The World Intellectual Property Organisation’s Arbitration and Mediation Center (WIPO) recently found that an Indian company did not meet any of the Eligibility Criteria to hold two Australian domain names: policybazaar.com.au and policybazaar.net.au.
The Particulars of the Case
The Complainant in the case was Policybazaar—an online insurance broker in India. Policybazaar owns the trademarks POLICYBAZAAR.COM and POLICY BAZAAR.
The Respondent was Knightcorp Insurance Brokers—a licensed insurance company incorporated in Western Australia. Cooper Mills Lawyers acted for the Respondent.
Policybazaar initially filed an auDRP proceeding in hope of securing the .com.au and .net.au domains currently held by Knightcorp Insurance Brokers.
Policybazaar claimed that:
- The disputed domain names were identical or confusingly similar to their Trade Marks
- Knightcorp Insurance Brokers had no rights or legitimate interests in respect of the disputed domain names
- The disputed domain names were registered or subsequently used in bad faith.
However, the WIPO Panel found that the Complainant did not meet any of the eligibility criteria to hold an .com.au or .net.au domain. Namely, Policybazaar is incorporated and conducts its business in India; it does not conduct any business in Australia.
Additionally, the WIPO panel found that Knightcorp Insurance Brokers had grounds to hold the policybazaar.com.au and policybazaar.net.au domains given the generic nature of the terms ‘policy’ and ‘bazaar’ and the company’s vested interest in the insurance policy sphere.
The Findings of the WIPO Panel
In its findings, the panel said:
“The Panel therefore finds that the Complainant is ineligible to own the disputed domain names under the Eligibility Rules. Accordingly, the Panel determines that the Complaint should be denied, without making any findings with respect to the three elements set out under paragraph 4(a) of the Policy, but noting that, had it been necessary to do so, it would appear the Complainant might in any event have had difficulty in fulfilling each of the three requisite elements.”
“In light of the publicly available Eligibility Rules, the Panel majority considers there are grounds to suggest that the Complainant (and its counsel) were negligent, incompetent or lacked prudence to reasonable and experienced standards in bringing the Complaint.”
Reverse Domain Name Hijacking
In response to the complaint brought by PolicyBazaar, Knightcorp Insurance Brokers then requested a finding of Reverse Domain Name Hijacking by Policybazaar.
However, after deliberation, the majority of the panel denied this claim, saying:
“In light of its reputation as a leading provider of online insurance products in India under the Trade Marks since 2008; its numerous registrations for the Trade Marks in India; the fact the disputed domain names, disregarding the ccTLD, are both identical to the Trade Mark POLICY BAZAAR; and its prior success in recovering domain names identical or confusingly similar to the Trade Marks under the Uniform Domain Name Dispute Resolution Policy against respondents not based in India, the Complainant had sufficient prima facie grounds – notwithstanding its apparent ignorance of the Eligibility Rules – to commence this proceeding, and in doing so it did not act unreasonably.”
However, the WIPO panel was quick to acknowledge that Policybazaar and their legal counsel exhibited significant carelessness when filing the complaint.
A Dissenting Opinion
One Panelist gave a dissenting opinion supporting a Reverse Domain Name Hijacking finding, while agreeing with the majority finding on the eligibility issue. He claimed that the Complainant knew that it could not meet the evidentiary burden for the most basic requirement that had to be proved – eligibility to hold an Australian domain name which it was seeking a transfer of – and yet it filed the complaint anyway, under a guise of good faith. The Panelist said:
“Having regard to all the circumstances, this panelist would make the finding of Reverse Domain Name Hijacking.”
The decision shows that Panels are prepared to dismiss a complaint where the Complainant is not eligible to hold a .au domain name.