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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Shop, Distributive and Allied Employees’ Association v. Peter Klasen

Case No. D2006-0255

 

1. The Parties

The Complainant is Shop, Distributive and Allied Employees’ Association, Southbank, Victoria, Australia, represented by Minter Ellison, Australia.

The Respondent is Peter Klasen, Berwick, Victoria, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <sdavic.com> is registered with Bottle Domains.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2006. On March 2, 2006, the Center transmitted by email to Bottle Domains a request for registrar verification in connection with the domain name at issue. On March 3, 2006, Bottle Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 March 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2006.

The Center appointed Michael D. Pendleton as the sole panelist in this matter on April 7, 2006. 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 is the largest trade union in Australia with its headquarters in Melbourne. In 1972, it changed its name to its present name, Shop, Distributive and Allied Employees’ Association. It was granted registration in August 1990, of two Australian trade marks of, arguably, the letters ‘SDA’ in lower case and highly stylized form in respect of insurance and financial services and services provided by a trade union. There is a specific endorsement to both trademarks that no rights to the exclusive use of the letters SDA are given except as represented in the mark. The Complainant applied to register ‘SDAVIC’ as an Australian trade mark on February 22, 2006, in respect of services provided by a trade union as well as two additional classes of services. Since 1997, the Complainant has registered the domain name <sdavic.org> and has established the website “www.sdavic.org”.

A ‘WHOIS’ database search on February 21, 2006, revealed the first registrant of the domain name <sdavic.com> as Mr. Rick Wells, a Melbourne barrister, with a post office box number address. Mr. Wells wrote to the Complainant’s solicitors on February 23, 2006, stating that he had no knowledge of the domain name or its acquisition under his name. A subsequent ‘WHOIS’ database search on February 23, 2006, revealed that the registrant owner details for <sdavic.com> had changed to those of the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that on the basis of its use of its website since at least 1997, it has acquired a significant reputation and hence common law rights in ‘sdavic’ and ‘SDAVIC’. Although not specifically stated, the Panel assumes the Complainant implicitly also asserts entitlement to statutory relief under the federal trade practices legislation.

The Complainant alleges the Respondent, the registrant owner of <sdavic.com>, has used the domain name to comment on and criticize the current management of the Complainant in the context of a political campaign for upcoming union elections. There is no allegation of any commercial use of the domain name <sdavic.com>.

The Complainant alleges the initial acquisition of the domain name in the name of Mr. Rick Wells and the subsequent change of registrant details to those of the Respondent probably indicates the Respondent was the true proprietor since registration and “fraudulently appropriated Mr. Wells’ name and details for the purpose of registering the domain name and presumably evading identification” (Part 5C of the Complaint).

The Complainant alleges the three required elements of the Policy are made out, specifically paragraph 4(a):

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered in and is being used in bad faith.

The Complainant alleges damage to its reputation and goodwill and seeks a transfer of the <sdavic.com> name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

This is a difficult case because of the elements of free speech, political purpose and non commercial use of the Respondent’s domain name. All of the above are rightly acknowledged by the Complainant in the Complaint.

A. Identical or Confusingly Similar

The difficulty of registering three letters of the alphabet under an examination type trade mark system such as that in Australia is well known. The Complainant’s service marks are said to be the letters SDA, made up of a highly stylized and bolded lower case ‘d’ linked to an ‘a’ and prefaced by an ‘s’ which overlays the ‘d’. The registration identifier in the ATMOSS search, i.e., ‘Word: SDA’ and the endorsement that no rights as such are conferred in the letters SDA, suggest that the mark is made up of stylized words. Without these, and this is what is to be compared for infringement purposes, one might not recognize the mark as made up of alphabet letters at all. This must be compared with the Respondent’s <sdavic.com> domain name. Visual and phonetic comparison, idea of a mark comparison, even imperfect recollection comparison are unlikely to unequivocally lead to a finding of confusing similarity.

In Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016, the Panel nakedly decided that the class of goods or services for which a trade mark is registered is irrelevant to the comparison between the Respondent’s domain name and the Complainant’s prior registered trade marks, in the following words:

“The domain name allocation.com is clearly confusingly similar to Complainant’s trademarks Allocation and Allocation.com. For the question of similarity in the context of the Policy it is not relevant whether the trademark is used, nor whether the trademark is famous. Neither is it relevant for which goods or services the trademark has been registered or that other identical or similar trademarks exist.”

This decision means that for the purposes of the first element of the Policy, Panels can not be said to be comparing trademark rights in the sense of the legal rights conferred by registration. We are comparing something different in kind and magnitude. It is unnecessary for me to consider this rather fundamental point given the conclusion reached above and below.

The trademark application for ‘SDAVIC’ is not of itself relevant (see usDocuments, Inc. v. Flexible Designs, Inc. / Craig Dinan, WIPO Case No. D2003-0583 <usdocuments.com>; Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 <aspengrove.com>).

