The Complainant is AGL Energy Limited of Melbourne, Australia, represented by Banki Haddock Fiora, Australia.
The Respondent is James M. van Johns of Erie, Pennsylvania, represented by ESQ PC, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent out a Notification of Complaint deficiency to the Complainant by email on October 25, 2013, informing the Complainant that the registrant name and contact information as verified by the Registrar differed from the name and contact information of the Respondent named in the Complaint. The Complainant filed an amended Complaint on October 30, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response November 24, 2013. The Response was filed with the Center November 24, 2013.
The Center appointed Christopher J. Pibus, Andrew F. Christie and Diane Cabell as panelists in this matter on January 8, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is an Australian company which generates and distributes energy and gas, and operates other businesses related energy production and maintenance. The Complainant has been operating since 1837 under the name The Australian Gas Lighting Company. In 2006, The Australian Gas Lighting Company merged with Alinta Limited to form AGL Energy Limited. The Complainant’s business generated earnings of over $1 billion (AUD) in the last financial year. The Complainant is the owner of the trademark AGL, including:
Australian Registration No. 785307 for AGL filed February 11, 1999
Australian Registration No. 285852 for AGL & Design filed March 18, 1975
Australian Registration No. 285853 for AGL & Design filed March 18, 1975
The Complainant also owns 14 New Zealand trademark registrations incorporating the mark AGL and 44 domain names incorporating the mark AGL, including and .
The disputed domain name was first registered on or about September 2, 1999 in the name of the Respondent James M. van Johns. The disputed domain name was subsequently registered in the name of various other parties, with the Respondent re-acquiring the disputed domain name on August 1, 2011 (according to an admission contained in the Response). The domain name has historically reverted to a parking site providing links to websites of third parties which are unrelated to the energy industry, but the current version of the parking site displays links to websites, most or all of which appear to be related to the Complainant’s field of business. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns Australian registrations for the trademark AGL (Registration Nos. 785307; 285852; and 285853) filed between 1975 and 1999. The Complainant contends that it has used the trademark AGL as an abbreviation throughout its existence, and in particular since 2006 when it merged with Alinta Limited to form AGL Energy Limited.
The Complainant contends that the disputed domain name is identical to its AGL trademark. Rights or Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not used the disputed domain name in association with a bona fide offering of goods or services, since it reverts to a website that provides links to other websites of third parties for the purpose of monetary gain. The Respondent is not commonly known by the term “agl” and is not a licensee of the Complainant. Furthermore, the Complainant has not authorized the Respondent to use the AGL trademark in any way. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because the Respondent must have been aware of the Complainant’s trademark rights when it acquired the disputed domain name, particularly when it renewed the disputed domain name on September 1, 2013. The Respondent appears to be holding the disputed domain name for the purpose of selling, renting or otherwise transferring the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs, or for the generation of money through a click through scheme. B. Respondent
The Respondent submits that the Complainant does not have exclusive rights to the 3 letter combination “agl”, relying on evidence that many third parties identify themselves by “agl”, and use domain names that incorporate those three letters, for example: “”; “”; “”; and “”, without any knowledge of Complainant’s rights. The Respondent claims to have registered the disputed domain name over 14 years ago, along with many other 3 letter domain names, such as ; ; ; and . The Respondent further submits that the use of the disputed domain name in association with a website that provides links to websites of third parties can be evidence of a bona fide use under the Policy. Accordingly, the Respondent has a right and legitimate interest in the disputed domain name. Furthermore, the Respondent was not aware of the Complainant’s trademark AGL when it registered the disputed domain name, and therefore was neither targeting nor trading on the goodwill of the Complainant. The Respondent registered a series of 3 letter domain names in good faith, and has owned and operated a website in association with the disputed domain name for 14 years. The Complaint ought to be dismissed on the basis of laches, and because Complainant has failed to establish bad faith and the absence of rights or legitimate interests. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark AGL by virtue of its Australian trademark Registration No. 785307.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark AGL. The addition of a url designation does not serve to distinguish the disputed domain name from the Complainant’s registered trademark AGL.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has raised substantive arguments to the effect that trademark rights in 3 letter combinations such as “agl” are inherently weak and subject to a narrow ambit of protection. On the factual record set out in this case, the Respondent has shown that there are many users of the “agl” combination for a wide range of businesses across various countries. There is no reason to disbelieve Respondent John M. van John’s avowed ignorance of the Complainant’s trademark rights in AGL at the time of his initial registration of the disputed domain name, particularly in light of the following factors:
(1) the Australian focus for the Complainant’s business activities;
(2) the Respondent’s U.S. residence;
(3) the Respondent’s business model which involves the registration of hundreds of 3-letter domain names on a large commercial scale.
