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Brisbane City Council v. Joyce Russ Advertising Pty Limited [2001] GENDND 942 (14 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is the Brisbane City Council, (a body corporate established pursuant to the City of Brisbane Act 1924) Qld having its place of business at Level 2, 69 Ann Street, Brisbane, Queensland, Australia 4000. It is represented by John Swinson of Malleson Stephen Jacques in Brisbane, Queensland, Australia.

The Respondent is Joyce Russ Advertising Pty Limited, whose address is given as 51 Rundle Street, Kent Town, South Australia, Australia 5071. It is represented by Dr Drazen Lesicar of Lesicar Perrin in Adelaide, South Australia, Australia.

The domain name at issue is <brisbane.com>. The domain name was acquired by the Respondent on June 1, 1998. The Registrar with whom the domain name is registered is Network Solutions, Inc of 505 Huntmar Park Drive, Herndon, Virginia, United States of America 20170.

On January 15, 2001 a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hard copy was received by the WIPO Center on February 6, 2001.

On January 30, 2001, the Registrar responded to a request for Registrar Verification of January 26, 2001 and confirmed details of the Respondent, that the Policy applied to the domain name and that the current status of the name was "active".

On February 1, 2001, the WIPO Center received an Amended Complaint from the Complainant.

On February 7, 2001 the WIPO Center transmitted a notification of complaint and commencement of administrative proceedings to the Respondent.

A response was received from the Respondent on February 26, 2001 (email) and

March 2, 2001 (hard copy).

On February 23, 2001 the WIPO Center received a reply together with supporting evidence from the Complainant.

On April 12, 2001 the WIPO Center received an answer to the Complainant’s reply.

The parties elected to have a three member Panel comprising Andrew Brown, Tony Willoughby and Richard Page. All have completed Statements of Impartiality and Independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by May 7, 2001. An extension of time was obtained until May 14, 2001 owing to the unavailability of one of the Panelists.

The language of the administrative proceeding is English, being the language of the Registration Agreement.

The Complainant, the Brisbane City Council, was established pursuant to the City of Brisbane Act 1924. It operates as a body corporate and under section 6 of its statute was and is entitled to exercise its powers under the name "Brisbane City Council". The Complainant states that its owns and manages one of the most diverse public sector physical asset portfolios throughout Australia and that this is valued in excess of AUD$14 billion.

The Complainant’s operations include a number of commercial business units such as Brisbane Water, Brisbane City Works and Brisbane Transport. The Complainant is the registered proprietor of a number of trademarks in Australia:

(a) E-BRISBANE logo in classes 9, 35 and 36;

(b) WATER SAVE IT! – BRISBANE CITY logo in classes 32 and 40. This registration includes a disclaimer that registration gives no right to the exclusive use of the words "Brisbane City";

(c) BRISBANE CITY WORKS logo in classes 19, 35, 37 and 42;

(d) The Complainant is the applicant for the trademark BRISBANE CITY in a number of classes. This application was filed on December 11, 2000 (a short time before the Complaint) and is still pending.

The Complainant uses a corporate logo which comprises a stylised city hall and the words "Brisbane City".

The Respondent was established in 1985 as a full service advertising agency. It states that it has grown into an integrated technology and communications resource that caters to local, national and international markets. It handles a range of substantial clients (some of whom it has named) and has developed and managed portal sites for a number of its clients (again named).

The Respondent states that in 1997 it conceived a plan to develop a network of visual information booths or kiosks to be located in areas including major shopping centres. It publicised this in the Australian business magazine, Business Review Weekly. In December 1997, the Respondent states that it proposed the idea of the Australian National City portals. In mid-1998 it purchased the domain names <melbourne.com>, <perth.com>, <brisbane.com> and <adelaide.com> for $40,000 and then later registered <n-sydney.com> and <s-sydney.com>. The Respondent states that it spent A$54,000 on a Unix server to host its capital city portals and has provided evidence of this expenditure.

The Respondent has set out a number of steps it took to advance it capital city portals project. These included:

- Test radio commercials for <adelaide.com> on an Adelaide radio station.

