate” is mentioned only once in the synopsis of the Respondent’s business. However, as can clearly be seen in the printout of the Respondent’s website supplied by the Complainant (Annex 14 to the Complaint), the Respondent devotes an entire section of the “What We Do” part of its website to adjudication. On the Complainant’s own case, the Respondent is engaged in adjudication activities, as it cites the 40 adjudication applications that the Respondent received in New South Wales for the financial year ending June 2012 (paragraph 12, part A(f)(i) of the Complaint). In the case of Safmarine v Network Management, WIPO Case No. D2000–0764, the mere active pursuance of a business plan legitimately to use the disputed domain name in the future was held to demonstrate legitimate interest; here the Respondent is actually operating the disputed domain name for a legitimate purpose.

Furthermore, the Respondent is a not-for-profit industry body. Paragraph 4(c)(iii) of the Policy allows for legitimate noncommercial use of the domain name. The Complainant accepts that the Respondent is a non-profit organisation but speculates that Adjudicate Australia may not be. However, the Complainant does not provide any evidence to support this assertion. Given that the Respondent is a noncommercial organisation, offering adjudication services in Australia, the Panel is satisfied that there is a legitimate noncommercial use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name; it has failed to do so. Accordingly, the Panel finds that the Complainant has failed to demonstrate Paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.

Four non-exhaustive circumstances are identified where the respondent’s intention in registering a domain name may be evidence of bad faith. These intentions may be summarized as follows:

(i) to sell the domain name to the rights-holder at a profit;

(ii) to prevent the rights holder from registering a domain name;

(iii) to disrupt the business of a competitor; and

(iv) to divert Internet traffic for commercial gain.

Unlike for the UDRP, this requirement under the auDRP is disjunctive. It is necessary for the Complainant to show only registration in bad faith or use in bad faith.

As stated in Billerbeck Schweiz AG v. Peter Billerbeck, WIPO Case No. D2001-0825, once the Panel has “held that the Respondent demonstrated his legitimate rights and interests in the Domain Name, the issue of bad faith needs not necessarily be addressed.” Nevertheless, limbs (i) and (ii) of paragraph 4(b) of the Policy can be immediately rejected as the Respondent cannot be aiming to prevent the rights holder from registering a domain name because the “.org.au” domain names are not available to for-profit organisations such as the Complainant. By extension, there would be no value in attempting to sell the disputed domain name to the Complainant.

The Respondent registered the business name Adjudicate Australia in November 2007 and the disputed domain name shortly after. The Complainant does not establish that this registration was made in bad faith and it is clear that part of the Respondent’s services offered at the time were adjudication activities.

As found in section B above, the Panel is of the opinion that the Respondent has a bona fide operation involving, alongside other activities, adjudication services across Australia. The Panel finds that the Respondent’s purpose in operating the disputed domain name is to promote its organisation rather than to divert traffic or to disrupt the business of the Complainant. The Panel finds no evidence of bad faith use of the disputed domain name. The requirements of paragraph 4(b) of the Policy are therefore not made out.

D. Reverse Domain Name Hijacking

Under paragraph 1 of the Rules, Reverse Domain Name Hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The Respondent seeks a formal finding under paragraph 15(e) of the Rules that the present proceedings constitute Reverse Domain Name Hijacking.

Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297 states that a finding of Reverse Domain Name Hijacking may be made if the Complainant “knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered or used in bad faith”. Given that the Complainant would have been aware that the Respondent had a more than negligible adjudication business in Australia at the time the Complaint was filed, the Panel is of the opinion that the Complainant knew or should have known that it could not prove that the disputed domain name was registered in bad faith. Therefore, the Panel finds that this is an instance of Reverse Domain Name Hijacking.

7. Without Prejudice Correspondence

Correspondence between the parties which was marked “without prejudice” was filed with the Response. The Complainant objected to this filing and requested that the “without prejudice” correspondence be omitted. This Panel’s Decision was therefore prepared without access to the “without prejudice” material, and the decision set out below under heading 8 was reached.

It is the Panel’s view that, generally, without prejudice correspondence should not be admitted into this type of proceedings.

In this case, both parties are incorporated in New South Wales, Australia, and have utilised the services of legal representatives based in New South Wales. The Panel is therefore entitled to be guided by New South Wales law on without prejudice communications.

In order to determine whether or not the correspondence marked “without prejudice” is indeed of that character, it has been necessary for the Panel to review it. As noted above, this was not done until after the decision set out below under heading 8 was reached.

Under section 131(1) of the Evidence Act 1995 (NSW & Cth), evidence is not to be adduced of:

(a) a communication that is made between persons in dispute, or between one or more persons in dispute and a third party, in connection with an attempt to negotiate a settlement of the dispute, or

(b) a document (whether delivered or not) that has been prepared in connection with an attempt to negotiate a settlement of a dispute.

There is an established body of case law which states that the mere use of the words “without prejudice” does not offer the protection of privilege; it is the intention of the parties which is crucial and these are to be ascertained from the nature of their communications (Davies v Nyland (1975) 10 SASR 76). In CJ Redman Constructions Pty Ltd v Tarnap Pty Ltd [2006] NSWSC 173, it was held that there must be a sufficient nexus between the correspondence and a genuine attempt to negotiate a settlement of a dispute.

Having reviewed Annex 2 to the Response, the Panel is satisfied that the communication represented a genuine attempt to settle the dispute between the parties. Accordingly, as genuine without prejudice correspondence, the Panel finds that Annex 2 to the Response should not be admitted. Nevertheless, the Panel is satisfied that, even if the without prejudice communication had been considered, it would not have affected the decision reached below.

8. Decision

For all the foregoing reasons, the Complaint is denied and the Panel makes a finding of Reverse Domain Name Hijacking.

David StoneSole Panelist
Date: March 13, 2013