WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Smartmark Pty Ltd v. Dash Corp Pty Ltd, Robert Kaay, Registry Australia Pty Ltd

Case No. DAU2019-0031

1. The Parties

The Complainant is Smartmark Pty Ltd, Australia, represented by Mills Oakley Lawyers, Australia.

The Respondents are Dash Corp Pty Ltd, Australia, Robert Kaay, Australia, and Registry Australia Pty Ltd, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <smartmark.com.au> is registered with Uniregistrar Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2019. On October 29, 2019, the Center transmitted by email to Uniregistrar Corp a request for registrar verification in connection with the disputed domain name. On October 30, 2019, Uniregistrar Corp transmitted by email to the Center its verification response confirming that the third Respondent, Registry Australia Pty Ltd, 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 November 12, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2019. The Response was filed with the Center on December 1, 2019.

The Center appointed Andrew Christie, John Swinson, and Alan L. Limbury as the three-member panel in this matter on January 20, 2020. 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.

On January 27, 2020, the Panel issued Administrative Panel Procedural Order No. 1 (the “Order”), in which the Complainant was requested to state the earliest date on which the Complainant used the disputed domain name in the operation of its business and evidence in support of that statement. The Order also invited the Respondent to make a submission in reply to the evidence and information submitted by the Complainant in response to it. The Complainant submitted a response to the Order and the Respondent submitted a reply to the Complainant’s response.

4. Factual Background

The Complainant is an Australian proprietary company registered on March 4, 2015, the sole Director and the Secretary of which is Julie Anderson. The Complaint states: “In or about March 2019, the Complainant began operating its Trademark Business in Australia and overseas under and by reference to” its registered trademark and the disputed domain name. The Complaint contained a screenshot from the Web Archive that shows that on February 27, 2019, the disputed domain name resolved to a web page headed “SmartMarktm” and the text “ON YOUR TRADE(MARK)”. The Complaint provided no explanation of what, if any, business was transacted at that website.

The Complainant is the owner of the Australian trademark registration number 1684581 for the word trademark SMARTMARK (filed on March 31, 2015; registered on December 8, 2015). The Complaint provided no explanation of what, if any, business was transacted using that trademark.

The disputed domain name was registered on June 9, 2015, by the domain name service provider Domain Protector. In or about early March 2019, the Complainant was informed by Domain Protector (said in the Complaint to be “its domain name service provider”) that the disputed domain name “had been deleted for policy reasons and upon public release a third party had re-registered” it. Neither the so-called “policy reasons” for deletion of the registration of the disputed domain name nor the person by whom the disputed domain name was registered in March 2019 were identified in the Complaint.

The first Respondent is Dash Corp Pty Ltd (“Dash Corp”), the ownership and business of which is not clear from the case file before the Panel, but which appears to be connected to the second Respondent, Robert Kaay. Robert Kaay runs the Australian domain name brokerage DBR Domain Brokerage, and appears to be connected with the third Respondent, Registry Australia Pty Ltd (“Registry Australia”). Since 2018, Registry Australia has provided professional registration services in relation to business names, domain names, company names, and trademarks.

On May 21, 2019, the disputed domain name became registered to Dash Corp. On May 22, 2019, Registry Australia registered the business name “Smart Trade Mark”. On May 22, 2019, a person, said by the Respondents to be the Complainant acting through an agent, offered to buy the disputed domain name from Dash Corp for AUD 200. It appears that Dash Corp did not respond to this offer.

On or about June 25, 2019, the Complainant lodged a complaint with the .au Domain Administration Ltd (“auDA”) asserting that Dash Corp was ineligible under auDA Policy 2012-04, the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the “Eligibility and Allocation Rules”), to register the disputed domain name. On July 22, 2019, having received confirmation that the disputed domain name had been registered to Dash Corp “in error and that it was intended to have been registered to” Registry Australia, auDA requested the Registrar to “correct the domain name record to reflect” Registry Australia as the registrant and closed the complaint.

The Complainant asserts, without supporting evidence, that on or about July 10, 2019, the disputed domain name was transferred to Registry Australia by Dash Corp, was then transferred back to Dash Corp by Registry Australia on or about July 17, 2019, then again transferred to Registry Australia by Dash Corp on or about July 22, 2019.

The Complainant provided a screenshot, said to be taken on October 1, 2019, but with the string “9/12/2019” at the top, showing that “www.smartmark.com.au’s server IP address could not be found”. As of the date of this decision, the disputed domain name resolves to the website of Registry Australia at “www.registry.com.au”.

