WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Network Ten Pty Ltd v. ZZZ Domains Pty Ltd
Case No. DAU2018-0030
1. The Parties
The Complainant is Network Ten Pty Ltd of Pyrmont, Australia, internally represented.
The Respondent is ZZZ Domains Pty Ltd of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <10daily.com.au> (the “Domain Name”) is registered with Uniregistrar Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2018. On October 15, 2018, the Center transmitted by email to Uniregistrar Corp a request for registrar verification in connection with the disputed domain name. On October 17, 2018, Uniregistrar Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional contact details which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant declined the invitation to amend its Complaint.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 October 26, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.
The Center appointed Keith Gymer as the sole panelist in this matter on November 26, 2018. 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, Network Ten Pty Ltd, is one of Australia’s leading entertainment and news content companies, which commenced broadcasting free-to-air television on August 1, 1964, continuing to date. It presently operates across free-to-air television, online and digital platforms. It is a wholly owned subsidiary of CBS Corporation, one of the world’s leading media organisations.
The Complainant has numerous registered and pending trademarks for various TEN or 10- formative trade marks in Australia in classes 38 and/or 41 (amongst others), the earliest of which dates from November 29, 1991. In particular, the Complainant is the owner of the following registered and pending trademark rights in Australia:
Australian TM Registration 1902050 for TEN DAILY in Classes 9, 35, 38, and 41, and effective from January 23, 2108 (granted August 22, 2018).
Australian TM Application 1952292 for 10 DAILY in Classes 9, 35, 38, and 41, filed August 30, 2018, accepted and pending publication as of September 28, 2018.
The Complainant is also the registrant of the domain name <tendaily.com.au> as of November 3, 2016.
The Complainant’s TEN DAILY online platform, accessed via this domain, provides news and entertainment information targeted at mobile users. The Complainant first announced its plans for this platform in November 2016, and the service was launched on May 14, 2018. The web platform is complemented by TEN DAILY branded Facebook, Twitter and Instagram social media sites.
The Respondent, ZZZ Domains Pty Ltd, is an Australian company, registered at an address in Queensland, Australia, with a single individual director. The Respondent’s contact details as provided by the Registrar were stated to be an entity based in Hong Kong, China. The Domain Name was created by the Respondent on May 14, 2018. As at the date of the Complaint, the Domain Name did not resolve to any functioning webpage.
5. Parties’ Contentions
A. Complainant
The Complainant bases its case substantially on the following points:
The Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights
The Complainant claims to have established extensive rights (both registered and under common law) and reputation, in TEN DAILY by virtue of its registration and prominent use of the mark, including through its pre-launch publicity. Advance public marketing was commenced at least as early as February 22, 2018, and the TEN DAILY platform went live with supporting promotional activities as of May 14, 2018.
The platform is also regularly referenced by newsreaders and presenters on the Complainant’s nationwide network TV programs. Spoken references would be naturally perceived by listeners, without differentiation, either as TEN DAILY or 10 DAILY. The Complainant notes that the first independent media commentary about the Complainant’s proposed platform itself referred to TEN DAILY and 10 DAILY interchangeably. Internet users would also logically search for 10 DAILY to locate the Complainant’s online platform.
It is therefore clear that the Domain Name <10daily.com.au> is aurally, phonetically and conceptually identical to the Complainant’s trade mark TEN DAILY and domain name <tendaily.com.au>.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant submits that the Respondent no rights or legitimate interests in the Domain Name for the following reasons.
There is no evidence that the Respondent has made any bona fide (or otherwise) use of, or demonstrable preparations to use the disputed Domain Name or a name corresponding to the Domain Name in connection with the offering of goods or services in order for the Respondent to establish rights or legitimate interests in the Domain Name under paragraph 4c(i) of the Policy.
The Respondent has not acquired any trade mark or service mark rights in the Domain Name, and the Respondent (as an individual, business, or other organisation) has not been commonly known by the Domain Name in order to establish rights or legitimate interests in the Domain Name under paragraph 4c(ii) of the Policy.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue, such as to establish rights or legitimate interests in the Domain Name under paragraph 4c(iii) of the Policy.
The Complainant provides results of various searches made to try to identify whether the Respondent might have registered trade mark rights in, or a licence, or any common law trade mark right in relation to use of 10 DAILY. The searches found no evidence of any such potential rights. A search of the Australian online company and business name register on also found that the Respondent does not have any registered company or business name incorporating 10 DAILY. The Complainant has not itself licensed or otherwise permitted the Respondent to use any of the Complainant’s trade marks nor to apply for or use any domain name incorporating its trade marks.
Consequently, the Complainant asserts that the Respondent has no intellectual property rights, and no legitimate interests, in relation to the Domain Name.
