A three-member WIPO Panel has just unanimously decided in favour of the legitimate Registrant of this generic and awesome domain name, gday.com.au(.) This was despite a billion-dollar Complainant (Discovery Holiday Parks) instructing Minter Ellison to go after the domain and try to rip it from the legitimate registrant for no compensation.
Here is the decision summation:
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel unanimously orders that as to the Disputed Domain Name the Complaint is denied.
Here are the key points:
Domain Name: Gday.com.au
Complainant: Discovery Holiday Parks Pty Ltd – represented by Lisa Jarrett of Minter Ellison.
Registrant: Ed Keay-Smith of The Short Course Company Pty Ltd represented by Rob Kaay of DBR Domain Brokerage.
Panelists: Nicholas Weston (Presiding), Warwick A. Rothnie, The Hon Neil Brown Q.C.
A finding of Reverse Domain Name Hijacking (RDNH) was declined by the majority – The Hon Neil Brown Q.C was the exception. He wrote a separate opinion dismissing the complaint on separate and additional grounds. It is well worth a read in my opinion. Particularly his observation on the merits of a RDNH finding:
The Complainant must have realised that it was filing a completely unmeritorious claim and one which should not succeed, in view of the highly generic nature of the domain name. It must also have appreciated that the Respondent had done nothing wrong in acquiring the domain name. Moreover, the Complainant, so far as the evidence goes, did little itself to acquire the domain name by means that were available to all potential buyers to acquire it. Nevertheless, it went ahead with this claim which, in the opinion of this panelist, is completely baseless. That justifies a finding of Reverse Domain Name Hijacking.
Read the full Panel Decision here. Includes the almost 10 page separate findings by The Hon Neil Brown Q.C.
This Decision was under auDA’s new Licensing Rules.
Some Key Quotes:
It is uncontroversial that a domain name investor, or anyone else, can register a commonly used word as a domain name and hold it provided that the circumstances do not indicate illegitimate conduct or bad faith.
It is also uncontroversial that the word “g’day” is a common form of greeting in Australia.
Bearing in mind the widespread use of “g’day” as a greeting particularly in Australia and the limited nature of the Complainant’s registrations for G’DAY alone (compared to its other trade marks), the Panel considers it is not appropriate to go behind the Respondent’s declarations about its intended purpose in registering the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has not established the Respondent does not have rights or a legitimate interest in the Disputed Domain Name. The concurring Panelist draws the same conclusion as the majority albeit by another approach.
Key Quotes from The Hon Neil Brown Q.C.
This case is one where a trademark owner is seeking to deprive a domain name registrant of a domain name that is a generic and descriptive word and a word that is in common and dictionary use, over which no-one has exclusive rights and which the owner intends to use in a legitimate business, as is its right and in accordance with the regulatory framework intended to govern the registration of domain names to ensure that the trademark owner’s rights are not impugned.
The trademark owner in this case has a trademark for the word G’DAY, which must be, particularly in Australia, the most generic word in daily use, meaning “hullo” in any context and accounting for probably millions of uses each day.
In particular, and contrary to what is alleged, the domain name is not confusingly similar to any of the composite trademarks such as G’DAY REWARDS, G’DAY PARKS and G’DAY CONFERENCING. No internet user would think that such a widely and so frequently used word as “gday”, which casts such a wide net, was invoking any of those trademarks which are confined to specifics fields such as reward programs or conferencing.
Well done to Ed Keay-Smith for holding onto his domain name.
It was my honour to successfully defend and win this auDRP complaint.
You can see all the domain name auDRP complaints I have successfully defended for various clients under the DOMAINS and DOMAIN THIEVES menu tab.