Strictly speaking, failure to make out one of the required three elements of paragraph 4(a) of the Policy concludes the decision against the Complainant, but given the Complainant’s detailed submissions the Panel should consider the remaining paragraphs.

B. Rights or Legitimate Interests

The Complainant cites Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314 as authority for the proposition that lawful criticism of a trade mark owner does not extend to occupying a domain name identical to a sign which identifies a trade mark owner. In that case the Norwegian tax authority complained about a domain name which was a diminutive, or at least version of its name. After discussing the legitimacy of free speech the Panel found confusing similarity:

“The Panel does not, however, believe that this right extends to occupying a domain name identical to a sign identifying a trademark owner. In particular, the Panel believes that anyone wishing to contact a trademark owner, has the right to contact the owner by addressing himself to the owner’s exact identifier, followed by the top level suffix, in this case .com, and to thereby reach the trademark owner, and not a third party, which itself does not have rights in that mark.”

The Panel also found bad faith as the Respondent had offered to sell the domain name back to the Complainant.

Quite a considerable number of decisions have evolved around the concept of free speech, complaints and the so called ‘sucks’ cases (see Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 <walmartcanadasucks.com> and The Royal Bank of Scotland Group plc v. natwestfraud.com and Umang Malhotra, WIPO Case No. D2001-0212 <natwestfraud.com>). The ‘sucks’ cases are distinguishable from the present in that the disclaimer ‘sucks’ appears as part of the domain name. In the present case the disclaimer is found in the web page. Some Panels suggest disclaimers such as ‘sucks’ are not sufficient as not everyone using the Internet is conversant with idiomatic English. This strikes me as disingenuous. There is also the suggestion that what is confusing is what is picked up by a search engine. This strikes me as far too wide a proposition. The Panel in Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015 <lockheedsucks.com> (but note the dissent) makes eminent sense where the Panel states:

“In reaching this Decision, the Panel is mindful that the current nature of the internet is such that search engines may well pull in the disputed domain names when the searcher intends to find only Complainant’s well-known company. However, the Panel believes that once the searcher sees ‘lockheedsucks.com’ and ‘lockheedmartinsucks.com’ listed among the websites for further search, she will be able readily to distinguish the Respondent’s site for criticism from Complainant’s sites for goods from aerospace to t-shirts”.

It seems clear that in order to ensure free speech and criticism the proponent has no need to use an identical of confusingly similar domain name. It will suffice if a search engine is able to identify the proponent’s material with sufficient prominence. As the Panel has decided the domain name is not confusingly similar to the Complainant’s statutory and common law rights the latter proposition does not apply in the present case.

C. Registered and Used in Bad Faith

The Respondent makes no commercial use of the domain name or website. It offers no goods or services. Its purpose is wholly to criticize the Complainant. There is an explicit disclaimer on the webpage associated with the domain name (cited in the Complaint) which states:

“This is not the webpage of the SDA Victoria Branch

….IT’S BETTER!”

This of course is not apparent in the domain name, one has to enter the web page to find the disclaimer, but given the prominence of the disclaimer and the contents of the web page, it deters a finding of bad faith. According to the Complaint the webpage has not resolved to an active website since March 1, 2006, but surely one can not infer abandonment of the website on this basis alone.

Use by the Complainant since at least 1997, of the acronyms ‘SDA VIC’, ‘SDAVIC’ and the domain name <sdavic.org> is alleged to give rise to common law rights via the action for passing off and possibly (but not alleged) statutory rights under the Trade Practices Act 1974 (Cth) (TPA). Reputation and requisite goodwill may well be established and is the least problematic of the three elements of the cause of action for passing off or indeed the statutory counterpart in sections 52 and 53 of the TPA.

The second and third elements of the action and its statutory counterpart, deception and confusion and damage or its likelihood, are more difficult to assess. The same prominent disclaimer cited above in relation to the registered trade marks would also appear to operate in the passing off and trade practices contexts to suggest no requisite confusion. The lack of any products or direct services offered by the Respondent reinforces this and also operates so as to suggest no commercial damage or its likelihood, in the passing off sense. The TPA may well be different in this respect. Thus the Complainant may well make out the elements of reputation, goodwill and at least in the statutory context - damage; but there is no real likelihood of confusion present given the disclaimer and the actual contents of the webpage.

The Complainant alleges the Respondent:

“fraudulently appropriated Mr. Wells’ name and details for the purpose of registering the domain name and presumably evading identification” (Part 5C of the Complaint).

Fraudulent registration is always a serious allegation and it is difficult enough to find even with the opportunity to hear oral evidence and cross examination. If another explanation to fraud is conceivable it is safer, especially on evidence in this form, to decline to find fraud. In this case there are a number of possible explanations for the initial registrant details, including mistake, error or the like. As the Complainant concedes the Respondent’s use of the domain name is to criticize it, the Panel cannot find bad faith in use of the domain name.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Michael D. Pendleton
Sole Panelist

Dated: May 2, 2006