ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1 Parties and Contested Domain Name
The Complainant is Daydream Island Resort Investments Pty Ltd, of Level 5, 359 Queen Street, Brisbane, Queensland, 4000, Australia.
The Respondent is Alessandro Sorbello of c/- Level 7, 82 Eagle Street, Brisbane, Queensland, 4000, Australia.
Both parties were represented by lawyers.
2 Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on November 11, 2000. The hardcopy of the Complaint Form and annexes were received on November 21, 2000. Payment was received on November 11, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Network Solutions Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An e-mail was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on November 11, 2000. The Clerk's Office (according to information provided to the panel) received the requested information on November 10, 2000.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, and notifying the Complainant, the concerned Registrar and ICANN on November 23, 2000. This date is the official commencement date of the administrative proceeding.
The emails to the email@example.com and to the administrative contact were returned 'undeliverable'. One out of two faxes was successful.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, the official notification to the technical contact was delivered.
On December 12, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on December 20, 2000.
On December 29, 2000, the Clerk's Office contacted John V. Swinson, and requested that he act as panellist in this case.
On December 28, 2000 (local time), Mr Swinson accepted to act as panellist in this case and filed the necessary Declaration of Independence and Impartiality.
On December 29, 2000, the parties were notified that Mr Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 12, 2001.
The Complainant requested permission to file a response. The panel granted that request, and also allowed the Respondent to file a response to the response. The panel also emailed questions to both parties to provide additional information. Due to the timeframe in which a decision was to be handed down, the panel set strict deadlines for these responses. The Respondent requested an extension to extend the time to respond to the Complainant's response for 12 additional days. This is because an independent adviser to the Complainant and its representative was on summer vacation. ICANN Rule 6(f) required the decision to be handed down on January 12, 2001, save exception circumstances. No exceptional circumstances were shown. Accordingly, the request for the extension as made by the Respondent was denied. The panel believes that the Respondent was not prejudiced by this decision. The Respondent, through its legal representatives, filed a well written response to the Complainant's response which was considered by the panel. The panel also notes that all matters to be addressed by the Respondent could have been addressed in the original respondence.
3 Factual Background
The Complainant holds a 50% interest in a business known as "Daydream Island Resort". Daydream Island Resort is a resort business conducted on Daydream Island, Queensland, Australia.
The Complainant acquired its interest in the Daydream Island Resort on November 1, 1999. A related entity of the Complainant acquired the other 50% interest in the Daydream Island Resort on March 31, 2000.
The Respondent became the Registrant of the contested domain name on December 18, 1999.
The Respondent is a resident of Queensland, Australia. The Respondent has extensive business experience both in real estate and the telecommunications industry as well as other interests in Brisbane and throughout Queensland. More recently, the Respondent's interests have extended to the e-commerce industry, both through entities in which he is a participant or with which he is otherwise affiliated and in his private capacity.
When the panel visited the website www.daydreamisland.com on January 2, 2001, the panel found that the address did not resolve to an active website.
4 Parties' Contentions
The Complainant markets a resort on Daydream Island in the Whitsundays, Great Barrier Reef, under the name "Daydream Island Resort". This resort is managed and operated by the Complainant's operating entity, Daydream Island Pty Ltd.
The Daydream Island Resort has been in operation since prior to 1940. The Complainant has been using "Daydream Island" as the name for the resort continuously since its acquisition of the resort in 1999. Predecessors in interest used the name "Daydream Island Resort" but it is not clear when this name was first used, but it has been in use for more than 10 years. The resort's website can be accessed at www.daydream.net.au.
The Resort occupies the whole of Daydream Island, which is about 17 hectares, and there are no other resorts or hotels on the island. The only other accommodation on the island are staff quarters.
The Complainant, and a related entity of the Complaint, are the current joint owners of four Australian Trademark Registrations in respect of the word and image mark DAYDREAM ISLAND. The Trademark Registrations are: Australian Reg. No. 547732 (filed on December 17, 1990), Australian Reg. No. 547733 (filed on December 17, 1990), Australian Reg. No. 547734 (filed on December 17, 1990) and Australian Reg. No. 552872 (filed on March 28, 1991) ("the Registered Trademarks"). The Registered Trademarks include a view of an island with palm trees and have the words "Daydream Island" underneath in a cursive script. The Complainant acquired its interest in the trademarks from the previous owner of the resort.
