WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keep Australia Beautiful Council (Qld) Inc. v. Keep Australia Beautiful National Association Ltd.

Case No. DAU2021-0004

1. The Parties

The Complainant is Keep Australia Beautiful Council (Qld) Inc., Australia, internally represented.

The Respondent is Keep Australia Beautiful National Association Ltd., Australia, represented by Corrs Chambers Westgarth, Australia.

2. The Domain Name and Registrar

The disputed domain name <kabqld.org.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2021. On January 25, 2021, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On February 3, 2021, 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 February 3, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2021. The Response was filed with the Center on February 20, 2021. On February 22, 2021, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 26, 2021. 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 March 12, 2021, the date for submission of the Panel’s decision was extended to at least March 19, 2021.

4. Factual Background

This is the second round in a dispute between a nationally operating charity and one of its former, state-based constituent members. Both claim to operate and promote anti-litter campaigns, particularly relevantly for present purposes under the name or title “Keep Australia Beautiful”.

In Keep Australia Beautiful National Association Ltd v. Keep Australia Beautiful Council Qld Inc, Community Projects Queensland Ltd (also known as Keep Queensland Beautiful), WIPO Case No. DAU2020-0016, the present Respondent failed in its attempt to have the domain names <keepaustraliabeautiful.org.au> and <tidytowns.com.au> transferred from the present Complainant. Now, the Complainant seeks transfer to it of the disputed domain name registered by the Respondent.

The Complainant is an incorporated association under the Associations Incorporation Act 1981 (Qld). According to a Certificate of Incorporation provided under s 12 of that Act, the Complainant was incorporated on August 26, 1994. It was incorporated under its current name. It is a registered charity under Queensland law and makes a point of stating that it is not required under any law or legislation to be registered with the Australian Charities and Non-for-Profits Commission, a body set-up under Commonwealth law to regulate charities and not-for-profit organisations within Australia.

According to an article published by Waste Management Review (included in the Response), the forerunner of the “Keep Australia Beautiful” campaigns was established by Dame Phyllis Frost in 1963 in response to her experience travelling between Melbourne and Bendigo. Dame Phyllis persuaded the National Council of Women to establish a group representing government and community organisations under the name State Wide Civic Pride. This group adopted the name Keep Australia Beautiful Council in 1968 and around that time started a campaign known as Tidy Towns based on a program in Ireland.

Anti-litter campaigns quickly spread to other states and territories. In 1971, a Keep Australia Beautiful National Association was formed by the Victorian and South Australian organisations. A Keep Australia Beautiful association was formed in New South Wales in 1975.

According to the Complaint, the Queensland anti-litter movement was formed in 1966 when the Royal Automobile Club of Queensland (RACQ) established a voluntary committee representing local and state government, community and service associations, business and commerce groups to deliver what became three successive anti-litter campaigns. The Lord Mayor of Brisbane launched the first campaign. (In contrast to the Complaint, the Respondent’s website at <kab.org.au> dates the RACQ’s launch of an anti-litter program in Queensland to 1971.)

It appears that early on, if not from the start, the promoter of these campaigns was known as the Keep Queensland Tidy Committee.

In 1971, the organisers in Queensland adopted the name, Keep Australia Beautiful Council (Qld); presumably at that point an unincorporated association. Confusingly, however, the Complaint latter claims that the Complainant has been known as Keep Australia Beautiful Queensland or KABQ or just Keep Australia Beautiful “since its inception in 1966”.

According to the Complaint, the Complainant:

(a) operates the Tidy Town Clean Beaches – Queensland accreditation and awards program (the Complaint says it has done so since 1974 even though the Complainant was not incorporated until 1994);

(b) operates by agreement with the Queensland Department of Transport and Main Roads and the Local Government Association of Queensland, a litter clean-up program “Adopt-a-Spot”; and

(c) operates the Cleaner Greener Schools program.

The Complainant says its Facebook page has 11,277 followers. The URL of this account is “www.facebook.com/KeepQueenslandBeautiful/events/?ref=page_internal”. The page is headed “Keep Queensland Beautiful” and provides as its website address “www.keepqueenslandbeautiful.org.au”. The website bears a copyright notice “© Queensland Litter Prevention Alliance”. So far as the Panel can ascertain, neither the expression “Keep Australia Beautiful” nor the name of the Complainant used in the Complaint appears on the Facebook page.

The Complainant also says its Instagram account has 8,068 followers. The URL of this page is “www.instagram.com/keepqueenslandbeautiful/” and, like the Facebook page, the Instagram handle is Keep Queensland Beautiful.

The Complainant’s “Adopt-a-Spot” website is also presented under the name Keep Queensland Beautiful. The domain name <cleanergreener.school> redirects to the Keep Queensland Beautiful website.

