COMPLAINT TRANSMITTAL COVERSHEET

(http://www.wipo.int/amc/en/domains/)
COMPLAINT

Attached is a Complaint that has been filed against you with the WIPO Arbitration and
Mediation Center (the Center) pursuant to the .au Domain Name Dispute Resolution Policy
(the auDRP) first adopted by the Board of .au Domain Administration Ltd. (auDA) on August
13, 2001.
The Policy is incorporated by reference into your Registrant Agreement with the Registrar(s)
of your domain name(s), in accordance with which you are required to submit to and
participate in a mandatory administrative proceeding in the event that a third party (a
Complainant) submits a complaint to a dispute resolution service provider, such as the Center,
concerning a domain name that you have registered. Pursuant to Paragraph 4 of the Rules for
the .au Domain Name Dispute Resolution Policy (the Rules) and Paragraph 4(d) of the WIPO
auDRP Supplemental Rules for .au Domain Name Dispute Resolution Policy (the WIPO
auDRP Supplemental Rules), upon Notification of the Complaint and Commencement of
Administrative Proceedings, you will be forwarded an electronic copy of the Complaint
(including any annexes) and Written Notice of the dispute in hard copy by post and/or
facsimile, where applicable. For these purposes, please advise the Center as soon as possible
of any preferred and functioning email address.
Once the Center has checked the Complaint to determine that it satisfies the formal
requirements of the Policy, the Rules and the WIPO auDRP Supplemental Rules, and it has
received the required payment from the Complainant, it will forward an official copy of the
Complaint to you. You will then have 20 calendar days within which to submit a Response to
the Complaint in accordance with the Rules and WIPO auDRP Supplemental Rules to the
Center and the Complainant. Should you so desire, you may wish to seek the assistance of
legal counsel to represent you in the administrative proceeding.

The auDRP can be found at http://www.auda.org.au/policy/audrp.

The auDRP Rules can be found at http://www.auda.org.au/policy/audrp.

The WIPO auDRP Supplemental Rules, as well as other information concerning the
resolution of domain name disputes can be found at
http://www.wipo.int/amc/en/domains/rules/supplemental/au.html.

Alternatively, you may contact the Center to obtain any of the above documents. The Center
can be contacted in Geneva, Switzerland by telephone at +41 22 338 9111, by fax at +41 22
740 3700 or by e-mail at domain.disputes@wipo.int.
You are kindly requested to contact the Center to provide the contact details to which you
would like (a) the official version of the Complaint and (b) other communications in the
administrative proceeding to be sent.
A copy of this Complaint has also been sent to the Registrar(s) with which the domain
name(s) that is/are the subject of the Complaint is/are registered.
By submitting this Complaint to the Center the Complainant hereby agrees to abide and be
bound by the provisions of the Policy, Rules and WIPO auDRP Supplemental Rules.

Before the:

WORLD INTELLECTUAL PROPERTY ORGANIZATION

ARBITRATION AND MEDIATION CENTER

Mr. Michael Arnold ; Lorimax Pty Ltd

(collectively, Complainant)

-v-

Disputed Domain Name:

Tolling Customer Ombudsman Pty Ltd

(Respondent)
<tollingcustomerombudsman.com.au>
________________________________

COMPLAINT
(Rules, para. 3(b))

I. Introduction
[1.] This Complaint is hereby submitted for decision in accordance with the .au
Dispute Resolution Policy (the Policy), the Rules for .au Dispute Resolution
Policy (the Rules), and the WIPO Supplemental Rules for .au Dispute
Resolution Policy (the Supplemental Rules), currently in effect.

II. The Parties

A. The Complainant
(Rules, para. 3(b)(ii) and (iii))
[2.] This Complaint is brought by Mr. Michael Arnold and his service company
Lorimax Pty Ltd (ACN 005 151 235). Mr. Michael Arnold through his service
company Lorimax Pty Ltd (ACN 005 151 235) is the contractually appointed
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Tolling Customer Ombudsman (collectively Complainant). Complainant is

located and does business at, 266 Charman Road, Cheltenham, VIC 3192. As set
out in this complaint, Mr. Michael Arnold and Lorimax Pty Ltd have a common
grievance against the Respondent and it is equitable and procedurally efficient to
consolidate these complaints.

