Decisión del Panel Administrativo nº DAU2015-0004 of WIPO Arbitration and Mediation Center, April 17, 2015 (case Orient Express Travel Group Pty Ltd v. Mookstar Media Pty Ltd (ACN 083 167 293))
| Resolution Date | April 17, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Australia (.au) |
The Complainant is Orient Express Travel Group Pty Ltd of Melbourne, Victoria, Australia, represented by Norgate McLean Dolphin, Australia.
The Respondent is Mookstar Media Pty Ltd (ACN 083 167 293) of Glenside, South Australia, represented by Cooper Mills Lawyers, Australia.
The disputed domain name [etg.com.au] (the "Domain Name") is registered with Drop.com.au Pty Ltd (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. The Response was filed with the Center on March 18, 2015.
The Center appointed David Levin Q.C., Nicholas Smith and John Swinson as panelists in this matter on April 9, 2015. 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 Complainant is an independent travel agency group that since 1983 has traded under the name "Orient Express Travel Group". The Complainant issues over 500,000 travel tickets annually, including tickets for Cathay Pacific Airways, Singapore Airlines, Malaysia Airlines and Thai Airlines. Since 2004 the Complainant has provided a number of goods and services using the prefix "Express". It presently operates a website (the Complainant's Website) from "www.etg.travel" which displays a logo that consists of an eight-point star, the letters "ETG", and below that the words "Express Travel Group". There is no evidence as to the page displayed at the Complainant's Website as at the date of the Complaint. The Complainant issues and sells airplane tickets from the Complainant's Website.
On December 9, 2014, the Complainant applied for an Australian Trade Mark registration for the acronym ETG (the "ETG Mark") for goods and services relating to travel organisations. It owns numerous registered trade marks for marks that consist of or feature the word "express" (the "EXPRESS Marks") and had previously applied for an Australian Trade Mark for the words "Express Travel Group" (the "EXPRESS TRAVEL GROUP Mark").
The Domain Name [etg.com.au] was created by the Respondent on March 4, 2008. The Domain Name redirected to a website which consists of a stylized knife and fork, the acronym "ETG" and a contact link (the "Respondent's Website"). The contact link sends the visitor from the Respondent's Website to a website that appears to be operated by the Respondent and consists of a page where people are invited to contact the Respondent. The Respondent owns over 1071 registered domains including 335 domain names consisting of three-letter acronyms.
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's ETG or EXPRESS TRAVEL GROUP Marks;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant has traded under the name "Orient Express Travel Group" since 1983. In early 2014 the Complainant decided to adopt the EXPRESS TRAVEL GROUP and ETG Mark. Later in 2014 it apparently decided to adopt the acronym ETG in association with the EXPRESS TRAVEL GROUP name. The Complainant has applied to register EXPRESS TRAVEL GROUP and ETG as trade marks and has developed common law rights in each of these marks by way of the registration of the domain name [etg.travel], registering a twitter account using the handle "@etg_Travel", registering a Facebook account under the name "Express Travel Group – ETG", sending notifications of this change to various travel agents and operating the Complainant's Website.
The Domain Name [etg.com.au] is confusingly similar to the EXPRESS TRAVEL GROUP and ETG Marks.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for "ETG" or any similar trade mark. The Respondent is not licensed or authorized by the Complainant to register the Domain Name. The Respondent does not have any other apparent rights in the Domain Name, nor does he appear to be commonly known by the Domain Name. The Domain Name is presently used in association with a holding page with the Respondent's associated business being in domain name trading. Furthermore, to the extent that the Respondent submits that it is using the Domain Name for providing a service of Australian restaurant listings referred to as the "E Taste Guide", there is no evidence of the development of a website, brand or business in the six years since the Domain Name was first registered.
The Domain Name was registered or is being used in bad faith. The Respondent has a history of registering domain names consisting of three-letter acronyms as well as deliberate misspellings of large and prominent business enterprises. The Respondent has been subject of adverse findings under auDRP proceedings and been the subject of online complaints relating to its conduct.
The Respondent submits that the Complainant is not known as ETG. The Complainant has not registered any such trading name nor has it (at the time of the Complaint) registered any such trade mark. The Complainant has only ever used ETG as part of its broader purported trading name EXPRESS TRAVEL GROUP (ETG). It has not established that it has common law rights in the ETG Mark. The EXPRESS TRAVEL GROUP (ETG) mark is clearly not identical or confusingly similar to the Domain Name. The mere fact that...
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