- The filing of trademark applications in Australia for protection of the domain names including <brisbane.com>.

- From May 1998, its use of the domain names as trademarks by using the ™ symbol where these were publicised.

- The preparation of a capital city portal brochure which it formatted to a number of potential partners in mid 1999. It evidences expressions of interest received from some 460 different persons in respect of its proposal for <brisbane.com>.

- On July 28, 1999 the Respondent contacted a number of parties including Adelaide City Council, Perth City Council and the Complainant promoting its capital city portal and inviting participation. Responses were received from the Adelaide and Perth City Councils but not from the Complainant.

The Complainant and Respondent have both filed very substantial submissions with supporting documentation followed by detailed replies. The Panel is grateful to counsel for their thorough approach. In the interests of brevity, it has been necessary for the Panel to take a very focused approach to the key issues.

In addition to its registered trademarks, the Complainant states that it ordinarily uses the words BRISBANE CITY in conjunction with a number of those registered trademarks. It refers to the fact that it has been using its corporate logo (comprising the stylised City Hall and the words "Brisbane City") for more than 15 years. As a result of its extensive use of these marks, the Complainant claims that it has common law trademark rights in BRISBANE CITY COUNCIL, BRISBANE CITY and BRISBANE. It further claims that, by virtue of its objects, functions and commercial activities, and the powers conferred upon it by statute, it is entitled to use BRISBANE as a common law trademark and to register "BRISBANE" as part of a trademark.

The Complainant contends:

(a) That the domain name is confusingly similar to:

- its registered trademarks (referred to earlier)

- the common law trademark and corporate logo trademark that includes "Brisbane"

- the common law trademarks BRISBANEWATER and BRISBANE TRANSPORT.

- The name Brisbane City Council.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant claims that there is no evidence that the Respondent is using the domain name in connection with a bona fide offering of goods or services or that it has bona fide plans to do so. It submits that the evidence reveals that the Respondent registered the domain name, and many other domain names, for the sole purpose of transferring these to third parties for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name or to capture web traffic intended for the Complainant’s website.

The Complainant also states that on January 10, 2001 the domain name <brisbane.com> resolved to a "placeholder" website that stated <brisbane.com> is coming" and allowed users to register expressions of interest. It was claimed that the website suggested that the domain name was for sale through use of the reference on the site to "the best address in town"

Additional claims were based on the fact that the Respondent had failed to develop the claimed portal sites for over two years. It was also claimed that the word "Brisbane" had no natural affiliation with or obvious connection with the Respondent or its business which is located in South Australia, approximately 1,600 kilometres southwest of Brisbane.

(c) That registration and use of the domain name was in bad faith because:

- the Respondent and Respondent’s business have no connection with the word "Brisbane".

- the Respondent should have been aware of the Complainant’s extensive use of its trademarks containing the word "Brisbane".

- the Respondent had registered the domain name over two and a half years ago but had failed to use it in connection with any bona fide offerings of goods or services.

- the website suggested the domain name was for sale

- a different website (unconnected with the Respondent) stated that the Respondent was looking to sell the domain names.

An additional claim under this head was that the Respondent was using the domain name in order to attract internet users to its other websites and to advertise its services for commercial gain. The Complainant contended that when an internet user visits the website "brisbane.com" it would expect to reach a website operated by the official Government of Brisbane.

In its response, the Respondent attacks each of the three bases of the Complainant’s case:

The Respondent contends that the Complainant does not have any exclusive use of the geographical indicator "Brisbane City" relying (inter alia) on the disclaimers entered on the Australian trademarks register in respect of two of the Complainant’s registered trademarks and that in other of the Complainant’s marks the words "Brisbane City" are only part of the logo. The Respondent further claims that a fortiori the Complainant has "no claim to exclusivity to the wider geographical indicator ‘Brisbane’".

The Respondent asserts that the Complainant is not the custodian of the name "Brisbane" for the people of Brisbane or for anybody else. It has powers and functions conferred on it by statute but no power of custodianship in relation to the name "Brisbane". Consequently the Respondent denies that its <brisbane.com> domain name is identical with or confusingly similar to any trademark in which the Complainant has rights.