5. Parties’ Contentions

A. Complainant – Complaint

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) when the Second-Level Domain (“2LD”) and country-code Top-Level Domain (“ccTLD”) suffixes “.com.au” are ignored, it consists of the Complainant’s registered word trademark SMARTMARK; and (ii) it is identical and/or confusingly similar to the Complainant’s company name, Smartmark Pty Ltd.

The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondents have no association with the disputed domain name because, as of October 1, 2019, it was not directing to any site but rather resolved to a page stating “This site can’t be reached”; (ii) the Respondents are not offering any goods or services in relation to the disputed domain name, and are not using it for any descriptive meaning; (iii) the Respondents have no common law rights in respect of any unregistered trademark relating to the disputed domain name; (iv) the Respondents are not commonly known by the disputed domain name; (v) the Respondents have not used the disputed domain name, have not made demonstrable preparations to use it, and are not making a legitimate noncommercial or fair use of it; (vi) the registration of the disputed domain name is a sham and was taken out in an attempt to exploit the Complainant’s value in its trademark and business; (vii) there are eligibility issues about the registration of the disputed domain name by Dash Corp and Registry Australia during the 14 days after May 21, 2019, when it was transferred between those two entities three times; and (viii) once the Respondents were aware of the Complainant’s registered trademark, they registered a similar trading name to the Complainant’s name in the hope it would assist their case against the Complainant.

The Complainant contends that the disputed domain name was registered in bad faith because: (i) the Respondents are not affiliated with the Complainant in any way, and have not been authorized by the Complainant to register or use the disputed domain name, or to seek the registration of any domain name incorporating its trademark; (ii) it is clear that Registry Australia’s original purpose in registering the disputed domain name was to stop other entities using that name; (iii) a simple check of the disputed domain name by the Respondents at the time of registering it would have revealed a trading entity using it for precisely the sort of services consistent with such ownership of a domain, being smart trademark application and registration services; (iv) the Respondents, as of August 29, 2019, have no White or Yellow Pages Listing for any business called “The Smart Mark”; (v) the registration of the Victorian Business Name “Smart Trade Mark” by Registry Australia on May 22, 2019, was only done to attempt to rebut an anticipated argument by the Complainant that it had no legitimate interest in the disputed domain name and the registration of it was a sham; and (vi) the Respondents acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration.

B. Respondents – Response

The Respondents contend that there should be only one respondent to the Complaint, Registry Australia, since that is the registrant of the disputed domain name.

The Respondents make various statements in response to the Complaint generally, including: (i) that Registry Australia registered the disputed domain name because it was clear that the Complainant no longer had any use for it, as it had allowed it to expire and be released to the fair and open domain name drop process; (ii) Registry Australia has a legitimate interest and use for the disputed domain name because since 2018 it has offered professional registration services in relation to business names, domain names, company names, and trademarks; (iii) Registry Australia purchased various domain names containing the words “trade” and “mark” in May 2019, including the domain name <smartrademark.com.au>, and since May 2019 has operated a business called “Smart Trade Mark”; (iv) Registry Australia never monetized the website resolving from the disputed domain name, and has not solicited a sale of the disputed domain name to the Complainant; and (v) the Complainant is attempting to reverse domain name hijack and harass Registry Australia by trying to steal the generic disputed domain name which was acquired by Registry Australia legitimately on the Australian drop platform process.

In relation to whether the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondents contend that: (i) the Complainant has not advanced any evidence of use of or reputation for any of its trademarks and has misrepresented the effect and coverage of its trademarks; (ii) the Complainant has no sole claim to use the two generic words “smart” and “mark”; and (iii) the Respondent was eligible to register the disputed domain name by reason of its corporate name, and the Complainant had equal opportunity to register the disputed domain name at the domain name drop platform process after it allowed it to expire.

In relation to whether the Respondents have rights or legitimate interests in respect of the disputed domain name, the Respondents contend: (i) auDA has accepted that Registry Australia was eligible to own the disputed domain name; (ii) the Complainant allowed the disputed domain name to expire and be released back to the open market; (iii) auDA found a “close and substantial connection” for Registry Australia’s use of the generically-worded disputed domain name; (iv) records at IP Australia show multiple businesses have used the generically-worded term “smartmark” in the past; (v) Registry Australia registered the disputed domain name because of its two highly-generic terms, “smart” and “mark”, is in the business of providing “trademark registration services”, and is abiding by auDA’s eligibility and allocation rules; (vi) Registry Australia never approached or intended to approach the Complainant or a competitor of the Complainant offering to sell the disputed domain name; and (vii) Registry Australia has never and would never try to pass itself off as the Complainant, and there is no proof of it doing so.

