#OGIO .com.au : Ballsy Aussie keeps #domain after #UDRP fails on technicalities

A ballsy Australian domainer gets to keep the domain Ogio.com.au, after a UDRP was triggered by a series of increasingly challenging events.

Confident of its strong international brand and Australian trademarks, Ogio International Inc, filed a UDRP in order to reclaim the domain. The Complainant operates from Ogio.com.

But lets rewind the clock back to early 2018, when a landing page for Ogio.com.au purported it’s an acronym for Oil Gas Industry Organisation. Regardless, the domain’s lander was also stating it could be for sale.

Following a series of email exchanges, the Respondent agreed to give the domain to the Complainant for the sum of $1,500 AUD if payment were made within 48 hours. The payment was made on November 21, and the domain was about to be transferred, when two days later, the Complainant’s lawyers requested the signing of paperwork in the form of a C&D. That motion infuriated the Respondent, who considered it a violation of his request to complete the exchange “without prejudice” or admittance of guilt. He returned the money, and kept the domain.

It gets more complicated.

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. On December 9, 2018, the Respondent contacted auDA to request reinstatement, asking what could be done to keep the disputed domain name and was told he had to specify its use as “domain monetization.” The domain was removed from pending delete status, but once again, two days later, that decision was reversed!

Meanwhile, the Respondent incorporated as an Ogio PTY business. The domain dropped, but he used a drop-catching service to re-register it.

Can you guess what happens next?

The Complainant filed the UDRP, but lost it on the technicality that a) the Respondent was incorporated at the time the domain was registered and used and b) their increased offer of $3,000 AUD was unsolicited, and thus does not count against the Respondent.

One panelist at the WIPO made a dissenting opinion, but was in the minority. The decision was made for the Respondent to keep the domain Ogio.com.au.

Full details on the decision follow – happy reading the details of this epic UDRP! 😀

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ogio International Inc v. Ogio Pty Ltd
Case No. DAU2019-0011

1. The Parties

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.

2. The Domain Name and Registrar

The disputed domain name <ogio.com.au> is registered with Drop.com.au Pty Ltd (the “Registrar”).

3. Procedural History

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.

4. Factual Background

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 “policy delete”.

On December 17, 2018, the auDA officer Mr. Kaay had spoken with emailed the Complainant’s then attorneys to advise:

“… the current registrant for the above mentioned domain name has countered the claim by stating that the [disputed domain name]” is an acronym for one of his trading names. We cannot reject his claim, so I had to remove the name for the policy delete process.”

On December 19, 2018, however, Mr. Kaay received a further email from the auDA Compliance Team advising that the decision on December 10 to reinstate the disputed domain name had been reviewed as a result of a quality assurance audit. As a result of that review the decision to reinstate the disputed domain name had been reversed and the Registrar would be instructed to delete the registration.

On December 24, 2018, as noted above, the Respondent was incorporated.

On January 3 – 4, 2019, the disputed domain name “dropped” – became available for registration. The Respondent successfully registered it.

Shortly after this, the Complainant’s then attorneys made a further offer to acquire the disputed domain name from the Respondent, which was rejected, as detailed below.

Since February 27, 2019, the disputed domain name has resolved to an “Under Construction” webpage, which features the DBR logo and the wording

“We are OGIO Pty Ltd. We currently own and are developing the following domain names: [the disputed domain name], <ogio.co>, <ogio.global>, <ogio.club>, <ogio.shop>, <ogio.group>. Please visit this site often for updates to Ogio Pty Ltd status!”

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(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 subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the trade mark.

The Complainant has proven that it owns the registered trade marks for, or based on, OGIO, referred to in section 4 above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location, or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Disregarding the second level domain, “.com.au”, therefore the disputed domain name is identical to the Complainant’s trade mark.

B. Rights or Legitimate Interests

The Complainant seeks next to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which is the second of the three elements that the Complainant must prove under the Policy.

Before undertaking that exercise, the majority of the Panel wishes to clarify that the disputed domain name under consideration is the domain name that was issued after the former domain name “dropped” as a result of the order made by auDA on December 19, 2018; that is, the disputed domain name that was registered by the present Respondent, Ogio Pty Ltd, on January 4, 2019. The Complainant identifies the disputed domain name as the domain name <ogio.com.au>; the creation date of which auDA is said to have confirmed as January 4, 2018. That is not correct, as the disputed domain name with which this proceeding is concerned was registered on January 4, 2019, which is the date which is given in the email from auDA, being Exhibit B to the Complaint.

