Brisbane City Council v. Joyce Russ Advertising Pty Ltd.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Brisbane

City Council v. Joyce Russ Advertising Pty Limited

Case No.

D2001-0069

1. The

Parties

The Complainant is the

Brisbane City Council, (a body corporate established pursuant to the City of

Brisbane Act 1924) Qld having its place of business at Level 2, 69 Ann Street,

Brisbane, Queensland, Australia 4000. It is represented by John Swinson of Malleson

Stephen Jacques in Brisbane, Queensland, Australia.

The Respondent is Joyce

Russ Advertising Pty Limited, whose address is given as 51 Rundle Street, Kent

Town, South Australia, Australia 5071. It is represented by Dr Drazen Lesicar

of Lesicar Perrin in Adelaide, South Australia, Australia.

2. The Domain Name and

Registrar

The domain name at issue

is <brisbane.com>. The domain name was acquired by the Respondent on June

1, 1998. The Registrar with whom the domain name is registered is Network Solutions,

Inc of 505 Huntmar Park Drive, Herndon, Virginia, United States of America 20170.

3. Procedural History

On January 15, 2001 a Complaint

was received by the WIPO Arbitration and Mediation Center ("WIPO Center")

for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution

("the Policy") adopted by the Internet Corporation for Assigned Names

and Numbers ("ICANN") on August 26, 1999. The hard copy was received

by the WIPO Center on February 6, 2001.

On January 30, 2001, the

Registrar responded to a request for Registrar Verification of January 26, 2001

and confirmed details of the Respondent, that the Policy applied to the domain

name and that the current status of the name was "active".

On February 1, 2001, the

WIPO Center received an Amended Complaint from the Complainant.

On February 7, 2001 the

WIPO Center transmitted a notification of complaint and commencement of administrative

proceedings to the Respondent.

A response was received

from the Respondent on February 26, 2001 (email) and

March 2, 2001 (hard copy).

On February 23, 2001 the

WIPO Center received a reply together with supporting evidence from the Complainant.

On April 12, 2001 the WIPO

Center received an answer to the Complainant’s reply.

The parties elected to

have a three member Panel comprising Andrew Brown, Tony Willoughby and Richard

Page. All have completed Statements of Impartiality and Independence. The Panel

finds that the Administrative Panel was properly constituted in accordance with

the Rules and the Supplemental Rules.

In terms of Rule 5(b),

in the absence of exceptional circumstances, the Panel was required to forward

its decision by May 7, 2001. An extension of time was obtained until May 14,

2001 owing to the unavailability of one of the Panelists.

The language of the administrative

proceeding is English, being the language of the Registration Agreement.

4. Factual

Background

A. The Complainant

The Complainant, the Brisbane

City Council, was established pursuant to the City of Brisbane Act 1924. It

operates as a body corporate and under section 6 of its statute was and is entitled

to exercise its powers under the name "Brisbane City Council". The

Complainant states that its owns and manages one of the most diverse public

sector physical asset portfolios throughout Australia and that this is valued

in excess of AUD$14 billion.

The Complainant’s operations

include a number of commercial business units such as Brisbane Water, Brisbane

City Works and Brisbane Transport. The Complainant is the registered proprietor

of a number of trademarks in Australia:

(a) E-BRISBANE logo

in classes 9, 35 and 36;

(b) WATER SAVE IT! –

BRISBANE CITY logo in classes 32 and 40. This registration includes a disclaimer

that registration gives no right to the exclusive use of the words "Brisbane

City";

(c) BRISBANE CITY WORKS

logo in classes 19, 35, 37 and 42;

(d) The Complainant

is the applicant for the trademark BRISBANE CITY in a number of classes. This

application was filed on December 11, 2000 (a short time before the Complaint)

and is still pending.

The Complainant uses a

corporate logo which comprises a stylised city hall and the words "Brisbane

City".

B. The Respondent

The Respondent was established

in 1985 as a full service advertising agency. It states that it has grown into

an integrated technology and communications resource that caters to local, national

and international markets. It handles a range of substantial clients (some of

whom it has named) and has developed and managed portal sites for a number of

its clients (again named).

The Respondent states that

in 1997 it conceived a plan to develop a network of visual information booths

or kiosks to be located in areas including major shopping centres. It publicised

this in the Australian business magazine, Business Review Weekly. In

December 1997, the Respondent states that it proposed the idea of the Australian

National City portals. In mid-1998 it purchased the domain names <melbourne.com>,

<perth.com>, <brisbane.com> and <adelaide.com> for $40,000

and then later registered <n-sydney.com> and <s-sydney.com>. The

Respondent states that it spent A$54,000 on a Unix server to host its capital

city portals and has provided evidence of this expenditure.