In relation to whether the disputed domain name has been registered or is being used in bad faith, the Respondents contend: (i) Registry Australia was not aware of the Complainant’s company or business, or of the goods and/or services provided by the Complainant in relation to the highly-generic terms “smart” and “mark” at the time the disputed domain name was purchased through the domain name drop platform process; (ii) the Complainant has not provided any proof of either its assertion that Registry Australia’s original purpose in registering the disputed domain name was to stop other entities from using that name or its assertion that Registry Australia acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration; (iii) the Complainant’s contention that Registry Australia has no White or Yellow Pages listings for the business “The Smart Mark” is irrelevant as that is an archaic form of advertising; (iv) the Complainant is clearly attempting to engage in reverse domain name hijacking; (v) there is no evidence that Registry Australia registered the disputed domain name to prevent the Complainant from reflecting its name or trademark in a domain name, or in an attempt to exploit the Complainant’s value in its trademark or business; (vi) the average consumer could not confuse the disputed domain name with any trademark controlled and operated by the Complainant; and (vii) the Complainant clearly no longer valued the disputed domain name because it allowed it to expire and appear on the domain name drop platform process for anyone to register.

C. Complainant – Response to the Order

In response to the Order, the Complainant submitted a Witness Statement from Julie Long, stating that she is a Director of the Complainant and that the first use of the Complainant’s trademark was on or about October 22, 2016. Attached to the Witness Statement was a screenshot from the Web Archive showing that on October 22, 2016, the disputed domain name resolved to a web page headed “SmartMarktm” and the text “Search Here Millions of Trademarks Registered since 1890!”. The Witness Statement said that this screenshot was “showing the Trademark and offering the relevant Trademark Services to the general public”.

D. Respondents – reply to Complainant’s response to the Order

In reply to the Complainant’s response to the Order, the Respondents asserted that: (i) there is no basis to include Robert Kaay as an identified respondent to the Complainant, and to do so is an act in bad faith, because there are no allegations against him personally, he has never owned the disputed domain name, and the only Respondents who have ever owned the disputed domain name are Dash Corp and Registry Australia; (ii) the Complainant has tried to deliberately mislead the Panel; (iii) the Complainant has never owned the disputed domain name and has never actually made use of it, but any use which may have been made was by Hudson IP Pty Ltd; (iv) according to the public WhoIs records the Complainant’s legal representative owned the disputed domain name from January 19, 2015, to February 11, 2018; (v) the only evidence of use of the Complainant’s trademark is a screenshot from a time when the Complainant did not own the disputed domain name; and (vi) the Complainant is clearly using the auDRP process to recover an expired domain name rather than using it as a process against cybersquatting.

The Respondents provided no evidence in support of their assertions about ownership of the disputed domain name. However, the Panel has consulted historical WhoIs records (provided by DomainTools) for the disputed domain and has established that: (i) as of January 18, 2015, the registrant of the disputed domain name was Gibsons Solicitors Pty Ltd and the registrant contact was Stuart Gibson, which is the name of the Complainant’s authorised representative; (ii) as of July 7, 2015, the registrant of the disputed domain name was Hudson IP Pty Ltd; and (iii) as of February 22, 2019, the registrant of the disputed domain name was Hudson IP Pty Ltd.

6. Discussion and Findings

A. Correct Respondent(s)

The Respondents object to the Complaint being brought against the three named Respondents and assert that the only respondent to the Complaint should be Registry Australia, because it is the registrant of the disputed domain name. As explained in section 4 of this decision, the disputed domain name became registered to the Dash Corp on May 21, 2019. According to the Response, it was Robert Kaay who effected this registration – that occurred, he said, because he was “accidentally” logged into Dash Corp’s account, rather than Registry Australia’s account, at the time of effecting the registration. In response to a complaint lodged by the Complainant under the Eligibility and Allocation Rules, auDA, on July 22, 2019, directed that the registration of the disputed domain name be corrected to show Registry Australia as the registrant of it.

Paragraph 1 of the Rules defines the “Respondent” to be “the registered holder of a domain name against which a complaint is initiated”. Consistent with this, paragraph 3(b)(v) of the Rules requires that “the name of the Respondent (domain name holder)” be provided in the complaint. As explained in paragraph 4.9A of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), it is clear that the entity listed in the relevant WhoIs record as being the registrant of a domain name is a “holder” of the domain name. What is not clear, however, is when other entities can also be treated as a “holder” of the domain name.

