ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

1. Parties and Contested Domain Name

The complainant is Mt Eliza Graduate School of Business & Government Ltd of Kunyang Road, Mt Eliza, Victoria 3939, Australia, represented by Eli Fried Esq., of Messrs. Maddock Lonie & Chisholm of Melbourne, Australia. 

The respondent Rom Graphics of 1121 Derril Road, Moorooduc, Victoria 3933, Australia, represented by Ian White Esq., of Messrs. Wright Smiths Lawyers of Rosebud, Victoria, Australia. 

 The contested domain names are <mteliza.com>  (registered with Network Solutions, Inc.) and <mteliza.net> (registered with Register.Com, Inc.)

2. Procedural history

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (�the Policy�) adopted by the Internet Corporation for Assigned Names and Numbers (�ICANN�) on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 (�the Rules�) and the Supplemental Rules for the Policy (�the Supplemental Rules�) of eResolution. 

The electronic version of the complaint form, with annexes, was filed on-line through eResolution�s website on April 30, 2001 and in hardcopy on May 1, 2000.  Upon receiving all the required information, eResolution�s clerk proceeded to confirm the identity of the registrars for the contested domain names; verify the registrars� Whois database and confirm all the essential contact information for the respondent; ascertain whether the contested domain names resolved to active web pages and determine whether the complaint was administratively compliant. 

This inquiry led the clerk to conclude that the registrar for <mteliza.com> is Network Solutions Inc.; the registrar for <mteliza.net> is Register.Com, Inc.; the Whois databases contain all the required contact information; both domain names resolve to inactive web pages and the complaint is administratively compliant. 

On April 30, 2001, an email was sent to the registrars by eResolution clerk�s office to obtain confirmation and a copy of the registration agreement.   This information was received from Network Solutions, Inc. on May 1, 2001 and from Register.Com, Inc on May 3, 2001.   

The clerk sent to the respondent a copy of the complaint and the required cover sheet in accordance with paragraph 2 (a) of the Rules.  The clerk�s office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the complaint to the respondent and notifying the complainant and ICANN on May 10, 2001.  This date is the official commencement date of the administrative proceeding and, pursuant to Rule 5(a), the respondent had to file any response within 20 days of that date. 

The respondent submitted an electronic version of the response on May 29, 2001.  This was not in the appropriate format because eResolution�s Response Form had not been completed. On May 30, 2001 the clerk�s office informed the respondent that, to be accepted, the response must be submitted in accordance with the Rules.  On June 1, 2001, the clerk�s office notified the respondent that the clerk�s office did not receive by any means of accepted communication (e-mail, fax, postal mail) the response within the period of time allocated in the administrative proceeding for such action.  On June 3, 2001, the respondent submitted a late response which included all the material previously provided on 29 May, 2001, with a duly completed Response Form which contained no further matters of substance. 

Meantime the complainant submitted a letter dated May 30, 2001 replying to one aspect of the response that had been submitted the previous day. The clerk�s office informed the complainant that it had no automatic right to file a reply and informed the parties that it would be for the panel to decide whether to admit the response and the reply. 

On June 4, 2001 the clerk�s office contacted Mr. Alan Limbury, and requested that he act as panelist in this case.  On June 5, 2001 Mr. Limbury accepted and filed the necessary declaration of independence and impartiality. The clerk�s office forwarded to him a user name, allowing him to access the material posted in eResolution�s automated docket management system. At the panel�s request, the clerk�s office forwarded to the panel all the material received from the parties. 

On June 5, 2001, the parties were notified that Mr. Limbury had been appointed and that, save exceptional circumstances, a decision was to be handed down on June 19, 2001. 

In considering whether to admit the response, the panel has noted that its substance was submitted electronically within 20 days of the commencement of the administrative proceeding and was communicated to the complainant at the same time.  Therefore it appears to the panel there would be no injustice done if the panel were to take the response into account.  Likewise, the complainant�s reply was made promptly and is directed to one minor factual assertion in the response.  The panel believes it would be conducive to a just outcome if both the response and the reply were taken into account. Both documents are therefore admitted.

