The Complainant is National Australia Bank Limited, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Joshua Hoa That Ton, Australia, represented by Nicholas Weston Lawyers & Trade Marks Attorneys, Australia. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to Synergy Wholesale Pty Ltd and Domain Directors Pty Ltd. a request for registrar verification in connection with the disputed domain names. On September 2, 2020, the Center this time transmitted by email to Domain Directors Pty Ltd. the same request in connection with the disputed domain names. On August 14, 2020, and September 4, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On September 7, 2020, the Center requested from the Complainant clarification regarding the mutual jurisdiction. On September 8, 2020, the Complainant submitted its clarification as an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 on September 9, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2020. On September 22, 2020, the Center received an email communication from the Respondent inquiring information on filing a response. Further to the latter communication, the Response was filed with the Center on September 27, 2020, electing a three-member panel. On September 29, 2020, the Complainant sent an email communication to the Center informing of two typographical errors in the Complaint. The Center appointed Debrett G. Lyons, the Hon Neil Brown Q.C. and Andrew F. Christie as panelists in this matter on October 12, 2020. 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. The case file contained information about entities associated with the Complainant that was not previously known to the Panel. Following transmission of the case file to the Panel, each member of the Panel submitted a revised Statement of Acceptance and Declaration of Impartiality and Independence, which the Center provided to both parties. Both parties responded that they were comfortable with the composition of the Panel. 4. Factual Background The Complainant is a founding participant in and contributor to the Australian Business Growth Fund (the “Fund”). Other participants in and contributors to the Fund are the Commonwealth of Australia as represented by the Department of the Treasury, Commonwealth Bank of Australia, Westpac Banking Corporation, Australia and New Zealand Banking Group, HSBC Bank Australia Limited, and Macquarie Bank Limited (which, together with the Complainant, are referred to herein jointly as “the Consortium”). The Consortium has proposed to establish a company to operate the Fund. The Fund is a Commonwealth Government financial scheme designed to provide funding to and encourage investment in small and medium-sized Australian businesses. Discussions regarding the establishment of the Fund began in 2018, between the Commonwealth Government, the Commonwealth Treasurer, the Australian Prudential Regulation Authority, and several financial institutions (including members of the Consortium). The Fund was first publicly announced by the Treasurer in a media release dated November 13, 2018. Legislation for the establishment of the Fund was first introduced to the House of Representatives in 2019. Legislation that ultimately led to the establishment of the Fund was introduced and passed both the House of Representatives and the Senate on March 23, 2020, and received Royal Assent on March 24, 2020. The Complainant, on behalf of the Consortium, has filed Australian trademark application number 2051829 for the word trademark AUSTRALIAN BUSINESS GROWTH FUND (filed November 19, 2019), and Australian trademark application number 2110661 for the work trademark ABGF (filed August 11, 2020). As of the date of this decision, these applications were pending. The Complainant, on behalf of the Consortium, has registered the business names “Australian Business Growth Fund” (registered March 12, 2020) and “Business Growth Fund Australia” (registered March 12, 2020). According to the Australian business number (“ABN”) associated with the registrant of the disputed domain names, the Respondent is an individual, and in particular a sole trader not registered for goods and services tax (“GST”). There is a discrepancy of one day in the information supplied by .au Domain Administration Limited (“auDA”) and by the registrar Synergy Wholesale regarding the creation date (i.e., the date of first registration) of the disputed domain name As of the date of this decision, each of the disputed domain names resolves to a website at “www.p2p.com.au”. The top of the home page of this website states “We may be interested in a Joint Venture or selling our Company Assets. Find out more”. The website lists a number of domain names, including the disputed domain names On July 16, 2020, the Complainant’s representative sent an email to the Respondent and P2P Australia Pty Ltd (“P2P”) offering to purchase the disputed domain names and one other domain name for the sum of AUD 2,500. On July 23, 2020, P2P replied on behalf of it and the Respondent, rejecting the offer and inviting a higher one. The Complainant’s representative sent an email to P2P, offering to purchase the disputed domain names and one other domain name for the sum of AUD 5,000. Neither the Respondent nor P2P replied to this further offer. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights because: (i) the Fund has received widespread media publicity and both the name “Australian Business Growth Fund” and its natural initialism “ABGF” have become a well-known expression to refer to the scheme, with the result that the Complainant has rights in the trademark AUSTRALIAN BUSINESS GROWTH FUND; (ii) the disputed domain name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) the disputed domain names currently resolve to a website at “www.p2p.com.au”, the registrant of the domain name for which is Webguide Solutions Pty Ltd, a company of which the Respondent is neither a director nor a shareholder; (ii) the website to which the disputed domain names resolve purports to be a website of P2P, of which the Respondent is neither a director nor a shareholder; (iii) the website to which the disputed domain names resolve does not offer or provide any services related to the Fund but instead advertises a large number of domain names for sale, rent or transfer; and (iv) at no time have the disputed domain names been used in connection with an offering of goods or services other than the offering of domain names that have been acquired for the purpose of sale, rent or transfer, which is not a legitimate right or interest in the disputed domain names within the meaning of paragraph 4(c) of the Policy. The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Respondent does not provide services that are connected with or associated with the Fund or that could reasonably or conceivably be described by reference to the words “Australian Business Growth Fund”, has no licence or other authorisation to use the name “Australian Business Growth Fund”, and is not making a legitimate noncommercial or fair use of the disputed domain names; (ii) the Respondent registered the disputed domain name The Respondent’s Response grossly exceeded the word limit imposed by rule 11(b) of the Supplementary Rules, was