The obligation is therefore on the Complainant to show that the Respondent has no rights or legitimate interests in that domain name.

The onus of proof

It is now well established that, as is also the case under the analogous Uniform Domain Name Dispute Resolution Policy (“UDRP”)1 , the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to show it does have rights or legitimate interests. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

In seeking to discharge that onus, the Complainant advances a case which the Panel must say is difficult to follow and which, whatever it establishes, does not establish that the Respondent does not “have” a right or legitimate interest in the disputed domain name. The onus established by the Policy is to prove, addressing itself to the Respondent, that “you have” no right or legitimate interest in the disputed domain name, that is, that “you” do not have such a right or legitimate interest at the time the inquiry is being made, which is usually regarded as the date when the Complaint was filed. The phraseology of the Policy therefore makes the issue clear. But if there were any doubt about it, Note 2 at the end of the Policy makes it clear. Note 2 says that:

“[2] For the purposes of this policy, auDA has determined that ‘rights or legitimate interests in respect of the domain name’ are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.”

In other words, a domain name may be said to have met auDA’s Eligibility and Allocation Rules at the time the disputed domain name was registered, but if there is a challenge to whether the registrant is entitled to the disputed domain name at all, that inquiry is to take place when the challenge is made.

The inquiry now underway is therefore to show on the facts that have occurred whether the Respondent now has a right or legitimate interest in the disputed domain name.

The Complainant’s case on this issue

To discharge its onus to prove that the Respondent does not have any such right, the Complainant advances in effect a three-part case. The first part seems to the majority of the Panel to be irrelevant to the present proceeding and, even if it is relevant, to be a very unsafe ground for concluding that the Respondent has no entitlement to be the registrant because it tells us little if anything as to what rights and interests the Respondent might have in the disputed domain name.

The Complainant’s first submission

The first part of the case is directed personally at Mr. Kaay, who is the principal and sole director of the Respondent company, and it alleges that he is a “domainer” who “unashamedly” traffics in domain names and that he owns a large number of them. The Complainant says that these facts must be considered to “frame” this ground of the case, presumably using the word in its normal dictionary meaning, namely to construct the case. The Complainant alleges that Mr. Kaay’s company Kaay Holdings controls 813 domain names, which Mr. Kaay denies, because he represents and administers over 30,000 “.com.au” domain names. But none of that can be a ground for denying the Respondent from having a right or legitimate interest in the disputed domain name if it is established that it does, as they are lawful and legitimate activities, unless some other wrong in breach of the Policy is alleged, which it is not. In any event, given the chronology of events in this case, those activities of Mr. Kaay must have occurred before the Respondent registered the disputed domain name and are therefore irrelevant to the present inquiry. The conclusion on this part of the case must therefore be that Mr. Kaay’s ownership or control of domain names cannot frame this ground of the Complaint.

The Complainant’s second submission

The second part of the case is then advanced, namely the history of what is defined by the Complainant as the Previous Disputed Domain Name and considered by the Complainant as the “same Disputed Domain Name”. This part of the case is clearly not presented as being of mere historical interest, as the Complainant submits that it also must be taken into account to “frame” the present claim and it is therefore presented as being integral to the Complainant’s case. That may be so, but it goes nowhere to make out a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name that is the subject of this proceeding.

That is so for several reasons. First, the Complainant’s argument is that the Respondent has no such rights or interests because there is a “binding” agreement between the Complainant and the Respondent to sell the Previous Disputed Domain Name for AUD 1500 and that, because the Complainant is entitled to the Previous Disputed Domain Name under that agreement, the Respondent is not entitled to it. But, the whole point of the issue about the contract in writing is that it was not signed or adopted by the Respondent, which had not then been incorporated, and in fact was, on the unchallenged evidence, not only rejected by Mr. Kaay, but was the very reason given by him for taking the position that the sale was cancelled, namely that the Complainant had tried to introduce unacceptable terms into the bargain. The proposed agreement could not, therefore, bestow any rights on the Complainant. It cannot, therefore show that the Respondent has no rights or legitimate interests in the disputed domain name.