The Complainant has provided brochures and the like that show use of "Daydream Island Resort" as a trademark for its resort.
The Complainant contends that the original geographic name of the island on which Daydream Island Resort is located was West Molle Island, part of the Molle Group, and that "because of the substantial goodwill and international reputation of the business of the Complainant conducts on the island, Australia's National Mapping Agency, now formally recognise West Molle Island as Daydream Island." Maps of the area identify the island as Daydream Island.
The postal address of the Daydream Island Resort is "PMB 22, Mackay, Queensland 4740" Mackay is a town on the Australian mainland, not on Daydream Island.
The Complainant contends that the Daydream Island Resort is internationally renown.
The Complainant contends that the Respondent does not have any registered trademarks for Daydream Island, and that the Respondent has not used the name Daydream Island in relation to any bona fide offering of goods or services, has never had a live webpage at daydreamisland.com, and has no products or services actually named "Daydream Island".
The Complainant and the Respondent provided the panel with copies of various correspondence to the Respondent from both the Complainant and its legal representatives, and correspondence between the Complainant and its legal representatives. At the suggestion of its legal representatives, on two occasions the Chief Executive Officer of Daydream Island Pty Ltd wrote to the Respondent stating that it wished to secure the right to the domain name, and asked the Respondent to submit an offer. According to the Complainant, the Respondent contacted the Chief Executive Officer and said that he was planning on using the domain name but that he might be willing to sell it if the Complainant made him an offer.
The Complainant's legal representatives responded with the typical lawyer's demand letter.
The Complainant contends that:
"the Respondent has effectively prevented the Complainant from reflecting its trademarks in a corresponding domain name. The Complainant submits that in the absence of any associated business activity or other demonstrated purpose or intention, these circumstances support the inference that the continued maintenance or registration of the contested domain name after actual knowledge of existence of the Complainant's prior registered trademark … in undertaken in bad faith."
The Respondent contends that the Registered Trademarks are Australian trademarks and are Australian domestic rights only, and therefore "Australian" domain names such as daydreamisland.com.au are more appropriate to protect the Complainant's commercial interests.
The Respondent states that the Registered Trademarks are subject to an endorsement (disclaimer) that states that the rights of the trademark registration do not extend to exclusive use of the words "Daydream Island", and that others can use "Daydream Island" without infringing the Registered Trademarks.
The Respondent states that the Registered Trademarks are limited to certain trademark classes and therefore are limited.
The Respondent contends that other trademarks exist that include the word "daydream", and accordingly, the Complainant does not have exclusivity in the words "daydream" or "daydream island" and that the Complainant's rights are accordingly curtailed.
The Respondent, providing an extract from a government database, states that the name "Daydream Island" derives from the name of the yacht of Major Paddy Murray, who purchased West Molle Island in 1933. In 1989, some marine charts still included the name "West Molle Island" but the government planned to change this to remove unnecessary confusion.
The Respondent states that the Complainant's commercial interests are not being harmed because the resort on the island is being operated by a third party, Daydream Island Pty Ltd.
The Respondent also contends that the Complainant purchased the interest in the resort only one month prior to the Respondent registering the domain name in dispute, and this somehow tarnishes the Complainant's trademark rights.
The Respondent contends that it has a legitimate commercial interest in the disputed domain name, because for the past two years, the Respondent has been planning the development of several targeted websites. The Respondent states that he plans a website with an art, poetry and music concept or theme. He has identified similar websites to his planned websites, which include a porn site, a casino site, and a number of sites that were unavailable or under construction. The Respondent states he has spent hundreds of hours and thousands of dollars planning and developing the "daydreamisland.com" concept. The reason the Respondent selected this domain name is that it reflected the theme of his proposes website, which, it appears, is not intended to be a website about island vacations.
The Respondent states he has received numerous offers for the domain name, but never sold it, and that he did not have the sole purpose of selling for profit the domain names he owned. The Respondent states that his website and domain name are not for sale. The Respondent claims that he had the opportunity to register dot com domain names for other Great Barrier Reef Islands, but did not do so, and accordingly, that he had no intention of "cornering" the Great Barrier Reef Island domain name market and there was no pattern of bad conduct. The Respondent claims that the Complainant tried to "entrap" him into selling the disputed domain name, and to generate evidence of bad faith.