The Domain Name was registered in bad faith
The Complainant submits that the Respondent knowingly registered the Domain Name in bad faith for the following reasons:
The Respondent registered the Domain Name subsequent to:
(i) the Complainant’s registration of numerous TEN and 10-formative trade marks in Australia;
(ii) the Complainant’s registration of its domain name <tendaily.com.au> on November 3, 2016;
(iii) the Complainant’s first public use of TEN DAILY on November 4, 2016;
(iv) the Complainant’s application for registration of the trade mark TEN DAILY in Australia on January 23, 2018;
(v) the Complainant’s demonstrable and public preparations to use its domain name <tendaily.com.au> as early as February 22, 2018; and
(vi) Perhaps most tellingly, the registration of the Domain Name was made on exactly the same day as the Complainant officially launched its website at “www.tendaily.com.au”, being May 14, 2018. It is surely inconceivable that this was pure coincidence.
The Complainant notes that the official Australian Company Register records show the sole director and company secretary of the Respondent to be resident in Australia. In view of the Complainant’s substantial and long-standing reputation and high-profile marketing activities in Australia, it is highly likely that the Respondent would have been aware of the Complainant’s trade mark, website and domain name <tendaily.com.au>, or at least ought to have known of the Complainant’s rights in the Trade Mark and domain name, at the time of registration of the Domain Name.
The Complainant believes that it is most likely that the Domain Name was registered primarily for the potential purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. This presumption is based on evidence that the Respondent appears to be in the business of selling domain names. Information taken from the website “www.website.informer.com”, in relation to the Respondent, lists “10 most popular domains of this owner”, several of which are tagged with keywords as “domains for sale”, “premium domain names” and “domain name marketplace”.
Additionally, the Complainant asserts that the fact that the Domain Name is substantially identical to the Complainant’s Trade Mark suggests that the Respondent also attempted to prevent the Complainant from reflecting its trade mark in a corresponding Australian domain name. According to paragraph 4(b)(ii) of the Policy, this would indicate that the Domain Name has been registered in bad faith.
Further, the Complainant alleges that the Respondent’s representations or warranties as to eligibility for registering the Domain Name and the existence of third party rights given on its application were, or subsequently became, false or misleading.
Paragraph 4(b)(v) of the Policy states that if any of the Respondent’s representations or warranties as to eligibility given on an application are, or subsequently become, false or misleading in any manner, this will be evidence of registration and use of a domain name in bad faith. By applying to register the Domain Name, the Respondent represented and warranted to auDA that the statements that the Respondent made in its domain name application were complete and accurate, including those as to its eligibility for a domain name in the open 2LDs.
The auDA “2012-04 – Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs” (Eligibility Rules) govern the eligibility requirements for a second-level (“2LD”) domain name. In particular, Schedule C governs the eligibility and allocation rules for com.au domain names. Section 2 of Schedule C states:
“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, in accordance with the categories of ‘close and substantial connection’ set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs.”
For the purposes of Section 2(a) of Schedule C of the Eligibility Rules, the WhoIs records for the disputed Domain Name indicate that the Respondent entered its “Eligibility Type” for the purpose of registering the disputed Domain Name as “Company”. This typically denotes that a company name related to the registrant corresponds with the domain name being applied for. However, the Respondent is not eligible to register and use the disputed Domain Name on the basis of it being an exact match, abbreviation or acronym of the Respondent’s name (or trade mark). The Respondent’s company name is ZZZ Domains Pty Ltd (of which the disputed Domain Name is clearly not an exact match, abbreviation or acronym, nor is it a name to which the disputed Domain Name bears any resemblance).
For the purposes of Section 2(b) of Schedule C of the Eligibility Rules set out above, the “Guidelines on the Interpretation of Policy Rules for the Open 2LDs” (Guidelines) at Section 10.4 set out the categories of “close and substantial connection” in respect of “com.au” domain names as:
(i) a product that the registrant manufactures or sells;
(ii) a service that the registrant provides;
(iii) an event that the registrant organises or sponsors;
(iv) an activity that the registrant facilitates, teaches or trains;
(v) a venue that the registrant operates;
(vi) a profession that the registrant’s employees practice; or
(vii) for the purpose of domain monetisation as set out in Section 11 of the Guidelines.
The Complainant was unable to find any evidence that the Respondent can establish a “close and substantial connection” with the Domain Name on the basis of any of these grounds. Moreover, the Respondent cannot fulfil any of the requirements of Section 11 of the Guidelines in order to claim that it is eligible to register the Domain Name for the purpose of domain monetisation as the Domain Name does not resolve to a functioning website.
As set out above, paragraph 2 of the Policy states that by applying to register a domain name, the Respondent warranted that statements made in the domain name application are complete and accurate, including those as to the Respondent’s eligibility for the Disputed Domain. As the Respondent does not meet the relevant eligibility requirements for the reasons set out above, the Respondent was, and is, in breach of this warranty. Previous auDRP panels have found this breach satisfies the requirement in paragraph 4(a)(iii) of the Policy that the domain name has been registered or subsequently used in bad faith.