Panelists Pibus and Cabell have considered the questions raised by the Complainant with respect to the Respondent’s recent website activity involving links to energy-related sites. In this regard, the evidence of Mr. Van Johns is noted, to the effect that
(1) over the prior 14 years, no such energy-related links were used; and
(2) all links over the history of the Respondent’s website were auto-generated in any event.
Accordingly, panelists Pibus and Cabell consider that the evidence supports the conclusion that the Respondent has not targeted the Complainant’s trademark rights or reputation in adopting the domain name, but rather has followed its own business model of registering 3 letter combinations, one of which happened to coincide with the Complainant’s trademark. In all the circumstances, panelists Pibus and Cabell conclude that the Complainant has not established the absence of rights or legitimate interests on the part of the Respondent.
Panelist Christie considers that the question of whether or not the Respondent targeted the Complainant’s trademark rights or reputation when registering the disputed domain name is simply not relevant to the issue of whether the Respondent has rights or legitimate interests in the disputed domain name (although it is relevant to the question of whether Respondent has acted in bad faith). Panelist Christie accepts that the Respondent has adopted a business model of registering three-letter combinations, but considers that this alone does not give rise to rights or legitimate interests in the disputed domain name. That fact that a domain is commercially attractive of itself is insufficient to establish rights or legitimate interests in it. If it were otherwise, then the mere fact of registration of a domain name would give rise to rights or legitimate interests in the domain name because it must be assumed that every registered domain name is commercially attractive to the registrant for some reason.
Panelist Christie considers that the Respondent must show something other than mere commercial attractiveness of the disputed domain name to establish rights or legitimate interests in it. In particular, the Respondent must establish some bona fide connection between its activities (actual or proposed) and the disputed domain name, such as those specified in paragraph 4(c) of the Policy – that is, such as by using the disputed domain name in connection with a bona fide offering of goods or services, being commonly known by the disputed domain name, or making a legitimate non-commercial or fair use of the disputed domain name. The Respondent has not and, in Panelist Christie’s view, cannot in this case make out any such connection between the disputed domain name and its business activity – which is to capitalize on the value of the Complainant’s trademark by using the disputed domain name to obtain pay-per-click revenue by linking to third party websites most or all of which are related to the Complainant’s field of business, in the most recent version of the Respondent’s website.
Panelist Christie adopts the consensus view set out in paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) on the issue of whether parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name: “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.” Accordingly, Panelist Christie finds that the Respondent has not established that it has rights or legitimate interests in the disputed domain name.
In reaching their conclusions, all members of the Panel wish to make it clear that they have not accepted the Respondent’s argument with respect to laches. Although significant time has passed since the original registration of the disputed domain name in 1999, its ownership has changed hands four times, according to the Respondent’s own admission. The changing of identity of the Registrant (including James M. Van Johns, Damian Macafee, John Smith) over the course of the past 15 years, renders problematic any argument that the 15 year period ought to accrue to the benefit of any one of the owners, and particularly the last one in the sequence, Respondent James M. Van Johns, who, according to his Response, acquired the disputed domain name on August 1, 2011.
Therefore, a majority of the Panel (panelists Pibus and Cabell) finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In view of the findings under section 6.B., the Panel will not make a finding with respect to bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Andrew F. Christie
Panelist
Diane Cabell
Panelist
Date: February 21, 2014
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