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Mt Eliza Graduate School of Business & Government Ltd v. Rom Graphics [2001] GENDND 1165 (15 June 2001)

“The panel accepts that the complainant is not opposing the use of the name and mark Wembley simpliciter. Rather, the complaint is in relation to the name and mark Wembley Stadium. The activities of and use by the PLC of the name Wembley are not relevant use of the Wembley Stadium name and mark.”

The problem the complainant has is that it purports to have the right to the generic and geographical name without reference to its institution and therefore is inconsistent with the proper approach taken by the panel in the Wembley Stadium case.

Legitimacy

The complainant says that it is not aware of any trade marks or service marks being used by the respondent which relate directly or indirectly to the contested domain names. The respondent says that argument is equally applicable to that of the complainant.

However, the respondent does have substantial commercial interest in the Mt Eliza area. He is the owner of commercial premises from which it proposes to launch a company utilising the domain name which he has been developing consistently since its registration in 1999. The respondent cannot be criticised for being an entrepreneur and using the clear advantage of the geographical location in its commercial exploits.

It is submitted that the complainant uses certain panel decisions to argue the question of legitimacy on the basis that there are no demonstrable preparations to use the domain names. However, it is clear from the decisions cited by the complainant that the respondent in each of those cases is in the business of registering many names from 50 to more than 400 in order to sell them in the market place either in bad faith or without any legitimate use for them. This respondent is not in the business of doing so and his interests in the contested domain names are based on his residency within the Mt Eliza area and his current business interests which have been well established in the Mt Eliza area.

The respondent is also the director of the company Mt Eliza.com Pty Ltd A.C.N. 096 829 695 which is the business structure he proposes to use for the purposes of the development of the contested domain names.

The complainant maintains that the respondent is not commonly known by the contested domain names and that the future intention to utilise them would not constitute a legitimate interest in them. The complainant’s case again suffers from the very nature of the domain name being a geographical location. Because the contested domain names are of the nature of a geographical location, the arguments that are raised in relation to evidence of rights or legitimate interest are entirely different to those that are raised by other cases upon which the complainant relies.

In VZ VermogensZentrum Agv. Anything.com (WIPO Case D2000-0527) the respondent admitted that its “….business strategy is to develop generic and/or easy-to-remember domain names into viable web sites to sell products and services.” In fact the respondent had registered at least 50 domain names, none of which had any likeness to the respondent’s company name. The panel found in that case that “…the mere speculative idea for a bona fide business application of a generic domain name…” was not “…evidence of rights of legitimate interests.” It is submitted that this is entirely different to the current facts of the complainant’s case where the name is not simply generic but a geographical location to which it cannot have a claim per se. At the time the respondent registered the contested domain names the complainant was not in existence in its present form. There can be no inferences drawn that, because there are no “demonstrable preparations”, therefore the defendant’s use is illegitimate and more so the suggestion that this represents evidence of bad faith.

Bad faith

The respondent denies that the domain names were registered and are being used for the purpose of sale to the complainant.

The respondent relies on the historical facts that the domain name was registered well prior to any registration by the complainant of either a domain name or the change of its company name. It is only in December 2000 that the complainant decided to establish a web page with fresh images, fresh logos, and a new name commencing with the word Mt Eliza.

The respondent’s correspondence with the complainant arose only out of the fact that it became evident that the complainant might have an interest in the contested domain names when clearly the complainant had decided to register the domain name <mteliza.com.au>. The offer to sell the domain name <mteliza.com> to the complainant was made on the presumption that provided the respondent was able to continue to utilise the geographic location of Mt Eliza in some other form, he would be prepared to release the <.com>. Accordingly the respondent was then able to and did in fact register <mteliza.net> on 4 August 2000 as a substitute for but legitimate use of the words Mt Eliza for its particular commercial purposes.

The panel will be aware of the proliferation of persons in the business of registering multiple speculative names either in direct competition with existing bona fide companies use or other purposes which are clearly identifiable with the concept of being in bad faith. The complainant cites the decision in Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case D2000-003) in support.

Apart from the fact that in that case the respondent had no legitimate identity or activities, the evidence of bad faith in the registration of <Telstra.org> was clearly obvious and directly related to the substantial and invented word ‘Telstra’ for which the complainant in that case had overwhelming rights.