The Respondent has set

out a number of steps it took to advance it capital city portals project. These

included:

- Test radio commercials

for <adelaide.com> on an Adelaide radio station.

- The filing of trademark

applications in Australia for protection of the domain names including <brisbane.com>.

- From May 1998, its

use of the domain names as trademarks by using the ™ symbol where these

were publicised.

- The preparation of

a capital city portal brochure which it formatted to a number of potential partners

in mid 1999. It evidences expressions of interest received from some 460 different

persons in respect of its proposal for <brisbane.com>.

- On July 28, 1999 the

Respondent contacted a number of parties including Adelaide City Council, Perth

City Council and the Complainant promoting its capital city portal and inviting

participation. Responses were received from the Adelaide and Perth City Councils

but not from the Complainant.

5. Parties’

Contentions

The Complainant and

Respondent have both filed very substantial submissions with supporting documentation

followed by detailed replies. The Panel is grateful to counsel for their thorough

approach. In the interests of brevity, it has been necessary for the Panel to

take a very focused approach to the key issues.

A. The Complainant

In addition to its registered

trademarks, the Complainant states that it ordinarily uses the words BRISBANE

CITY in conjunction with a number of those registered trademarks. It refers

to the fact that it has been using its corporate logo (comprising the stylised

City Hall and the words "Brisbane City") for more than 15 years. As

a result of its extensive use of these marks, the Complainant claims that it

has common law trademark rights in BRISBANE CITY COUNCIL, BRISBANE CITY and

BRISBANE. It further claims that, by virtue of its objects, functions and commercial

activities, and the powers conferred upon it by statute, it is entitled to use

BRISBANE as a common law trademark and to register "BRISBANE" as part

of a trademark.

The Complainant contends:

(a) That the domain

name is confusingly similar to:

- its registered trademarks

(referred to earlier)

- the common law trademark

and corporate logo trademark that includes "Brisbane"

- the common law trademarks

BRISBANEWATER and BRISBANE TRANSPORT.

- The name Brisbane

City Council.

(b) That the Respondent

has no rights or legitimate interests in respect of the domain name.

The Complainant claims

that there is no evidence that the Respondent is using the domain name in connection

with a bona fide offering of goods or services or that it has bona fide plans

to do so. It submits that the evidence reveals that the Respondent registered

the domain name, and many other domain names, for the sole purpose of transferring

these to third parties for valuable consideration in excess of the Respondent’s

out-of-pocket costs directly related to the domain name or to capture web traffic

intended for the Complainant’s website.

The Complainant also states

that on January 10, 2001 the domain name <brisbane.com> resolved to a

"placeholder" website that stated <brisbane.com> is coming"

and allowed users to register expressions of interest. It was claimed that the

website suggested that the domain name was for sale through use of the reference

on the site to "the best address in town"

Additional claims were

based on the fact that the Respondent had failed to develop the claimed portal

sites for over two years. It was also claimed that the word "Brisbane"

had no natural affiliation with or obvious connection with the Respondent or

its business which is located in South Australia, approximately 1,600 kilometres

southwest of Brisbane.

(c) That registration

and use of the domain name was in bad faith because:

- the Respondent and

Respondent’s business have no connection with the word "Brisbane".

- the Respondent should

have been aware of the Complainant’s extensive use of its trademarks containing

the word "Brisbane".

- the Respondent had

registered the domain name over two and a half years ago but had failed to use

it in connection with any bona fide offerings of goods or services.

- the website suggested

the domain name was for sale

- a different website

(unconnected with the Respondent) stated that the Respondent was looking to

sell the domain names.

An additional claim under

this head was that the Respondent was using the domain name in order to attract

internet users to its other websites and to advertise its services for commercial

gain. The Complainant contended that when an internet user visits the website

"brisbane.com" it would expect to reach a website operated by the

official Government of Brisbane.

B. The Respondent

In its response, the Respondent

attacks each of the three bases of the Complainant’s case:

(a) No rights in the

name "Brisbane"

The Respondent contends

that the Complainant does not have any exclusive use of the geographical indicator

"Brisbane City" relying (inter alia) on the disclaimers entered on

the Australian trademarks register in respect of two of the Complainant’s registered

trademarks and that in other of the Complainant’s marks the words "Brisbane

City" are only part of the logo. The Respondent further claims that a

fortiori the Complainant has "no claim to exclusivity to the wider

geographical indicator ‘Brisbane’".

The Respondent asserts

that the Complainant is not the custodian of the name "Brisbane" for

the people of Brisbane or for anybody else. It has powers and functions conferred

on it by statute but no power of custodianship in relation to the name "Brisbane".

Consequently the Respondent denies that its <brisbane.com> domain name

is identical with or confusingly similar to any trademark in which the Complainant

has rights.

