In what is welcome news for domain investors, registrants and entrepreneurs, a 3 Member WIPO Panel has just unanimously decided in favour of the legitimate Registrant of this generic domain name. This was despite a Complainant (with deep pockets) instructing Minter Ellison to go after the domain. David versus Goliath.

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.

Key Points

  • Domain Name: Gday.com.au
  • 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.

Conclusion

There are many other quotes I could have highlighted, but I think you will get the drift!

Regardless of which side of the fence you may stand, this is a must read decision.

Well done to Ed Keay-Smith and all who assisted him.

Special credit must go to Rob Kaay for his ability to successfully defend auDRP complaints. Never in my time have I seen anyone with a 100% win ratio! I know the time and effort he puts into these responses – amazing.


I look forward to your comments. Please try and keep them constructive and civil – I don’t want to be defending defamation “Concerns Notices” in my first week back at the helm. 😀

Ned O’Meara – 13th November 2021

30 thoughts on “auDRP Complaint Denied On GDAY.com.au

  • November 13, 2021 at 1:32 pm
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    Thanks Ned

    It is a big day not only for me but for all domain owners in Australia IMHO.

    Thanks to all those who assisted in this win, especially Rob Kaay from DBR.com.au and a couple of others who know who they are. This was not possible without their invaluable help. Thank you! 🙏🏻

    I am not usually one to gloat, quite the opposite, but this does feel bloody good!

    The fact that it was a unanimous decision from all three panelists made it all the sweeter.

    Onwards and upwards.

    Ed

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    • November 14, 2021 at 1:31 pm
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      A unanimous decision is a gloatable occasion. Congrats. 🙂

      This is a decision that should forever alter the landscape of generic domain protection.

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  • November 13, 2021 at 2:32 pm
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    Ed, the other big thing is that you managed to pick up gday.net.au when the license was cancelled recently, and it went on the drop auctions. Your company now has undisputed rights to the .au!

    As for that cancellation, it was also subject to an auDRP by the same people that had a go at you for the com.au. The difference is that the Respondent there didn’t go for a 3 member panel; nor did he put in a substantial submission by the looks of it. The one thing that was fortunate though is that panelist decided to cancel the name rather than transfer it to the Complainant.

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    • November 15, 2021 at 12:50 pm
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      Yes we did Ned and we look forward to having the .AU too next year.

      This is a good lesson for those companies out there thinking of trying to steal a domain name from someone without having legitimate legal rights to the domain name.

      They are far better off having a civil conversation and negotiating a sale for an agreed price than going down the auDRP & WIPO path in my opinion.

      I can only imagine how much was spent on lawyers going after both the .com.au & .net.au???
      Probably more than I would have sold the domain to them for if they had just picked up the phone and given me a call.

      That time has now well and truly passed!

      Cheers

      Ed

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  • November 13, 2021 at 3:00 pm
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    Note to self, don’t try to take someone else’s IP.

    Note to self, don’t ask Lisa Jarrett for advice in relation to .com.au domains

    Note to self, don’t ask Minter Ellison for advice in relation to .com.au domains

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    • November 15, 2021 at 12:54 pm
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      Absolutely Reg

      No argument from me the on those points!

      Reply
  • November 13, 2021 at 3:25 pm
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    What a fantastic decision. This decision should be the precedent for all traders who attempt to misuse the auDRP process. The Complaint should never have been filed.

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    • November 15, 2021 at 12:59 pm
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      Thanks and yes, hopefully this serves as a deterrent for others looking to steal someone else’s domain/s!

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  • November 13, 2021 at 3:28 pm
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    Congrats Ed and Rob. Sensational result.

    It is such arrogance of Discovery Parks and their high priced solicitors to try and claim the Aussie greeting as their own. What is it with SOME solicitors?

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    • November 15, 2021 at 1:01 pm
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      Thanks Alex

      This was not possible without Rob’s help!

      Very happy with the outcome!

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  • November 13, 2021 at 4:14 pm
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    Lol
    You can’t write this stuff
    Oh wait you can and Minter Ellison did

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  • November 13, 2021 at 7:05 pm
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    I think it’s good to point out, for new readers, that the respondent paid five figures for this domain name. Invested in the asset for his business.

    This truly betrays the (win at all costs) nature of the complainant’s conduct, with which Lisa Jarrett and Minter Ellison we’re complicit, in my opinion.

