WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Made Campaign Ltd v. Brett Watson, Australian Logo Pty Ltd
Case No. DAU2017-0016
1. The Parties
The Complainant is Australian Made Campaign Ltd of South Melbourne, Victoria, Australia, represented by Wrays, Australia.
The Respondent is Brett Watson, Australian Logo Pty Ltd of Lismore Heights, New South Wales, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <australianmadelogo.com.au> is registered with Enetica (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 June 26, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2017. The Response was filed with the Center on July 16, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 26, 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.
4. Factual Background
The Complainant was incorporated on March 10, 1999. Since about that date it has operated what is referred to in the Complaint as the Australian Made Logo certification program.
The logo in question is the subject of Australian Registered Trade Mark No. 451318, which has been registered in respect of all goods and services in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34. The logo as registered is:
In use, the logo often (at least) has had the words “Australian Made” immediately underneath. Over time, other phrases have also been used in place of that phrase; for example, “Australian Grown”. When used in the form just with the words Australian Made, the logo is referred to as the Australian Made Logo, which the Panel will refer to as the “composite logo”.
The trade mark was developed by the Australian government in 1986. From then until about July 1996, the Australian Made Logo certification program was administered by the Advance Australia Foundation, which licensed the logo out to a range of users in connection with both domestic and export trade. Between July 1996 and 1999, the program was largely dormant, although apparently former licensees were permitted to continue using the logo.
Following its incorporation, the Complainant was authorised to administer a certification program based around the Australian Made Logo.
In 2002, the registration of Australian Registered Trade Mark No. 451318 was assigned to the Complainant.
In 2007, the certification scheme was revamped and the program became what the Complainant refers to as the Australian Made, Australian Grown Logo:
Apparently, the two logos are not necessarily used together. The current Code of Practice refers to six different forms of usage of the logo, of which the composite logo is one.
Under the certification Code of Practice, the composite logo may be used by licensees only in relation to products which have been manufactured in Australia or where more than 50 percent of the cost of making the product can be attributed to Australian materials or production processes.
Currently, there are over 2,600 licensees of the composite logo, using it in relation to some 15,000 products. According to the Complaint, many of Australia’s largest companies are licensees of this form of the logo.
The Complainant says that the composite logo has been displayed prominently on its website at “www.australianmade.com.au” since 1999. Screenshots of the website via the Internet Archive showing the composite logo prominently are included in Annex 13 to the Complaint for a number of years in this period. The website had approximately 12,000 unique visits in August 2011 and 80,750 in April 2017.
In 2008, market survey research showed that the composite logo was recognised by 94 percent of Australian consumers. The level of recognition had risen to 99.6 percent in 2016. The Complainant’s Australian Made Campaign Facebook page, which features the composite logo prominently, has been “liked” by 276,822 people and has 269,351 followers.
The disputed domain name was first registered on September, 16 2009. It appears that the disputed domain name was registered until May of this year in the name of Sidewinders Advertising Pty Ltd (“Sidewinder”). Sidewinder is closely associated with the Respondent.1 In May 2017, however, the registration was transferred to the Respondent. 2
The personal Respondent has been operating an “Australian made” program himself or through one or another associated company since 2001. In 2001, Sidewinder applied to register Trade Mark Application No. 881369 for a label headed “Oz C.O.M.P.liance Plate” in respect of advertising services. The resulting registration lapsed in 2011. In 2005, Sidewinder also registered Trade Mark No. 1061505 for a trade mark consisting of a stylized map of Australia bearing the Oz C.O.M.P.liance “word” and some other elements. That trade mark is still registered.
In June 2010, the Complainant’s then lawyers wrote to Sidewinder challenging a comparison between the Complainant’s certification scheme and its trade marks with the Sidewinder Oz C.O.M.P.liance scheme which was made on the website which the disputed domain name resolved. The basis of Sidewinder’s registration of the disputed domain name was also challenged on the basis that it did not comply with auDA’s Domain Name Eligibility and Allocation Policy.3
From a letter sent in August 2010 by the Complainant’s chief executive to the personal Respondent, it appears that the dispute was at least partially resolved by Sidewinder ceasing use of the disputed domain name. Sidewinder, however, did not transfer the disputed domain name to the Complainant at that time. Instead, it appears that in July 2010, the personal Respondent and presumably his brother incorporated the corporate Respondent. Sidewinder also registered the business name “Australian Made Logo”, although that registration lapsed in December 2016.
