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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

QSoft Consulting Limited v. Brendan Scott Povey

Case No. DAU2009-0003

1. The Parties

The Complainant is QSoft Consulting Limited of Middlesex, United Kingdom of Great Britain and Northern Ireland, represented by Alexander Ramage Associates of the United Kingdom.

The Respondent is Brendan Scott Povey of Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <gaydar.net.au> is registered with AussieHQ Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2009. On April 30, 2009, the Center transmitted by email to AussieHQ Pty Ltd. a request for registrar verification in connection with the disputed domain name. On May 2, 2009 AussieHQ Pty Ltd. transmitted by email to the Center its verification response confirming inter alia that:

(1) it is the registrar for the disputed domain name;

(2) the Respondent is listed as the registrant and providing his contact details;

(3) English is the language of the Registration Agreement.

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 May 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2009. The Response was filed with the Center on May 31, 2009.

The Complainant filed a Supplemental Filing on June 5, 2009.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 17, 2009. 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.

The Respondent requested permission to file a rebuttal and on June 28, 2009 did file a further document. The Panel will discuss the admissibility of this and the Complainant's supplemental documents below.

4. Factual Background

The Complainant owns three registered trademarks in Australia:

- Trademark No. 911830, GAYDAR, registered for services in classes 35, 38 and 45 from May 6, 2002;

- Trademark No. 1006985 GAYDAR, registered for services in class 41 from June 17, 2004 (claiming priority from a Community Trademark); and

- Trademark No. 1131770, GAYDARDIRECT, registered for services in classes 35, 38 and 41 from August 25, 2006.

The Complainant operates an online business largely related to dating and personal advertisements for the gay community under the name GAYDAR and similar names incorporating the GAYDAR mark, including GAYDARNATION, GAYDARGIRLS and GAYDARRADIO. It has registered a very large number of domain names in many gTLDS and ccTLDs for these names and other variations based on GAYDAR. According to the Complaint, the Complainant has been offering services in Australia since 1999. The Complaint states that its website at <gaydar.com.au> currently has almost 93,000 members.

The Respondent registered the disputed domain name on February 4, 2008. At the moment it resolves to a website which the Respondent says is a placeholder website. It features a panel or section which sets out an explanation of what "gaydar" is. The bulk of the website apart from the banner heading is given over to various sponsored links and free gaydar links. Many of the sponsored links are obviously to gay dating sites (other than the Complainant's website).

Annex J to the Complaint includes a print-out from the website "Domain Market Place", "Australia's most trusted .au aftermarket" at which the disputed domain name is offered for sale with an asking price of $10,000.

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the onus of proving that:

(i) the disputed domain name is identical or confusingly similar to a name, trademark 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.

These requirements are similar to those applicable under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). However, there are some important distinctions. For present purposes, the main distinction is that the bad faith requirement under paragraph 4(a)(iii) of the Policy is disjunctive rather than conjunctive. That is to say, it would be sufficient for a Complainant under the Policy to prove either registration or use in bad faith, but it would not be necessary to prove both.

The Panel discusses each element in turn.

Before doing so, however, the Panel notes that the Policy and the Rules do not formally provide for supplemental filings. Paragraph 12 of the Rules provides that a Panel may request or permit, at the Panel's sole discretion, further statements or documents from either party. While paragraph 10(c) of the Rules enjoins the Panel to conduct the proceeding with due expedition, paragraph 10(b) directs the Panel to ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.

While the Supplemental Filing from the Complainant (the "Reply") was not requested by the Panel, the Panel will admit it into the record as it essentially seeks to address evidence submitted in the Response which could not really have been anticipated. The Panel will also admit the Respondent's supplemental filing (the "Rebuttal") in the interests of fairness and evenhandedness.

A. Identical or Confusingly Similar

There are two elements to this requirement under the Policy. First, the Complainant must show that he has rights in a "name, trademark or servicemark". Secondly, the Complainant must show that the disputed domain name is identical or confusingly similar to the rights established.

It is important to note in the present context that this is a different inquiry to that prescribed by trademark law. It requires only the comparison of any relevant rights proved by the Complainant to the disputed domain name. Other considerations such as the priorities in time of the respective claims or the nature of the respective uses do not fall for consideration under this paragraph of the Policy, but may arise under the other paragraphs. See e.g., Facebook, Inc. v. Callverse Pty Ltd, WIPO Case No. DAU2008-0007.

The Complainant has clearly established ownership of the three registered trademarks referred to in section 4 above. The disputed domain name, apart from the ccTLD, ".net.au", is identical to two of those registrations. The ccTLD, being a functional requirement of the domain naming system, may be disregarded for the purposes of this inquiry. Accordingly, the Panel finds that this requirement has been satisfied.

