WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adelaide Oval Hotel Pty Ltd, Adelaide Oval SMA Ltd v. Hines Property Asset Services Pty Ltd

Case No. DAU2020-0021

1. The Parties

The Complainants are Adelaide Oval Hotel Pty Ltd (the “First Complainant”) and Adelaide Oval SMA Ltd (the “Second Complainant”), Australia, represented by Minter Ellison, Australia.

The Respondent is Hines Property Asset Services Pty Ltd, Australia represented by King & Collins, Australia.

2. The Domain Name and Registrar

The disputed domain name <adelaideovalhotel.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2020. On August 28, 2020, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On September 1, 2020, NetRegistryPty 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 September 1, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2020. The Response was filed with the Center on September 18, 2020.

The Center appointed Alistair Payne, John Swinson, and The Hon. Neil Brown Q.C. as panelists in this matter on October 2, 2020. The Panel finds that it was properly constituted. Each member of 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.

The Complainant filed a Supplemental submission on October 6, 2020. The Respondent provided an email retort against the consideration of the Complainant’s Supplemental submission on October 7, 2020. These emails and submissions will be discussed in detail below.

4. Factual Background

The First Complainant is the owner and operator of the new hotel attached to the Adelaide Oval stadium and owns the registered business name “Adelaide Oval Hotel”. The Second Complainant is the operator of the Adelaide Oval Stadium which stadium was established in 1871 and hosts major sporting and cultural events and in particular has hosted cricket and football events since that time, being the headquarters for the South Australian Cricket Association and the South Australian National Football League competitions. The Second Complainant owns registered Australian combined word and logo mark 1554556 that incorporates the word mark ADELAIDE OVAL (registered on August 26, 2013) and also owns the domain name <adelaideoval.com.au>.

The disputed domain name was registered by the Respondent, a property investment and development company and hotel operator, on or about February 16, 2012. Initially it resolved to the Respondent’s website at “www.hinesproperty.com.au” but was subsequently re-directed by the Respondent and as at the date of the Complaint and as at the time of this decision resolves to a website at “www.pullmanadelaide.com.au” for a hotel owned by the Respondent.

5. Parties’ Contentions

A. Complainant

The First and Second Complainants submit that they are part of the same corporate group and are therefore “affiliates” for the purposes of bringing a consolidated administrative proceeding (hereafter they will both be referred to in the singular as “the Complainant”).

The Complainant submits that since May 2013 it has owned a registered business name for “Adelaide Oval” with the Australian Securities and Investments Commission and that “Adelaide Oval Hotel” is incorporated into its company name and that since November 2018 it has owned a business name for “Adelaide Oval Hotel”. It asserts that it also owns the registered Australian trade mark as identified above and also has filed a pending Australian trade mark application under number 21080905, although there is no indication of its’ filing date in the Complaint or the Case File made available to the Panel.

The Complainant says that the disputed domain name is identical to its business name for “Adelaide Oval Hotel” and to its pending trade mark application. It also says that the disputed domain name is confusingly similar to its registered trade mark, which contains the words “Adelaide Oval”, and the Complainant asserts that the additional word “hotel” does not serve as a distinguisher. As a result, the Complainant says that the disputed domain name is confusingly similar to its registered trade mark and identical to its “Adelaide Oval Hotel” registered business name and to its pending trade mark application.

The Complainant submits the Respondent does not have any rights or legitimate interests in respect of the disputed domain name, for the following reasons:

(a) the Respondent’s use of the disputed domain name as a parked domain which redirects to the website of a competitor is not bona fide use or legitimate noncommercial use;

(b) the Respondent has acquired no Australian trade mark or service rights relating to the disputed domain name;

(c) the Respondent is not and has never been commonly known as “Adelaideovalhotel.com.au”, nor does it have any official or common connection, association, affiliation or commercial arrangement with the Adelaide Oval Hotel or the Adelaide Oval stadium; and,

(d) in the context of the Adelaide CBD, there is no material geographic connection between the Pullman Adelaide hotel and the Adelaide Oval stadium, noting that there are four other luxury “5-star” hotels situated in closer proximity to the Adelaide Oval stadium than the Pullman Adelaide hotel.

The Complainant submits that up until sometime between February 2018 and February 2019, the Respondent used the disputed domain name to redirect to its property investment and development website at <hinesproperty.com.au>, which has no reference to or link with the “Adelaide Oval” stadium. At some time between February 2018 and February 2019, the Complainant says that the Respondent changed the disputed domain name to redirect to the website of the Pullman Adelaide hotel, which it says is a direct competitor of the Complainant’s hotel. Noting that the Adelaide Oval stadium is not mentioned at all on the Pullman Adelaide Hotel’s website, that the disputed domain name was not re-directed until the same period that the Adelaide Oval Hotel development was being discussed in the media and was subsequently announced, and that the disputed domain name is used solely as a parked domain name to redirect to another website, the Complainant says that the Respondent is using the disputed domain name in bad faith in order to benefit from increased media coverage and public interest for the Complainant’s new hotel development.