3. Factual Backgrounds

Mount Eliza is the name of a place not far from Melbourne, Australia.  Mount Eliza denotes the highest peak in the area and the surrounding locality. It was named in 1836 after Eliza Batman. The town that now bears the name has become an established high quality residential area with a number of unique characteristics and amenity.

The complainant was incorporated in 1955.  It has provided education services for more than 43 years.  It operates a college at Mount Eliza which, under previous ownership, was known as �Moondah� and was operated as a private hotel, partly because of the appeal of its historical buildings. The only current reference to the property in a profile on Mount Eliza (www.mornpen.vic.gov.au/towns/mteliza.htm) is in the following terms � 

�Moondah is an Aboriginal name which means �black snake� and
�beyond�. In 1957 the property was transformed into a Business College which is still operating today.� 

Over the years the name of the complainant has changed several times.  Originally known as �The Australian Administrative Staff College Limited�, it became �Mt Eliza Management College�, then �Monash Mt Eliza Business School� and, since April 2000, �Mt Eliza Graduate School of Business and Government Limited�.  

The complainant has over 25,000 alumni in 45 countries and is one of the leading business schools in the Asia-Pacific region, ranked by the Financial Times in 1999 ahead of the University of California, Berkeley.

Press reports and magazine articles refer to the complainant as �Mt Eliza�. An example is an article in a Queensland, Australia newspaper in September 2000 which began:

�The Mt Eliza Business School based in Victoria and The University of Queensland have announced a partnership to offer joint executive education programmes and an innovative MBA degree.  Chairman of the Board at Mt Eliza, David Karpin and University of Queensland Vice-Chancellor Professor John Hay said the new partnership drew on the resources of both institutions to create truly national business programmes.  �The move will make Mt Eliza the only independent business school and full-spectrum provider of management development education in the country,� he said.�

In December 2000 the complainant registered the domain names <mteliza.com.au> and <mteliza.edu.au>.

The respondent registered the domain name <mteliza.com> with Network Solutions on 12 May 1999 and the domain name <mteliza.net> with Register.Com on August 4, 2000. Mr Roman Schaedler, who owns the associated company business names and other commercial interests in connection with the contested domain name[s] in question resides at 1121 Derril Road, Moorooduc which is immediately adjacent to the town Mount Eliza. He has had both social and commercial interests in the Mount Eliza area for 17 years. After the complaint was served on the respondent, a company called Mt Eliza.com Pty Ltd was registered.  Mr Schaedler is a director.

4. Parties' Contentions

A.  The complainant

Rights/identity/confusing similarity 

Despite its corporate name changes, since 1989 the complainant has used the word �Mt Eliza� as a trademark and has been known by that name within the corporate and business sectors. It provides courses in Australia, China and Asia-Pacific under the name �Mt Eliza�. Through its activities, the complainant has developed a valuable reputation and substantial goodwill among the industry and public generally in relation to its provision of education services and the name �Mt Eliza�.  

The public generally knows the name �Mt Eliza� to be distinctive of and to signify exclusively the services of the complainant and expect that education services being promoted under the name �Mt Eliza� are those of the complainant or connected with the complainant.  Accordingly, the complainant is the owner of trademark rights in the name �Mt Eliza�. 

The contested domain names are identical to the trademark or service mark in which the complainant, by virtue of its reputation, goodwill or the use of the name, has rights or a legitimate interest. Alternatively, they are confusingly similar to the mark. 

The reputation and goodwill that the complainant has established over the past 43 years is vested in the abbreviated name as well as in the complainant�s full name: see Everything for a Dollar Store v. Sheri Brown (eResolution Case AF-0222) and Instituto Nacional De Capacitacion Profesional v. Patriciio Ojeda (NAF Case FA 0095163) involving the abbreviations EFADS and INACAP respectively, both held to be the subject of trade mark rights where the full name of the complainant was the registered trade mark. 