(b) Respondent’s rights

and legitimate interests in respect of the domain name

The Respondent contends

that there is ample evidence that it has invested substantial time, money and

energy in preparing for use and actual use of its capital city domain names

<adelaide.com>, <melbourne.com>, <perth.com>, <n-sydney.com>,

<s-sydney.com> and <brisbane.com>. The Respondent claims that the

evidence shows that it is establishing a portal relating not only to each of

these domain names on its own but also as a group. It points (inter alia) to

its prior involvement as a commercial developer and manager of portals, to its

purchase of a secure server, to evidence of a meeting with one of India’s largest

internet companies concerning the development of the portals. It also relies

on evidence forming part of its Response that it was seeking business partners

for a capital city portal network.

(c) Respondent denies

registration and use in bad faith

The Respondent strongly

denies that it has registered and used the domain name in bad faith. In particular,

the Respondent rejects claims by the Complainant that a letter (similar in terms

to letters sent to the City Councils of Adelaide, Melbourne and Perth) and produced

in evidence by the Respondent itself amounted to an offer to sell the domain

name. None of the other Councils construed that as an offer to sell and in any

event the Complainant did nothing about the letter from the time it was sent

(July 1998) until the time of the Complaint in January 2001.

The Respondent also states

that a rumour posted on a third party website that the capital city domain names

were for sale was not placed by the Respondent and was conjecture and speculation

by third parties. The Respondent states that in response to promotional material

on <brisbane.com> it received approximately 460 registrations of interest.

There was only one expression of interest concerning purchase of the domain

name and the Respondent had informed that party that the domain name was not

for sale.

Finally, the Respondent

contends that far from this being a case of bad faith registration and use of

the domain name, the Complainant is engaged in reverse domain name hijacking.

6. Discussion

and Findings

Paragraph 15(a) of the

Rules instructs the Panel to:

"decide a complaint

on the basis of the statements and documents submitted in accordance with the

policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant,

under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name

registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

- That the Respondent

has no rights or legitimate interests in respect of the domain name; and

- That the domain name

has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly

similar to registered trademark

It is well established

that under the Policy, a Complainant may rely not only on a registered trademark

but also an unregistered trademark provided the Complainant can show rights

to that unregistered mark and the mark has achieved a sufficient threshold level

of distinctiveness, awareness and/or fame.

In this case, the Complainant

has not argued that the domain name is identical to a name in which it has rights.

Rather its claim is put on the basis that <brisbane.com> is confusingly

similar to its registered trademarks that include the word "Brisbane"

and various common law marks which include the word "Brisbane".

The Panel is aware that

the registration of cities or regions within countries as domain names is an

issue which has been much discussed. It is dealt with in the Interim Report

of the Second WIPO Internal Domain Name Process dated April 12, 2001, pages

83-4. The observations made at para 250 of the report are:

"It should be noted

that the complaints in many of the Court and UDRP cases referred to above were

based on the alleged abuse of a trademark registered in the name of the Complainant

and incorporating the place names subject to the dispute. Furthermore, usually

the domain names were deemed infringing in light of the nature of the activity

conducted under the domain name and the motivation of the registrants. The cases

therefore do not necessary stand for the proposition that the registration of

a city name or the name of a region, as such, is to be deemed abusive."

In a recent decision Port

of Helsinki v Paragon International Projects Limited, D2001-0002, the Panel

held in respect of <portofhelsinki.com> that the Complainant had not established

the threshold requirement of trademark rights in the mark or denomination "Port

of Helsinki".

In City of Hamana v

Paragon International Projects Limited, D2001-0001, the Panel considered

a similar Complaint in relation to domain name <portofhamana.com>. The

Panel looked at the European trademark directive and the European Court of Justice

decision in the Chiemsee case. The Panel rejected the view that as a

matter of principle, a unique geographical name should belong to the owner of

the geographical area in question. Applying the Chiemsee decision, the

Panel found that the Port of Hamana had acquired distinctiveness as a trademark

relating to services originating from the City of Hamana/Port of Hamana. But

relying on Article 6.1(b) of the Directive, the Panel noted that a trademark

did not entitle the proprietor to prevent a third party from using in the course

of trade, indications concerning the geographical origin of goods or rendering

of services provided the third party uses them in accordance with honest practices

in industrial and commercial matters. In that case, the Panel found that the

Respondent had acquired a legitimate interest in the trademark and domain name.

The critical issue in this

case is whether the Complainant has shown that it has trademark rights sufficient

to found this Complaint.