The Respondent contends that there is ample evidence that it has invested substantial time, money and energy in preparing for use and actual use of its capital city domain names <adelaide.com>, <melbourne.com>, <perth.com>, <n-sydney.com>, <s-sydney.com> and <brisbane.com>. The Respondent claims that the evidence shows that it is establishing a portal relating not only to each of these domain names on its own but also as a group. It points (inter alia) to its prior involvement as a commercial developer and manager of portals, to its purchase of a secure server, to evidence of a meeting with one of India’s largest internet companies concerning the development of the portals. It also relies on evidence forming part of its Response that it was seeking business partners for a capital city portal network.

The Respondent strongly denies that it has registered and used the domain name in bad faith. In particular, the Respondent rejects claims by the Complainant that a letter (similar in terms to letters sent to the City Councils of Adelaide, Melbourne and Perth) and produced in evidence by the Respondent itself amounted to an offer to sell the domain name. None of the other Councils construed that as an offer to sell and in any event the Complainant did nothing about the letter from the time it was sent (July 1998) until the time of the Complaint in January 2001.

The Respondent also states that a rumour posted on a third party website that the capital city domain names were for sale was not placed by the Respondent and was conjecture and speculation by third parties. The Respondent states that in response to promotional material on <brisbane.com> it received approximately 460 registrations of interest. There was only one expression of interest concerning purchase of the domain name and the Respondent had informed that party that the domain name was not for sale.

Finally, the Respondent contends that far from this being a case of bad faith registration and use of the domain name, the Complainant is engaged in reverse domain name hijacking.

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

It is well established that under the Policy, a Complainant may rely not only on a registered trademark but also an unregistered trademark provided the Complainant can show rights to that unregistered mark and the mark has achieved a sufficient threshold level of distinctiveness, awareness and/or fame.

In this case, the Complainant has not argued that the domain name is identical to a name in which it has rights. Rather its claim is put on the basis that <brisbane.com> is confusingly similar to its registered trademarks that include the word "Brisbane" and various common law marks which include the word "Brisbane".

The Panel is aware that the registration of cities or regions within countries as domain names is an issue which has been much discussed. It is dealt with in the Interim Report of the Second WIPO Internal Domain Name Process dated April 12, 2001, pages 83-4. The observations made at para 250 of the report are:

"It should be noted that the complaints in many of the Court and UDRP cases referred to above were based on the alleged abuse of a trademark registered in the name of the Complainant and incorporating the place names subject to the dispute. Furthermore, usually the domain names were deemed infringing in light of the nature of the activity conducted under the domain name and the motivation of the registrants. The cases therefore do not necessary stand for the proposition that the registration of a city name or the name of a region, as such, is to be deemed abusive."

In a recent decision Port of Helsinki v Paragon International Projects Limited, D2001-0002, the Panel held in respect of <portofhelsinki.com> that the Complainant had not established the threshold requirement of trademark rights in the mark or denomination "Port of Helsinki".

In City of Hamana v Paragon International Projects Limited, D2001-0001, the Panel considered a similar Complaint in relation to domain name <portofhamana.com>. The Panel looked at the European trademark directive and the European Court of Justice decision in the Chiemsee case. The Panel rejected the view that as a matter of principle, a unique geographical name should belong to the owner of the geographical area in question. Applying the Chiemsee decision, the Panel found that the Port of Hamana had acquired distinctiveness as a trademark relating to services originating from the City of Hamana/Port of Hamana. But relying on Article 6.1(b) of the Directive, the Panel noted that a trademark did not entitle the proprietor to prevent a third party from using in the course of trade, indications concerning the geographical origin of goods or rendering of services provided the third party uses them in accordance with honest practices in industrial and commercial matters. In that case, the Panel found that the Respondent had acquired a legitimate interest in the trademark and domain name.

The critical issue in this case is whether the Complainant has shown that it has trademark rights sufficient to found this Complaint.

