Decisión del Panel Administrativo nº DAU2021-0027 of WIPO Arbitration and Mediation Center, August 19, 2021 (case Discovery Holiday Parks Pty Ltd. v. B2B Network Pty Ltd)
| Resolution Date | August 19, 2021 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Cancellation |
| Dominio | Australia (.au) |
The Complainant is Discovery Holiday Parks Pty Ltd., Australia, represented by MinterEllison, Australia.
The Respondent is B2B Network Pty Ltd, Australia.
The disputed domain name [gday.net.au] is registered with Drop.com.au Pty Ltd (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, 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 June 30, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2021. The Response was filed with the Center on July 20, 2021.
The Center appointed Douglas Clark as the sole panelist in this matter on August 5, 2021. 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 a company established in 2004. It states it is the largest operator of caravan, holiday, and resort parks in Australia. Since 2017, the Complainant has registered numerous trade marks incorporating the word G’DAY for various goods and services, which include advertising and promotional services, food and beverage services, and retail services.
The Complainant is the proprietor in Australia of several trade mark registrations or applications for G’DAY or incorporating G’DAY, including the following:
| Trade Mark | Registration Number | Class | Registration Date/Status |
| GDAYSTAYS (word mark) | 1478234 | 36, 43 | Registered on March 5, 2012 |
| G'DAY (word mark) | 1896646 | 16, 35, 41, 43 | Registered on December 21, 2017 |
| G’DAY REWARDS (word mark) | 1896651 | 16, 35, 41, 43 | Registered on December 21, 2017 |
| G'DAY MAGAZINE (word mark) | 1896654 | 16, 35, 41, 43 | Registered on December 21, 2017 |
| 1896659 | 16, 35, 41, 43 | Registered on December 21, 2017 | |
| 1896667 | 16, 35, 41, 43 | Registered on December 21, 2017 | |
| 1896669 | 16, 35, 41, 43 | Registered on December 21, 2017 | |
| G'DAY PARKS (word mark) | 2040415 | 16, 35, 41, 43 | Registered on September 27, 2019 |
| G'DAY REWARDS (word mark) | 2109289 | 9, 38 | Registered on August 5, 2020 |
| G'DAY PARKS (word mark) | 2019290 | 9, 38 | Registered on August 5, 2020 |
| 2069226 | 35, 41 | Pending Priority Date December 21, 2017 | |
| G'DAY (word mark) | 2109288 | 9 | Pending Priority Date August 5, 2020 |
| G'DAY (word mark) | 2126370 | 35 | Pending Priority Date December 21, 2017 |
| 2126389 | 35 | Pending Priority Date December 21, 2017 | |
| G'DAY GROUP (word mark) | 2168334 | 9, 16, 35, 38, 41, 43 | Pending Filed April 1, 2021 |
| G'DAY EVENTS (word mark) | 2168338 | 41, 43 | Pending Filed April 1, 2021 |
| G'DAY CONFERENCING (word mark) | 2168339 | 41, 43 | Pending Filed April 1, 2021 |
The disputed domain name was registered on May 31, 2021 following deletion of the previous website hosted on the Disputed Domain Name in accordance with the previously in force auDA Domain Renewal, Expiry and Delete Policy. The deletion was initiated by the Complainant. (As discussed below, these rules have been replaced by the new Licensing Rules which came into effect on 12 April 2021.)
The Registrar of the Disputed Domain Name, Drop.com.au Pty Ltd, operates a "drop-catching" website, www.drop.com.au. Drop-catching involves the drop-catching site hosting an auction for soon to be deleted domain names, which it then subsequently registers in the name of the winning bidder. The Respondent submitted as evidence an invoice from the Registrar for providing a “Daily Drop Catch – gday.net.au.”
At the date of the Complaint of this decision, the disputed domain name resolved to an inactive webpage.
In its Complaint the Complainant contended that:
(a) the disputed domain name is confusingly similar to its trade marks. The removal of the apostrophe in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated;
(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way and the Complainant has never granted any authorization to use the Complainant’s trade mark. The Respondent has not acquired any Australian trade or service mark rights relating to the disputed domain name. The Respondent is also not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and
(c) The disputed domain name was registered and is being used in bad faith. The Respondent should have been aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and is using it as an opportunity to generate potential profit from the Complainant. The Respondent is using the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
In its Supplemental Filing after the Respondent responded, the Complainant contended that the Respondent’s registration was in bad faith because the trust created by the trust deed produced by the Respondent as a matter of interpretation could not be relied upon, was invalid or was entered into in bad faith. These grounds are considered in detail below.
The Respondent contends that the Complaint should be denied under the following grounds:
(a) The Complainant has not shown any evidence of use or reputation of the G’DAY trade mark and has no sole claim to the word “g’day”. The Complainant does not hold a majority of the trade marks registered in Australia for the word “g’day” and it would be unfair and unreasonable if the disputed domain name were transferred to the Complainant.
(b) The Respondent has a right and legitimate interest in the disputed domain name. The Complainant has failed to make out its case that the Respondent does not have any right or interest in the disputed domain name, but only asserts that it has a better claim. The Respondent relied on a trust deed creating a trust named GDAY to assert it had rights and legitimate interests.
(c) The Respondent submits that the registration of the disputed domain name was not made in bad faith. The Respondent was never aware of the Complainant’s business or the goods and/or services provided by the Complainant in relation to the disputed domain name. The Respondent has not attempted to use the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s marks.
The Respondent also contends that the Complaint was brought in an attempt for reverse domain name hijacking.
Paragraphs 12 of the Rules grants the Panel sole discretion to determine the admissibility of further statements or documents received from either Party.
The submissions of the Respondent that the Respondent registered the disputed domain name pursuant to a discretionary trust of which it was a trustee raises knowledge of a matter (on the Complainant’s part) that arose after the Complaint was filed. The trust deed provided by the Respondent cannot be accessed through any public sources and could not have been dealt with in the Complaint. Therefore, the Panel finds it appropriate for the Complainant to make its Supplemental Filing in relation to the discretionary trust. The Complainant also made some brief submissions as to the number of trade marks incorporating G’DAY and the effect of search results owned by the Complainant and others. The Panel has given no weight to these submissions (other than the confirmation by the Complainant that a number of other entities own trade marks incorporating G’DAY).
In light of the above, the Panel accepts the Complainant’s Supplemental Submissions dated July 27, 2021 relating to the alleged trust.
The Respondent did not seek to respond to the supplemental filing. Given the filing was almost solely in response to the new issue related to the alleged trust raised in the Response, the Panel does not in any event consider it necessary to offer the Respondent an opportunity to respond to the Supplemental Filing.
The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to;
(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 is being used in bad faith.
The Complainant must show that it has rights in the G’DAY trade mark and secondly that such trade mark is...
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