Phillip Island Nature Park Board of Management Inc. v. The Trustee for the Langford Family Trust DAU2016-0014

This auDRP dispute concerns the domain name churchillislandcafe.com.au, which was registered by the Trustee for the Langford Family Trust (the First Respondent) and used to promote a café based on Churchill Island.

For those who do not know, Churchill Island is a very small island located south-east of Melbourne in Australia, and which attracts tourists interested in the history of European settlement in the State of Victoria.

The café was operated by Technology Consulting and Solutions Pty Ltd (the Second Respondent) under lease from non-profit organization Phillip Island Nature Park Board of Management Inc. (the Complainant). The Complainant manages conservation and tourism parks for the State Government of Victoria (including the Churchill Island Heritage Farm.)

The Complainant filed a case with the WIPO Arbitration and Mediation Center on 16 March 2016. The complaint relied primarily upon a trade mark registration for the CHURCHILL ISLAND HERITAGE FARM & FUNCTIONS AUSTRALIA device (see below), which was registered on 3 December 2010.

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The website to which the disputed domain name resolves was used to promote the advertised café on Churchill Island. But the café closed after the Second Respondent’s lease from the Complainant expired. The webpage’s contents then served as a notice to visitors of the closure, with the message “Our Café @ Churchill Island will be closing from the August 2, 2015 [sic].”

The Complainant alleges that the message is misleading and could lead to confusion. The Complainant argued that the message could give customers the false impression that the café is closed and that there are no restaurant services on Churchill Island. The Respondents’ defence is that the message is not misleading, as it only refers to their own previous business (“OUR Café @ Churchill Island”).

In order for a complaint to be successful, the onus is on the Complainant to establish all of the three elements required by paragraph 4(a) of the .au Dispute Resolution Policy (the Policy), namely:

  1. the Disputed Domain Name must be identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights to,
  2. the Respondents have no rights or legitimate interests with regard to the Disputed Domain Name, and
  3. the Disputed Domain Name has been registered or used in bad faith.

In assessing the similarity of the Complainant’s trade mark with the disputed domain name, the panel found no confusing similarity as the distinguishing features on their mark were “HERITAGE FARM & FUNCTIONS”. These elements were not present within the disputed domain name. The only similarity is in respect of the words “CHURCHILL ISLAND”, which has significance as a geographical location and cannot be registered as a trade mark, at least in Australia, in the absence of very compelling supporting evidence of use.

While the Panel agreed that the Complainant has exclusive rights to the management of Churchill Island and the rest of the conservation park, the Panel found that it did not establish use of the name “Churchill Island” as a trade mark and cannot on the facts be considered to have a long and exclusive use of the name in respect of café services, especially since the Respondents used the “Our Café @ Churchill Island” name for almost 5 years. The panel found that this first element of the policy had not been established, and the complaint fell over at this initial hurdle.

Importantly, the Respondents noted that:

“When the lease to the café expired, the Respondents offered to sell the assets of the business, including associated intellectual property rights, to the Complainant. The Complainant has failed to negotiate with the Respondents in relation to this sale.”

This is when the Complaint starts to look bad for the Complainant. Having failed or neglected to buy the domain name from the Respondents, it then tried the auDRP process to wrest control of the domain name.

Further, the Complainant tried to use the auDRP process to air broader issues regarding the detail of the lease. “The Complainant’s primary argument in relation to this element is that the Respondents no longer operate the Churchill Island café, which they previously leased from the Complainant, and as such, they no longer have any rights to or legitimate interests in the Disputed Domain Name. Whether it is correct to conclude that the Respondents no longer have any rights to or legitimate interests in the Disputed Domain Name depends on an analysis of the lease, the termination of the lease, and the surrounding circumstances.”

But the Panel properly noted that, “It is well established that the Policy is not designed to address complex business disputes… As the panel in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 stated, “[t]his Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”.

A similar finding was made in Cash Converters Pty Ltd. v. Casheez Pty Ltd DAU2011-0029. The Complainant in that case endeavoured to show bad faith by reference to a breached restrictive covenant. The Panel said, “The evidentiary record in this case currently before the Panel does not permit the Panel to resolve the issue of whether or not the restraint clause has been breached. Furthermore, the procedure provided by the Policy does not, in this Panel’s opinion, empower the Panel to determine the issue of whether or not the restraint clause is valid and enforceable.”

Domain name panels are always reluctant to make adverse findings where the respondent has a respectable defence or where the issues are murky in respect of the three elements of the Policy. Further, using the auDRP process as a fall-back position for failed negotiations, raised against what looks like a bona fide vendor in respect of legitimate rights, is also bound not to impress a Panel.

Curiously, a search of the Australian Trade Mark Register indicates that since the decision was handed down the Complainant has taken no steps to secure rights in brands such as “CHURCHILL ISLAND” or “CHURCHILL ISLAND CAFÉ”. An obvious omission in the Complainant’s IP strategy: it seems to be a prudent thing to protect itself in respect of future dealings in the brands.