[3.] The Complainants contact details are:

Address:

266 Charman Road, Cheltenham, VIC 3192

Telephone:

1800 145 009

Fax:

(03) 9853 7762

E-mail:

admin@tollingombudsman.com.au

[4.] The Complainants authorized representative in this administrative proceeding

is:
Lisa Lennon
Gilbert + Tobin
Level 35, Tower Two, Sydney International Towers
200 Barangaroo Avenue
Barangaroo NSW 2000
Telephone:

+61 2 9263 4190

Fax:

+61 2 9263 4111

E-mail:

LLennon@gtlaw.com.au

[5.] The Complainants preferred method of communications directed to the

Complainant in this administrative proceeding is:

Electronic-only material
Method:

E-mail

Address:

tmadmin@gtlaw.com.au
Lisa Lennon

Contact:

Material including hardcopy (where applicable)

Method:

Post/Courier

Address:

Gilbert + Tobin
Level 35, Tower Two, Sydney International Towers
200 Barangaroo Avenue
Barangaroo NSW 2000
3

Fax:

(02) 9263 4111

Contact:

Lisa Lennon

B. The Respondent
(Rules, para. 3(b)(v))
[6.] According to the Ausregistry Whois Database at whois.ausregistry.com.au, the
registrar for the domain name <tollingcustomerombudsman.com.au> (the
Disputed Domain), the Respondent in this administrative proceeding is Tolling
Customer Ombudsman Pty Ltd, with a contact email of
Johnstone.maddison@gmail.com.

A copy of the printout of the WHOIS search conducted on 19 September 2016

is provided as Annex 1.

[7.] All information known to the Complainant regarding how to contact the
Respondent is as follows:

Registrant Contact:
Name:
Tolling Customer Ombudsman Pty Ltd
Registrant Contact: Maddison Johnstone
Email:

Johnstone.maddison@gmail.com

Technical Contact:
Name:

Maddison Johnstone

Email:

Johnstone.maddison@gmail.com

The Respondent was registered with ASIC on 2 September 2016 under ACN
614594142. The Registrant Contact and Technical Contact, Maddison
Johnstone, is a director of the Respondent (Co-Director). The Complainant is
aware from ASIC searches (attached as Annex 2) that the Respondent has
another director (Respondent Director), whose details are set out below. The
registered address and principal place of business of Respondent Company are
the same as the address of Respondent Director at ASIC. The Complainant has
received and responded to correspondence from the Respondent Director. The
Complainant recently attempted service by courier of a letter on the Respondent
and Respondent Director at the registered and business address recorded with
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ASIC. The courier was unable to serve the letter on the Respondent Director as
this address didnt correspond with the ASIC details and Respondent Director
could not be located at the premises at this street address. The Complainant then
attempted service at the Co-Directors address recorded with ASIC but CoDirector was not present at this address. Service of the letter by email was
successful and Complainant has since received a response from the Respondent
Director referencing a different company and residential address to that recorded
at ASIC. The Respondent and Respondent Directors addresses listed with
ASIC appear to be incorrect.
Respondent Director
Name:
Michael Fraser
Address: Unit 1403, 25 South Quay Drive
BIGGERA WATERS QLD 4216 Australia
Tel No:
Not listed in ASIC Search
Fax No: Not provided in ASIC Search
Email:
admin@tollingcustomerombudsman.com.au
III. The Domain Name and Registrar
(Rules, para. 3(b)(vi) and (vii))
[8.] This dispute concerns the Disputed Domain identified below:

<tollingcustomerombudsman.com.au>.

[9.] The registrar with which the Disputed Domain is registered is:

Name:

Web Address Registration

Address: Level 2, 8 Howlett St, North Perth, WA, 6006 Australia

Phone:

+61 8 9261 8220

Fax:

+61 2 8208 9995

Email:

help@webregistrar.com.au

IV. Jurisdictional Basis for the Administrative Proceeding

(Rules, paras. 3(a), 3(b)(xv)
[10.] This dispute is properly within the scope of the Policy and the Administrative
Panel has jurisdiction to decide the dispute. The registration agreement,
pursuant to which the domain name that is the subject of this Complaint is
registered, incorporates the Policy. A true and correct copy of the domain name

dispute policy that applies to the domain name in question is provided as Annex
3 to this Complaint.

V. Factual and Legal Grounds

(Policy, paras. 4(a), (b), (c); Rules, para. 3)

[11.] This Complaint is based on the following grounds:

A.