Further, it says that this is a clear attempt to mislead potential guests into believing that the Pullman Adelaide Hotel is either located at the Adelaide Oval or has some official affiliation to the Adelaide Oval is the most convenient hotel for tourists visiting it. None of this says the Complainant amounts to the Respondent having any rights or legitimate interests at the date of the filing of the Complaint and even if the Respondent did originally have nay rights or legitimate interests from its February 2012 registration date, these were superseded when it re-directed the disputed domain name to the Pullman Adelaide Hotel’s website.

As far as bad faith is concerned, the Complainant submits that the Respondent’s conduct in re-directing the disputed domain name to the website at <pullmanadelaide.com.au> amounts to evidence of conduct in bad faith in terms of paragraph 4(b)(iv) of the Policy. It says that as a result there is a significant risk of likelihood of confusion in that tourists could incorrectly assume that the Pullman Adelaide Hotel is affiliated with or is close to the Adelaide Oval stadium and it notes various real examples of such confusion in the marketplace, whether by booking agents or prospective guests.

B. Respondent

The Respondent submits that the Complainant has not demonstrated that the disputed domain name is identical or confusingly similar to a relevant right for the purposes of the first limb of the Policy. In summary it says that the Complainant has no trade mark registration for a relevant word mark and that its combined word and logo mark registration was not only filed after the disputed domain name was registered, but it gives no exclusivity to the “Adelaide Oval” mark which it says is a descriptive geographic reference to a local landmark and that overall the disputed domain name is not confusingly similar to the Complainant’s combined word and logo mark registration. In addition, the Respondent submits that the Complainant’s pending trade mark application is not relevant and that its business name or company name registrations do not establish relevant rights for the purposes of this element of the Policy. Nor, says the Respondent has the Complainant demonstrated common law rights in “Adelaide Oval”. In particular, it says that the name “Adelaide Oval” refers to a geographic location and not to any reputation attaching to the Complainant. The Respondent further supports this assertion by noting that the domain name <adelaideoval.com.au> is owned by the South Australian Cricket Association Inc. and not by the Complainant.

The Respondent says that it is one of the largest hotel developers, owners, and operators in Adelaide and owns two hotels within short walking distance of the Adelaide Oval, being the Pullman Hotel and the Ibis Adelaide. The Respondent says that after it registered the disputed domain name and also <adelaideoval.com> on or about February 16, 2012, it used the disputed domain name to direct to websites it owns which promotes its hotels located near the Adelaide Oval. The Respondent says that it did so because in 2011 it saw that the Adelaide Oval was being re-developed and thought that with further events occurring at the stadium there would be a need for additional accommodation and at that time there was no indication that a hotel was being planned as part of the re-development. Its’ re-direction instruction was given on April 16, 2012, and it says that shortly afterwards the disputed domain name directed web-users to <hinesproperty.com.au>. After this time, the Respondent submits that it used the disputed domain name to promote its hotels in close proximity to the Adelaide Oval and that this included, in particular, the Crown Plaza which was subsequently re-named the Pullman Adelaide and also the Ibis Adelaide. The Respondent says that it did this in good faith on the basis that people seeking accommodation near the Adelaide Oval stayed at the Respondent’s hotels and that the Respondent was hence offering the service of hotels near the Adelaide Oval. The Respondent says that it registered the disputed domain name following the South Australian Government’s announcement of the re-development of the Adelaide Oval in the Adelaide Oval Redevelopment and Management Act 2011 (SA) which did not include plans to build a hotel or accommodation but did foreshadow the likely development of event promotions at that venue. It says that the descriptive use of the disputed domain name to refer to the Respondents’ hotels near the Adelaide Oval through the “Hines website” was entirely proper in 2012 and that at that time the Complainant operated no hotel in the area.

The Respondent submits that it re-directed the disputed domain name to the website for its newly re-branded “Pullman Adelaide” hotel on or about October 1, 2017, which it says was part of an overall re-development of the Respondent’s websites in light of the newly re-branded hotel. The Respondent says that this re-direction had nothing at all to do with the Complainant’s activities and it makes little sense to suggest otherwise considering that the “Pullman Adelaide” was formerly the “Crown Plaza Adelaide” and the Hines website had been promoting this hotel located near the Adelaide oval since 2012. The Respondent also notes that the re-direction of the disputed domain name to the single Pullman Hotel website made sense because that hotel had been frequently used by sporting teams, sports clubs, and fans attending the Adelaide Oval.