Legitimacy

The complainant is not aware of any circumstances within paragraph 4(c) of the Policy.  Non-use or passive use is evidence of lack of rights or legitimate interest on the part of the respondent.  Even a future intention to use the domain names would not constitute a legitimate interest: VZ Vermogens Zentrum AG v. Anything.com (WIPO Case D2000-0527). Even if the respondent has a potential future use for the names, it is unreasonable for the respondent to hold them because the complainant requires them to conduct its existing business.  see Everything for a Dollar Store v. Sheri Brown (eResolution Case AF-0222).

The only use of which the complainant is aware is that the respondent has negotiated for the sale of one of the domain names to the complainant for AU$10,000, which is further evidence of lack of rights and legitimate interest in the domain names.

Bad faith

The domain names were registered and are being used in bad faith, namely for the purpose of selling them to the complainant for a price exceeding the respondent�s out of pocket expenses directly related to the domain names: in a telephone conversation, Mr Roman Schaedler of the respondent offered to sell the domain name <mteliza.com> to the complainant for AU$10,000.  He confirmed this offer by fax on August 4, 2000.

Further, passive use is use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case D2000-0003.

The combination of the complainant�s strong reputation and goodwill; the respondent�s failure to use the domain names for any commercial or non-commercial purpose and the attempt to sell one of them to the complainant together demonstrate that the domain names are being used in bad faith

B.   The respondent

Because the respondent registered the domain name <mteliza.com> before ICANN adopted of the Policy and Rules, it is on a without prejudice basis that the respondent makes submissions to the panel and it reserves all common law rights.

The complainant�s corporate name has never been �Mt Eliza�.

The complainant�s claim to trademark rights in the name Mt Eliza by reason of matters suggesting that the complainant is commonly known in the industry as Mt Eliza and distinguishes itself on this basis is wishful thinking.

The Web Page established by the complainant under www.mteliza.com.au is merely a self serving statement with a fresh logo which has no protection under the Trademarks Act. Indeed a search at IP Australia reveals that the only image that exists in a registration form is that of the previous Monash Mt Eliza Business School which provides an image for the Trademark No. 720383 entirely different to that which the complainant is presently trying to promote. This represents a current policy and marketing decision by the complainant to promote the school now in a manner which has not previously been known or established in the market place and is neither commonly known in the community or by prospective clients or indeed in the industry as being distinguished by reference to the name Mt Eliza. At best, it is a term of convenience.

These circumstances have been most recently put in argument before the WIPO Arbitration Mediation Center in Brisbane City Council v Warren Bolton Consulting Pty Ltd  (WIPO Case No. D2001-0047), wherein it was argued by the complainant that it had certain rights in relation to an unregistered mark Brisbane City. The panel concluded, among other things, that even given some of the factual circumstances in that case ��the evidence on the record is not sufficient to persuade this administrative panel that the unregistered mark Brisbane City is performing the function of a trade mark and so is a trademark for the purposes of the Uniform Policy.�

Even if the complainant in this case was able to prove some further rights in relation to a trademark, which is refuted, it is submitted that this decision puts to rest the argument because of the fact that it concerns a geographical location. The panel went on to say that it ��..finds that the mark is descriptive of a geographical location, in this case the city of Brisbane. Thus, there are likely to be many traders providing goods or services in or relating to the city of Brisbane who would have a bona fide interest in using the unregistered mark Brisbane City in relation to those goods or services.�

In the Brisbane City Council case the panel was also able to refer to the recent Interim Report of the Second Wipo Internet Domain Name Process of 12 April 2001. The panel went on to refer to this interim report by saying ��.whilst not determinative of the issue, (it) is consistent with the panel�s view about the capacity of a name of a geographical location to perform the function of a Trademark�.The assumption which underlies this discussion in the Interim Report appears to be that, as a general rule, place names per se are not Trademarks for the purposes of the Uniform Policy. This assumption is, in this panel�s view, well founded.�

The complainant admits that it was not until 1 December 2000 that it became the registered owner of the domain names <mteliza.com.au> and <mteliza.edu.au>. These registrations were well after those of the respondent.