    Dear Minter Ellison, I’d like to take my neighbour’s house, can you do me a solid and help me accomplish this?

    Publisher Note: This post has been slightly edited i.e (win at all costs).

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    • November 15, 2021 at 1:03 pm
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      Thanks Daniel

      I laughed out loud reading your comment!

      👍👏👏👏😂🙏

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  • November 14, 2021 at 7:22 am
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    Reverse domain name hijacking is a real problem, it seems to be getting worse, which is a real shame. It’s nice to hear when there’s a good outcome. It reinforces the notion that a strong, one word generic name is still highly desired in the .au namespace..

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    • November 14, 2021 at 1:53 pm
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      Agreed on all counts Erwin.

      That said, though this is a great win, poor Ed had to spend a lot of money to defend his legitimate interests.

      I imagine the other side thought this would be easy, but they didn’t count on a 3 member panel and a “Special Kaay” defence!

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    • November 15, 2021 at 1:06 pm
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      There are plenty of Foxes out there wanting to get into out henhouse to steal our chickens.

      What they haven’t figured out yet is that we have electrified our fences!

      They are all in for a shock if they keep trying.

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  • November 14, 2021 at 4:26 pm
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    Amateur hour

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  • November 14, 2021 at 5:10 pm
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    Nice work team 🙂

    I’ve been watching the auDRP list for a while to see the verdict on this one, glad to see it was unanimous, can’t argue with that!

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  • November 15, 2021 at 6:18 am
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    Domain thieves are out in force. They have deep pockets and use large law firms to try to bully domain owners into handing over, or losing their domain. There are quite a number of cases now where these big law firms have lost. GOod on this community for banding together against these big bullies. Well done all involved in defending this one,

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    • November 15, 2021 at 7:38 am
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      No they’re not
      One or two here and there doesn’t mean an infestation
      Just need to step on them as you see them

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  • November 15, 2021 at 6:59 am
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    Great article Ned, bringing to light another very important victory for the Australian domainer community.

    There’s a lot that goes on behind the scenes to win a case this big, so special thanks to all involved who helped me defend this for Ed. I know Ed is just absolutely ecstatic that justice has prevailed.

    This is such a landmark result under the new .AU Licensing Rules. Particularly this section of the decision that talks about registering a domain name BEFORE you register the business name:

    “The domain name was acquired on May 31, 2021. The Respondent obtained its business name registration on August 2, 2021. There are three reasons why this gives an RLI to the Respondent.

    First, the expression “business name” is also defined. The definition provides:

    “Business name means a name used OR TO BE USED, in relation to a business and is recorded on the Business Names Register established under the Business Names Registration Act 2011(Cth).”

    In other words, if a comparison between the domain name and the business name of the applicant is to be made, as in the present case, the business name must be registered and it must be either the name used by the applicant for its business or the name the applicant intends to use for its business in the future. That is clearly the situation here, for it must be unequivocal on the evidence that G’Day Marketing was chosen as the name “to be used” by the applicant as its business name.

    Secondly, such a view is also soundly based and consistent with common sense, because parties starting a business would sensibly acquire the domain name they wanted and register it as a domain name if it was the name “to be used” as the business name. If that can be done, they would then register the domain name as their business name. They would hardly acquire a domain name and then start a business with a different name.”

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    • November 15, 2021 at 1:11 pm
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      If there was a Knighthood for defenders of domain owners, you should be one of the first recipients mate!

      Absolute bloody legend!

      Reply
  • November 15, 2021 at 7:31 am
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    While we’re here, let’s take a look at the Domain Hijacker Scoreboard.

    Gday.com.au ownership was attacked by “Discovery Holiday Parks Pty Ltd” (1778 employees and $161 million annual revenue) and represented by Lisa Jarrett of Minter Ellison. Their hijacking attempt FAILED. (https://domainer.com.au/audrp-complaint-denied-on-gday-com-au/)

    Affirm.com.au ownership was attacked by “Affirm, Inc.” (200 employees and $110 million revenue) and represented by Robynne Sanders and Adnan Meher of DLA Piper. Their hijacking attempt FAILED. (https://domainer.com.au/affirm-inc-lose-their-attempt-to-hijack-affirm-com-au/)

    OGIO.com.au ownership was attacked by “Callaway Golf South Pacific Pty Ltd” (52 employees and $32 million revenue) and were represented by Khajaque Kortian from Spruson and Ferguson. Their hijacking attempt FAILED. (https://domainer.com.au/ogio-com-au-audrp-complaint-denied/)

