101Domain, Inc v BB Online UK Ltd - [2014] ATMO 120

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 101Domain Inc. to extension of protection to Australia of International Registration Designating Australia 1452025(45) - 101 DOMAINS AND DEVICE - filed in the name of BB Online UK Ltd.

Delegate:

Nicole Worth

Representation:

Opponent: Nicholas Smith of counsel, instructed by Thomson Geer Lawyers.

Holder: did not attend hearing, but written submission were prepared by Robert Fox, CEO of the Holder.

Decision:

2014 ATMO 120

Opposition under regulation 17A.29 – grounds of opposition under ss 58 and 60 pursued – s60 established – extension of protection refused.

Background

This is a decision pursuant to regulation 17A.29 of the Trade Marks Regulations 1995 (‘the Regulations’) as they stood on 14 June 2011. Regulation 17A.31 provided that the extension of protection to Australia of an international trade mark registration may be opposed on any of the grounds for rejection (sections 39 to 44) or grounds of opposition (sections 58 to 61 and 62A) in the Trade Marks Act 1995 (‘the Act’).
BB Online UK Ltd (‘the Holder’) has applied to extend protection to Australia of its international registration 1090872. Such an application is called an International Registration Designating Australia (an ‘IRDA’), and the details of the Holder’s IRDA are as follows:
Trade Mark:    (‘the Trade Mark’)
IRDA No:  1452025
Filing date:  14 June 2011
Services:Class 45: Registration of domain names (legal services), and information, advisory and consultancy services relating thereto
Endorsement:               Colour Claimed: BLUE, GREEN, YELLOW, WHITE, BLACK and FAWN.
The IRDA was examined and accepted for possible extension of protection to Australia. The acceptance was advertised in the Australian Official Journal of Trade Marks on 10 November 2011.
On 10 February 2012, 101Domain, Inc (‘the Opponent’) filed a notice of opposition nominating most of the grounds available under the Act to oppose extension of protection. Thereafter the parties filed evidence to support their cases, discussed in more detail in the next section, including further evidence filed by the Opponent and a response to the further evidence filed by the Holder.
I heard the matter, as a delegate of the Registrar of Trade Marks, in Sydney on 13 October 2014. The Opponent was represented by Nicholas Smith of counsel, instructed by Lai Lynn Choong of Thomson Geer Lawyers. The Holder did not attend but filed written submissions for my consideration.

Evidence:

The evidence filed in respect of this matter comprises:
Evidence in Support
·Statutory declaration of Wolfgang Josef Reile, founder, controlling owner, President and CEO of the Opponent, dated 7 January 2013 with exhibits WJR-1 to WJR-16.
·Statutory declaration of Wolfgang Josef Reile dated 22 January 2013.
Evidence in Answer
·Statutory declaration of Robert Fox, owner, President and CEO of the Holder, dated 23 October 2013 with exhibits A to T.
Evidence in Reply
·Statutory declaration of Wolfgang Josef Reile dated 30 April 2014 with exhibits WJR-17 to WJR-21.
Further evidence
·Statutory declaration of Wolfgang Josef Reile dated 24 September 2014 with exhibits WJR-1…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2014] ATMO 120
Decision Date: 18 December 2014

CaseChat Overview and Summary

This matter concerned a dispute between 101Domain, Inc. (the Opponent) and BB Online UK Ltd (the Holder) before Nicole Worth. Both parties operate online businesses providing domain name registration and related services. The Opponent, based in the USA, alleged it had used the trade mark "101Domain" since 1999, with its domain name "101domain.com" registered on 4 May 1999. The Holder, based in the UK, also provides similar services.

The court was required to determine whether the Opponent had established sufficient use of its trade mark "101Domain" in Australia to warrant protection under Australian trade mark law. This involved assessing the nature and extent of the Opponent's online activities and sales directed towards the Australian market, as well as its promotional efforts and participation in international industry events.

The court considered evidence of the Opponent's trade mark use, including its website display, email correspondence with Australian customers dating back to February 2000, and Google Analytics data showing Australia consistently in the top 10 countries for website traffic. Sales records and expenditure on global online advertising were also presented. The court noted that the Opponent's online business model meant its market was not geographically restricted, and that Australia represented a significant and growing customer base, contributing a not insignificant amount of revenue. The Opponent's membership in international trade mark organisations and exhibition at industry events further demonstrated its engagement with the global trade mark community.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The evidence filed in respect of this matter comprises:Evidence in Support·Statutory declaration of Wolfgang Josef Reile, founder, controlling owner, President and CEO of the Opponent, dated 7 January 2013 with exhibits WJR-1 to WJR-16.·Statutory declaration of Wolfgang Josef Reile dated 22 January 2013.Evidence in Answer·Statutory declaration of Robert Fox, owner, President and CEO of the Holder, dated 23 October 2013 with exhibits A to T.Evidence in Reply·Statutory declaration of Wolfgang Josef Reile dated 30 April 2014 with exhibits WJR-17 to WJR-21.Further evidence·Statutory declaration of Wolfgang Josef Reile dated 24 September 2014 with exhibits WJR-1 to WJR-5. Both parties provide domain name registration and associated services from their websites at (being the Holder’s website) and (being the Opponent’s website). Both businesses are conducted online and as such their markets are not geographically restricted in the same way as a traditional “bricks and mortar” business, however I note that the Holder is based in the UK and the Opponent is based in the USA. The Opponent declares that it and its predecessor Rightway Gate Inc. used the trade mark 101Domain (‘the Opponent’s trade mark’) since 1999. In addition to the Opponent’s trade mark appearing as part of the website address, a stylised form is displayed on the webpages themselves. Its domain name “101domain.com” was registered on 4 May 1999 and the Opponent declares that the resolving website was launched no later than that month. An extract from the Internet Archive[1], dated 27 November 1999, shows the webpage at the address “ which prominently displays the stylised words 101domain.com. The Opponent also exhibits emails between customers and itself dating from 25 May 1999, either addressed to “webmaster@101domain.com” or listing contact details of staff members at email addresses “_____@101domain.com”, which are declared to record sales (each includes an order number and the domain name that it relates to). The earliest email from an Australian customer is dated 20 February 2000.[1] The Internet Archive is a non-profit digital library that aims to archive, amongst other things, web pages as they appear over time. The Opponent exhibits Google Analytics pages from 2007 to 2011 which demonstrate that Australia has remained in the top 10 countries (out of more than 200) to generate web traffic to the Opponent’s website for each year. It also provides records of credit card sales from 2008 and annual sales figures for the years 2000 to 2011 which indicate steady growth in the number of Australian customers and represent a not insignificant amount of revenue. Similarly, significant amounts are expended on promotion, such as via Google Adwords, although these are on a global basis rather than specific to Australia. Since 2010 the Opponent has expanded into trade mark related services and watching services. It is a member of the International Trademark Association (INTA) and the Internet Corporation for Assigned Names and Numbers (ICANN), and it exhibited at the May 2011 and 2012 INTA annual meetings which it is declared attracted approximately 10,000 attendees.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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