It is further submitted that in most circumstances the question of bad faith arises out of the registration of a domain name after the event. That is, bona fide commercial identities in existence prior to the registration. Again, this is clearly not the case in the complainant’s circumstances. The mere fact that the respondent was prepared to sell the domain name <mteliza.com> is nothing more than a prudent commercial decision at a convenient time initiated by the complainant’s actions.

The complainant also relies on the Telstra Corporation case (D2000-0003) for the proposition as stated by the panel that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the Domain Name being used in bad faith.” However, the respondent’s particular circumstances are clearly and dramatically different from those of the respondent in that case.

In Skipton Building Society v Peter Colman (WIPO Case D2000-1217) the domain name in dispute was <skipton.com> and the complainant operated in the Skipton area as Skipton Building Society, having traded under the name Skipton since 1853 and being the owner of a UK registered trademark for the word Skipton since 1987.

None of the circumstances of that case arise here and there is nothing further that this panel can find by direct reference or inference that the respondent has acted in bad faith either passively or actively.

The complainant’s case must fail because it has elected to avoid, disguise or actively frustrate the common principles in relation to domain name allocation. In particular, in the context of the Australian environment, the specific policy set out in the com.au Domain Name Allocation Policy is irresistible.

In any event it is only because the complainant has now decided to establish a new image under a new name that these issues have arisen. The complainant cannot lay claim on the basis that it has an existing trademark and indeed its present structure conflicts directly with that which is already registered. The profile of the complainant is, it is further submitted, only known in the exclusive environment of small business training and education organisations and is otherwise unknown to most persons in the geographical location. As such it is a mere facility within the area and has none of the advantages of a reputation gained by such examples in decisions as previously referred to in Wembley Stadium, Skipton Building Society and Telstra.

5. Discussions and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2. the respondent has no rights or legitimate interests in respect of the domain name; and

3. the disputed domain name has been registered and is being used in bad faith.

Whether the complainant has trademark rights in the name Mt Eliza

Having regard to Brisbane City Council v. Warren Bolton Consulting Pty Ltd (WIPO Case D2001-0047); City of Hamina v, Paragon International Projects Ltd. (WIPO Case D2001-0001); Port of Helsinki v. Paragon International Projects Ltd. (WIPO Case D2001-0002); Wembley National Stadium v. Tim Gordon (WIPO Case D2000-1218); Skipton Building Society v. Peter Colman (WIPO Case D2000-1217); City of Salinas v. Brian Baughn (NAF Case FA104000097076) and the discussion at paragraphs 276 –286 of the Interim Report of the SecondWIPO Internet Domain Name Process of April 12, 2001 (http://wipo2.int), the panel concludes that while geographical indications, such as the name Mount Eliza or its common abbreviation Mt Eliza, are not protected as such under the Policy, they may nevertheless qualify for protection under the Policy as trademarks if shown by evidence of their use to have become distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive.

It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark. The name Mt Eliza is a common descriptive name of general application to the place Mount Eliza and is used as part of the name of many businesses located in the area. The complainant claims to be known by the name Mt Eliza within the corporate and business sectors and asserts that the name is distinctive of its educational services within those sectors and the public generally. It is necessary to distinguish between the claimed trademark and the corporate name of the complainant which, through its various manifestations, has included the name Mt Eliza for several years.

The panel finds the evidence on which the complainant relies unpersuasive. The newspaper article is the only substantive evidence of the use by the complainant and others of the name Mt Eliza to refer to the complainant or its services. The story begins with a reference to « The Mt Eliza Business School ». This is not the name of the complainant and it appears in its context to be a description of the business school at Mount Eliza. Thereafter the story refers several times to Mt Eliza but because of the introductory description, these references appear to be no more than a shorthand way of referring to the previously described business school. If the name does function as a trademark, that function is not clearly demonstrated by the article.

In support of its assertion, the complainant had produced no material which could be regarded as evidence that the name functions as a trademark. Further, use by others of the name Mt Eliza when referring to the complainant or its services (such as alumni) does not establish that the complainant itself uses or has used that name (standing alone) as a trademark. There is nothing before the panel to indicate, let alone demonstrate, that the complainant has used the name Mt Eliza otherwise than as part of its corporate name from time to time or as a shorthand way of referring to the institution, as in the newspaper article.

The panel finds the complainant has not established that it has trademark rights in the name Mt Eliza.

This finding is sufficient to dispose of this complaint and it is therefore unnecessary to consider other issues.

6. Conclusion

The complainant has failed to establish its entitlement to a remedy and accordingly the complaint is rejected.

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