The domain name is identical or confusingly similar to a name, trademark

or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
1. The Complainant is the contractually appointed Tolling Customer
Ombudsman. The Complainant provides a free and independent alternative
dispute resolution process in relation to tolling issues for customers of
CityLink, EastLink, E-Way, go via, M5 South West Motorway, Roam and
Roam Express. The Complainant has been operating since 2008. The
Complainant is the recognised independent arbitrator in relation to tolling
complaints and has a proven complaints mechanism to provide these services
to customers, including through agreements with the operators of the above
tollways (including ConnectEast Group, Interlink Roads Pty Ltd and
Transurban Limited) which provide that the Complainants decision is
binding on the operators (Services).

2. Complaints are lodged via the Complainants website

<tollingombudsman.com.au> (the Complainants Website). The
Complainants Website has operated from that registered domain name since
2008. Wayback Machine extracts showing the Complainants Website
between July 2008 and the present are attached as Annex 4.

3. Through the Complainants Website, the Complainant has used the name and
mark TOLLING CUSTOMER OMBUDSMAN, and the mark
(collectively, the Trade Marks) since 2008 and has
common law rights in those marks and name.

4. The Complainant owns pending trade mark applications in Australia for the
Trade Marks. Attached hereto as Annex 5 are printouts from the Australian
Trade Mark Office website evidencing the following applications:
a. Trade Mark Application No. 1795768 filed on September 12, 2016
and covering services relating to dispute and conflict resolution
services; arbitration; mediation; alternative dispute resolution;
Investigation and resolution of complaints and disputes in the tolling
industry.

b. Trade Mark Application No. 1795772 filed on September 12, 2016

and covering services relating to dispute and conflict resolution
services; arbitration; mediation; alternative dispute resolution;
Investigation and resolution of complaints and disputes in the tolling
industry.
5. The Complainant is the first user and owner of the Trade Marks in Australia.

6. The Complainant has invested a significant amount of time and resources to

develop and promote the Trade Marks and Services under the Trade Marks.
As a result of this extensive use, the Complainant has acquired a valuable
and exclusive reputation and goodwill in the Trade Marks in Australia, in
relation to the Services.
7. Members of the Australian public who use toll roads associate the Trade
Marks with the Complainants Services provided under the Trade Marks.
8. It is well established that a domain name is nearly identical or confusingly
similar to a complainants mark when it fully incorporate[s] said mark:
Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty,
Ltd., WIPO Case No. D2001-0110 (holding <ansellcondoms.com> was
confusingly similar to Ansell Healthcare Products as, inter alia, the
incorporation of a Complainant's well-known trademark in the registered
domain name is considered sufficient to find the domain name confusingly
similar to the Complainant's trademark; Google. v Jan Jeltes WIPO Case
No. DAU2008-0012 (holding <googler.com.au> was confusingly similar to
GOOGLE as, inter alia, disputed domain name contains the Complainant's
registered trade mark in its entirety); Facebook, Inc. v. Callverse Pty Ltd
7

WIPO Case No. DAU2008-0007 (holding in many prior panel decisions

that when a domain name incorporates a distinctive mark in its entirety it is
confusingly similar to that mark); eBay Inc. v. ebayMoving / Izik Apo),
WIPO Case No. D2006-1307 (holding it is a well-established principle that
descriptive or generic additions to a trademark, and particularly those that
designate the goods or services with which the mark is used, do not avoid
confusing similarity of domain names and trademarks).
9. The Respondent is Tolling Customer Ombudsman Pty. Ltd. A company
extract for the Respondent including the details of the Respondent Director
are at Annex 6.
10. The Disputed Domain comprises the Complainants Trade Marks in their
entirety. The Respondent uses the Disputed Domain to resolve to a website
(Respondents Website) which offers identical or similar services to the
Complainants Services, in that the Respondent purports to allow visitors to
the Respondents Website to lodge complaints about tolling operators. An
extract of the home page of the Respondents Website as it appeared at 12
September 2016 is set out in Annex 7. In view of the similarity of the
Disputed Domain to the Trade Marks, and the Respondents offering of
similar services to the Services, the Disputed Domain is confusingly similar
to the Trade Marks, in which the Complainant has rights.