The Panel recognises that there may be situations in which it is appropriate to treat other persons closely connected to the registrant as a holder of a domain name – such as the person recorded as the registrant contact or a person who clearly exercises control over the registrant. In this case, Robert Kaay is the registrant contact for the disputed domain name and he effected the registration of it. It is clear that he is closely connected to both Dash Corp and Registry Australia. In these circumstances, the Panel considers that the naming of all three entities as Respondents was not inappropriate (and was not an act of bad faith by the Complainant). Accordingly, the Panel declines the Respondents’ request to remove Dash Corp and Robert Kaay as named respondents to the Complaint.

Nevertheless, the fact remains that, following consideration of the complaint under the Eligibility and Allocation Rules, auDA directed that the registration of the disputed domain name be corrected to show Registry Australia as the registrant of it. There is nothing in the case file before the Panel that leads the Panel to conclude that anyone other than, or in addition to, Registry Australia needs to be considered the “holder” of the disputed domain name for the purposes of determining the Complaint.

B. Identical or Confusingly Similar

When the 2LD and ccTLD suffixes “.com.au” are ignored (which is appropriate in this case), the disputed domain name consists solely of the Complainant’s registered word trademark SMARTMARK. The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

As stated in paragraph 2.1 of the auDA auDRP Overview 1.0, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant.

The Complainant’s case has not been assisted by the manner in which it has been presented. The Complaint provided no explanation of, among other key matters, what use the Complainant has made of its trademark, who owned the disputed domain name prior to it being deleted, and the reason for the deletion of the disputed domain name. When requested by the Order to state the earliest date on which the Complainant used the disputed domain name in the operation of its business, the Complaint did not do so. It provided, instead, a statement of when it first used its trademark.

Moreover, the Complainant’s case has been riddled with inconsistencies in its pleading and evidence. The current company extract for the Complainant provided with the Complaint shows that the sole Director (and the Secretary) is “Julie Anderson”. However, in response to the Order, the Complainant provided a Witness Statement from “Julie Long”, in which it is stated she is a Director of the Complainant. The Complaint states the first use of the disputed domain name was in or about March 2019. However, in response to the Order, the Complainant provided a screenshot showing that the disputed domain name resolved to a website containing the Complainant’s trademark as of October 22, 2016. The Complaint states that the Complainant owned the disputed domain name for approximately 5 years and provided in support an unidentified document that stating “Domain Protector” was the registrant as of June 9, 2015. However, the historical WhoIs records consulted by the Panel show that on July 7, 2015, and on February 22, 2019, the registrant of the disputed domain name was Hudson IP Pty Ltd. At no stage did the Complainant attempt to correct or explain any of these inconsistencies.

The essence of the Respondents’ case is that Registry Australia has rights or legitimate interests in the disputed domain name because it consists of two descriptive terms, and those terms are apt to describe the business conducted by Registry Australia. As is explained in paragraph 2.2 of the auDA auDRP Overview 1, a respondent cannot rely solely on the fact that a domain name is composed of ordinary language words to ground a claim to rights or legitimate interests in it. Factors that are relevant to determining if the respondent has rights or legitimate interests in a descriptive, generic, or dictionary word domain name include the distinctiveness, status, and fame of the trademark or name in which the complainant has rights, the likelihood of customer confusion, and whether the respondent was aware of this likelihood prior to registering the domain name.

An important feature of this case is that the disputed domain name was apparently acquired by “drop-catching” – that is, by registering a previously-registered domain name that has become available due to the previous owner failing to maintain the registration (the Complainant has stated, without explanation, that the reason the disputed domain name was deleted and thus available had to do with “policy reasons”) .

Drop-catching is different from standard registration. With drop-catching, the registrant knows that the domain name has recently been registered to another party, and so can be considered to be on notice that another party may have trademark rights connected to the domain name that continue to subsist – see Supermac’s (Holdings) Limited v. Domain Administrator, DomainMarket.com, WIPO Case No. D2018-0540 (<supermacs.com>).

The facts in this case differ from those in Supermac’s in important respects. First, the whole of the disputed domain name consists of dictionary words, and those words are apt to describe the business of Registry Australia (and for that matter, apparently that of the Complainant). Thus, Registry Australia’s claim that it registered the disputed domain name due to its descriptive nature is plausible. Secondly, it is not established that the Complainant was the registrant of the disputed domain name prior to it being acquired by Registry Australia, and there is no evidence showing that there was substantial use of the Complainant’s trademark prior to the disputed domain name being acquired. There is, therefore, no sound basis for concluding that Registry Australia either knew, or should have known, that the Complainant had trademark rights connected to the disputed domain name at the time it was drop-caught.