As far as bad faith is concerned, the Respondent submits firstly that the disputed domain name was registered before the Complainant acquired any trade mark rights (if it is found to have done so, which the Respondent denies) and that the Complainant’s claim that the disputed domain name was “parked” and not used until 2018 is incorrect as demonstrated by the various screenshots of the Hines website put in evidence by the Respondent. It asserts that the disputed domain name has always been used in a manner that accurately tells consumers that the hotels promoted are near the Adelaide Oval, an iconic landmark that has born its geographic name for almost 150 years.

The Respondent further submits that this is a case of reverse domain name hijacking in particular on the basis that not only does the Complainant have no rights to the disputed domain name, but that it seeks the disputed domain name for a new hotel development project idea coined many years after the registration of the disputed domain name in circumstances that the Complainant should have known that it could not demonstrate that the Respondent had acted in bad faith.

6. Discussion and Findings

6.1 Procedural Issues

A. Consolidation of Complainants

The First and Second Complainants submit that they are part of the same corporate group and are therefore “affiliates” for the purposes of bringing a consolidated administrative proceeding. They submit that there are multiple disputes before the Panel within the meaning of paragraph 4(f) of the Policy and that the Panel, in the exercise of the “sole discretion” conferred on it by that provision, should consolidate the disputes now before it. Panels have generally found under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.4, and auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDRP Overview 1.0”), section 1.8) that a right owner’s affiliate company is considered also to have rights for the purposes of standing to file a complaint.

In this case, the First and Second Complainants are members of the same corporate group, with the First Complainant owning company name and business name rights in the “Adelaide Oval Hotel” name and the Second Complainant owning a registered business name for “Adelaide Oval”, a combined word and logo mark that features the dominant words “Adelaide Oval” (Australian trade mark registration number 1554556), and also a pending Australian trade mark application for ADELAIDE OVAL HOTEL under trade mark application number 2108905. In these circumstances, the Panel finds that it is appropriate for the complaints by the First and Second Complainants to be consolidated in these proceedings.

B. Supplemental Filings

The Complainant filed a supplemental submission dated October 6, 2020, in these proceedings. The Panel finds that the matters addressed in this submission could have been dealt with in the Complaint and that in any event the supplemental submission adds nothing material to this decision. Noting that the Respondent’s supplemental submission of October 7, 2020, argued against the admissibility and consideration of the Complainant’s supplemental submission, the Panel finds the matter addressed.

6.2 Decision

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the .au Dispute Resolution Policy the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant owns rights. “Name” has been determined, for the purposes of the Policy, as including the Complainant’s company, business or other legal trading name as registered with the relevant Australian government authority.

The Complainant has demonstrated that “Adelaide Oval Hotel” is incorporated into the First Complainant’s registered company name Adelaide Oval Hotel Pty Ltd (CAN 632288683) and that it owns a registered business name for “Adelaide Oval Hotel”. The elements of the disputed domain name before “.com.au”, being “Adelaide Oval Hotel”, are identical to the substantive elements of the First Complainant’s company name and to its registered business name. As a result, the Panel finds that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

There is no evidence before the Panel that the Respondent trades as, or owns, registered or unregistered trade mark rights in the “Adelaide Oval Hotel” name. In addition, the Complainant has submitted that the Respondent does not have any official or common connection, association, affiliation, or commercial arrangement with it, the Adelaide Oval Hotel, or the Adelaide Oval stadium, and the Panel accepts that submission.

It appears that the Respondent, as the owner of various hotels located centrally in Adelaide, which are not adjacent to or even very near the Adelaide Oval, registered the disputed domain name and also the domain name <adelaideoval.com> on or about February 16, 2012. The Respondent says that it did so because in 2011 it saw that the Adelaide Oval was being re-developed and thought that with further events occurring at the stadium there would be a need for additional accommodation and at that time there was no indication that a hotel was being planned as part of the re-development. Since then and up until several years ago, the Respondent has in effect used the disputed domain name to redirect Internet users seeking accommodation during events at the Adelaide Oval to its own general website at “www.hinesproperty.com.au”, which promoted its own hotels in central Adelaide.

