Decisión del Panel Administrativo nº DAU2019-0011 of WIPO Arbitration and Mediation Center, June 13, 2019 (case Ogio International Inc v. Ogio Pty Ltd)
| Resolution Date | June 13, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied with dissenting opinion |
| Dominio | Australia (.au) |
The Complainant is Ogio International Inc, United States of America (“United States”), represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Ogio Pty Ltd, Australia.
The disputed domain name [ogio.com.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 April 5, 2019, naming Ogio Pty Ltd as the Respondent. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Complainant on April 10, 2019, acknowledging the Registrant information provided by the Center. On April 11, 2019, however, the Registrar emailed a correction to the information it had earlier provided identifying Ogio Pty Ltd as the registrant of the disputed domain name and providing the relevant 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 April 11, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2019. The Response was filed with the Center on April 30, 2019.
The Center appointed Warwick A. Rothnie, Alan L. Limbury, and The Hon Neil Brown Q.C. as panelists in this matter on May 27, 2019. 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.
According to the Complaint, the Complainant was established in 1987 in Carlsbad, California, United States. Since January 11, 2017, it has been a subsidiary of Callaway Golf Company (“Callaway”). Also according to the Complaint, the Complainant is an internationally recognised designer and manufacturer of bags and backpacks by reference to the trade mark OGIO, with its products including golf bags, backpacks, work bags, travel bags, athletic bags, street bike gear, umbrellas, caps, and socks.
The Complainant established a website at [ogio.com] in 2000. According to the Complaint, it received over 22,000 hits or visits from Internet users with Australian-based IP addresses in the last 12 months. According to the Complaint, sales of the Complainant’s “Ogio” products to Australia over the last three years were in excess of AUD 1 million.
The Complainant identifies ownership of 10 registered trade marks in Australia. For present purposes, it is sufficient to note Australian Registered Trade Mark No. 991122, OGIO, registered on February 27, 2004, in respect of a range of goods in International Classes 18, 25, and 28. There is an earlier registration, for a slightly stylised version, Trade Mark No. 730287, which is registered on March 19, 1997, in respect of golf bags in International Class 28.
The disputed domain name was registered (in this iteration) on January 4, 2019.
According to information submitted by the Respondent, the disputed domain name was held previously by Lusty Industries Pty Ltd, with a contact being one Steve Eldredge. According to his LinkedIn profile, Mr. Eldredge is now a Lead IT Consultant at IBM in the United States. However, he appears to have been employed by the Complainant between 2001 and 2009.
Sometime between July 2016 and April 2018, the registration of the disputed domain name lapsed. There is no evidence of any use of the disputed domain name prior to April 2018.
In March 2018, Kaay Holdings Pty Ltd (“Kaay Holdings”) registered the business name “Organic IT Services”. Shortly after, Kaay Holdings Pty Ltd registered the disputed domain name early in April 2018.
According to captures made by the Wayback Machine, from April 6, 2018, and throughout 2018, the disputed domain name resolved to a website purporting to be about “Oil Gas Industry Organisation”. Immediately under this heading was a “logo” for “DBR.com.au” with the text “This domain name may be for sale or lease!”. This was followed by “Bid on Australia’s most premium domain names now at NAMEBID.COM.AU”.
The Wayback Machine capture for November 7, 2018 features:
“[disputed domain name]
“Stop searching. Try us!
“[The DBR.com.au logo] – Under constructions DBR.com.au or maybe for sale? CLICK HERE.
“[The Namebid logo]
“Interested in buying this domain?
“Interested in buying ogio.com.au? Please tell us little bit about who you are, why you’re interested in the domain and we can start the discussion on how the purchase can be arranged.”
Mr. Robert Kaay, who prepared and submitted the Response, is the sole director and secretary of both Kaay Holdings and the Respondent. One arm of Kaay Holdings’ business, DBR or DBR Domain Brokerage, is a domain broker and domain name reseller. Another arm, Organic IT Services or OrgIT, appears to provide data centre cleaning services.
On August 27, 2018, the Marketing Manager of Callaway’s Australian subsidiary contacted the then registrant of the disputed domain name to inquire if it was for sale. Later that day, Mr. Kaay replied:
“Thanks for reaching out to enquire about the Oil/Gas Industry Organisation website (Ogio.com.au).
“As you can see, the website is currently ear-marked to be developed into an Oil/Gas website.
“There are a few owners of this particular domain name, so if you’d like to make an offer of at least
five-figures to buy it, I can see if it’s possible to sell it to you.”
It is not clear on the record what happened after this until, on November 12, 2018, the Complainant’s then trade mark attorneys wrote to auDA requesting cancellation of the disputed domain name on the basis that its registration by Kaay Holdings was in breach of auDA’s 2012-04 - Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the “Eligibility and Allocation Rules”) for domain names.
On November 17, 2018, the Callaway Marketing Manager emailed Mr. Kaay again:
“You will be aware that Callaway’s related entity, Ogio International Inc (Ogio) is the owner of the OGIO trade mark in Australia and internationally. In Australia, Ogio owns 11 trade mark registrations/applications for it’s [sic] OGIO trade mark. A list of these is attached.
“We understand that you are in the business of buying and selling domain names. We very much doubt that you intend to host a genuine commercial website and/or monetized website at the [disputed domain name] ….
“In view of the above, Ogio has basis to recover the [disputed domain name] pursuant to an auDRP Complaint. However, to resolve the matter commercially and swiftly, Ogio agrees to pay you AU$1,500 (inclusive) in exchange for the [disputed domain name]. This amount generously covers your expenses in registering the [disputed domain name].”
On November 20, 2018, on behalf of Kaay Holdings, Mr. Kaay accepted that proposal on condition that the applicable invoice was paid in 48 hours. The invoice included the printed statement:
“We issue you the domain name WITHOUT PREJUDICE and without any negative admission.”
On November 21, 2018, Callaway paid the agreed sum. On November 22, 2018, Mr. Kaay acknowledged receipt of the payment and sent through the “AUTH Code” for the disputed domain name. On November 23, 2018, however, the Marketing Manager emailed Mr. Kaay an agreement for signature. Amongst other things, the draft agreement included an acknowledgement of the Complainant’s rights in the trade marks and undertakings not to use them in the future.
Mr. Kaay considered this document “offensive and in bad faith” and a violation of the agreement to transfer the disputed domain name. He purported to rescind that agreement, cancelled the “AUTH Code” and returned the payment of AUD 1,500 to Callaway.
Based on the text of an email from the auDA Compliance Team discussed below, it appears that by November 28, 2018, the disputed domain name resolved to a version of the “Oil Gas Industry Organisation” website.
On December 5, 2018, the auDA Compliance Team directed that the disputed domain name be deleted as in breach of the Eligibility and Allocation Rules. The notification of the decision also suggested using a “domain watching services” to attempt to register the domain name when it was deleted.
On December 9, 2018, Mr. Kaay contacted auDA to request reinstatement, asking what could be done to keep the disputed domain name. According to Mr. Kaay, that officer “verbally insinuated” that the disputed domain name would be reinstated if the reason for owning it was changed to “Domain Monetisation”.
On December 10, 2018, Mr. Kaay emailed auDA Compliance stating that he was “using my generic acronym domain name OGIO.com.au for domain monetization reasons and the domain name is, and has always been, parked according to this reasons, and obeying auDA policy in this regard”.
Following this exchange, auDA wrote to the Registrar advising that the disputed domain name had been taken out of...
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