The Complainant owns an Australian registered trademark which is identical to the disputed domain name. There is no evidence that the Respondent searched or did not search the Australian Trade Marks Register before acquiring the disputed domain name. The Complainant provided no evidence of reputation (and very little evidence of use) in respect of its trademark. The finding that the Complainant has failed to discharge its burden on the second element in the unusual circumstances of this dispute should not be taken as the Panel endorsing a general rule that a domain name registrant who does not conduct trademark searches will always succeed under the second element of the Policy. In some circumstances, a respondent who did not conduct trademark searches may not have rights or legitimate interests because the respondent should have known about a registered trademark. Because of the circumstances of this case and as neither party addressed this issue, the Panel considers that this is not an appropriate case to consider this issue in further detail.

For the above reasons, the Panel is of the view that the Complainant has failed to discharge its burden of proving that Registry Australia lacks rights or legitimate interests in the disputed domain name.

D. Registered or Subsequently Used in Bad Faith

Because of the Panel’s finding that the Complainant has failed to discharge its burden of proving that Registry Australia lacks rights or legitimate interests in the disputed domain name, the outcome of the Complaint has in effect been determined without the Panel needing to reach a conclusion on whether the disputed domain was registered or has been used in bad faith. However, because the Respondent asserted that the Complainant brought the Complaint in bad faith (on which see section 6.E below), the Panel offers the following observations on the issue.

Because the Panel considers plausible Registry Australia’s claim that it registered the disputed domain name due to its descriptive nature, and because the Panel has not been provided with evidence for concluding that Registry Australia either knew, or should have known, that the Complainant claimed trademark rights connected to the disputed domain name so as to impact its decision to register the disputed domain name, there is no basis on the record in this case for the Panel to conclude that the disputed domain name was registered in bad faith.

The only use to which Registry Australia has put the disputed domain name since registering it is to resolve to its website, at which it offers, among other things, trademark registration services. That use does not – based on the limited case file before the Panel – appear to the majority of Panel (Mr. Christie and Mr. Limbury) to be use in bad faith. Moreover, there is no evidence that Registry Australia has offered the disputed domain name for sale or has used it in any other manner which could be considered to be bad faith.

One member of the Panel (Mr. Swinson) would find use in bad faith. This is because the disputed domain name diverts to the website at “registry.com.au”, which offers services which are competitive to the Complainant’s trademark services. Additionally, it is that Panel member’s view that such use of the disputed domain name is likely to be a trademark infringement under section 120(2) of the Australian Trade Marks Act 1995. Accordingly, one member of the Panel would find bad faith use under paragraph 4(b)(iv) of the Policy.

The full Panel notes that in all events this case involves nuanced trademark issues (e.g., descriptiveness) and the Parties are free to argue their case in court.

E. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules provides that, if the Panel finds that the Complaint “was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

Paragraph 4.17 of the auDA auDRP Overview 1.0 lists, non-exhaustively, seven circumstances which previous panels have considered to be indicative of a complaint having been brought in bad faith. Only one of those circumstances is arguably present in this case: “the complainant intentionally attempted to mislead the panel by omitting relevant evidence”.

As noted in section 6.C above, the Complaint was both silent on key matters and riddled with unexplained inconsistencies in its pleading and evidence. Notable among these is the Complainant’s claim that it “owned the Domain for approximately five years” when the historical WhoIs records show that the Complainant’s authorised representative, Stuart Gibson, was the registrant of it in January 2105 and that another entity, Hudson IP Pty Ltd, was the registrant of it in July 2015 and in February 2019. This unsubstantiated and potentially false claim of ownership of the disputed domain name, together with the numerous other unexplained inconsistencies and potential falsities in the Complainant’s evidence identified above, lead the majority of the Panel (Mr. Christie and Mr. Limbury) to conclude that the Complainant did intentionally attempt to mislead the Panel by omitting relevant evidence. Accordingly, the majority of the Panel finds and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

One member of the Panel (Mr. Swinson) does not agree with the majority on this aspect of the decision for the following reasons: The Complaint was poorly drafted, but that does not necessarily lead to a finding here of an intentional attempt to mislead. The Complainant owns a registered trademark that the Respondent likely infringes. In these circumstances, it was not bad faith to bring the Complaint.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Andrew F. Christie
Presiding Panelist

John Swinson
Panelist

Alan L. Limbury
Panelist
Date: February 19, 2020