11. The Disputed Domain also includes the word Ombudsman. This suggests
that the Respondent, via the Respondents Website, will hear complaints on
behalf of customers of tolling operators and will adjudicate or otherwise act
as an intermediary in the associated disputes. As far as the Complainant is
aware, unlike the Complainant, the Respondent has no agreement with any
tolling providers to hear complaints on behalf of customers of tolling
operators and adjudicate or otherwise act as an intermediary in the associated
disputes, or offer similar services. On or about 13 September 2016, the
Respondents Website was updated to include a disclaimer, noting that:
We do not claim to be an Ombudsman and we do not investigate
complaints or make decisions. We are completely independent,
meaning we have no agreement with any level of Government or any
toll road operator.
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(Disclaimer).
A copy of the full text of the Disclaimer is set out in Annex 8.
12. Respondent has therefore admitted that it has no capacity to act as an
ombudsman, hear complaints on behalf of customers of tolling operators or
adjudicate or otherwise act as an intermediary in the associated disputes. The
Disputed Domain is therefore misleading or deceptive or likely to be
misleading or deceptive, including as to the role, purpose and powers of the
Respondent.
13. The use of the Disputed Domain by the Respondent damages the
Complainants reputation and Trade Marks and is misleading or deceptive
or likely to mislead or deceive consumers about the role, purpose and powers
of the Complainant. There is a real risk that visitors to the Disputed Domain
will be confused about who they are providing personal information to when
they lodge their complaints, as well as misled that their complaints will be
adjudicated by the industry approved ombudsman.

B.

The Respondent has no rights or legitimate interests in respect of the

domain name;
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix))

14. The Respondent lacks rights or legitimate interest in the Disputed Domain.
The Respondents Australian company was only recently registered on 2
September 2016. The Respondents Australian business names were
registered on 6 September 2016 and the Disputed Domain was registered on
or about 3 September 2016.

15. Before registering the Disputed Domain, the Respondent acknowledged the
prior trade mark rights of the Complainant in an article entitled Exposed:
Australian Toll road scandal involving Transurban and the Tolling
Customer Ombudsman, a copy of which is set out in Annex 9.
16. The Respondent Director also operates the website <thearbitrator.co>. On 20
March 2015, the Respondent published a post on this website titled Legal
threat from Michael Arnold? - Tolling 'Ombudsman' for Transurban Roads,
a copy of which is set out in Annex 10.
9

17. The above and other posts by the Respondent clearly demonstrate that the
Respondent had constructive, if not actual notice of the Complainants rights
and interests in the Trade Marks prior to registration of the Disputed
Domain. Respondents knowledge of the Complainants rights and interests
in the Trade Marks is also admitted in the Disclaimer and at Respondents
Website.
18. The registration of the Respondents Australian company and business
names, well after the Complainant commenced use of the Trade Marks, are
merely a faade to attempt to trade off the Complainants name and Trade
Marks or divert traffic and enquiries away from the Complainants Website.
19. On information and belief, the Respondent is not commonly known in any
way that refers to the Disputed Domain or by reference to any of the Trade
Marks. See Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy,
FA0406000290622 (Aug. 11, 2004) (finding that Respondent had not
established rights or legitimate interests in the disputed domain name where
there was no evidence that Respondent was commonly known by the domain
names); Citigroup Inc. v. Acme Mail, FA0402000241987 (Nat. Arb Forum
Apr. 12, 2004) (finding that respondent had not established rights or
legitimate interests in the domain name where [r]espondent has no proof
and there is no evidence in the record to suggest that [r]espondent is
commonly known by <citiban.com>; McClatchy Management Services,
Inc., v. Peter Carrington a/k/a Party Night Inc., FA0304000155902 (Nat.
Arb, Forum June 2, 2003) (finding that respondent failed to establish rights
to or legitimate interests in the disputed domain names where respondent
was not commonly known as Startribun or Stratribune).
20. Respondent is not a reseller or distributor of Complainants Services,
authorised or otherwise. Respondent therefore does not fall within the rule of
Oki Data Ams, Inc v ASD Inc (WIPO Decision D2001 0903). The Oki
Data principles have been applied to unauthorised resellers under the
auDRP, but only where the services rendered by the Respondent were
sufficiently analogous to reselling services and the Respondent offered
goods branded with the trade mark (see: GM Holden Ltd v. Publishing
Australia Pty Ltd WIPO Case No. DAU2011-0002 (7 March 2011);
Bayerische Motoren Werke Aktiengesellschaft v. Publishing Australia Pty
10