More importantly, the registration of <mteliza.com.au> should not have been made. It is contrary to the general concepts of the registration of geographical locations and more specifically the com.au Domain Name Allocation Policy :

�Australian Place Names and their common abbreviations are overly representative (ie. representing all commerce for a particular community or in a geographic region) and will not be licensed for use as com.au Domain Names. 

Identity/confusing similarity

The complainant does not have a trademark registered in Australia or elsewhere and indeed the only trademark rights exist with the former Monash Mt Eliza Business School under which name the company traded for six years prior to its current public form and image.

To the extent that the abbreviated words Mt Eliza incorporated in any of the contested domain dames are confusingly similar to that of the complainant it is only because the complainant has persisted with and enabled the registration of its domain name that it has created such confusion. In this sense the tactic of the complainant could be described as �bullying.� Further, it has chosen to use a geographical location at its peril. It has registered the name and must live with the fact that it is therefore confusingly similar to that of the respondent�s prior registration of the contested domain names.

The complainant relies on the fact that the company has been in existence since 1955. However, the company has had a substantial history of being known as other institutions which have no association, by reference or description with the company�s present name.

Within the geographical location of Mt Eliza the consequences of this perilous decision of the complainant can be overwhelmingly emphasised by understanding the number of other business, organisations, community groups etc that incorporate reference to the name Mt Eliza. A short example of these are as follows �

Mt Eliza Bowling Club                                                                                                         Mt Eliza Building Services                                                                                                   Mt Eliza Community Contact Inc                                                                                         Mt Eliza Dental Care                                                                                                          Mt Eliza House Childcare and Nursery School                                                                     Mt Eliza Kunyung Pre-School                                                                                              Mt Eliza Medical Centre                                                                                                     Mt Eliza Pharmacy                                                                                                            Mt Eliza Physiotherapy and Sports Injury                                                                             Mt Eliza Preschool Centre                                                                                                  Mt Eliza Real Estate Pty Ltd                                                                                              Mt Eliza Tennis Club                                                                                                          Mt Eliza Village Nursery School                                                                                          Mt Eliza Aged Care Assessment Service                                                                        ��..and many others 

Everything for a Dollar Store (Canada) Inc v Sherie Brown (Case No. AF-0222) can be clearly distinguished by the fact that the complainant there had been in business in Canada for many years where it had 54 stores and owned the registration and trademarks being the subject matter of the dispute. This is clearly not the case with the complainant in this matter. Indeed, the reverse scenario is the case here. The complainant has chosen to reduce its public image from the Australian context as the Australian Administrative Staff College Limited to the regional context at Monash University )which is known widely in the State of Victoria and beyond) to that of a specific town in Mt Eliza.

The cases on which the complainant relies refer to the use of words abbreviated to their initial letters in the alphabet rather than the abbreviation of the word Mount Eliza to that of Mt Eliza. 

In Wembley National Stadium Limited v Tim Gordon  (WIPO Case No. D2000-1218) the panel had to consider the argument relating to the geographical name Wembley and its association with the name and mark �Wembley Stadium�. In its discussion and findings the panel said as follows �

�The panel accepts that the complainant is not opposing the use of the name and mark Wembley simpliciter. Rather, the complaint is in relation to the name and mark Wembley Stadium. The activities of and use by the PLC of the name Wembley are not relevant use of the Wembley Stadium name and mark.� 

The problem the complainant has is that it purports to have the right to the generic and geographical name without reference to its institution and therefore is inconsistent with the proper approach taken by the panel in the Wembley Stadium case.

Legitimacy

The complainant says that it is not aware of any trade marks or service marks being used by the respondent which relate directly or indirectly to the contested domain names. The respondent says that argument is equally applicable to that of the complainant. 

However, the respondent does have substantial commercial interest in the Mt Eliza area.  He is the owner of commercial premises from which it proposes to launch a company utilising the domain name which he has been developing consistently since its registration in 1999. The respondent cannot be criticised for being an entrepreneur and using the clear advantage of the geographical location in its commercial exploits.