In this case, the Panel finds the Complainant has not established any trademark or common law rights to the words "Brisbane City" or, more significantly, for "Brisbane" sufficient to sustain the Complaint. The cumulative reasons for this are as follows:

(a) The complainant’s trademark registrations give no exclusive rights to the word "Brisbane" on its own

- The EBRISBANE trademark registration is a logo form with the logo "E" being a distinguishing feature sufficient to distinguish it from the name of the city;

- The "WATER SAVE IT BRISBANE CITY" registration is also a logo and there is a specific disclaimer on the register of "Brisbane City";

- The BRISBANE CITY WORKS registration is a logo and on its own gives no exclusive rights to "Brisbane" or "Brisbane City";

- The trademark application for BRISBANE CITY lodged on 11 December 2000 is still pending and has not been accepted by the Australian Intellectual Property Office;

(b) The corporate logo used by the complainant is a stylised view of its town hall and the words "Brisbane City" (not "Brisbane" on its own) – see Complaint Annexure F, page 2;

(c) The Australian Intellectual Property Office in its examination report on the Respondent’s trademark applications for brisbane.com (Respondent’s Annexure AJ and report dated 2 September 1998) stated in rejecting registrability of this mark:

"However the test of registrability is not a simple question of descriptiveness. Rather it is whether other traders are likely to need the sign or something close to it in indicating their similar goods or services. Any other trader in similar goods or services who is situated in BRISBANE or who have BRISBANE as the theme or content manner of their goods and services, are equally likely and entitled to use the words brisbane.com without improper motive as part of their electronic address when advertising or indicating the place of origin of the goods. The trademark has no inherent adaptation to distinguish the applicant’s goods or services."

Although these comments were made in relation to the Respondent’s trademark applications, they equally point to the difficulty in the Complainant acquiring any common law trademark rights in "Brisbane City" or more widely in the word "Brisbane" itself.

Also the Australian Trademarks Office (AIPO) Handbook (Respondent Annexure AK, paragraph 14.2) states in relation to the registration of domain names as trademarks:

"If it consists of a word, phrase or combination of letters and/or numbers which other traders would wish to use in the normal course of their trade, then grounds for rejection should be raised. An example of when grounds for rejection should be raised is the domain name http://www.sydney.com. Sydney is a well-known geographical location and should be available for other traders to use to indicate the origin of their goods and/or services…"

(b) The Respondent’s response (para 3.4) refers to:

- 47 registered corporate/business names in Australia that include the words "Brisbane City".

- At least 30 registered corporate/business names in Australia which feature the word "Brisbane" on its own.

The Respondent’s search of the Australian trademark register discloses 94 registered trademarks and 37 applications that feature the word BRISBANE.

The fact that there are many other existing users of the Brisbane name either as part of a corporate or business name or as a registered trademark, is an indication that the Complainant does not have trademark rights to "Brisbane City" or "Brisbane". The Panel therefore finds that this requirement under the Policy is not made out.

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel considers the Respondent has shown demonstrable preparations to use the domain name prior to the Complaint in connection with the bona fide offering of goods or services. The Response and the Answer from the Respondent contains (with supporting documentation) ample evidence which shows legitimate activity towards establishing a capital city’s portal well before any Complaint was received. The Panel also rejects the suggestion that the Respondent’s letter to the Complainant in July 1998 was an offer to sell the domain name to the Complainant. Contemporaneous letters sent to other City Councils were not taken as such by those local authorities.

The Panel therefore finds that the Respondent has demonstrated its prior legitimate interest in the domain name under paragraph 4(c)(i) of the Policy.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

Because of the findings of the Panel in relation to the first two grounds under the Policy, this ground is mentioned only briefly. The Panel does not consider that the Complainant has established any evidence that the domain name was registered or acquired by the Respondent in bad faith.

For the foregoing reasons, the Panel denies the remedy (transferred to the Complainant of the domain name <brisbane.com>) requested by the Complainant.

Andrew Brown
Presiding Panelist

Tony Willoughby
Panelist

Richard Page
Panelist

Dated: May 14, 2001