In this case, the Panel

finds the Complainant has not established any trademark or common law rights

to the words "Brisbane City" or, more significantly, for "Brisbane"

sufficient to sustain the Complaint. The cumulative reasons for this are as

follows:

(a) The

complainant’s trademark registrations give no exclusive rights to the word "Brisbane"

on its own

- The EBRISBANE trademark

registration is a logo form with the logo "E" being a distinguishing

feature sufficient to distinguish it from the name of the city;

- The "WATER SAVE

IT BRISBANE CITY" registration is also a logo and there is a specific disclaimer

on the register of "Brisbane City";

- The BRISBANE CITY

WORKS registration is a logo and on its own gives no exclusive rights to "Brisbane"

or "Brisbane City";

- The trademark application

for BRISBANE CITY lodged on 11 December 2000 is still pending and has not been

accepted by the Australian Intellectual Property Office;

(b) The corporate logo

used by the complainant is a stylised view of its town hall and the words "Brisbane

City" (not "Brisbane" on its own) – see Complaint Annexure F,

page 2;

(c) The Australian Intellectual

Property Office in its examination report on the Respondent’s trademark applications

for brisbane.com (Respondent’s Annexure AJ and report dated 2 September

1998) stated in rejecting registrability of this mark:

"However the test

of registrability is not a simple question of descriptiveness. Rather it is

whether other traders are likely to need the sign or something close to it in

indicating their similar goods or services. Any other trader in similar goods

or services who is situated in BRISBANE or who have BRISBANE as the theme or

content manner of their goods and services, are equally likely and entitled

to use the words brisbane.com without improper motive as part of their

electronic address when advertising or indicating the place of origin of the

goods. The trademark has no inherent adaptation to distinguish the applicant’s

goods or services."

Although these comments

were made in relation to the Respondent’s trademark applications, they equally

point to the difficulty in the Complainant acquiring any common law trademark

rights in "Brisbane City" or more widely in the word "Brisbane"

itself.

Also the Australian Trademarks

Office (AIPO) Handbook (Respondent Annexure AK, paragraph 14.2) states in relation

to the registration of domain names as trademarks:

"If

it consists of a word, phrase or combination of letters and/or numbers which

other traders would wish to use in the normal course of their trade, then grounds

for rejection should be raised. An example of when grounds for rejection should

be raised is the domain name http://www.sydney.com. Sydney is a well-known geographical

location and should be available for other traders to use to indicate the origin

of their goods and/or services…"

(b) The

Respondent’s response (para 3.4) refers to:

- 47

registered corporate/business names in Australia that include the words "Brisbane

City".

- At

least 30 registered corporate/business names in Australia which feature the

word "Brisbane" on its own.

The Respondent’s

search of the Australian trademark register discloses 94 registered trademarks

and 37 applications that feature the word BRISBANE.

The fact that there are

many other existing users of the Brisbane name either as part of a corporate

or business name or as a registered trademark, is an indication that the Complainant

does not have trademark rights to "Brisbane City" or "Brisbane".

The Panel therefore finds that this requirement under the Policy is not made

out.

No legitimate rights or

interest in <brisbane.com>

The Policy outlines (paragraph

4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate

the Respondent’s rights or legitimate interest in the domain name. These circumstances

are:

(i) before any notice

to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with the bona fide offering of goods or services; or

(ii) the Respondent

(as an individual, business or other organisation) has been commonly known by

the domain name, even if the Respondent has acquired no trademark or service

mark rights; or

(iii) the Respondent

is making a legitimate non-commercial or fair use of the domain name without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue.

The Panel considers the

Respondent has shown demonstrable preparations to use the domain name prior

to the Complaint in connection with the bona fide offering of goods or services.

The Response and the Answer from the Respondent contains (with supporting documentation)

ample evidence which shows legitimate activity towards establishing a capital

city’s portal well before any Complaint was received. The Panel also rejects

the suggestion that the Respondent’s letter to the Complainant in July 1998

was an offer to sell the domain name to the Complainant. Contemporaneous letters

sent to other City Councils were not taken as such by those local authorities.

The Panel therefore finds

that the Respondent has demonstrated its prior legitimate interest in the domain

name under paragraph 4(c)(i) of the Policy.

Domain name has been

registered and is being used in bad faith

Paragraph 4(b) of the ICANN

Policy states:

"For the purposes

of Paragraph 4(a)(iii), the following circumstances, in particular but

without limitation, if found by the Panel to be present, shall be 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."

It should be noted that

the circumstances of bad faith are not limited to the above.

Because of the findings

of the Panel in relation to the first two grounds under the Policy, this ground

is mentioned only briefly. The Panel does not consider that the Complainant

has established any evidence that the domain name was registered or acquired

by the Respondent in bad faith.

7. Decision

For the foregoing reasons,

the Panel denies the remedy (transferred to the Complainant of the domain name

<brisbane.com>) requested by the Complainant.

Andrew Brown

Presiding Panelist

Tony Willoughby

Panelist

Richard

Page

Panelist

Dated: May

14, 2001

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