B. Rights or Legitimate Interests

Having satisfied the first requirement of the Policy, the Complainant must next demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. It is now well established that, in view of the difficulties of proving the negative, the Complainant must show at least a prima facie case that the Respondent does not have rights or legitimate interests in the domain name and, if demonstrated, it will fall to the Respondent to rebut this showing.

The Complainant points out that the domain name was registered nine years after the Complainant first commenced providing services in Australia from its website at <gaydar.com.au>. It is almost six years after the registration of the first of the Complainant's trademarks in Australia.

The Complainant next points out that it has not licensed its trademark to the Respondent, nor is the Respondent otherwise associated with the Complainant or its business.

These points are not disputed by the Respondent. Rather, the Respondent contends that the term "gaydar" is a generic term meaning "a homosexual's purported intuitive or sensing ability to identify other homosexuals". The Respondent claims to have derived this definition from Wikipedia and an online dictionary. The Respondent claims a right or legitimate interest in the domain name as a result of his registration of the term "Gaydar Internet Services" as a business name in Victoria and his status as a sole trader with a registered Australian Business Number (the "ABN").

The Respondent does not state what name the ABN is registered for. A search of that number in the online Australian Business Register states that the name of the registered entity is Brendan Scott Povey. That is, the Respondent's own name. This has nothing in common with the disputed domain name and cannot on its face provide the connection with the domain name required by paragraph 2 of Schedule E of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs.

The registered business name would qualify under paragraph 2 of Schedule E of the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs. The Complainant correctly points out, however, that the registration of the disputed domain name does not of itself confer a right or legitimate interest therein. Whether or not that is the case falls to be determined by consideration of the relevant criteria and the available evidence of record.

In the present case, the Certificate of Registration of Business Name included as Annex A to the Response states that the business name was registered on May 5, 2009. That is well after the domain name itself was registered on February 4, 2008. It is also well after the Respondent received a letter of demand from the Complainant challenging the Respondent's use and registration of the domain name at some point between August 2008 when the Complainant sent a letter of demand and when the Respondent sent an email in reply dated December 6, 2008. The basis, on which the disputed domain name was registered, therefore, is unclear.

In any event, unlike registered trademark rights, the registration of a business name does not confer proprietary rights. Rather, it is an obligation imposed by statute on a person who intends to carry on business under a name other than their own name. The case law clearly establishes that a registered trademark prevails over a subsequently registered business name. That is, the holder of a registered business name is not protected from infringement of a registered trademark by registering a business name after the trademark was registered. See e.g. Caterpillar Loader Hire (Holdings) Pty Ltd v. Caterpillar Tractor Co (1983) 1 IPR 265 and B M Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 51 ALJR 254 (passing off).

The Response does provide some evidence in support of the Respondent's claim that "gaydar" is generic. There are for example some instances reported of its use in various television programs. Most of these appear to have been programs broadcast in America, although there is an instance where a dog on an Australian program called "Playing It Straight" was named "Gaydar". Against this evidence, the Complainant in fact holds registered trademarks in Australia for, or based on, the term and appears to have very substantial use of the term in Australia through its website, in particular.

Further, the disputed domain name currently resolves to a website which features advertising for the services of competitors of the Complainant. The Respondent contends that this is just a parking page pending the resolution of this dispute. However, in the email the Respondent sent to the Complainant on December 6, 2008 (Annex I to the Complaint), the Respondent stated that he registered the domain name with the intention of developing a "site for use for a homosexual meeting place". Such use, while the trademarks remain registered, would be likely to infringe the Complainant's rights. Accordingly, the Respondent cannot in the present circumstances establish a right or legitimate interest in the disputed domain name in the face of the Complainant's trademarks, at least while they remain registered.¹

Accordingly, the Complainant has established the second requirement.

C. Registered or Used in Bad Faith

As noted above, the third requirement under the Policy is that the Respondent has registered or used the disputed domain name in bad faith. This is a disjunctive requirement, not conjunctive as under the UDRP.

In this case, the Respondent has indicated in his email of December 6, 2008 that he registered the domain name with the intention of using it for "a homosexual meeting place". Such use would likely infringe the Complainant's trademarks. Further, as already mentioned, the Respondent's website currently displays many sponsored links to sites competing with the Complainant.

It is well established under both the Policy and the UDRP that the use of a domain name which is identical with or confusingly similar to another's trademark rights to promote products or services that compete with those of the trademark holder is use in bad faith. This follows in particular from the example given by paragraph 4(b)(iv) of the Policy.

In these circumstances, it is unnecessary to explore the innocence or otherwise of the Respondent's listing of the domain name on the auction site "Aftermarket" as the disputed domain name is currently being used, after notice of objection by the Complainant through the letter of demand in August 2008 referred to above, in bad faith within the meaning of the Policy

6. 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 domain name <gaydar.net.au> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist

Dated: July 1, 2009

¹ See E & J Gallo Winery v. Lion Nathan Australia Pty Limited [2009] FCAFC 27 at [63]ff.