Ltd, ACN 120 531 982, Mr. Nicholas Crawshay WIPO Case No. DAU20110024 (24 November 2011). In the present case, Respondent does not offer
any Services sourced from Complainant via the Disputed Domain at all.
21. Even if the Respondent was genuinely using the Disputed Domain to offer
the Complainants Services under the TOLLING CUSTOMER
OMBUDSMAN mark (which it is not), the registration of the Disputed
Domain goes beyond any legitimate interest the Respondent might have in
the TOLLING CUSTOMER OMBUDSMAN marks in the nominative sense.
See The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,
WIPO Case No. D2000-0113 (the collateral trademark use necessary to
allow resell of complainants products is not enough to give respondent
proprietary rights in complainants trademarks, and certainly not enough to
confer the right to use these trademarks as domain names.)
22. The Complainant has not authorised or licensed the Respondent to register or
use the Disputed Domain. Unlicensed, unauthorized use of domains
incorporating a complainants trademark is strong evidence that the
underlying registrant (the Respondent) has no rights or legitimate interest in
the Disputed Domain Name: Time Warner Inc. v. MLM Capital LLC d/b/a
Domains, FA0709001076561 Nat. Arb. Forum Oct. 26, 2007.

23. Until around 13 September 2016, the Respondent solicited payments for
services provided through the Disputed Domain, via PayPal. This is reflected
in a copy of the terms of service set out by the Respondent on the Disputed
Domain at that time. A copy of these terms of service are attached as Annex
11.

24. Since around 13 September 2016, the Respondent has removed this request
for payment. This change appears to have been in response to a cease and
desist letter sent by the Complainant to the Respondent on 12 September
2016. Respondents use of the Disputed Domain cannot be characterised as
non-commercial or fair use.
25. The Disclaimer expressly acknowledges that the Respondent does not claim
to be an Ombudsman. As a result, the Disputed Domain cannot be
descriptive in nature, and has only been adopted by Respondent to take
11

advantage of the Complainants rights in the Trade Marks. In Google Inc. v

Jan Jeltes WIPO case no. DAU2008-0012 the Panelist stated that where a
Respondent argues that their use of a trade mark term is descriptive the
critical question is whether the Respondent registered the domain name
because of its trade mark value or its descriptive value. The prominent use
of the Trade Marks in the Disputed Domain and on the Respondents
Website is not descriptive in nature. The Registrants intention is clearly to
use the Disputed Domain to derive a benefit (including a direct commercial
benefit, via previously soliciting PayPal payments) associated with the
Complainants Trade Marks and not for any descriptive benefit. See also
Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (The
Panelfinds that the Respondent is not connected with the Complainant, but
uses the Complainant's mark with an intention to derive advantage from user
confusion. Such use by the Respondent is not legitimate use and does not
confer any rights in favor of the Respondent); Paris Hilton v. Deepak
Kumar, WIPO Case No. D2010-1364 (if the owner of the domain name in
question is using it with such a service in order to unfairly capitalise upon or
otherwise take advantage of a similarity with anothers mark then such use
would not provide the registrant with a right or legitimate interest in the
domain name).

26. Finally, as noted above in Section A paragraphs 11 to 12 , the Respondents

use of the word Ombudsman in the Disputed Domain misleads visitors to
the Respondents Website as to the nature and legitimacy of the services
offered by Respondent including that it will adjudicate complaints on behalf
of customers of tolling operators or otherwise act as an intermediary in the
associated disputes. As the Disclaimer acknowledges, unlike the
Complainant, the Respondent is not an Ombudsman and has no agreement
with any tolling providers to assist the tolling provider customers with such
complaints or provide similar services via the Disputed Domain. This is
further evidence the Respondent has no rights or legitimate interests in the
Disputed Domain.

27. Respondents Website also claims that Tolling Customer Ombudsman is

simply our business name and was registered because Complainant had not
done so, which is further evidence that Respondent is not entitled to use or
12

claim rights in the Trade Marks, does not operate as an ombudsman and has
no rights or legitimate interests in the Disputed Domain.

C.

The domain was registered or is subsequently being used in bad faith.

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix))

28. The Panel is not limited to the application of the circumstances of paragraph
4(b) of the Policy (Evidence of Registration and Use in Bad Faith) to deem
the Disputed Domain Name was registered and used in bad faith, as the
factors listed are not exhaustive: Wild West Domains, Inc v Neo Jung WIPO
Case No. D2004-0243.