Secondly, it must be plain that the agreement, whatever its effect, related not to the disputed domain name, i.e., the domain name that is the subject of this proceeding, in any shape or form, but to the Previous Disputed Domain Name over which there had been a separate dispute. It could not conceivably support any aspect of the onus of proof on the Complainant in the present dispute. This logical gap is exacerbated by the Complainant’s conclusion on this issue, which is that “[t]he Respondent cannot have any legitimate right[s] or interest[s] in the Disputed Domain Name as it amounts to a breach of the Agreement…”. To suggest that the Respondent cannot have rights or legitimate interests in the disputed domain name because of an agreement of no effect about a domain name which is now defunct and to which the Respondent was not a party, lacks any logic and the majority of the Panel rejects it.

Finally, there is another reason why the unsigned agreement cannot give any support to the Complainant on the sole issue that is now before the Panel. That is that even if the document and the conduct of the disputants at the time conferred any entitlement on the Complainant, it would have to sue on it in the courts to have it performed, as it is outside the jurisdiction of the Policy and, moreover, panels under the Policy, like under the UDRP, are not equipped with powers over hearing evidence, discovery, specific performance, and the like that would be needed to adjudicate on any such dispute.

Accordingly, so far, the Complainant has not discharged any part of the prima facie onus that is on it, because the matters it relies on to “frame” its case are of no substance.

The Complainant’s third submission

The Complainant then moves to the third and final part of its case on this issue. This part of the Complaint also relates solely to the Previous Disputed Domain Name, i.e., not the disputed domain name, and yet it also is said to show that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant’s argument is that on November 12, 2018, the Complainant, through its then solicitors, lodged an auDA Monetisation Complaint with respect to the Previous Disputed Domain Name. A copy of that auDA Monetisation Complaint is Annexure “N” to the Complaint. It is a long and complicated case that is advanced, but its essence is that the Previous Disputed Domain Name had been registered for monetisation, that it had been registered to be resold or for transfer to another party, but that the registrant had not complied with the Eligibility and Allocation requirements of auDA for owning a monetised domain name which was therefore not hosting a “genuine” monetised website.

But what was more important than the intricacies of this process, however, was the end result to which the Complainant was working, for it requested that auDA should “drop delete” the Previous Disputed Domain Name or, not to make too fine a point of it, prise it free from the then registrant and cancel it, so that it would then fall to whatever fortunate party might acquire it on the principle of “first come, first served“ and register it in that party’s name. Clearly the Complainant must have been aware that following that course could result in an entity other than the Complainant itself acquiring the new domain name that would be the result of that process.

auDA’s decision

The Complainant was successful, because auDA’s decision of December 5, 2018 determined that the Previous Disputed Domain Name registration breached auDA’s Eligibility and Allocation Rules although, curiously, without giving any reasons. Nevertheless, the Complainant had succeeded in what it wanted, for auDA stated in its decision that the registrar of record for the domain name had been instructed to delete the domain name.

The Complainant’s success, however, was not for long. Mr. Kaay intervened and claimed that the Previous Disputed Domain Name was an abbreviation for his registered business name, Organic IT Services, owned by Kaay Holdings Pty Ltd and that it should remain registered and not be deleted. On December 10, 2018, Mr. Kaay wrote to auDA and proposed that the Previous Disputed Domain Name would be used for legitimate monetisation purposes and that the Rules in that regard would be complied with. auDA accepted that view and on the same day apparently conveyed this to the registrar of the Previous Disputed Domain Name. The necessary consequence was that the Previous Disputed Domain Name was no longer to be dropped and Mr. Kaay and his interests had retained it.

This was apparently embodied in a letter from auDA to the Complainant’s solicitors on December 17, 2018, saying inter alia that “the registrant …had countered the claim by stating that ogio.com.au is an acronym for one of his trading names. We cannot reject his claim so I had to remove the name from the policy delete process”.

The review of auDA’s decision

Things did not remain in that state for long, however, and on December 19, 2018, auDA wrote again, this time to Mr. Kaay, saying that the issue had been reviewed and that auDA had decided that the decision would be reversed, apparently on the basis that the Previous Disputed Domain Name had been registered on March 12, 2018, whereas the business name Organic IT services, of which Ogio had been said by Mr. Kaay to be an abbreviation, was not registered until after that event, namely on March 20, 2018, whereas the business name should have been registered before the registration of the Previous Disputed Domain Name. Accordingly, the Previous Disputed Domain Name resumed its journey and was placed into “policy delete”.

