Category 1 -Copy or Similarity
Submission 1 (Complaint’s Submission Annexure 1 paras. 1-11 and Annexure 2 para. 1-4)
Lack of Candour – No Exclusivity in Complainant’s use of words – Similar use by Respondent permitted
The Complainant’s submission is lacking in candour.
1.The foundation of the Complainants’ submission relies upon domestic statutory monopoly rights (viz, the Australian Trade Marks Act 1995: Exhibit 2) embodied in the following trade marks (hereinafter referred to collectively as “the Complainant’s marks”):
a) Registered TM 547732
b) Registered TM 547733
c) Registered TM 547734
d) Registered TM 552872
See Exhibit 12
2. The Complaint’s submission fails to articulate the following limitations on its otherwise monopolistic rights:
a) The rights granted are pursuant to an Australian domestic statute which grants monopolistic rights in and through Australia and its Territories only: Section 4 Trade Marks Act 1995 (“the “Act”).
The Act also extends to signatory countries of the Berne convention and limited international protection is also afforded by other treaties or conventions. Monopolistic rights conferred bu the Trade Marks Act 1995 do not extend worldwide. As is later argued the Complainant’s domestic and international commercial interests can be suitably protected by its making use of the domain name “daydreamisland.com.au”, “daydreamislandresort.com.au”, “daydreamisland.biz” or “daydreamislandresort.biz” which are currently or will be available.
b) Each of the Complainant’s marks contains a distinct image (Island with Palm Trees) all of which incorporate the words “daydream island”. It is the collective image (ie. Picture and words) in respect of which monopolistic rights accrue (and then only when used in connection or with the individual class) not in respect of the words alone.
c) Moreover, each of the Complainant’s marks is subject to an express “Endorsement” (noted at the foot of each) which provides in effect that the monopolistic rights do not extended to exclusive use of the words “Daydream Island” or any derivative (“the words”). Accordingly, other persons or entities in and throughout Australia are therefore permitted to utilize the words alone in any manner without fear of infringement of the Complainant’s marks.
d) Finally, each of the marks is also limited to a “Class” (eg. Class 30, etc) which further delimits the monopolistic utility of each of the marks to a specified class of goods and services: Exhibit 3a
3. More importantly the Complainant’s submission fails to disclose the fact that other domestic corporations are the proprietors of Registered Trade Marks in Australia which are comprised of or include the words “daydream” (are therefore can be reasonably said to be identical to or confusingly similar to the Complainant’s marks), namely: -
Registered Trade Marks
a) Trade Mark: 513184
Word: DAYDREAM
Image:
Lodgment Date: 20-JUN-1989
Class/es: 30
Status: Registered
Kind: n/a
Owner/s: National Foods Dairy Foods Limited
ACN: 002 400 339
Accepted/Pending Trade Marks
b) Trade Mark: 827831
Word: DAYDREAMS
Image:
Lodgment Date: 15-MAR-2000
Class/es: 26
Status: Accepted
Kind: n/a
Owner/s: DNZ Limited Partnership
c) Trade Mark: 858680
Word: DAYDREAMS DAY DREAMS DayDreams
Image:
Lodgment Date: 28-NOV-2000
Convention Date: 08-NOV-2000
Class/es: 25
Status: Indexing Approved
Kind: n/a
Owner/s: Ezibuy Limited
See Exhibit 8
The significance of this information, which the Complainant failed to disclosed, is obvious.
Firstly, any claim to exclusivity of proprietorship on the part of the Complainant in the words “daydream” or “daydream island” whether express or implied is exposed as misleading.
Secondly, the scope of any monopolistic rights in the words “daydream” or “daydream island” reposed in the Complainant under the marks is necessarily curtailed by reason of the co-existing grant of rights in and to the words “daydream” or “ daydream island” to third parties.
4. The Complainant’s submission contains further misleading information not supported by verified fact:
Exhibit 1 to this submission provides information obtained from the Queensland Department of Natural Resources – Place Name Details Report.
This information directly contradicts the facts stated on behalf of the Complainant in Annexure 1-4b point 11, namely, the Complainant states:
“The original geographic name of the island was West Molle Island, part of the Molle Group. Because of the substantial goodwill and international recognition of the business the Complainant conducts on the island, Australia’s National Mapping Agency, now formally recognizes West Molle Island ad Daydream Island.”