The exact date at which the Respondent re-directed the disputed domain name from its website at “www.hinesproperty.com.au” to the website for its Pullman Adelaide hotel website is unclear. The Respondent says that this occurred on or about October 1, 2017, following the re-branding of its Crown Plaza hotel as the Pullman Adelaide hotel and well before the official announcement in November 2018 of the development of the Adelaide Oval Hotel attached to the Adelaide Oval stadium. However, it has provided no evidence in support of this assertion. Meanwhile, the Complainant submits that at some time between February 2018 and February 2019 and following media or public discussion of the Adelaide Oval Hotel proposal, the Respondent changed the disputed domain name to redirect to the website of the Pullman Adelaide hotel, namely “www.pullmanadelaide.com.au”, which the Complainant says is a direct competitor of the Adelaide Oval Hotel. The media articles provided by the Complainant in support of this assertion are undated and the timing of the re-direction of the disputed domain name remains uncertain, except that based on evidence from the Wayback Machine it appears that the re-direction most likely took place between March 9, 2018, and February 26, 2019.

In any event, it is clear to the Panel that the Respondent owns no trade mark or common law rights that would support its registration and use of the disputed domain name. It appears that the Respondent registered and has used the disputed domain name since 2012 in order to re-direct Internet users to its own websites in order to promote its own hotels. Contrary to the Respondent’s case, none of these hotels appear to be very close to the Adelaide Oval and it is telling that based on the materials on the record, neither of the Respondent’s websites either promote or make reference to its hotels as being located near to the Adelaide Oval.

The relevant date at which the position under this element of the Policy is to be determined is the date of filing of the Complaint (following similar practice under the UDRP as described at section 2.11 of the WIPO Overview 3.0). By this date, the Complainant’s Adelaide Oval Hotel was taking bookings and Internet users seeking that hotel would be very likely to be confused or deceived into thinking that the disputed domain name would resolve to a website for that hotel rather than the Respondent’s Pullman Adelaide Hotel. This is not legitimate or bona fide conduct and is not consistent with the Respondent having legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has made out a prima facie case that at the date of filing the Complaint the Respondent had no rights or legitimate interests in the disputed domain name and for the reasons outlined above and also as set out in Part C below, the Panel finds that the Respondent has failed to rebut that case. As a result, the Complaint succeeds under the second element of the Policy.

C. Registered or Subsequently Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy the Complainant must demonstrate that the Respondent has registered orused the disputed domain name in bad faith. Notably there is no conjunctive requirement in this limb of the Policy as there is under the UDRP Policy and, had the proceeding been under the UDRP, it may have proved a more difficult task for the Complainant to establish that the domain name had been registered in bad faith. But, applying the Policy, even though the disputed domain name was registered prior to the development of the Adelaide Oval Hotel, and over five years prior to its public announcement, whether it was registered in bad faith or not is entirely academic if it has subsequently been used in bad faith.

Evidence of use in bad faith will be shown under paragraph 4(b)(iv) of the Policy where by using the domain name, a respondent has 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.

In this case, the Respondent has used and is using the disputed domain name, by its own admission, to

re-direct Internet users to a website that promotes the Respondent’s hotel for its own commercial gain. People who see the disputed domain name will assume, correctly, that it means the hotel at the Adelaide Oval, which is the Complainant’s hotel, as that is its name and it is physically situated at the Adelaide Oval. People who then seek to reserve a room at the hotel at the Adelaide Oval are likely to be confused or deceived into thinking that the disputed domain name will lead them to the Adelaide Oval Hotel’s website but they will instead be re-directed to the website of the Respondent’s Pullman Adelaide Hotel which is not named the Adelaide Oval Hotel and is not situated at the Adelaide Oval but is quite some distance away from the it. Even if the domain name were taken to mean a generic description of all hotels at the Adelaide Oval, the Pullman Adelaide Hotel is not one of them. Moreover, the Pullman Adelaide’s own website does not assert that it is at or near the Adelaide Oval, but rather that it is “(p)ositioned in the heart of the Adelaide Central Business District”. There is, also, nothing on the Respondent’s website to indicate that the Pullman Adelaide has no association with the Complainant’s hotel nor that the Respondent’s hotel is more than one kilometer from the Adelaide Oval stadium. This is precisely the sort of circumstance that falls within paragraph 4(b)(iv) of the Policy and amounts to evidence of use of the disputed domain name in bad faith.

As a consequence the Panel finds that the Complaint also succeeds under this element of the Policy.

D. Reverse Domain Name Highjacking

The Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking against the Complainant. However, as the Complainant has succeeded on all three elements of the Policy, the Panel declines to make that finding.

7. 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 <adelaideovalhotel.com.au> be transferred to the Complainant.

Alistair Payne
Presiding Panelist

John Swinson
Panelist

The Hon. Neil Brown Q.C.
Panelist
Date: October 16, 2020