ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The Complainant is Cairns Central Limited of Corner McLeod and Spence Streets, Cairns, Queensland 4870 Australia.

The Respondent is Matthew Wunderwald of 3 Bevans Road, Sydney, New South Wales, Australia.

The disputed domain name is <cairnscentral.com> and the Registrar is Melbourne IT.

2. Procedural History

The electronic version of the Complaint Form was filed on-line through eResolution's Website on October 15, 2001. The hardcopy of the Complaint Form was received on October 15, 2001. Payment was received on October 15, 2001.

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 led the Clerk of eResolution to the following conclusions: the Registrar is Melbourne IT, 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 email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 2, 2001. The requested information was received on November 1, 2001. 

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, notifying the Complainant, the concerned Registrar and ICANN on October 15, 2001. This date is the official commencement date of the administrative proceeding.

Only the emails to the postmaster@ cairnscentral.com were returned 'undeliverable'. All the faxes were 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, all were delivered.

On November 5, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was never received. 

On November 12, 2001, the Clerk's Office contacted Alan Lawrence Limbury, and requested that he act as panelist in this case.

On November 13, 2001, Mr. Limbury accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On November 13, 2001, the Clerk's Office forwarded a user name and a password to Mr. Limbury, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On November 13, 2001, the parties were notified that Mr. Limbury had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 27, 2001.

On November 21, 2001 the panel asked the Clerk's office to notify the parties that the Complainant would be given 3 business days to provide : 

(a) a copy of the certificate of registration of its registered trademark; and
(b) evidence of its use as a trade mark of the words CAIRNS CENTRAL prior to the registration of the disputed domain name.

The Respondent was given 3 business days to respond to this material and the time for the decision was extended accordingly. The additional material was provided by the Complainant on November 27, 2001. No further response was received from the Respondent.

3. Factual Background

The Complainant is a related company of Perpetual Trustees Victoria Ltd, the registered proprietor of Australian registered trademark No. 834965 "CAIRNS CENTRAL SHOPPING CENTRE & DEVICE" which was registered on May 15, 2000 in the following international classes:

Class no. 35
Electronic commerce services; business management, business administration and office functions relating to the management and operation of shopping, lifestyle and entertainment centres; retail services in this class; provision of these services on a global computer information communications network including the Internet and worldwide web; advertising, marketing and promotions.

Class no. 36
Leasing, letting out, licensing and rental of real estate and premises including restaurant and food and beverage outlets, shops and retail premises, offices and commercial premises, consulting rooms and professional premises, theatres, cinemas and premises for entertainment, and carparks; organisation and management of real estate and premises including retail and commercial premises; property development.

Class no. 41
Entertainment services in this class; amusement facilities; cinema facilities; competitions; exhibitions; live performances; recreational activities.

Class 42
Provision of food and drink; restaurant services; takeway food services; café and fast food outlets; restaurants and wine bar services.

Initial plans for the development of the Cairns Central Shopping Centre were made in around June 1995. Pre-opening marketing and promotional activities in connection with the leasing of and investment in Cairns Central Shopping Centre began throughout Australia in or around June 1996. Retail marketing in Queensland (particularly North Queensland and Townsville) and Papua New Guinea commenced in January 1997. The Cairns Central Shopping Centre was officially opened on August 26, 1997.

The disputed domain name was registered by the Respondent on November 15, 2000 and is not currently delegated to a host server. Consequently, it is not being used.

The Respondent started an online gaming business over 10 years ago. He lives in Sydney (about 5000 km from Cairns) and has a holiday home in Port Douglas, (over 100 km from Cairns). 

4. Parties' Contentions

Complainant 

The disputed domain name is confusingly similar to the registered trademark CAIRNS CENTRAL SHOPPING CENTRE. There is a likelihood of confusion with that mark as to the source, sponsorship, affiliation or endorsement of "www.cairnscentral.com" in the event that it is delegated to a server.

The Respondent does not have any rights or legitimate interest in respect of the disputed domain name nor any connection with the Complainant nor with Perpetual Trustees Victoria Limited. The disputed domain name is not currently used in connection with a bona fide offering of goods or services.

The disputed domain name was registered in bad faith in that:

* it was registered after registration of the trademark CAIRNS CENTRAL SHOPPING CENTRE; 
* its registration prevents the Complainant from registering the mark as a corresponding domain name; 
* the Complainant's use and reputation in the mark in connection with the shopping centre predates the registration of the disputed domain name; 
* it is reasonable to expect that the Respondent, who has a postal address in North Queensland, would have been aware of the development and opening of the shopping centre at the time of registering the disputed domain name and that its registration might disrupt the business of the Complainant; and
* since the disputed domain name is not currently posted on a web server, this demonstrates bad faith registration.

Respondent

Complainant has no right to the disputed domain name. It has the trademark CAIRNS CENTRAL SHOPPING CENTRE AND DEVICE, which is completely different.

The web page "www.cairnscentral.com" is currently under construction because a criminal entity hacked the Respondent's main business site and has greatly set back his web page business. Cairnscentral.com is due to be up and running within 14 days as an international Internet gaming site. It has nothing to do with Complainant's business and will have no effect upon Complainant's business because Complainant already owns "www.cairnscentral.com.au". www.iit.com.au will shortly be hosting www.cairnscentral.com.