The material obtained from the Queensland Department of Natural Resources reveals that in truth and in fact, the name “Daydream Island” originated as follows:
“Daydream Island
For many years, the Island know to most Queenslanders as “daydream” has had an alternative name – West Molle Island. The name “Molle” has its origin in “Port Molle”, a name given by Lieutenant Charles Jeffreys R.N., 1815 to the anchorage in the lee of the south-east trade wind, formed by the Molle Group of Islands. Jeffreys used the name as tribute to his friend Colonel George Molle of the 46th Foot Regiment.
When Major Paddy Murray sailed into the Whitsunday area in 1933, in his yacht “Daydream” he bought West Molle Island and called it after his yacht. Very few people in 1989 would be aware of the name “West Molle Island” and it is proposed to omit the name to remove any unnecessary confusion on marine charts.”
See Exhibit 1a
5. The Complainant does not deal adequately with issue of the identity and interests of the Complainant in and to the business conducted on and from the Island.
The Complainant’s material together with searches conducted on behalf of the Respondent with the Australian Securities and Investment Commission reveal that it is a non-party to this proceeding, Daydream Island Pty Ltd CAN 089 923 580 (“the non-party”), (and not the Complainant or the related entity) which asserts in writing that it is the “operating entity of Daydream Island Resort located in the Whitsunday’s off the North Queensland Coast”: See Letter Daydream Island to the Respondent dated 21 June 2000 and also letter 19 July 2000 being Exhibit 9 hereto.
No information is provided as to the existence or scope of any licensed rights between the Complainant or the related entity and the non-party- to support or substantiate the Complainant’s assertion that its commercial interest are being harmed…particularly where neither the Complainant nor the related entity carry on business on the island.
Summary
The Complainant and the related entity only came into existence a few months prior to the registration of the disputed domain name by the Respondent. The Complainant purchased an interest in the island only 1 month prior to the Respondent registering the disputed domain name in December 1999.
The name “Daydream Island” was derived from the name of a yacht in 1933 owned by Major Paddy Murray and not by reason of the substantial good will and international recognition of the Complainant’s business. Moreover, it is the non-party and not the Complainant which carries on business on the island.
The Complainant obtains no “exclusive” monopolistic right to the words “daydream” or “daydream island” by reason of it being the owner of Registered Trade Marks 547732, 547733, 547794 and 552872 or otherwise.
The Complainant’s marks are each subject to an express endorsement that registration gives no rights to the exclusive use of the words “Daydream Island”. Many other Australian trademarks (registered and pending) incorporate the words “daydream” or “daydream island”.
Similarity in the words used in the disputed domain name and the Complainant’s marks (and indeed all other registered and pending marks) is lawful and permitted because the disputed domain name does not incorporate the image (picture).
The Complainant’s domestic and international commercial interests can be suitably protected by its registering and making use of the domain name “daydreamisland.com.au” which is currently available. This country local dotcom address also sits well with the fact of the parochial extent and scope of the domestic trade marks legislation.
The Complainant registered domain name “daydream.net.au.” is already attracting “many hits”: Exhibit 7
The commercial interests of the Complainant can be adequately served by use of another suffix eg. “daydreamisland.com.au” or “daydreamsiland.biz”
Conclusion
There is therefore no exclusive right of use in either the Complainant’s marks of the words, “Daydream Island” or any derivative (including “daydreamisland.com”), accruing to the Complainant by reason of the registration of its trade marks.
It is misleading for the Complainant to assert (expressly or impliedly) that is has, by reason of its registered trade marks, a better or higher proprietary right than the Respondent (or anyone) to the use of the words, “Daydream Island” or any derivative (including “daydreamisland.com”)… as it plainly does not.
The use by the Respondent or anyone of the words “Daydream Island” or any derivative (including “daydreamisland.com”) alone ( ie without the distinct image or picture (being the Island with Palm Trees)) does not constitute an infringement of the Complainant’s marks and does not amount to the use of a domain name which is identical or confusingly similar to the Complainant’s marks which incorporate an image or picture as an integral component part.
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