It is submitted that the complainant uses certain panel decisions to argue the question of legitimacy on the basis that there are no demonstrable preparations to use the domain names. However, it is clear from the decisions cited by the complainant that the respondent in each of those cases is in the business of registering many names from 50 to more than 400 in order to sell them in the market place either in bad faith or without any legitimate use for them. This respondent is not in the business of doing so and his interests in the contested domain names are based on his residency within the Mt Eliza area and his current business interests which have been well established in the Mt Eliza area.

The respondent is also the director of the company Mt Eliza.com Pty Ltd A.C.N. 096 829 695 which is the business structure he proposes to use for the purposes of the development of the contested domain names. 

The complainant maintains that the respondent is not commonly known by the contested domain names and that the future intention to utilise them would not constitute a legitimate interest in them. The complainant�s case again suffers from the very nature of the domain name being a geographical location. Because the contested domain names are of the nature of a geographical location, the arguments that are raised in relation to evidence of rights or legitimate interest are entirely different to those that are raised by other cases upon which the complainant relies.

In VZ VermogensZentrum Agv. Anything.com (WIPO Case D2000-0527)  the respondent admitted that its ��.business strategy is to develop generic and/or easy-to-remember domain names into viable web sites to sell products and services.� In fact the respondent had registered at least 50 domain names, none of which had any likeness to the respondent�s company name. The panel found in that case that ��the mere speculative idea for a bona fide business application of a generic domain name�� was not ��evidence of rights of legitimate interests.� It is submitted that this is entirely different to the current facts of the complainant�s case where the name is not simply generic but a geographical location to which it cannot have a claim per se. At the time the respondent registered the contested domain names the complainant was not in existence in its present form.  There can be no inferences drawn that, because there are no �demonstrable preparations�, therefore the defendant�s use is illegitimate and more so the suggestion that this represents evidence of bad faith.

Bad faith

The respondent denies that the domain names were registered and are being used for the purpose of sale to the complainant.

The respondent relies on the historical facts that the domain name was registered well prior to any registration by the complainant of either a domain name or the change of its company name. It is only in December 2000 that the complainant decided to establish a web page with fresh images, fresh logos, and a new name commencing with the word Mt Eliza.

The respondent�s correspondence with the complainant arose only out of the fact that it became evident that the complainant might have an interest in the contested domain names when clearly the complainant had decided to register the domain name <mteliza.com.au>. The offer to sell the domain name <mteliza.com> to the complainant was made on the presumption that provided the respondent was able to continue to utilise the geographic location of Mt Eliza in some other form, he would be prepared to release the <.com>. Accordingly the respondent was then able to and did in fact register <mteliza.net> on 4 August 2000 as a substitute for but legitimate use of the words Mt Eliza for its particular commercial purposes.

The panel will be aware of the proliferation of persons in the business of registering multiple speculative names either in direct competition with existing bona fide companies use or other purposes which are clearly identifiable with the concept of being in bad faith. The complainant cites the decision in Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case D2000-003)  in support. 

Apart from the fact that in that case the respondent had no legitimate identity or activities, the evidence of bad faith in the registration of <Telstra.org> was clearly obvious and directly related to the substantial and invented word �Telstra� for which the complainant in that case had overwhelming rights.

It is further submitted that in most circumstances the question of bad faith arises out of the registration of a domain name after the event. That is, bona fide commercial identities in existence prior to the registration. Again, this is clearly not the case in the complainant�s circumstances. The mere fact that the respondent was prepared to sell the domain name <mteliza.com> is nothing more than a prudent commercial decision at a convenient time initiated by the complainant�s actions.

The complainant also relies on the Telstra Corporation case (D2000-0003) for the proposition as stated by the panel that �it is possible, in certain circumstances, for inactivity by the Respondent to amount to the Domain Name being used in bad faith.� However, the respondent�s particular circumstances are clearly and dramatically different from those of the respondent in that case.