    Wallabies.com.au ownership was attacked by “Rugby Australia Ltd” (150 employees and $47 million revenue) and were represented by CSC Global. Their hijacking attempt FAILED. (https://domainer.com.au/wallabies-rugby-lose/)

    RottnestIsland.com.au ownership was attacked by “Rottnest Island Authority ” (150 employees and $32 million revenue) and were represented by Iain Freeman from Lavan Lawyers. Their hijacking attempt FAILED. (https://domainer.com.au/rottnestisland-com-au-complaint-denied/)

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    • November 15, 2021 at 8:04 am
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      Rob, you’re like that well-advertised breakfast cereal when it comes to successful auDRP defences.

      “Special Kaay”!

      Well done again. And not just for yourself; but for what your success means for all domain investors, entrepreneurs and registrants throughout Australia.

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    • November 15, 2021 at 1:14 pm
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      Amazing record Rob!

      Most would have given in to the bullying tactics of these large corporates and their henchmen lawyers!

      It is what they count on!

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  • November 15, 2021 at 9:18 am
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    It’s time – Time to go after the RDNH lawyers and their RDNH clients. Name, Shame and Hit them back! http://www.RDNH.COM http://www.HallOfShame.com

    Often they try to use claimed exclusive trademark rights which can also put them in the spotlight of the ACCC if you let the ACCC know.

    The GDAY.com.au complainants Discovery Holiday Parks Pty Ltd and responsible Directors clearly fall into this same category and need to be exposed and ACCC investigated.

    https://www.legislation.gov.au/Details/C2021C00528 Competition and Consumer Act 2010

    https://www.accc.gov.au/media-release/schoolies-trade-mark-breaks-free

    ‘Schoolies’ trade mark breaks free

    16 November 2005

    Break Free Holidays has undertaken that it will no longer threaten legal proceedings against third parties who make use of the word ‘Schoolies’, in circumstances where Break Free Holidays has no right to do so.

    “The Australian Competition and Consumer Commission has accepted court enforceable undertakings from Break Free Holidays for potentially misleading and deceptive conduct relating to the word ‘Schoolies’*”, ACCC Chairman, Mr Graeme Samuel, said today.

    “Break Free Holidays currently holds trade marks** comprising of the word ‘Schoolies’ in six different classes”.

    An ACCC investigation found that a number of organisations referred to ‘Schoolies’ in their advertising and promotional material as a general word. In some cases, Break Free Holidays threatened legal proceedings against organisations for making use of the word.

    On some occasions Break Free Holidays asserted that a form of approval was required from them prior to referring to this term in advertising.

    The ACCC considers that Break Free Holidays may have breached section 52 of the Trade Practices Act 1974 by representing that third parties cannot make use of the word ‘Schoolies’ irrespective of the context in which the word was used.

    Break Free Holidays has acknowledged the ACCC’s concerns about its conduct.

    By offering the undertaking to the ACCC, Break Free Holidays has agreed to:

    for five years, obtain proper legal advice prior to communicating with third parties in relation to their use of the word ‘Schoolies’ establish a Register of Communications documenting approaches to third parties about their use of the word ‘Schoolies’, to be provided to the ACCC annually for three years, and implement a trade practices law compliance program for three years.

    “The ACCC is very concerned that the holders of monopoly rights, such as the owners of trade marks, do not try to extend these rights by misrepresenting possible infringements or restrictions on use”, Mr Samuel said today.

    “Businesses should be very mindful of the limits of their intellectual property rights. It’s important to ensure that overzealousness doesn’t drift into the misleading and deceptive category of representations”.

    The undertaking will be available from the ACCC’s website, under Public Registers by 17/11/05.”

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  • November 15, 2021 at 10:24 am
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    https://www.dndisputes.com/case/dau2021-0026/

    COMPLAINT DENIED
    RDNH

    https://domainer.com.au/wp-content/uploads/2021/11/Decision-DAU2021-0026.pdf

    “REVERSE DOMAIN NAME HIJACKING

    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.

    The Honourable Neil Anthony Brown QC
    Panelist

    Date: October 25, 2021”

    https://www.vicbar.com.au/profile/8867
    266 WIPO Cases https://www.dndisputes.com/search?panelist_name=neil+brown

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  • November 16, 2021 at 9:53 am
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    Just about to read the auDRP, time to bust out the popcorn

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