The Complainant registered the domain name <kabq.org.au> on April 3, 2008, and, according to the Complaint, has been using that domain name in connection with its activities since then.

The Respondent was established as a company limited by guarantee in 2001. It was formed by the then existing seven state and territory Councils. The Complainant was one of these founding incorporators.

The Complainant subsequently relinquished its participation in the national body in 2016. It says this was because of what it claims was the dysfunctional nature of the national body and because the then Queensland Minister for the Environment said the Queensland would not support an organization involved in a recycling program operated by Coca-Cola and the packaging industry. In the earlier dispute, National Association Ltd, supra, the Panelist recorded that the now Complainant began a “merger” process with two other organisations including Community Projects Queensland Ltd (also known as Keep Queensland Beautiful). That appears to be borne out by the names of the Complainant’s Facebook and Instagram accounts.

The Complainant was the initial registrant of:

(a) Australian Registered Trade Mark No. 830845, TIDY TOWNS and device; and

(b) Australian Registered Trade Mark No. 896290, KEEP AUSTRALIA BEAUTIFUL and device.

Trade Mark No. 830845 was filed on and registered from April 6, 2000. Trade Mark No. 896290 was filed on and registered from November 27, 2001. Both registrations were not renewed on the expiry of their original 10 year terms and have been removed from the Trade Marks Register.

After the formation of the Respondent, the Complainant and the Respondent entered into a document entitled “Trademark Licensing Agreement”.

As the Panelist in the earlier decision National Association Ltd, supra, considered, it is not easy to understand this document or its relationship to what the parties actually did. For example, it is entitled Trademark Licensing Agreement, but the Complainant was described as the “Assignor or Licensor” and the Respondent was described as the “Assignee or Licensee”. Despite this contradictory description of the parties, this document appears to grant the Respondent a non-exclusive limited licence to use the two registered trade marks.

Further, by clause 8, the Trademark Licensing Agreement was to expire on June 30, 2011 unless earlier terminated. In the earlier dispute, National Association Ltd, supra, the Panelist refers to the parties executing a document extending the term of the Trademark Licensing Agreement until June 2021. In this proceeding, neither party has claimed the term of the Trademark Licensing Agreement was extended. Clause 10 of the Trademark Licensing Agreement, however, provided for termination of the licence if the now Complainant “ceases to become a federation member.”

In addition, despite clause 17 stating that the Trademark Licensing Agreement is the entire agreement between the parties, the execution clause states that:

“The signatories to this Licensing Agreement must be the same signatories to the Deed of Assignment.

“The Deed of Assignment is subject to the terms of this Licensing Agreement.”

The Complainant subsequently assigned Trade Mark No. 896290, but not Trade Mark No. 830845, to the Respondent. Neither party has submitted a document which might be the Deed of Assignment referred to in the Trademark Licensing Agreement. Neither party has explained how Trade Mark No. 896290 came to be assigned to the Respondent.

As already noted, both it and the registration of Trade Mark No. 830845 expired at the end of their initial 10 year terms in, respectively, 2010 and 2011.

The Respondent is now the registered owner of:

(a) Australian Registered Trade Mark No. 1304123, a figurative mark for Keep Australia Beautiful and device in respect of goods and services in International Classes 25, 35, and 41. This trade mark was filed on June 15, 2009 and is registered and effective from that date; and

(b) Australian Registered Trade Mark No. 2015450, a figurative mark for Keep Australia Beautiful NATIONAL LITTER INDEX and device in respect of waste management information services in International Class 40. This trade mark was filed on and is registered and effective from June 12, 2019.

The Respondent registered the disputed domain name on August 14, 2019.

It resolves to a website which features the logo “Keep Australia Beautiful QLD”. This website provides information about programs the Respondent appears to operate including, currently, the 2021 Queensland Sustainable Communities Tidy Towns Awards program. There is a media release announcing the Respondent’s relaunch of operations in Queensland on December 12, 2019. Other items announce which community would be representing Queensland in the national awards and the winning community for the 2020 Queensland state awards.

The Complainant has presented evidence of a screenshot of the website to which the disputed domain name resolved declaring the entries in one of the Complainant’s programs closed on October 9, 2020. The copyright notice on this page was © Keep Australia Beautiful National Association | ABN 46 603, 975 748. This ABN, however, is the ABN of Community Projects Queensland Ltd. which the Complainant says is associated with it, not the Respondent.

For completeness, the Panel notes that the Complainant has obtained a default court judgment ordering that the Respondent pay an entity related to the Complainant, Queensland Litter Prevention Alliance, the sum of AUD 6,813.97 for an unpaid debt.

