101Domain, Inc v BB Online UK Ltd
[2014] ATMO 120
•18 December 2014
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 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 “[email protected]” or listing contact details of staff members at email addresses “[email protected]”, 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.
The Holder refers to its business as 101DOMAINS. It declares to have started the business in the UK in 1997 and exhibits a registration certificate for the “101domains.com” website address, dated 22 December 1997, and an Internet Archive summary indicating that the website was first archived 12 April 1997 (it is not explained how or why the website was archived before it was registered) and then at least once per year in all years since 1999 – although the actual archived web pages relating to this exhibit are not provided. Separate exhibits of some archived web pages are in evidence, dated 13 October 1999 and 1 February 2000, although I note that the material captured is incomplete and only the pages from 1 February 2000 show any use of the 101DOMAINS name.
The Holder declares that the name 101DOMAINS has been used as a trade name and to indicate the origin of its services since 1998, and that the website “101domains.com” has since late 1998 provided web hosting, email and domain name registration services. It is declared that when the Holder’s website was launched, internet users from Australia immediately began to purchase the Holder’s services. To support this Mr. Fox states in his declaration “I have been able to locate the following sales to Australian clients in 1998 and 1999 which are a result of bb-online.com and 101domains.com sales”, after which appears a table listing three websites together with the names and addresses of three persons located in Australia. Later in his declaration he states “Attached hereto and marked Exhibit L is a copy of all sales to BB Online group sales [sic] to Australian clients since 2001 from either 101domains.com or bb-online.com. The number of sales is accordingly considered to be: [after which follows a table recording the years 1998 to 2013 and the number of sales to Australian clients purportedly made in those years]”. Exhibit L is claimed to be confidential so I will not discuss its detail, save to say that it lists sales from 2001 to customers located in Australia, recording their names, addresses and domain names that they registered.
The form of the Holder’s trade marks has evolved over time. The plain text 101DOMAINS and 101DOMAINS.COM is declared to have been used as a trade mark since 1998, and various stylised versions of 101DOMAINS.COM have been used since then - the current form (incorporating the device of a partial picture of the planet Earth) being used since late 2008.
Although not tendered as evidence, the Holder also made a number of allegations in its response to the Opponent’s further evidence and in its written submissions for the hearing. They accuse the Opponent of filing fraudulent evidence, in particular claiming that the exhibits of emails between the Opponent and its customers had been “doctored”, and of not having an active website at 101domain.com in late 1999 on the apparent basis that (although the Opponent’s trade mark is displayed upon the archived page) a number of links go to an associated website at 101highway.com. As further evidence purportedly of the Opponent’s bad faith the Holder filed copies of a decision issued by the “National Arbitration Forum” in the USA regarding the Opponent’s registration of domain names incorporating the word “register” in the face of another entity’s trade marks, REGISTER and REGISTER.COM. That decision, noting that it must defer to the US Patent and Trade Mark Office’s implicit determination that REGISTER and REGISTER.COM were not generic, found that the Opponent’s domain names ought to be transferred to the other entity on the basis of confusing similarity, a lack of rights or legitimate interests and bad faith.
I do not intend to address these allegations for a number of reasons. Primarily, I do not consider any of the allegations to be well founded: the purported doctoring is based upon assumptions made by the Holder and/or information that has not been adduced; the archived web page clearly displays the Opponent’s trade mark, irrespective of where the links on that page take the user, and the National Arbitration Forum decision relates to utterly different trade marks/domain names which have as their confusingly similar material words with no inherent adaptation to distinguish (although they may have acquired distinctiveness). Additionally, the allegations were made very late in proceedings - a matter of days before the hearing. The making of such allegations so late in proceedings, without reliable documentary evidence to support the Holder’s theories, appears very much to “smack of ambush” (to quote the delegate in British American Tobacco Australasia Limited v Sean Ngu[2]).
[2] [2002] ATMO 15.
Grounds and onus
The Opponent confirmed in its written submissions that it pursued only the grounds of opposition under sections 58 and 60 of the Act. It bears the onus of establishing at least one of them, and the relevant standard of proof is the civil standard of the balance of probabilities.[3]
[3] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.
The date at which the rights of the parties are to be determined is generally the date the application was filed,[4] (or, in this case, the date extension of protection to Australia was requested), which is 14 June 2011.
[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.
For reasons that will become clear I have found it necessary only to address the ground under section 60.