The Respondent has never heard, seen and/or recognised the name of the Complainant's business. He has never travelled to the city of Cairns, only to the airport as a transit passenger to Port Douglas.

5. Discussion and Findings

Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

To succeed in its complaint, the Complainant must show that each of the conditions of paragraph 4(a) of the Policy is satisfied, namely that:

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

(ii) the Respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar Trademark

Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102). 

The disputed domain name <cairnscentral.com> is not identical to the registered trademark CAIRNS CENTRAL SHOPPING CENTRE & DEVICE. However, the supplementary material before the panel enables the panel to draw the conclusion that the Complainant has used CAIRNS CENTRAL as a trademark so as to give rise to common law trademark rights. The use in the Complaint of the expression "Cairns Central" as an abbreviation for Cairns Central Shopping Centre does not assist in this regard but the supplementary material filed by the Complainant includes web pages from its site at <cairnscentral.com.au> and print advertisements dating back to 1997 for the Complainant's services under the name and mark CAIRNS CENTRAL (Complainant's Supplementary Documents 3, 12, 13 and 14) and newspaper articles indicating that the services planned and eventually supplied by the Complainant have become widely associated with that mark (Complainant's Supplementary Documents 4, 5, 10 and 11). There is also a photograph showing the words CAIRNS CENTRAL (without more) prominently displayed over the entrance to the building (Complainant's Supplementary Document 6). The panel finds the disputed domain name to be identical to the trademark CAIRNS CENTRAL in which the Complainant has common law rights.

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a comparison of the disputed domain name and the trademark: Koninklijke Philips Electronics N.V. v. In Seo Kim (WIPO Case No. D2001-1195). See also Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC. (WIPO Case No. D2001-1121) and the cases there cited.

Although the registered trademark includes a device, examination of a copy of the certificate of registration of the trademark (Complainant's Supplementary Document 1) enables the panel to conclude that CAIRNS CENTRAL is the distinctive element in the Australian trademark registered by the Complainant's related company. The panel concludes that the disputed domain name is confusingly similar to the registered mark.

Legitimacy

The Respondent is not known by the disputed domain name; is not authorised by the Complainant or its related company to register the disputed domain name nor to use the common law or registered marks in a domain name. It does not offer bona fide goods or services by use of the disputed domain name.

These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. 

The Respondent has not produced concrete evidence to establish circumstances within paragraph 4(c) of the Policy. In Shirmax Retail Ltd. v. CES Marketing Group, Inc. (eResolution Case No. AF-0104) proof of even "perfunctory" preparations was held sufficient to demonstrate a legitimate interest within paragraph 4(c)(i) of the Policy. Mere assertion of a plan is insufficient: Tourism and Corporate Automation Ltd. v. TSI Ltd. (eResolution Case No. AF-0096); World Wrestling Federation, Inc. v. Ringside Collectibles, (WIPO Case No. D2000-1306). There is no evidence of the Respondent's plans to use the disputed domain name as a gambling site nor of the activities of a hacker having disrupted those plans.

The panel finds the Respondent has no rights to nor legitimate interests in the disputed domain name. The Complainant has established this element.

Bad faith

The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive: bad faith registration and use may be established in other ways. In SportSoft Golf, Inc. v. Hale Irwin's Golfers' Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

The panel finds it implausible in the extreme and rejects the contention that the Respondent, having a holiday home at Port Douglas and travelling through Cairns airport en route to that home, was unaware of the Complainant and of the trade marks CAIRNS CENTRAL and CAIRNS CENTRAL SHOPPING CENTRE AND DEVICE, since the Cairns Central shopping centre is the largest shopping centre in Tropical North Queensland (Complainant's Supplementary Document 3, page 5) and has been exposed to much publicity in the region (Complainant's Supplementary Documents 6, 7, 8, 9, 12, 13 and 14), in Sydney (Complainant's Supplementary Document 4) and nationally (Complainant's Supplementary Documents 5, 10 and 11). The extreme implausibility of this contention is underlined by the fact that the Respondent, who claims never to have been to the city of Cairns, has made no attempt to explain why he chose <cairnscentral.com> for his intended gambling web site. The panel concludes that the Respondent did know of the trademarks and that he chose the disputed domain name because he wished to attract to his intended web site for commercial gain Internauts seeking the Complainant's site by misleading them into believing his site would have an association with the Complainant which it would not have.

Under these circumstances the panel finds the disputed domain name was registered in bad faith.

The 'use' requirement has been found not to require positive action, inaction being within the concept: see Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003); Barney's, Inc. v. BNY Bulletin Board (WIPO Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468).

Here the panel takes into account the absence of any satisfactory explanation from the Respondent as to why the disputed domain name has not been used; the likelihood that Respondent could not make use of the disputed domain name to provide electronic commerce services without either infringing the registered trademark CAIRNS CENTRAL SHOPPING CENTRE AND DEVICE or committing the tort of passing off (or both), and the period of 11 months during which the disputed domain name remained inactive prior to the initiation of this proceeding. The panel finds the disputed domain name is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol (WIPO Case No. D2001-0489).

The Complainant has established this element.

6. Conclusion

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name <cairnscentral.com> be transferred to Complainant.

7. Signature