It was that sequence of events that then lead to the current Respondent being incorporated on December 24, 2018, and being successful in having the disputed domain name that is the subject of the present proceeding registered on its behalf.

The Complainant relies on this tortuous history to argue that as Mr. Kaay’s holding of the Previous Disputed Domain Name had been shown to be outside the auDA’s Eligibility and Allocation Rules, it could not now, via a separate and entirely new company, the Respondent, show a legitimacy in the disputed domain name that is the subject of the present proceeding. The majority of the Panel does not accept that argument or any of the premises on which it is based. That is so for the following reasons.

The first observation to be made about this complicated series of events is that they are, essentially, irrelevant to the issues in the present case, which involves a different disputed domain name registration which had not occurred at the time of the intricacies that have just been explained. Whatever conclusions auDA reached on the application of its Eligibility and Allocation Rules and monetisation rules, those conclusions did not and could not affect whether the Respondent, which had not then been incorporated, would turn out to have rights or legitimate interests in a domain name that had not then been registered. It may well have turned out that new events and conduct gave it rights and legitimate interests based on entirely different grounds. Indeed, although it would be unwise for us to speculate on that issue or how it will unfold, there is at least one aspect that stands out. If the reason in its final analysis as to why auDA decided to cancel the registration and “drop” the Previous Disputed Domain Name was that Organic IT Services was not registered by the time of the registration of the Previous Disputed Domain Name, as appears to be the case, the disputed domain name, with which this case is concerned, was registered in the name of the current Respondent that was incorporated and registered as a company before the disputed domain name was registered.

Secondly, even if the majority is wrong in concluding that the history of the dealings with the Previous Disputed Domain Name is irrelevant, and if those dealings should be considered, they show if anything the opposite of the conclusion for which the Complainant is contending. They show that probably the only thing the parties agreed on was that the dropping of the Previous Disputed Domain Name was a clearing of the decks and that making it available for registration on the “first come, first served” basis under the auDA rules was being done with everyone’s knowledge and that whoever won the drop would be entitled to the newly registered domain name with an end to the tortuous manoeuvrings that had characterised the life of its predecessor. Both parties to that dispute were clearly waiving any objection they may have had to this course being followed. Indeed, the Complainant has admitted to that understanding and that, like the Respondent , it was risking its arm in originating the “drop” process, following it through to the point of its ultimate success and taking part in trying to win the new domain name on the “first come, first served” basis. It says as much by its submission in the Complaint that:

“[t]he Complainant had also placed a ‘back order’ to try to secure that domain name after the decision by auDA, but was unsuccessful.”

In other words, the Complainant recognised that it had succeeded in having the Previous Disputed Domain Name dropped, that it was entitled, as was the Respondent, to an equal opportunity to participate in the process to obtain the new domain name for itself, that it had taken part in the process, but that it had not succeeded. Any other position was clearly waived, just as Mr. Kaay had clearly waived his alternative position by accepting auDA’s decision. Indeed, it could probably be said that the parties, by their conduct, had agreed that the drop process would determine the outcome of the entitlement to the new domain name and that they were both seeking to avoid the intricacies of further disputation.

The consequence of the “drop” process

The consequence of the whole process was that the new domain name would be available to either party and indeed to other parties who wanted to bid for it. That is what has happened and the Respondent has acquired the disputed domain name under the very process that auDA set in motion at the instigation of the Complainant and, as things stand at the moment, not in breach of any auDA rules.

The majority of the Panel is therefore unable to agree with the conclusion of the Complainant that:

“[t]he Respondent company was deliberately and artificially set up to attempt to legitimise Kaay’s previous unsuccessful holding of the Disputed Domain Name.” There was no “previous unsuccessful holding of the Disputed Domain Name”. No adjudication has been made of the entitlement of the Respondent or anyone else to the disputed domain name, at least not yet. Nor was the setting up of the Respondent company to legitimise the previous unsuccessful holding of the Previous Disputed Domain Name. An adverse ruling had been given on the Previous Disputed Domain Name because Organic IT services was not registered until after the registration of the Previous Disputed Domain Name, and it was therefore prudent to try to meet auDA’s needs by having a corporate entity incorporated before the drop process went forward.