29. As set out in Section B paragraph 15, the Respondent had actual knowledge
of the Complainants trade mark rights in the Disputed Domain in advance
of registering it. The Disputed Domain is identical to one of the
Complainants Trade Marks. This overwhelmingly supports the conclusion
that the Respondent registered the Disputed Domain in bad faith.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge, without more, evidences bad faith registration
within the meaning of Policy 4(a)(iii). See Compagnie Gnrale des
Establiseements Michelin v. Thomas Panagiotopoulos, Case No. DAU20130011 (WIPO May 31, 2013) (finding bad faith where respondent registered
<michelinstar.com.au> in light of the fact that the Michelin star rating
system was well known in the culinary world); LOreal / LOreal
Australia Pty v. Namewise Pty Ltd./ Nicholas Bolton, Case No. DAU20130009 (WIPO May 27, 2013) (finding bad faith where respondent registered
<lorealstore.com.au> containing the LOreal trademark where it had a wellknown reputation).
30. Further, the Respondent uses the Disputed Domain to operate the
Respondents Website from which it offers, or purports to offer, services that
directly compete with the Complainants Services offered through the
Complainants Website, i.e. in relation to complaints regarding tolls. The
Disputed Domain therefore diverts web traffic from the Complainants
Website to the Respondents Website resolving from the Disputed Domain,
and creates a likelihood of confusion with the Complainants Trade Marks as
to the source, sponsorship, affiliation, or endorsement of the Respondents
13

Website. Such conduct has repeatedly been found to be bad faith use: see
e.g. Busy Body, Inc. v. Fitness Outlet Inc WIPO Case No. D2000-0127,
Hewlett-Packard Co. v. Mazhar Ali, FA 353151 Nat. Arb. Forum Dec. 13,
2004 (holding that respondent [used HP in its domain name] to benefit
from the goodwill associated with complainants HP marks and us[ed] the
<hpdubai.com> domain name, in part, to provide products similar to those of
complainant. Respondents practice of diversion, motivated by commercial
gain, constitutes bad faith registration and use pursuant to Policy 4(b)(iv).)

31. Respondent and/or the Respondent Director have also sought to prevent
Complainant from reflecting the Trade Marks in corresponding trading and
pending domain names, and has engaged in a pattern of such conduct in
relation to other trade mark owners, including toll operators who have
agreements with the Complainant. Reverse whois searches for domain names
owned by the Respondent Director have identified a very large number of
domain names registered by the Respondent Director, which are set out in
Annex 12. The highlighted names in the annexure include trade marks
associated with toll operators who have agreements with the Complainant ,
including CITYLINK, EASTERN DISTRIBUTOR, WESTLINKM7,
EASTLINK, GOVIA, M5SOUTHWEST, and ROAM. This suggests
Respondent and the Respondent Director are seeking to frustrate the
commercial activities of the Complainant and its contracted toll operators via
the Disputed Domain (and other domain names) and that the Disputed
Domain has been used or registered in bad faith.
32. The Respondent Directors large portfolio of domain names as indicated in
paragraph 30 above includes (among others) the domain names
tollsupportorg.com.au and fighttollfees.info. The Respondent Director uses
those domain names to resolve to websites in relation to complaints
regarding toll operators, copies of which are at Annex 13. This is further
evidence the Disputed Domain has been used or registered in bad faith, as
the Respondent Director has already registered and is using viable alternative
domain names to criticise toll operators and toll issues generally. That is all
the more significant as the Disputed Domain includes the word
Ombudsman, and the Respondent has expressly claimed not to be an
Ombudsman in the Disclaimer, so can have no good faith justification for
using or registering the Disputed Domain.
14

33. On or about 13 September 2016, the Respondents Website was updated to

include the Disclaimer, noting that the Respondent does not claim to be an
Ombudsman and We do not purport to be or attempt to pass our reporting
service off as Michael Arnold (Lorimax Pty Ltd), who has an arrangement to
offer Tolling Ombudsman services to toll road operators and motorists. The
Disclaimer did not appear on the Respondents Website prior to 12
September 2016. Screenshots of the Respondents Website immediately
prior to and after the addition of the Disclaimer are attached as Annex 14. In
disclaiming any association with the Complainant, the Disclaimer admits
that visitors to the Respondents Website are likely to be confused by the
similarity of the Disputed Domain to the Complainants Trade Marks.
Otherwise, the Disclaimer would not be necessary. The Disclaimer is
therefore further evidence that the Disputed Domain has been used or
registered in bad faith.
34. In any case, the existence of the Disclaimer does not cure the Respondents
bad faith as outlined above, as:

a)

