When A Domain Name Is Dropped, You Need The Best Catcher In Your Team

Author:Ms Jane Seager
Profession:Hogan Lovells
 
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Ogio International Inc, which owned the OGIO mark, sought the transfer of 'ogio.com.au' under the auDRP The majority of the panel denied the complaint; among other things, it declined to _nd that there was an intention to prevent the complainant from registering the domain name after it was dropped The dissenting panellist found that the respondent did not have rights or legitimate interests in the domain name, and that it was at least registered in bad faith In a recent decision under the '.au' Dispute Resolution Policy (auDRP) before the World Intellectual Property Organization (WIPO), a three-member panel has denied the transfer of a domain name that exactly matched the complainant's trademark because the complainant had failed to prove that the respondent did not have rights or legitimate interests, and registered or used the domain name in bad faith. However, one of the panel members dissented and would have ordered a transfer of the domain name at issue.

Background

The complainant was Ogio International Inc, a US-based subsidiary of Callaway Golf Company founded in 1987. It designed and manufactured bags and backpacks and had over 10 registered trademarks in Australia, including the OGIO trademark, registered in 1997 and 2004. According to the complaint, sales of the complainant's Ogio products to Australia over the last three years were in excess of A$1 million.

The respondent was Ogio Pty Ltd, an Australian company held by Mr Robert Kaay, owner of several other companies known to be domain name brokers and resellers.

The domain name 'ogio.com.au' was registered in January 2019. However, it was originally registered a number of years before by a party connected to the complainant, but not used and allowed to lapse sometime between 2016 and 2018. It was then picked up by one of Mr Kaay's companies and used to point to a website purporting to be about "Oil Gas Industry Organisation" and offered for sale via that website.

An inquiry was made by the complainant to 􀂦nd out if the domain name was for sale, to which Mr Kaay replied that it might be possible, depending on the amount the complainant was willing to pay. The complainant then wrote to auDA asking for the domain name to be cancelled because it was in breach of the Eligibility Rules for '.au', and also wrote to the respondent asserting that it would be able to recover the domain name pursuant to a complaint under the auDRP, but added that it would pay A$1,500 to swiftly...

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