Decisión del Panel Administrativo nº D2018-2862 of WIPO Arbitration and Mediation Center, March 14, 2019 (case The United Grand Lodge of Queensland v. Redacted for Privacy, 11 Internet Inc. / Alfred Warburton)
| Resolution Date | March 14, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Complaint denied |
| Dominio | Generic Domains |
The Complainant is The United Grand Lodge of Queensland of Brisbane, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Redacted for Privacy, 1&1 Internet Inc. of Montabaur, Germany / Alfred Warburton of Manchester, United Kingdom of Great Britain and Northern Ireland (“UK”), self-represented.
The disputed domain name [queensland-freemasons.com] (the “Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 27, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2019. Upon request, an automatic extension of the Response due date was granted until January 31, 2019. The Center received various email communications from a previously named additional respondent in the period between January 18, and 30, 2019. Mr. Warburton filed a Response with the Center on January 29, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 8, 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.
The Complainant submitted a supplemental filing on February 5, 2019, and the Respondent replied with a supplemental filing on February 11, 2019.
The Complainant and its Trademarks
According to the Complaint, the Complainant is an unincorporated association of approximately 230 Freemasons lodges and 6,000 members in the Australian state of Queensland, trading under the names “United Grand Lodge of Queensland” and “Freemasons Queensland”. The Complainant is associated with the international Order of Free and Accepted Masons (commonly termed “Freemasons”), a secular fraternal society dating from the 1700s dedicated to self-improvement, community initiatives, and charitable causes.
The online Australian Business Register “ABN Lookup” database operated by the Australian Government lists the Complainant as an unincorporated entity formally titled “The United Grand Lodge of Antient Free & Accepted Masons of Queensland”, with an ABN status active since March 17, 2000, using the trading name “United Grand Lodge of Queensland” since that date and also operating under that name as its business name since March 14, 2018.
The Complainant’s website at “www.uglq.org.au” is headed “Freemasons Queensland” and displays a traditional masonic set-square and compass image, neither accompanied by a symbol indicating trademark registration or a claim of common law trademark rights. The Complainant’s website includes a “Terms of Use” page discussing copyright but not trademark.
The Complainant does, in fact, hold two Australian trademark registrations for figurative trademarks with the masonic set-square and compass image, one accompanied with the words QUEENSLAND FREEMASONS (Registration Number 707631, registered May 2, 1996) and the other with the words FREEMASONS QUEENSLAND (Registration Number 1274099, registered November 24, 2008). The Complainant applied in June 2018 for registration of FREEMASONS QUEENSLAND and THE CHARITY OF FREEMASONS QUEENSLAND as word marks, but those applications are still under examination.
The Complaint asserts that FREEMASONS QUEENSLAND and QUEENSLAND FREEMASONS also should be deemed common law marks, having acquired distinctiveness in use in advertising and promotional materials as well as in badges and letterhead. Examples are included with the Complaint. These show that a magazine or newsletter was called “The Queensland Mason” in 1928 and in the 1990s and that the QUEENSLAND FREEMASONS figurative trademark mentioned above was reproduced on printed materials in the 1990s and as late as 2001. The record does not show that this trademark was used subsequently. Instead, it appears that it was supplanted by the FREEMASONS QUEENSLAND figurative trademark by the early 2000s.
The Domain Name, the Respondent, and the Website
The Registrar’s WhoIs database entry for the Domain Name was redacted for privacy purposes in 2018 in compliance with the European Union General Data Protection Directive (“GDPR”). Hence, the Complaint named “Redacted for Privacy” as a respondent, with the Registrar listed as the registrant organization.
The Complainant initially named [A] Halton as a respondent. Mr. Halton is a former member of the Complainant organization with whom the Complainant has been engaged in litigation, as discussed further below. Upon the Center’s invitation to reflect the underlying Respondent as revealed by the Registrar in the Complaint, the Complainant submitted an amended Complaint naming Mr. Halton as an additional respondent. The Complainant states that it believes that the Domain Name is in fact controlled by Mr. Halton and that “Alfred Warburton” is the former’s deceased grandfather. After receiving a copy of the original Complaint in this proceeding, Mr. Halton advised the Center as follows by email dated January 30, 2019:
“On review of the document you have supplied this has nothing to do with me other than a continued
legal bullying by the people involved and the entire document is speculation and I hope you see it for what it is worth. […]
Please be advised that I am not interested and the unfounded allegations are now with my solicitor
who will be taking action for the defamatory comments and accusations contained in the document.
I will not be contacting the other party.
[A] Halton”
When notified of this dispute, the Registrar identified the Respondent Alfred Warburton of Manchester, UK (hereafter the “Respondent”) as the registrant. According to the Registrar, the Respondent Alfred Warburton registered or acquired the Domain Name on June 9, 2017.
An individual named James Patrick Alfred Warburton with a postal address in Manchester, UK, filed the Response in this proceeding. Mr. Warburton states that he resides partly in the UK and partly in Australia and that, contrary to...
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