In Skipton Building Society v Peter Colman  (WIPO Case D2000-1217) the domain name in dispute was <skipton.com> and the complainant operated in the Skipton area as Skipton Building Society, having traded under the name Skipton since 1853 and being the owner of a UK registered trademark for the word Skipton since 1987.

None of the circumstances of that case arise here and there is nothing further that this panel can find by direct reference or inference that the respondent has acted in bad faith either passively or actively.

The complainant�s case must fail because it has elected to avoid, disguise or actively frustrate the common principles in relation to domain name allocation. In particular, in the context of the Australian environment, the specific policy set out in the com.au Domain Name Allocation Policy is irresistible.

In any event it is only because the complainant has now decided to establish a new image under a new name that these issues have arisen. The complainant cannot lay claim on the basis that it has an existing trademark and indeed its present structure conflicts directly with that which is already registered. The profile of the complainant is, it is further submitted, only known in the exclusive environment of small business training and education organisations and is otherwise unknown to most persons in the geographical location. As such it is a mere facility within the area and has none of the advantages of a reputation gained by such examples in decisions as previously referred to in Wembley Stadium, Skipton Building Society and Telstra.

5. Discussions and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

3. the disputed domain name has been registered and is being used in bad faith.

Whether the complainant has trademark rights in the name Mt Eliza 

Having regard to Brisbane City Council v. Warren Bolton Consulting Pty Ltd (WIPO Case D2001-0047); City of Hamina v, Paragon International Projects Ltd. (WIPO Case D2001-0001); Port of Helsinki v. Paragon International Projects Ltd. (WIPO Case D2001-0002); Wembley National Stadium v. Tim Gordon (WIPO Case D2000-1218); Skipton Building Society v. Peter Colman (WIPO Case D2000-1217); City of Salinas v. Brian Baughn (NAF Case FA104000097076) and the discussion at paragraphs 276 �286 of the Interim Report of the SecondWIPO Internet Domain Name Process of April 12, 2001 (http://wipo2.int), the panel concludes that while geographical indications, such as the name Mount Eliza or its common abbreviation Mt Eliza, are not protected as such under the Policy, they may nevertheless qualify for protection under the Policy as trademarks if shown by evidence of their use to have become distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive.

It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark. The name Mt Eliza is a common descriptive name of general application to the place Mount Eliza and is used as part of the name of many businesses located in the area. The complainant claims to be known by the name Mt Eliza within the corporate and business sectors and asserts that the name is distinctive of its educational services within those sectors and the public generally. It is necessary to distinguish between the claimed trademark and the corporate name of the complainant which, through its various manifestations, has included the name Mt Eliza for several years.

The panel finds the evidence on which the complainant relies unpersuasive. The newspaper article is the only substantive evidence of the use by the complainant and others of the name Mt Eliza to refer to the complainant or its services. The story begins with a reference to � The Mt Eliza Business School �.  This is not the name of the complainant and it appears in its context to be a description of the business school at Mount Eliza.  Thereafter the story refers several times to Mt Eliza but because of the introductory description, these references appear to be no more than a shorthand way of referring to the previously described business school.  If the name does function as a trademark, that function is not clearly demonstrated by the article.

In support of its assertion, the complainant had produced no material which could be regarded as evidence that the name functions as a trademark. Further, use by others of the name Mt Eliza when referring to the complainant or its services (such as alumni) does not establish that the complainant itself uses or has used that name (standing alone) as a trademark.  There is nothing before the panel to indicate, let alone demonstrate, that the complainant has used the name Mt Eliza otherwise than as part of its corporate name from time to time or as a shorthand way of referring to the institution, as in the newspaper article.

The panel finds the complainant has not established that it has trademark rights in the name Mt Eliza.

This finding is sufficient to dispose of this complaint and it is therefore unnecessary to consider other issues.

6. Conclusion

The complainant has failed to establish its entitlement to a remedy and accordingly the complaint is rejected.

7. Signature