The majority also cannot agree with the submission of the Complainant that, as the disputed domain name was registered in the name of the present Respondent, “the Respondent cannot create [] legitimate interest[s] in the [Disputed Domain Name] where no such interest[s] existed at the time the Disputed Domain Name[] [sic] were registered”.

If that submission relates to the disputed domain name in this proceeding, it is, with respect, wrong. The wording of the Policy in the present tense, Note 2 to the Policy and the regular practice in these matters shows that the issue of legitimate interests in a domain name is decided when all of the facts are in and not solely at the time of registration.

Nor do either of the two decisions cited by the Complainant assist it. They were both cases where after registration of the domain names, the respondents had engaged in dubious conduct like targeting which was held, in effect, not to give rise to a right or legitimate interest. Neither case suggested that a registrant could not acquire an entitlement, as registrants frequently do, by valid use of the domain name over time, acquiescence by the trade mark owner or the absence of evidence of any targeting or other untoward conduct.

The real and probably the only issue here is whether the facts as they are known today show that the Respondent has no rights or legitimate interests in the disputed domain name it registered in its own name and incorporating its own name as the disputed domain name. On one side of the ledger is the fact that the Complainant has a trade mark for OGIO and uses that word as the brand name for its goods and services, a position that must be important and of considerable commercial value to the Complainant. On the other side of the ledger, the Respondent has registered a domain name in the course of a drop process in which it was successful.

The balancing of that ledger must be determined by a matter that is not the subject of disputation but which is actually written into the Policy under which the eligibility to hold domain names in the Australian space is set out and which binds the parties to this proceeding. That provides as follows:

“2.3 There is no hierarchy of rights in the DNS. For example, a registered trade mark does not confer any better entitlement to a domain name than a registered company or business name. Domain name licences are allocated on a ‘first come, first served’ basis. Provided the relevant eligibility and allocation rules are satisfied, the first registrant whose application for a particular domain name is submitted to the registry will be permitted to license it.”

Conclusion

Accordingly, as things stand at the present, there is no basis at all for concluding that the Respondent has no rights or legitimate interests in the disputed domain name. It has registered a domain name under a process controlled by auDA, sought by the Complainant and where no breach by the Respondent of auDA’s rules has been shown.

Accordingly, no prima facie case has been made out against the Respondent and the Complainant fails on the second element under the Policy.

C. Registered or Subsequently Used in Bad Faith

The Complainant submits that the Respondent registered and / or used the disputed domain name in bad faith. This is said to be because it offered to sell or rent the disputed domain name to the Complainant within the meaning of paragraph 4(b)(i) of the Policy and that it registered the disputed domain name to prevent the owner of a trade mark or name from reflecting that mark or name in a corresponding domain name within the meaning of paragraph 4(b)(ii) of the Policy.

With respect to the first ground, the majority of the Panel has examined the correspondence provided by the Complainant, in which the offer to sell or rent is said to be contained. The two letters concerned are marked “Without Prejudice”, the first of that duo having originated from the firm of solicitors then acting for the Complainant and the second originating from the Respondent who followed suit and marked his reply “Without Prejudice”. In all the circumstances, the majority of the Panel is of the view that it should examine that correspondence.

The originating letter on behalf of the Complainant is dated January 11, 2019, that is 6 days after the Respondent registered the disputed domain name. The letter offers to buy the disputed domain name for AUD 3,000. The Respondent replied on January 14, 2019, rejecting the offer and proposing that he would consider selling the disputed domain name if the Complainant made “a stronger, more ‘current market value’ realistic offer”.

Paragraph 4(b)(i) of the Policy

The Respondent’s proposal was not in breach of paragraph 4(b)(i) of the Policy, because it was not an offer at all. The Respondent was clearly aware of the Complainant but, contrary to the Complainant’s assertions, did not initiate any approach to the Complainant to sell the disputed domain name and made no offer to sell it but, rather, agreed to respond to any further offer that might come from the Complainant. The law recognises such a proposal not as an offer but as an invitation to treat, a distinction that has long been recognised and implemented in domain name practice. The first ground is therefore not successful.

Paragraph 4(b)(ii) of the Policy

As to the second ground, the Complainant argues that the evidence shows “a clear pattern of conduct in the registration and/or use of domain names in bad faith” which is the main issue that has been the subject of debate under the UDRP and the decision cited, namely Schott Glas and NEC/Schott Components Corp v. Necschott, WIPO Case No. D2001-0127.

