Cairns Airport Pty Ltd of Cairns, Queensland, Australia, represented by McCullough Robertson Lawyers, Australia has been found GUILTY of Reverse Domain Name Hijacking on two domain names owned by two different owners; cairnsairportparking.com.au (first domain name) and airportparkingcairns.net.au (second domain name)
“Paragraph 15(e) of the Rules provides that, if “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”.
“Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
“The Panel finds that the First Respondent’s contentions as to a course of conduct on the part of the Complainant to harass him and undermine his business, exploiting its superior financial power, to be credible in light of the evidence tendered by the First Respondent and not contradicted by the Complainant.”
“In the opinion of the Panel, these proceedings form a part of that conduct in that it is clear that Complainant has been parsimonious with the facts behind the dispute, which were amply evidenced by the First Respondent, in particular when it commenced use of the name “Cairns Airport”.
“When faced with the First Respondent’s evidence the Complainant did not refile but sought leave to file a supplement to the Complaint which did nothing to rebut the First Respondent’s evidence and, indeed tended to repeat the partial and prejudicial statements already made.”
“Whilst a finding of Reverse Domain Name hijacking will rarely be found in the case of a genuine dispute, in the circumstances of this case the Panel finds that the Complainant, was well aware of the prior use by the First Respondent of the business name “Cairns Airport Parking” and the effect of that on the Respondents’ rights. In bringing this Complaint in the light of that knowledge and offering an incomplete account of the history of the name, the Complainant has engaged in Reverse Domain Name Hijacking.”
The Panel finds, as per paragraph 15(e) of the Policy that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The bringing of these proceedings seems to form a part of a pattern of harassment by the Complainant of the Respondents. Furthermore, the Complainant has been less than forthcoming in these proceedings, particularly in respect of its history and when it became known as “Cairns Airport”.
The complainant in this case, is the operator of the airport.
The Respondent argued prior to 1984 the airport at Cairns was known variously as “Cairns Aerodrome” or “Cairns Airfield”.
The Complainant’s predecessor in title operated under the name “Cairns International Airport” from approximately 1984 through to 2009, not “Cairns Airport”.
There was no use of the name “Cairns Airport” by the Complainant or its predecessors in title before 2009.
The Complainant registered the name “Cairns Airport Pty Limited” in September 2008 but did not complete the purchase of the airport and its operations until January 15, 2009.
The First Respondent shows that he had commenced an active business trading under the registered business name “Cairns Airport Parking” and the First Domain Name before the Complainant commenced use of the name CAIRNS AIRPORT and lodged its first application for registration of that name as a trade mark (of which application he was unaware and hence he did not oppose it).
The First Respondent states that there is no likelihood of confusion between the Domain Names and the Complainant’s marks, principally due to prominent disclaimers to prevent such confusion placed on the First Respondent’s website under the First Domain Name.
The First Respondent also argues that any likelihood of confusion is further nullified by the generic nature of the term “Airport Parking”, the geographic nature of the place name “Cairns” and the abundance of similar “off-airport parking” businesses countrywide with the consequence that consumers can readily distinguish his business from that of the Complainant.
The First Respondent justifies his registration of the Second Domain Name in the name of the Second Respondent as a variation of the arrangement of words in his Business Name, with a view to strengthening his business’s online marketing presence, which he has since abandoned.
The First Respondent claims that the Complainant has, in fact, registered domain names in order to attack the First Respondent’s business in a misleading and deceptive manner, as part of a pattern of conduct on the part of the Complainant.
The First Respondent asserts that the Complainant has engaged in a campaign of continual harassment and has sought to undermine the First Respondent’s business, as well as threatening him with legal proceedings that he does not have the resources to defend against so strong an opponent.
The First Respondent claims he properly registered and used the First Domain Name, along with his Business Name, since 2008, prior to the Complainant taking on the name CAIRNS AIRPORT.
The First Respondent denies that an amount of money requested for the transfer of the Domain Names was inflated or in bad faith, citing the legal expenses incurred by participating in the ongoing dispute with the Complainant as the reason, rather than commercial gain.
The First Respondent also asserts that the continued use of the First Domain Name despite his change of Business Name is necessary in order to connect with previous customers not aware of the change.
The First Respondent asserts that the term “Airport Parking” is a generic term and “Cairns” is a place name. He points to several businesses in the vicinity of Cairns Airport which use the words “Cairns Airport” in their name including “Cairns Airport Shuttle” and “Cairns Airport Rentacar”, and also to similar domain names for airport parking providers in other cities, including <brisbaneairport parking.com.au> and <sydneyairportparking.com.au>.
In respect of the First Domain Name, the Panel finds that the First Domain Name is confusingly similar to the Complainant’s registered trademarks.
In respect of the Second Domain Name, the Panel finds that the requisite confusing similarity does not exist.
The arrangement of words in the Second Domain Name first evokes the idea of airport parking rather than CAIRNS AIRPORT and is sufficiently different and so generic and descriptive that a reasonable Internet user would be unlikely to associate the Second Domain Name with the Complainant’s mark.
It conveys nothing more than the notion of parking being available in Cairns that can be used if one is going to the local airport.
In the circumstances, the Complainant has not satisfied its burden to show that the Second Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. In failing to establish this criterion, the Complainant’s claim in respect of the Second Domain Name fails.
C. Rights or Legitimate Interests
In respect of the First Domain Name, the Panel finds that the First Respondent has established a real right and a legitimate interest in the First Domain Name.
The evidence before the Panel shows that the First Respondent was using the trade mark ‘Cairns Airport Parking’ before either the Complainant’s name or trade mark was registered.
This use appears to the Panel to have been bona fide, and would likely provide a defense of prior use under section 124 of the Trade Marks Act 1995 (Cth). This prior use of the First Domain Name before notice of the dispute fits comfortably within the parameters of para 4(c)(i) of the Policy which provides an example of rights or legitimate interests in a disputed domain name as follows:
“(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring).
”The First Respondent was given notice of the subject matter of the dispute by means of a letter of demand dated September 22, 2009 from the Complainant’s solicitors to the First Respondent.” Prior to that date, the First Respondent had registered the First Domain Name and had used it to solicit business for his airport parking business and there is nothing to suggest that the use of the First Domain Name in that business was anything other than bona fide.”
“The Complainant has not therefore satisfied its burden to show that the First Respondent had no rights or legitimate interests in the First Domain Name. In failing to establish this criterion, the Complainant’s claim in respect of the First Domain Name should also fail.”
“At the time, April 30, 2008, the Complainant did not have the trademark for CAIRNS AIRPORT which was not registered until October 2011, three and a half years later and the Complainant had not even applied for its trademark, which it did not do until September 11, 2009.”
“The Panel considers that, in registering the First Domain Name before the Complainant had established any trade mark rights in the words CAIRNS AIRPORT, there was nothing which could be shown to be bad faith or “to be in disaccord with honest practices in industrial and commercial matters”
“The Respondent has in an effort to resolve the dispute changed his business name and inserted a most prominent disclaimer on the webpage to which the First Domain Name directs.”
“Awareness of a possibility of confusion cannot under the circumstances be held against the First Respondent.”
The disclaimer rather attests to the finding of the Panel that no bad faith is involved and the creditable, responsible and prudent behavior of the First Respondent.
“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public”.