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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Goway Travel Limited v. Tourism Australia

Case No. D2006-0344

 

1. The Parties

The Complainant is Goway Travel Limited, a company incorporated under the laws of Ontario, located in Toronto, Ontario, Canada, represented by its internal representative.

The Respondent is Tourism Australia, located in Sydney, Australia. According to Complainant, Tourism Australia is a government entity with the mandate to promote Australia as a travel destination.

 

2. The Domain Name and Registrar

The disputed domain name is <downunder.travel> (the “Domain Name”). The Domain Name was registered with Melbourne IT (the “Registrar”), trading as Internet Names Worldwide, Melbourne, Victoria, Australia, on October 3, 2005.

 

3. Procedural History

The Complainant originally filed a complaint (the “Complaint”) with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2006. In the cover sheet accompanying its Complaint, the Complainant invoked the ICANN Charter Eligibility Dispute Resolution Policy (“CEDRP”) for domain names registered in the restricted “.travel” global Top Level Domain (“gTLD”). On March 21, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 2006, the Registrar transmitted an email to the Center verifying that the Respondent is listed as registrant of the Domain Name and that the registrant was bound to the CEDRP.

On March 31, 2006, the Center informed the Registrar that, contrary to the information provided in Complainant’s cover letter, the Complaint actually raised a claim under the Uniform Domain Name Dispute Resolution Policy (“UDRP” or the “Policy”).¹ Accordingly, the Center transmitted by email to the Registrar a request for verification that the Respondent had submitted to the UDRP and to the jurisdiction of the courts as provided in the UDRP. The Registrar verified the UDRP’s applicability in an email on March 31, 2006.

On March 31, 2006, the Center sent a Complaint Deficiency Notification to the Complainant, notifying the Complainant of the following formal deficiencies in the Complaint: (1) that the Complaint had not been submitted in electronic format as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(b); and (2) that the Complaint transmittal cover sheet forwarded to the Respondent in accordance to Rules, paragraph 3(b)(xii), improperly referred to the CEDRP rather than the UDRP.

On March 31, 2006, the Complainant submitted an amended Complaint to the Center by electronic copy addressing these two deficiencies; the Center received the hard copy of the amended Complaint on April 5, 2006. The Center verified that the amended Complaint satisfied the formal requirements of the UDRP, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 5, 2006, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding (“Commencement Notification”) to the Respondent.² Respondent was advised that a Response to the Complaint was required within 20 calendar days, or by April 25, 2006. The Respondent did not file any Response. On April 26, 2006, Center notified Respondent’s default by email.

The Center appointed David H. Bernstein as the sole panelist in this matter on May 15, 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

Complainant, a travel company based in Toronto, Canada, provides travel packages to a variety of locations, including the South Pacific. In 1986, the Complainant registered with the United States Patent and Trademark Office (“PTO”) a design mark that consists of the word “DOWNUNDER” in stylized, inverted, capitalized letters (Reg. No. 1,406,163). Complainant registered the same service mark with the Registrar of Trade Marks in Canada.

Although Complainant did not note this fact in its Complaint, both of these registrations include a disclaimer stating that, with these registrations, Complainant is not claiming any exclusive rights to the use of the word “downunder” apart from the mark as illustrated.

Respondent registered the Domain Name <downunder.travel> on October 3, 2005. The Domain Name does not resolve to an active website.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or confusingly similar to its trademark registrations, which contain the word “DOWNUNDER”.

Complainant asserts that the Respondent has no rights or legitimate interests with regard to the Domain Name because Respondent has not used or shown demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. Complainant also asserts that, to the extent Respondent intends to use the Domain Name to promote travel to Australia, that use would be illegitimate because it would reflect a misuse of the term “downunder.” According to Complainant, as defined in the Macquarie dictionary (which Complainant says is Australia’s National Dictionary), “downunder” refers not only to Australia, but also to New Zealand and the adjacent Pacific Islands.

The Complainant contends that the same assertions show that Respondent registered and used the Domain Name in bad faith. Specifically, Complainant asserts that, because Respondent might use the Domain Name to promote travel in Australia only, that use would be misleading to consumers looking for “downunder” travel to New Zealand and the South Pacific Islands.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.³

 

6. Discussion and Findings

In order to succeed in its claim, Complainant must establish all three of the elements of a UDRP action:

(i) the Domain Name is identical to a trademark or service mark in which the Complainant has rights,

(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name, and

(iii) the Domain Name has been registered and is being used in bad faith.

Complainant has failed to establish the first element necessary to succeed on a UDRP claim: that it owns trademark rights and that the Domain Name is identical to that trademark. As noted above, although Complainant owns trademark registrations that contain the word “downunder,” both trademark registrations include a disclaimer affirming that Complainant has not claimed exclusive rights to the word “downunder”. The PTO typically requires such disclaimers when the word is generic, or when the word is merely descriptive and the applicant has not submitted sufficient evidence of acquired distinctiveness. Either way, the legal effect of the disclaimer is the same: the registration protects only the specific design mark shown, and does not give rise to any prima facie evidence that Complainant has trademark rights in the word “downunder,” standing alone.