However, the relevant provision in the Policy is different from that in the UDRP, as it does not mention a pattern of conduct or suggest that that is the area of inquiry. The Policy ground is that:

“(ii) you have registered the domain name in order to prevent the owner of a name, trade mark or service mark from reflecting that name or mark in a corresponding domain name;…”

Accordingly, the Panel has to assess all of the evidence to decide whether in the present case, not in other cases, the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in “a corresponding domain name”. The practical result of the Respondent obtaining the registration has been to prevent the Complainant from registering <ogio.com.au> but it can, of course, register other domain names reflecting its trade mark. More importantly, however, there is an air of unreality about the suggestion that this was its motivation in registering the disputed domain name or its primary or principal motivation, which seems to be contemplated by the use of the words “in order to”. It registered the disputed domain name because the auDA decision was that the Previous Disputed Domain Name was “dropped” and a new domain name was available on a “first come, first served” basis if the Respondent was successful in the process, which it was. There is no evidence from which an inference can be drawn that the disputed domain name was registered to frustrate the Complainant in the manner specified.

The Complainant therefore has not made out either of the grounds relied on to show bad faith either in registration or use of the disputed domain name.

D. Reverse Domain Name Hijacking

The Respondent claims a finding that the Complainant has engaged in reverse domain name hijacking.

Paragraph 15(e) of the Rules provides, in part:

“[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

Paragraph 4.17 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”) indicates that a Panel will rarely find a case of reverse domain name hijacking where there is a genuine dispute or where there is an arguable, but weak, case.

The majority of the Panel has, of course, given careful consideration to all of the evidence and the submissions to ensure that the discretion it undoubtedly has is properly exercised. Having done so, the majority has decided not to make a finding that the Complainant has engaged in reverse domain name hijacking.

6. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Presiding Panelist (Dissenting)

Alan L. Limbury
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: June 13, 2019

DISSENTING OPINION (Warwick A Rothnie)

I respectfully dissent. In deference to the extensive and detailed reasoning of the majority, it is necessary for me to set out my reasons at somewhat greater length than is usual for a dissent.

I agree with the majority that the disputed domain name is identical to the Complainant’s trade mark. I would find, however, that on the record in this case the Complainant has also established the Respondent does not have rights or legitimate interests in the disputed domain name and it was at least registered in bad faith. In light of those conclusions, I also reject the Respondent’s request for a finding of Reverse Domain Name Hijacking.

Rights or legitimate interests

The starting point, as the majority recognise, is that the relevant registration is the Respondent’s registration of the disputed domain name on January 4, 2019.

It is not in dispute between the parties that neither the Respondent nor any of the entities associated with Mr. Kaay registered the disputed domain name with any licence or authority from the Complainant. Nor is it in dispute that the Respondent, Mr. Kaay and Kaay Holdings are not in any way associated with the Complainant. There is no evidence that the disputed domain name is or has been used in connection with a good faith offering of goods or services or as some form of legitimate noncommercial or fair use. Subject to one point, these factors, together with the registration of the Complainant’s trade mark for many years before the registration of the disputed domain name, are typically sufficient to raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. See e.g. auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), section 2.1.

For present purposes, the qualification to the foregoing is that the disputed domain name corresponds to the Respondent’s name. As the auDA auDRP Overview 1.0 fairly states in section 2.7B, however, the fact of the company name does not of itself establish rights or legitimate interests in the disputed domain name. That generally turns on whether the company name was adopted and has traded in good faith, or it is intended to be used in good faith.

Mr. Kaay denies that, when he first registered the disputed domain name through Kaay Holdings, he had any knowledge of the Complainant or its trade mark. The Respondent says the disputed domain name was registered as a short, snappy domain name to provide an internal email service for the OrgIT business’ onsite managers which Mr. Kaay dubs “OrGanic Internal Operations”. The Respondent further says, in any event, as a four letter acronym representing many different things such as “Oil Gas Industry Organisation”, “Organic Grade Intimacy Oils”, “Only Great Insurance Offers”, “Our Great Internet Offer”, “Outer Galaxy Interplanetary Operations” and so on, the Complainant cannot claim exclusive rights in it.

