- Ogio International Inc, which owned the OGIO mark, sought the transfer of 'ogio.com.au' under the auDRP
- The majority of the panel denied the complaint; among other things, it declined to _nd that there was an intention to prevent the complainant from registering the domain name after it was dropped
- The dissenting panellist found that the respondent did not have rights or legitimate interests in the domain name, and that it was at least registered in bad faith
In a recent decision under the '.au' Dispute Resolution Policy (auDRP) before the World Intellectual Property Organization (WIPO), a three-member panel has denied the transfer of a domain name that exactly matched the complainant's trademark because the complainant had failed to prove that the respondent did not have rights or legitimate interests, and registered or used the domain name in bad faith. However, one of the panel members dissented and would have ordered a transfer of the domain name at issue.
The complainant was Ogio International Inc, a US-based subsidiary of Callaway Golf Company founded in 1987. It designed and manufactured bags and backpacks and had over 10 registered trademarks in Australia, including the OGIO trademark, registered in 1997 and 2004. According to the complaint, sales of the complainant's Ogio products to Australia over the last three years were in excess of A$1 million.
The respondent was Ogio Pty Ltd, an Australian company held by Mr Robert Kaay, owner of several other companies known to be domain name brokers and resellers.
The domain name 'ogio.com.au' was registered in January 2019. However, it was originally registered a number of years before by a party connected to the complainant, but not used and allowed to lapse sometime between 2016 and 2018. It was then picked up by one of Mr Kaay's companies and used to point to a website purporting to be about "Oil Gas Industry Organisation" and offered for sale via that website.
An inquiry was made by the complainant to nd out if the domain name was for sale, to which Mr Kaay replied that it might be possible, depending on the amount the complainant was willing to pay. The complainant then wrote to auDA asking for the domain name to be cancelled because it was in breach of the Eligibility Rules for '.au', and also wrote to the respondent asserting that it would be able to recover the domain name pursuant to a complaint under the auDRP, but added that it would pay A$1,500 to swiftly resolve the matter. Mr Kaay agreed, but then refused to sign the transfer agreement acknowledging the complainant's rights and undertaking not to infringe them in future as he considered this offensive, and so the deal was cancelled.
However, as a result of the complainant's email, the auDA Compliance Team ordered the domain name to be cancelled due to a breach of the Eligibility Rules, but Mr Kaay succeeded in temporarily stopping this on the basis that he was using a "generic acronym" in compliance with auDA policy. However, auDA then backtracked and decided that the domain name would be deleted. Mr Kaay then incorporated the respondent, and the respondent successfully registered the domain name when it dropped. The complainant then made another purchase attempt, but this was rejected by the respondent and so the complainant led a complaint under the auDRP
To be successful in a complaint under the auDRP, a complainant must satisfy the following three requirements:
- the disputed domain name is identical, or confusingly similar, to a name, trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered or subsequently used in bad faith.
As far as the rst limb was concerned, the complainant submitted that the domain name was identical to its trademark OGIO. Disregarding the '.com.au', the domain name was deemed identical to the complainant's trademark. Thus, the complainant satised the rst element of Paragraph 4(a).
As far as the second requirement of the auDRP was concerned, the complainant presented a three-part case:
- Mr Kaay's profession (domain name broker) should be taken into account;
- The previous domain name registration was the same as the current one and that there had therefore been a contract between the complainant and Mr Kaay; and
- Mr Kaay had registered the previous domain name for monetisation, but did not comply with the auDA requirements, hence why the complainant's eligibility complaint had been successful (auDA had found that Mr Kaay's business name "Organic IT services" (purportedly the abbreviation of Ogio) had not been registered before the registration of the domain name).
The main thrust of the complainant's assertions was that the respondent was articially set up in an attempt to legitimise Mr Kaay's previous unsuccessful holding of the domain name.
The majority of the panel rejected all three parts of the complainant's case and found that the arguments raised by the complainant only revolved around the previous domain name registration and its previous holder. It found that Mr Kaays' position as a domainer should not be taken into consideration as long as it was established that it was a lawful and legitimate activity. Concerning the contract, the majority argued that it had never been signed and had been rejected by Mr Kaay. The enforcement of the contract could be considered only if there was an actual lawsuit, but that was not within the scope of the panel's decision. In respect of the last part of the case, the majority pointed out that the domain name was available for purchase again on a "rst-come, rst-served" basis, and that the complainant could not have ignored that there was a risk that the respondent might succeed in registering the domain name.
Turning to the third limb and bad faith, the complainant argued that the respondent had registered the domain name to sell or rent to the complainant, and to prevent the owner of a trademark or name from reecting that mark in a corresponding domain name, which corresponded to Paragraphs 4(b)(i) and 4(b)(ii) of the auDRP.
The panel refused to recognise a breach of Paragraphs 4(b)(i) and (ii). According to the majority, the respondent did not initiate any approach to the complainant, but merely mentioned that it would consider selling the domain name for the current market value, which did not constitute an offer but only an invitation to treat. The majority also declined to nd that there was an intention to prevent the complainant from trying to register the domain name after it was dropped, and that it was successfully registered by the respondent on a "rst-come, rst-served" basis. There was nothing to show that the respondent's principal motivation was to prevent the complainant from using the trademark.
As a result of the majority of the panel's ndings, the case was denied.
However, the dissenting member of the panel profoundly disagreed and found that the respondent did not have rights or legitimate interests in the disputed domain name, and that it was at least registered in bad faith.
Regarding the respondent's rights or legitimate interests, in the dissenting panellist's view there was no evidence that the disputed domain name was used in connection with a good-faith offering of goods or services or some form of non-commercial or fair use. The dissenting panel member also found that the complainant's trademark had been registered for a number of years before the disputed domain name and that this was typically sucient to prove that the respondent did not have rights or legitimate interests in the domain name. The company name of the respondent was registered, but this was not sucient to prove legitimate interests or rights in itself and had to be justied by use in good faith. In the dissenting panellist's opinion, the only evidence of use of the domain name was the invitation to treat posted on the website, which led to the conclusion that the domain name was registered only with the intention of selling or renting it for a price exceeding the documented cost.
The dissenting panellist also pointed out that, unlike the UDRP, the auDRP considered that the use of a domain name was not bona de when the website did not resolve to any subject matter in relation to the domain name and when the domain name was related to an entity name, personal name or brand already in existence at the time that the domain name was registered. The website only mentioned that it was under construction and that the domain name was available for lease or sale, but the trademark OGIO was already in existence at the time.
The last point raised in the dissenting opinion was that the "rst-come, rst-served" basis applies only to claimants with competing rights, but the dissenting panellist refused to nd that the respondent had such rights. He also found that the disputed domain name was registered in bad faith as the respondent had clear knowledge of the complainant's trademark given the circumstances.
This decision is an important reminder of how panels can have different approaches to the same facts in complex cases and that the selection of a three-member panel may in fact only serve to make matters more complicated. It also underlines how, while it may seem easier to complain to a registry that a registrant does not meet the eligibility criteria for a particular extension, such complaints usually never result in transfer if successful, only cancellation - and cancellation always carries a signicant risk that a third party will pick up the domain name at issue, or even the previous registrant, as was the case here. Even though a complaint under the relevant dispute resolution policy may seem more time consuming and expensive, it is the only way to obtain a transfer order.
Originally published by World Trademark Review
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