In the absence of registered trademark rights covering the word “downunder,” Complainant cannot succeed unless it can establish common law trademark rights in the word “downunder.” Complainant cannot do so because, as its own submissions prove, “downunder” is a dictionary word for Australia, New Zealand, and the adjacent islands in the South Pacific. Indeed, in the Complaint, Complainant regularly uses the word “downunder: in its generic sense:

“The Complainant is a global travel company specializing in selling downunder which includes Australia, New Zealand and the South Pacific Islands.”

“The Complainant is the leading tour operator to downunder from North America. . . .”

“The Complainant . . . is a commercial entity involved in the total overall promotion, marketing and sale of travel services to downunder destinations. . . .”

Because Complainant uses this dictionary word in its common meaning – to refer to its trips to that region of the world – the word “downunder” is generic when used in connection with Complainant’s services and thus Complainant has not established any trademark rights in that word. Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00153 (June 28, 2002).

Because the Complainant has failed to prove the threshold question of holding trademark rights, and because Complainant cannot succeed unless it can prove all three UDRP elements, consideration of the other factors and the other allegations in the Complaint are unnecessary. See Tightrope Media Sys. Corp. v. DomainCollection.com, WIPO Case No. D2006-0446 (June 2, 2006). Nevertheless, it is worth noting briefly, that Complainant also has failed to establish the second and third factors. It has not shown that Respondent lacks a legitimate interest in the Domain Name; to the contrary, Complainant admits that Respondent is a government entity with the mandate to promote Australia as a travel destination, and that destination is included in the descriptive phrase “downunder travel.” Nor has Complainant established any bad faith registration or use by Respondent; to the contrary, its arguments about Respondent’s likely use of this Domain Name are speculative and, in any event, there is nothing false about promoting travel to Australia under the phrase “downunder travel,” even if “downunder” also can refer to New Zealand and the South Pacific Islands.

This does not, however, end the Panel’s inquiry. Under the Rules, the Panel must also consider whether Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). That is true notwithstanding that Respondent has not requested such a finding, and even in the absence of a Response. The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use “the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” Rules, paragraph 1 and 15(e).

Complainant’s effort to obtain transfer of the Domain Name on the basis of alleged cybersquatting of a generic word may in itself be indicative of RDNH. Even worse, Complainant did not disclose in the text of its Complaint the material fact that Complainant was forced to disclaim any exclusive rights to “downunder” in both of the trademark registrations upon which the Complainant relies. Taken together, these facts, along with the unsupported arguments made by the Complainant under the second and third factors of the Policy, are sufficient to show that the Complaint was filed in a bad faith attempt to deprive the Respondent of a domain name to which it is entitled. Rodale, Inc. v. Cambridge. WIPO Case No. DBIZ2002-00153.

 

7. Decision

For all the foregoing reasons, the Complaint is denied. In addition, in light of the frivolous nature of the Complaint, the Panel finds Complainant to have been guilty of Reverse Domain Name Hijacking.

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David H. Bernstein
Sole Panelist

Dated: June 6, 2006

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¹ Because this appears to be the first UDRP proceeding involving a “.travel” gTLD, the Panel has reviewed the documentation regarding “.travel” registrations to ensure that such registrations are subject to the UDRP. On May 5, 2005, ICANN and Tralliance (the registry of “.travel” domain names) entered into a sponsored TLD registry agreement. Through this agreement, ICANN designated Tralliance as the sponsoring organization and sole registry for the “.travel” gTLD, and delegated to Tralliance the authority to develop policies for “.travel” domain names. In September 2005, Tralliance created their “.travel” Registry Policies (http://www.tralliance.info/Policies.htm). Section 5.2.4 of the “.travel” Registry Policies states that the UDRP applies to “.travel” domain names. Accordingly, it appears that Complainant has the right to invoke the UDRP in connection with its assertion that Respondent has engaged in abusive cybersquatting in connection with the Domain Name.

² Because Respondent did not submit a Response, the Panel has carefully reviewed the record to ensure that the Center has discharged its obligation to notify Respondent of the Complaint pursuant to paragraph 2(a) of the Rules. The Center sent the Commencement Notification to all appropriate email, fax and physical addresses. The email sent to the email address listed in the Registrar Verification bounced back, and thus was not delivered. In this case, though, the email bounced back not because the email address was incorrect or not working, but rather because the attachments were too large.

. Nevertheless, the Panel declines to request that the Center renotify the Complaint for three reasons. First, it does appear that the Respondent received notice since the hard copy sent by Federal Express was delivered on April 10, 2006. Second, the Default Notification email did not bounce back, suggesting that the Respondent did receive at least that notice, and Respondent has not since objected that it failed to receive earlier notice of the Complaint. Third, because the Panel is ruling for Respondent, due process does not require additional notification to the Respondent at this time. Granting the Respondent additional time to Respond to the Complaint would serve only to delay the ultimate adjudication of this matter and cause the parties to expand additional resources, neither of which are consistent with the goal of resolving domain name disputes quickly and efficiently. If the Panel were inclined to rule for Complainant, renotification might be appropriate to ensure that Respondent had a fair opportunity to defend its registration and use of the Domain Name, see, e.g., Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 (Jan. 23, 2001), but since the Panel is ruling for Respondent, due process does not require any additional notifications in this case.

³ Because Respondent has defaulted, the Panel accepts all of Complainant’s allegations of fact as true for the purposes of this proceeding. Champion Innovations, Ltd. v. Dussling, WIPO Case No. D2005-1094 (December 16, 2005); Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972 (January 7, 2003).