The Respondent provided a list of other domain names that could be used by the Complainant.
5 Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
5.1 Identical or confusingly similar to a trademark or service mark
The Complainant's resort is well known throughout Australia and the world.
The panel finds that the Complainant is the owner of a registered trademark that includes as a substantial part the words "Daydream Island".
The panel finds that the Complainant also has "common law" trademark rights in the name "Daydream Island Resort".
The contested domain name is confusingly similar to the Complainant's registered trademarks and the name "Daydream Island Resort".
It is totally irrelevant that the Registered Trademarks only provide trademark rights in Australia. See, for example, Burlington Coat Factory Warehouse Corporation v. Naiyer Imam, WIPO Case No. D2000-0485 and Cabela's Incorporated v. John Zuccarini FA0007000095233
which are decisions where the registered trademark was a trademark registered only in one country. It is also irrelevant that the Registered Trademarks are limited to certain classes. It is not a requirement for the Complainant to prove that the Complainant has the exclusive rights to the Trademark in relation to all types of goods and services in all countries in the world. There is no requirement that the trademark be a registered trademark (Web2You Inc. v. MyDotCom, AF-0268) or that the Respondent is infringing or may infringe those trademark rights.
The purpose of this element is to require that Complainant to prove that the Complainant has a trademark or service mark and that the domain name is identical or confusingly similar to that mark. A bona fide trademark registration from any country in the world or "common law" trademark usage in any country in the world, in relation to any goods or services, along with evidence of appropriate "brand recognition" or reputation vesting in the Complainant, would be sufficient to show the existence of a trademark or service mark in which the Complainant had rights.
The Respondent's contention that other trademarks exist that include the word "daydream" is also misfounded. First, the dispute domain name is not "daydream.com" but "daydreamisland.com". Second, just because another person has a trademark right involving a word does not prevent a Complainant proving that the Complainant also has trademark rights to that or a similar word. Additionally, in relation to paragraph 5.2 of this decision below, the fact that others use part of the domain name in their trading name "does nothing to demonstrate that Respondent has such [legitimate] right or interest." See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO D2000-0847.
It is also irrelevant that the Complainant has engaged a manager (which is a subsidiary of the Complainant) to operate its resort. The Complainant clearly owns the Registered Trademarks. The Respondent does not question that the Complainant owns the rights to the name "Daydream Island Resort".
It is also irrelevant that other "suitable" domain names may be available.
The panel is conscious that the Complainant's Registered Trademarks are the subject of a disclaimer in relation to use of the words "Daydream Island". This is not necessarily fatal to the Complainant. See TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216. Simply because the Registered Trademarks were subject to an endorsement does not mean that the Complainant cannot have common law trademark rights in "Daydream Island Resort". This is consistent with the decision Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699 (paris-lasvegas.com). The panel also notes that the official Australian Trade Mark Office online database records state next to the disclaimer: "The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995." The trademark law in Australia was amended in 1995, and endorsements are no longer included on Australian trademark registrations.
The Respondent alludes to the issue that Daydream Island is a place name. Based on the materials presented by the parties, the panel believes that the name of the island did not derive from the Complainant's resort, but the that resort is named after the island. However, this is not fatal to the Complainant's case. In a number of cases, trademark owners have succeed even though the trademark and disputed domain name is or derives from the name of a place. See, for example, Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. WIPO D2000-0505 (barcelona.com); Melbourne IT Limited v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (melbourneitconsulting.com); Oceanwalk Properties, Ltd. v. Virtual Reality Mall Inc., FA0006000095044 (oceanwalk.com); Glenmaura v. American Distribution Systems, Inc., AF-0114 (glenmaura.com); Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd D2000-1384; Sydney Opera House Trust v. Trilynx Pty Limited WIPO D2000-1224; The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale, WIPO Case No. D2000-0378.
The panel is aware of two "geographic" cases where the disputed domain name was not transferred or cancelled.
In Burgernetzverein Bamberg e.V. v. Marcel Stenzel, AF-0267, the Complainant, an association, did not allege or show that it owned or uses or has any rights in any trademark or service mark. That is not the situation here.
In Maui Land and Pineapple Co., Inc. v. Kapalua Land Co., Ltd, FA0008000095544, the panel decided that, although the Complainants' trademark was founded on a geographic place name, the Complainant satisfied the first element. The Complainant did not succeed because the Respondent, who had been using the domain name for five years, had legitimate interests with respect to the domain name under ICANN Policy 4(c)(i). That is not the situation here.