Section 60
Section 60 of the Act provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Therefore to establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 14 June 2011 the use of the Trade Mark by the Holder in respect of the nominated services would be likely to deceive or cause confusion.
Reputation in this context refers to the recognition of the Opponent’s trade mark by the public generally,[5] although the size and nature of the relevant market must be taken into account.[6] I note further the observations that confusion cannot arise solely from reputation but also from some level of similarity between the trade marks (be it deceptive similarity or something less, no matter how small),[7] and that confusion or deception may be likely where very little, if any, nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the trade marks.[8] I would add to this the observation that an opponent’s chance of success is greater where the degree of resemblance between the parties’ marks is very high and where the goods or services, and their mode of sale, are identical.
[5] McCormick & Company Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102.
[6] “Bali” Trade Mark [1969] RPC 472 at 496 (HL); Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.
[7] Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5.
[8] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.
The Opponent relies upon use of the word mark “101Domain” as part of its domain name and as part of prominent wording upon its website. It is recognised by the courts that the use of an expression as part of a domain name can constitute use of that expression as a trade mark:
There is no doubt that a domain name used in a URL can be used to attract consumers to a website from which goods or services are sold and thereby constitute trade mark use.[9]
[9] Bromberg J in REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 at [242], citing also Kenny J in Sports Warehouse v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 and Perram J in Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 92 IPR 165.
At the same time, use upon a website originating outside of Australia and directed to the world at large does not of itself necessarily constitute trade mark use in Australia. [10] It is “once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction that there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded”.[11]
[10] Ward Group Pty Limited v Brodie & Stone PLC [2005] FCA 471; 64 IPR 1.
[11] Ward Group Pty Limited v Brodie & Stone PLC, ibid, at [43].
Here, the Opponent has provided evidence of sales to Australian customers which began with low volumes in 1999, increasing steadily until 2012. The declared sales figures are supported by exhibits of dated emails between the Opponent and its customers, and by exhibits of credit card sales to Australian customers from 2008 onwards (which represent significant numbers of sales). The Opponent’s Google Analytics pages indicate that since at least 2007 Australian users have generated significant traffic to its website. Lastly, I am satisfied that it was the Opponent’s trade mark (and not some other sign) that generated the sales and web traffic – the Opponent’s further evidence exhibits a page from the Internet Archive dated 27 November 1999 which prominently displays the words “101DOMAIN.COM”; the Holder’s evidence in answer exhibits another Internet Archive extract of the Opponent’s website, dated 30 November 1999, which likewise prominently displays the words “101DOMAIN.COM”; the Google Analytics pages relate to a website at “ and the emails from Australian customers are addressed to “[email protected]”.
Accordingly, I am satisfied that the Opponent had a reputation in its trade mark in Australia as at 14 June 2011. There was no contention that the parties’ marks were not similar nor that the services differed in any material way. I confirm that I consider the Opponent’s trade mark is very similar to the Trade Mark and that the services are in some aspects identical and in others closely associated. Given the degree of similarity between the parties’ marks and the services provided under them, I am satisfied that the reputation of the Opponent’s trade mark as at the priority date was such that confusion would be likely should the Holder use the Trade Mark in Australia for its designated services.
The Holder submitted that it has prior rights and that it has also made significant sales to Australian customers. The difficulty with its evidence and submissions is that the sales it has made are not clearly under the Trade Mark. Whilst the Holder provides evidence of the use of the Trade Mark upon its website and evidence of email correspondence using the address “[email protected]”, the website is directed to the world at large and the email correspondence is between the Holder and entities in the USA. In respect of sales to Australians the Holder states either that they “are the result of bb-online and 101domains.com sales” or that they are “from either 101domains.com or bb-online.com”. Described this way, I cannot be satisfied that the Holder has established its own trade mark’s reputation such that confusion might be equally as likely due to it.
Accordingly, the ground of opposition under section 60 is established. It is therefore not necessary for me to address the ground of opposition under section 58, although it or any other ground of opposition is available to the Opponent in the event of an appeal.
Decision
As at the date the application was filed regulation 17A.34 of the Trade Mark Regulations 1995 provided:
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the ground on which the IRDA was opposed has been established.
The Opponent has established a ground of opposition. I therefore refuse to extend protection of IRDA 1452025 (IR No. 1090872) to Australia in respect of all of the services specified in it.
The Opponent sought its costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Holder as per Schedule 8 of the Regulations.
Nicole Worth
Hearings Officer, Trade Marks Hearings
18 December 2014
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