Between 2011 and 2015, Sidewinder and the Respondent registered several more trade marks, including Trade Mark Numbers 1415155, 1415157, 1425534, 1425535, 1454355, 1454357, 1454359 for variations of the trade mark set out below:
In two of the registrations, the words “Australian Logo” are replaced with either “Australian Made” or “Australian Made?”. Two of the registrations are in black and red and use the word “Australian” in place of “Australian Logo”. Sidewinder’s registrations are in respect of advertising services; the Respondent’s registrations are for advisory and licensing services in International Classes 42 and 45. Two other trade marks, Numbers 1705780 and 1706770, which feature the words “Australian Made” instead of “Australian Logo” have been registered by Sidewinders Advertising Pty Ltd in respect of advertising services. It is not clear if this company name is a typographical error or another company.
Also in 2011, the corporate Respondent registered three trade marks consisting of versions of the same logo form in respect of a range of certification and licensing services in International Classes 42 and 45. One of these registrations has black and red colouring instead of green colouring. The words “Australian Logo” are replaced with either “Australian” or “Buy Australian”.
According to the Complaint, it was only in May this year that the Complainant discovered the Respondent had recommenced using the disputed domain name. At that time the disputed domain name resolved to a website which featured the Respondent’s logo above, a headline “Australian Made Logo – The Australian Made Logo that works” and an opening paragraph “The debate continues over designing an Australian Made logo that accurately and simply shows us how ‘Australian’ a product is.” There then follows further text explaining the Respondent’s concept. At the foot of the page, there was a hyperlink which took the browser to the website at “www.buyaustralianlogo.com.au” for more information about the Respondent’s (or Sidewinder’s) logos. This domain name is registered to Sidewinder. The disputed domain name currently does not resolve to an active website.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s name, trade mark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name, trade mark or service mark and, if so, the disputed domain name must be identical or confusingly similar to the name or mark.
The Complainant does not have a registered trade mark for AUSTRALIAN MADE or what the Panel has described above as the composite logo. As the Respondent points out, moreover, there are numerous registered trade marks in Australia which include the words “made” and “Australia”. None of these registrations is for the composite expression by itself. That is unsurprising given the descriptive nature of the phrases “made in Australia” and “Australian made”.
That said, the evidence referred to in section 4 above satisfies the Panel that the Complainant has established a strong reputation in the composite logo. Moreover, the Panel is satisfied on that evidence that the public in Australia would understand a reference to the “Australian Made logo” to be a reference to the Complainant’s composite logo. Accordingly, the Panel finds that the Complainant has a protectable interest at common law and under the prohibitions against misleading or deceptive conduct in trade or commerce provided by section 18 of the Australian Consumer Law in both the composite logo and the expression the “Australian Made Logo”.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade mark: see, for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,
WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The Respondent contends that the words “Australian Made Logo” are descriptive. There are numerous trade marks on the Australian Register of Trade Marks which do have the words “Australian made” or “made in Australia” incorporated into them. As discussed above, however, the evidence shows that the public recognises the expression “Australian Made Logo” as referring to the Complainant’s composite logo. The Complainant has developed a reputation in that expression as a secondary meaning. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
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 may 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 bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 onus of proving this requirement, like each element, falls on the Complainant. Previous auDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd,
WIPO Case No. DAU2002-0001.
It is clear from the record in this administrative proceeding that the Respondent is not affiliated with or otherwise authorised by the Complainant. On the contrary, the Respondent is highly critical of the Complainant’s certification scheme and exhorts traders and the public to embrace the Respondent’s scheme as the superior scheme. The Respondent relies, however, on the descriptive nature of the phrase “Australian Made Logo” and the registration of that phrase as a business name and the name of the corporate Respondent to establish the Respondent’s rights to the disputed domain name.
While the Panel acknowledges that “Australian Made” and the “Australian Made Logo” can be descriptive terms, the evidence submitted by the Complainant demonstrates that the phrase “Australian Made Logo” has acquired a secondary meaning with the public in Australia.
Secondly, the registration of a business name, or a company name, does not of itself confer rights or a legitimate interest in a domain name under the Policy. This is because neither in fact confers proprietary rights in the name, but is rather an obligation imposed by law. See, e.g., section 2.7B of auDA Overview of Panel Views on Selected auDRP Questions First Edition.
In the present case, the Panel notes that the business name registration was actually made in the name of Sidewinder. Moreover, it was not registered until after Sidewinder registered the disputed domain name and had lapsed by the time the disputed domain name was transferred to the Respondent in May this year. In any event, the business name and the corporate Respondent were registered well after the Complainant’s use of the composite logo and, what is more, well after the public had come to recognise the phrase “Australian Made Logo” had acquired its secondary meaning as denoting the Complainant’s composite logo and associated certification scheme. So also were the two trade marks, Numbers 1705780 and 1706770, which were filed in July 2015. The Panel also notes that both those trade marks are registered for advertising services, but the disputed domain name is not being used in connection with such services. It is used instead to direct people to the Respondent’s own certification service.