In summary, the Complainant owns a well-known resort called "Daydream Island Resort" located on Daydream Island, and has established common law trademark rights to the name "Daydream Island Resort". The Complainant owns the Registered Trademarks that include the words "Daydream Island". The disputed domain name is confusingly similar to these trademarks.
As a result, the panel finds that the Complainant has established this element.
The Complainant contends that the Respondent has no rights or legitimate interest in the dispute domain name. The panel finds that the Respondent does not have any trademark or similar rights in "daydream island" and that the Respondent has never sold or marketed any goods or services under the name "daydream island" or similar.
Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondent's legitimate rights in the contested domain name. The Respondent does not meet any of the three elements in this paragraph.
Before notice of the dispute, the Respondent had not used the domain name, and presented no evidence as to demonstrable preparations for use. The Respondent claims that he prepared a business plan, logo and commenced website design for his daydreamisland.com site concept. The Respondent claims to have spent many thousands of dollars in planning and developing this website. However, the Respondent provided no business plan or website or design documents to the panel. The Respondent claims that this information is confidential, and offered to provide it to the panel on a confidential basis. The panel informed the parties that he would accept the information on this basis, but no information was provided.
Paragraph 14 of the ICANN Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
As no business plan was provided by the Complainant, the panel is permitted to draw the appropriate inferences. But the panel does not rely solely on such inferences.
The Respondent did not even provide the logo (which is unlikely to be confidential) or even receipts or contracts relating to the design and development of the website, or even the name of the company hosting the pending "parked" website. The Respondent claims that the business plan anticipates an "Art, Poetry and Music" theme, but does not elaborate. The panel finds that the Respondent's story as to it pending business for the daydreamisland.com concept lacks credibility.
The Respondent has presented no evidence that it is commonly known by the domain name.
The panel finds that there was no serious intended use of the domain name, and if it was, it was not a legitimate non-commercial or fair use of the domain name.
5.3 Bad Faith
Both registration and use in bad faith are required. The panel notes that the elements listed in paragraph 4(b) of the ICANN Rules are examples of circumstances of bad faith, and that these elements are not a complete list.
The following factors show both "evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Although the respondent has not used the contested domain name in the usual sense, the "use" of a domain name in bad faith does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross; AF-0187. The "use" requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows; D2000-0003; Barney's, Inc. v. BNY Bulletin Board; D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen; D2000-0400; Video Networks Limited v. Larry Joe King; D2000-0487; Recordati S.P.A. v. Domain Name Clearing Company; D2000-0194; Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman; D2000-0468; and Estate of Tupac Shakur v Shakur Info Page; AF-0346. Additionally, paragraph 4(b)(ii) defines registration and use in bad faith solely in terms of registration.
The panel does not find that the Respondent registered the domain name for the purpose of selling, renting or transferring it to the Respondent.
The panel does not find that the Respondent has engaged in a pattern of conduct in registering domain names to prevent the owner of the trademark using them.
The Respondent states that he has extensive real estate experience throughout Queensland. The panel finds that prior to registering the disputed domain name, the Respondent knew or should have known of the Complainant's use of "Daydream Island Resort" and "Daydream Island". See Sydney Opera House Trust v. Trilynx Pty Limited WIPO D2000-1224; SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport NAF FA94956; Marriott International, Inc. v. John Marriot NAF FA 94737; Canada Inc. v. Sandro Ursino; AF-0211; and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com NAF FA95037.
In short, the panel finds that the only reasonable inference that can be drawn from the Respondent's registration of the domain name, which is the same as a well known trademark and similar to its corporate name, is primarily for the purpose of disrupting the business of the Complainant. See Clark Pest Control of Stockton, Inc. v. Mike Rogers, Case No. AF-0216; Bayshore Vinyl Compounds Inc. v. Michael Ross; AF-0187.
If the Respondent commenced using the domain name as stated in the Response for an art, music and poetry website, then the panel would likely draw the conclusion that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site.
The Complainant has established all required elements.
For the reasons set forth above, the Complainant's request to transfer the domain name daydreamisland.com to the Complainant is granted.
Dated January 12, 2001 at Brisbane, Australia
(s) John V. Swinson