The Complainant also states that it received no reply from the Respondent to a letter before action, explaining the Complainant’s rights and requesting transfer of the Domain Name, which was sent to the Respondent prior to filing this Complaint.
Remedy requested
The Complainant requests the transfer of the Domain Name to the Complainant.
B. Respondent
The Respondent made no Response.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove:
(i) the Domain Name is identical or confusingly similar to a name1, 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 (Note 2); and
(iii) the Domain Name has been registered or subsequently used in bad faith.
1. For the purposes of the Policy, auDA 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.
2. For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.
The fact that the Respondent has not provided a substantive Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate”.
Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The Complainant is only required to show that it has relevant rights at the time the Complaint is filed. The Complainant has demonstrated registered trademark rights in Australia in the mark TEN DAILY. In this case, these rights were applied for before, and so effectively predate, the registration of the Domain Name by the Respondent, which the Panel notes is relevant in consideration of the question of bad faith registration and use below. It is also probable that the Complainant would have established common law rights through its prior commercial promotion of the TEN DAILY services.
The Domain Name is <10daily.com.au>. It is accepted that, for the purposes of the Policy, the domain suffix “.com.au” may be discounted in the consideration of the identity or similarity between a domain name and a name or mark. In its distinctive element, the Domain Name differs from the mark TEN DAILY only in that it uses the numeral “10” rather than the word “TEN”.
In the Panel’s view, this is not a significant difference. As the Complainant has pointed out, “10daily” is aurally, phonetically and conceptually identical to TEN DAILY and the public would understand and recognize them as equivalent. (Reflecting this reality, it is pertinent also to note that the Complainant’s own separate trademark application for 10 DAILY, although filed later than the date of registration of the Domain Name, has been accepted by IP Australia, and is pending registration at the time of this Decision.)
The Panel therefore finds that the Domain Name <10daily.com.au> is essentially identical and confusingly similar to the trademark TEN DAILY, in which the Complainant has rights.
The Complainant has satisfied the requirement under paragraph 4a(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent itself made no Response whatever to the Complaint, and offered no evidence to support a claim to any bona fide intended use for the Domain Name.
The Complainant’s own reasonable efforts to establish whether the Respondent might have any rights to some undisclosed genuine use were fruitless. The Panel finds the Complainant’s evidence and submissions that the Respondent did not register the Domain Name innocently on the basis of any prior rights of its own, and that it did so with full knowledge of the Complainant’s TEN DAILY trademark, to be convincing.
Consequently, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has therefore also met the requirements of paragraph 4a(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy provides, with limitation, a number of examples of factors which may demonstrate a registrant’s bad faith for the purposes of the Policy. These are:
(i) circumstances indicating that you [the registrant] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) if any of your representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Complainant has argued that paragraph 4b(i) should be applicable, despite the absence of any apparent approach or offer to sell from the Respondent, nor of any demand for payment, but simply because the Respondent “appears to be in the business of selling domain names”. On the evidence, the Panel does not find this argument convincing. The offering of (other) domains for potential sale is not of itself an illegitimate activity.
However, the arguments and evidence presented by the Complainant in relation to the applicability of paragraphs 4b(ii) and 4b(v), unanswered by the Respondent, do demonstrate to the Panel’s satisfaction that the Respondent registered the Domain Name with knowledge of, and disregard for, the Complainant’s prior rights and interests in the TEN DAILY name and mark, and that it had no bona fide justification for doing so.
In the Panel’s view, it appears most likely that the Respondent sought to misappropriate the Complainant’s rights and goodwill in its TEN DAILY mark, without authorization, and in breach of the representations and warranties required by auDA, by speculatively registering the Domain Name, as a spoiler to hinder the Complainant’s legitimate interests. It may conceivably have had some expectation that the Complainant might potentially offer to purchase the Domain Name for a premium, although it made no attempt to demand or encourage this. Given the Domain Name is effectively identical to the Complainant’s own <tendaily.com.au> domain name, there would also clearly be a considerable risk that emails could be misdirected by the public to “@10daily.com.au” addresses, potentially enabling the Respondent to intercept correspondence intended for the Complainant, although, again, there is no evidence that the Respondent did in fact set up any email service using the Domain Name.
In the absence of any alternative explanations from the Respondent, the Panel accepts that the Respondent’s conduct falls within the scope of the examples of “Registration or Subsequent Use in Bad Faith” given at paragraphs 4b(ii) and 4b(v) of the Policy.
The Panel therefore finds that, on the balance of probability, the Domain Name has been registered in bad faith.
The Complainant has fulfilled the requirement of paragraph 4a(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4 of the Policy and 15 of the Rules, the Panel orders that the domain name, <10daily.com.au>, be transferred to the Complainant.
Keith Gymer
Sole Panelist
Date: December 4, 2018