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 with, 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 trade mark at the date the Complaint was filed and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.

The Complainant does not assert ownership of any registered trade marks. Instead, it relies on its rights in unregistered trade marks said to arise from its use of “Keep Australia Beautiful Queensland” or “KABQ” or “Keep Australia Beautiful” in Queensland since 1966 or 1971.

Standing under the Policy can be based on rights in a so-called unregistered trade mark.

A complainant seeking to establish rights in an unregistered trade mark must typically show it has used the trade mark sufficiently to have developed a reputation in the trade mark (referred to as a source identifier) so that the relevant public is likely to consider it as the source of goods or services flowing therefrom. A corollary is that if another person is using such claimed mark, the public would be misled or confused into thinking that this other person is the owner of the reputation in the unregistered trade mark or in some way associated with the legitimate owner, when they are in fact not the owner or associated with the owner. While there are exceptions such as where there has been a prominent media launch of a new brand, this typically requires evidence about the volume of sales under the trade mark, the length of time it has been used, the extent of advertising, possibly consumer surveys and media references and the like. See e.g. auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDRP Overview 1.0”), section 1.7.

At auDRP Overview 1.0, section 1.2, it is noted that:

“Where the domain name consists of the acronym of the complainant’s trademark or name, the domain name is unlikely to be considered confusingly similar to the mark or name unless the complainant can establish a reputation in the acronym.”

While that is directed to the second part of the inquiry – the comparison of the disputed domain name to the Complainant’s trade mark (or other admissible rights under the Policy), it discloses that the Complainant needs to demonstrate it has developed a reputation in the acronym “KAB” or “KABQ”.

The Complaint does not include evidence of the use of “KAB” or “KABQ” as a trade mark other than the registration and asserted use of the disputed domain name <kabq.org.au>.

Use of a domain name can constitute use as a trade mark. Whether its use is sufficient to develop a reputation sufficient to give rise to trade mark rights as an unregistered trade mark, however, will depend on how the domain name is used and the factors referred to in the auDRP Overview 1.0, section 1.7.

The Complaint does establish that the disputed domain name was registered in 2008. It does currently resolve to a website at <keepqueenslandbeautiful.worldsecuresystems.com/kabq>. This webpage is headed Keep Australia Beautiful Queensland. It recites a short history of the organization including in the second paragraph and following:

“The then Lord Mayor of Brisbane, Clem Jones, launched that campaign, which, within a few years, grew to become the Keep Queensland Tidy Committee, later to become known as the Keep Australia Beautiful Council (Qld) ‘KABQ’.

A few years later, in 1971, when the first official Annual General Meeting of the Keep Australia Beautiful Council (Qld) was held in a canteen at the RACQ headquarters in Brisbane, tens of thousands of dedicated Queenslanders and hundreds of committed local councils have worked towards improving their local environments through participation in our iconic programs; Tidy Towns, Clean Beaches and most recently the Cleaner Greener Schools accreditation.

Our organisation is better known as Keep Australia Beautiful Queensland (KABQ).

In 2013, we proudly celebrated 42 years of litter prevention education across Queensland, and with that milestone came the need for a refresh, resulting in the Keep Queensland Beautiful brand being born.

Due to funding constraints from both Government and Industry, in early 2015, ownership of the Keep Queensland Beautiful brand was released to the Queensland Litter Prevention Alliance.

The now revitalised Keep Queensland Beautiful organisation continues to inspire Queenslanders to make a difference, working across a full range of environmental sustainability issues.” (original emphasis)

The text extracted above indicates that in or about 2013 the Complainant, or a predecessor, adopted the “Keep Queensland Beautiful” branding and moved away from the Keep Australia Beautiful branding.

Consistently with the emphasis on “Keep Queensland Beautiful”, clicking on the links on the page such as “About Us” and “Programs” takes the browser to various pages headed “Keep Queensland Beautiful” on the website at <keepqueenslandbeautiful.worldsecuresystems.com>.

The Complaint does not include evidence showing how the domain name <kabq.org.au> has been promoted to the public.

The Complaint does not include evidence about how many visits there have been to, or via, the domain name <kabq.org.au>.

Moreover, while the Complainant advances its Facebook and Instagram accounts as evidence of its reputation, they present to the world under the name and trade mark “Keep Queensland Beautiful”, not Keep Australia Beautiful, still less “KABQ”.

In these circumstances, the Panel is unable to find that the Complainant has established a reputation and goodwill in the acronym KAB or KABQ sufficient to constitute rights in an unregistered trade mark under the Policy.

Accordingly, the Complaint must fail.

6. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Sole Panelist
Date: March 15, 2021