As the Respondent contends, the Complainant did rename its certification program as the “Australian Made, Australian Grown” certification scheme. However, both before and after that renaming, the Complainant has made, and continues to make, extensive use of the composite logo by itself as a stand-alone trade mark. That use has been sufficiently extensive that, as noted, the public recognises the expression “Australian Made Logo” as denoting the Complainant’s certification scheme.
While the Respondent asserts that it, or its logo, is known by the phrase “Australian Made Logo”, the Respondent does not provide any evidence about the extent of its use and promotion or the number of users of its scheme to support that claim. Further, even if there were a section of the public that did identify the phrase with the Respondent’s logo, that would not assist the Respondent where a very substantial section of the public in Australia associates the phrase “Australian Made Logo” with the Complainant.
It is also apparent that both Sidewinder and the Respondent well knew of the Complainant and its use of the composite logo when registering, or becoming the registrant, of the disputed domain name. Although the Respondent contests this, the Panel considers it is also most unlikely that Sidewinder and the Respondent were unaware of the secondary meaning the public in Australia attributes to the phrase “Australian Made Logo” as denoting the Complainant’s program.
In these circumstances, the Panel considers that the conclusion reached by the learned panelist in Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset,
WIPO Case No. D2002-10584 is entirely apt. In terms which apply equally to the present case, the panelist said:
“Whilst the Complainant’s trading name ‘Complete Sports Betting’ may be descriptive, the Respondent knew of the reputation and goodwill that the Complainant had established in this name and registered the disputed domain name with knowledge of the Complainant’s rights and reputation. Under these circumstances, it cannot be concluded that the Respondent is offering bona fide goods or services or making a ‘fair’ use of the disputed domain name when the goods and services that the Respondent intends to offer using the disputed domain name are in direct competition with those of the Complainant. The intention appears to be to cause confusion amongst the gaming community so that those who are interested in the Complainant’s services are diverted to a web site of the Respondent or a competitor of the Complainant.”
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.
C. Registered or Subsequently Used in Bad Faith
In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
The circumstances outlined above leading to the finding that the Respondent does not have rights or legitimate interests in the disputed domain name lead to the conclusion that the disputed domain name was registered in bad faith, whether the relevant registration is the registration by Sidewinder or the Respondent. As the personal Respondent is also one of the two directors of Sidewinder and was the person with whom the correspondence in 2010 took place, the corporate Respondent must be attributed with the knowledge of Sidewinder and its correspondence with the Complainant.
Moreover, it appears that Sidewinder ceased use of the disputed domain name in July or August 2010 when the dispute first arose with the Complainant. The subsequent resumption of use of the disputed domain name for a website which is sharply critical of the Complainant’s certification scheme and promotes the benefits of the Respondent’s scheme in the absence of rights or a legitimate interest in the disputed domain name is also use of the disputed domain name in bad faith.
The Respondent contends that its logo, or the message it communicates, is superior to the Complainant’s and is the only logo that provides an answer to what is authentically Australian made. This administrative proceeding, however, is not concerned with which is the better certification scheme or better logo. That is something which is not within the Panel’s competence to adjudicate on and is simply not in issue. Indeed, the Panel notes that the Respondent, or Sidewinder, is currently using its logo on the website to which the domain name <buyaustralianmade.com.au> resolves. That usage by the Respondent, or Sidewinder, is completely unaffected by this decision. What is in issue in this proceeding is whether the disputed domain name has been registered or used in bad faith (as that term is understood under the Policy) in conflict with the Complainant’s trade mark rights without rights or a legitimate interest. For the reasons set out above, the Panel finds that the disputed domain name has been both registered and used in bad faith contrary to the Policy.
6. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <australianmadelogo.com.au> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: August 10, 2017
1 The personal Respondent (i.e., “Brett Watson”) is one of two directors of both Sidewinder and the corporate Respondent (i.e., “Australian Logo Pty Ltd”) and holds one of the two shares issued in each company. Another person, who appears to be the personal Respondent’s brother, is the other director and shareholder of both companies.
2 Except where it is necessary to distinguish between the personal Respondent and the corporate Respondent, the Panel will simply refer to “the Respondent”.
3 Paragraph 2 of Schedule C to the auDA Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2008-05) provides:
“2. Domain names in the com.au 2LD must be:
a) an exact match, abbreviation or acronym of the registrant’s name or trademark; or
b) otherwise closely and substantially connected to the registrant.”
4 In light of the substantive and procedural similarities between the auDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has cited authorities decided under the UDRP where appropriate. See also Anheuser-Busch Inc v Budejovicky Budvar [2002] FCA 390 at [197] – [219].