First, the Respondent’s name was adopted on its incorporation on December 24, 2018. That is, after auDA ruled that the previous registrant, Kaay Holdings, was not entitled to the registration either on the basis of derivation from its name or under auDA’s domain monetisation policy. On any view, the Respondent’s name was chosen well after the Respondent’s sole director and secretary was well aware of the Complainant’s trade mark.

Secondly, the Respondent has not provided any objective evidence to support the claimed use as an internal email server. Such evidence, where a respondent claims demonstrable preparations to use a domain name in good faith is almost always essential to support the claim; the requirement is, after all, demonstrable preparations to use. See e.g. WIPO Overview 3.0, section 2.2, which, in view of the Policy’s derivation from the UDRP and the similarity of the requirement, applies with equal force under the Policy.

I acknowledge that only a comparatively short time has passed since the Respondent registered the disputed domain name. That could well be a consideration in some cases. In the present case, however, the claimed use for an internal email server within the businesses controlled by the Respondent’s sole director and shareholder dates back to April 2018.

Thirdly, the only evidence of use of the disputed domain name is the use which the majority characterises as an invitation to treat. Accepting the majority’s characterisation, however, I do not agree that leads to a conclusion that the disputed domain name was not registered with an intention of selling, renting or otherwise transferring it for a price in excess of documented costs. The Policy would be set at naught if it could be so easily sidestepped by trailing one’s coat to solicit offers. Any suggestion that the Respondent registered the disputed domain name with some different intention or purpose to Mr. Kaay’s other company, Kaay Holdings, is, with respect, not realistic.

Fourthly, section 2.1A of the auDRP Overview points out:

“[u]nlike the equivalent provision in the UDRP, paragraph 4(c)(i) of the Policy expressly states that ‘an offering of domain names that it has acquired for the purposes of selling, renting or otherwise transferring’ is not a bona fide offering by the respondent for this purpose.”

In the context of domain monetisation, auDA’s 2012-05 – Guidelines on the Interpretation of Policy Rules for Open 2LDs (the “Guidelines”) indicate:

“11.3 The first condition is that ‘the content on the website to which the domain name resolves must be related specifically and predominantly to subject matter denoted by the domain name’. This is intended to ensure that the close and substantial connection between the registrant and the domain name is visible and meaningful to users. If the content of the website does not relate to the domain name in any discernible way, then the close and substantial connection rule is not satisfied. auDA uses a ‘reasonableness test’ to determine whether the content on the website satisfies the condition, i.e. would a reasonable person regard the content as related specifically and predominantly to the domain name?

11.4 The second condition is that ‘the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered’. This condition is intended to ensure that domain monetisation is not used as a cover for cybersquatting or other misleading or fraudulent activity. In determining whether a registrant is in breach of this condition, auDA will take into account whether the domain name is a generic word or may have an alternative meaning which is not related to a specific entity, person or brand.”

At the time the Respondent registered the disputed domain name, the second condition at least was not satisfied and so the Respondent cannot rely on this justification.

Finally, I do not agree that the Complainant, having successfully challenged the prior registration of the disputed domain name under auDA’s Eligibility and Allocation Rules somehow became bound by the “first come, first served” rule when the disputed domain name “dropped”.

Paragraph 2.3 of the Eligibility and Allocation Rules (set out by the majority) does provide that there is no hierarchy of rights in terms of eligibility. That is, however, as between competing claimants with rights. All domain names registered even in compliance with the Eligibility and Allocation Rules are registered subject to the Policy.

Registered, or subsequently used, in bad faith

It follows from my reasons for finding the Respondent does not have rights or legitimate interests in the disputed domain name that I would find the disputed domain name was registered in bad faith. In summary, the disputed domain name was registered with clear knowledge of the Complainant’s trade mark in circumstances where that registration does not appear to satisfy auDA’s domain monetisation rules.

In addition, I would find that the disputed domain name has been subsequently used in bad faith. As the majority recounts, in January 2019, the Respondent rejected an offer from the Complainant to buy the disputed domain name for AUD 3,000 saying it would consider selling it if the Complainant made “a stronger, more ‘current market value; realistic offer”.

Reverse Domain Name Hijacking

In light of the foregoing, it follows I would reject the Respondent’s claim to a finding of reverse domain name hijacking.

Warwick A. Rothnie
Presiding Panelist (Dissenting)
Date: June 13, 2019

1 Given the similarities between the Policy and the UDRP, the Panel cites UDRP decisions and other UDRP jurisprudence when appropriate.

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