The Disclaimer is not labelled, is in the same font size as other text on
the page and is subsidiary in prominence to other branding features that
incorporate the Complainants Trade Mark which reinforce connection
with Complainant and Complainants Website and overwhelm any
impact of the Disclaimer and would not be noticeable to consumers
navigating the site using the top banner navigation bar: see BroanNutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920;

b)

Visitors to the Respondents Website will not observe the Disclaimer

until after they visit the Respondents Website, by which time they will
already be confused: see Arthur Guinness Son & Co. (Dublin) Limited
v. Dejan Macesic, WIPO Case No. D2000-1698 (The respondent
points to the disclaimers on his Website as evidence of his "lack of
intent to divert consumers". But by the time consumers get to read the
disclaimers, the domain name has already diverted them from the
complainant). The Disclaimer was not included on the Respondents
Website until after receipt of the Complainants cease and desist letter
as noted above. The fact that the Respondent, subsequent to registration

15

of the Disputed Domain, added a small, barely discernible disclaimer to

the Respondents Website is immaterial (Arthur Guinness Son & Co.
(Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698;
Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,
(WIPO Case D2000-0869, September 25, 2000).

VI. Remedies Requested

(Rules, para. 3(b)(x))
[12.] In accordance with Paragraph 4(i) of the Policy, for the reasons described in
Section V above, the Complainant requests the Administrative Panel appointed
in this administrative proceeding issue a decision that the Disputed Domain be
transferred to Lorimax Pty Ltd.
VII. Administrative Panel
(Rules, para. 3(b)(iv))
[13.] The Complainant elects to have the dispute decided by a single member
Administrative Panel.

VIII. Mutual Jurisdiction

(Rules, para. 3(b)(xiii))

[14.] In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant will
submit, with respect to any challenges that may be made by the Respondent to a
decision by the Administrative Panel to transfer or cancel the domain name that
is the subject of this Complaint, to the jurisdiction of the courts at the location of
the principal office of the concerned registrar.
IX. Other Legal Proceedings
(Rules, para. 3(b)(xi))
[15.] There are no other legal proceedings that have been commenced or terminated in
connection with or relating to the domain name that is the subject of the
Complaint.

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X. Communications
(Rules, paras. 2(b), 3(b)(xii); Supplemental Rules, paras. 3, 4)
[16.] A copy of this Complaint, together with the cover sheet as prescribed by the
Supplemental Rules, has been sent or transmitted to the Respondent on 19
September 2016 by the email listed in the whois record for the domain,
Johnstone.maddison@gmail.com, as well as the email on the Respondents
Website, admin@tollingcustomerombudsman.com.au.

[17.]

A copy of this Complaint has been sent or transmitted to the concerned

registrar on19 September 2016 by email to help@webregistrar.com.au.

[18.] This Complaint is submitted to the Center in electronic form, including annexes,
in the appropriate format.
XI. Payment
(Rules, para. 19; Supplemental Rules, Annex D)
[19.] As required by the Rules and Supplemental Rules, payment in the amount of
Australian Dollars 2000 has been made by wire transfer to the Center on 19
September 2016.
XII. Certification
(Rules, para. 3(b)(xiv))
[20.] The Complainant agrees that its claims and remedies concerning the registration
of the domain name, the dispute, or the disputes resolution shall be solely
against the domain name holder and waives all such claims and remedies against
(a) the WIPO Arbitration and Mediation Center and Panellists, except in the case
of deliberate wrongdoing, (b) the concerned registrar, (c) the registry
administrator, and (d) auDA, as well as their directors, officers, employees, and
agents.

[21.] The Complainant certifies that the information contained in this Complaint is to
the best of the Complainants knowledge complete and accurate, that this
Complaint is not being presented for any improper purpose, such as to harass,
and that the assertions in this Complaint are warranted under the Rules and
under applicable law, as it now exists or as it may be extended by a good-faith
and reasonable argument.
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Respectfully submitted,

Lisa Lennon
Gilbert + Tobin
Telephone: (02) 9263 4190
Facsimile: (02) 9263 4111
llennon@gtlaw.com.au
Date: 19 September 2016

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