repetitive and was non-responsive to the Policy in essential matters. The following represents the Panel’s best understanding of what the Respondent was seeking to submit. In relation to whether the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent asserted that: (i) the Complainant has not produced sufficient evidence to demonstrate that it has rights in the name “Australian Business Growth Fund” or its acronym, or that it has any registered or common law trademark rights in the trademark AUSTRALIAN BUSINESS GROWTH FUND or its acronym; and (ii) the Complainant failed to disclose that it made earlier attempts, through the entity Corporation Service Company, to purchase the disputed domain names from the Respondent. In relation to whether the Respondent has rights or legitimate interests in respect of the disputed domain names, the Respondent contends that: (i) the Respondent registered the disputed domain names recently and is under no obligation to commercialize them immediately; (ii) the Respondent is not a domainer; (iii) the Respondent has “a complex business model that entails commercializing synergistic digital assets in joint ventures with multiple third parties”, which takes time and involves “development of the ecosystem of businesses involved in the sale of blockchain ‘tokens’ with features comparable to classic securities that are fully regulated and accepted within at least one jurisdiction as an alternative to classic debt or equity funding”; (iii) where a domain name is comprised of common dictionary words, the first person to register it in good faith is entitled to it regardless of any pre-existing trademark rights, except where the acquisition is for the purposes of selling, renting or otherwise transferring it to another; (iv) the Respondent is using the disputed domain names in connection with its business of investing in generic domain names; (v) the Respondent is an individual, and the inference that there is some impropriety in him not being a director or shareholder of either Webguide Solutions Pty Ltd or P2P is groundless; (vi) at the time of registration of the disputed domain names, the Respondent conducted detailed desktop online searches to ensure there were no third party rights registered rights in relation to them; and (vii) the registration of the disputed domain names was in line with the Respondent’s lawful business model of acquiring generic domain names for “investment, development, licensing/leasing, and divestment only as part of an STOs underlying asset base”. In relation to whether the disputed domain names have been registered or are being used in bad faith, the Respondent contends that: (i) there are no rights in the words owned by the third party who actually used them, being the Australian Government; (ii) the Complainant’s trademark applications and business name registrations were made after the Respondent registered the disputed domain names; (iii) the Respondent registered the disputed domain names “to indicate the intended purpose of its STO business”, having first established there were no prior rights in them; (iv) there is no evidence that the Respondent pretended he was the Complainant, tried to confuse Internet users or engaged in any other bad faith activities; (v) the evidence does not show that the Respondent was interested in selling the disputed domain names; and (vi) as the lawful registrant of the disputed domain names, the Respondent is entitled to transfer rights to them for whatever price he deems appropriate. The Respondent contends that the Complainant has engaged in reverse domain name hijacking because: (i) the Complainant is represented by Counsel who, even on a rudimentary examination of the Policy, should have appreciated that the Complaint could not succeed because the Respondent acquired the disputed domain names 14-16 months prior to any use by the Complainant of the generic words or acronyms of which they consist; (ii) the Complainant knew it had no rights in the trademarks and names upon which it relied; and (iii) the Complaint lacks candor and omitted numerous material documents and correspondence which would have shone a light on the Complainant’s previous attempts to “wrongfully seize” the disputed domain names, thereby breaching its certification of submitting a complete and accurate Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar The first requirement that a complainant must satisfy to be entitled to a remedy under the Policy is that the domain name in issue is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights. The Complainant’s trademark applications are currently under examination. As explained in paragraph 1.1C of the auDA Overview of Panel Views on Selected auDRP Questions First Edition (“auDA auDRP Overview 1.0”), an application (even an accepted application) for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. For the complainant to satisfy that requirement, the trademark that is the subject of the application must either satisfy the test for being a common law or unregistered trademark or constitute a “name” within Note 1 of the Policy. Paragraph 1.7 of the auDA auDRP Overview 1.0 explains that, to be a common law or unregistered trademark, a mark must have acquired secondary meaning and become a distinctive identifier associated with the complainant or its goods or services. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the name, surveys of consumer recognition of the name, and media references to the name. Not surprisingly given that it appears the Complainant has not used either of the marks that are the subject of its pending trademark applications, the Complaint provided no evidence on any of these matters except the last. The Panel has reviewed the media references supplied by the Complainant. The Panel considers that the various mentions of “Australian Business Growth Fund”, and the one mention of “ABGF”, are descriptive in nature, and do not establish that either term has become a distinctive identifier associated with the Complainant. It follows that neither AUSTRALIAN BUSINESS GROWTH FUND nor ABGF is a common law trademark in which the Complainant has rights. Note 1 of the Policy provides that a name in which the complainant has rights includes a business name registered with the relevant Australian government authority. The Complainant asserted its registration of the business name “Australian Business Growth Fund” but did not do so in respect of its registration of the business name “Business Growth Fund Australia”; rather, it was the Respondent who disclosed the existence of this registration. Thus, the Complainant has rights in two names for the purposes of paragraph 4(a)(i) of the Policy – being its registered business names “Australian Business Growth Fund” and “Business Growth Fund Australia”. The position with respect to the disputed domain names The position with respect to the disputed domain name The position with respect to the disputed domain names It follows that the Complaint cannot succeed in relation to the disputed domain names Each of the disputed domain names resolves to a website at “www.p2p.com.au”, which is stated to be the website of P2P and which is headed with the text: “We may be interested in a Joint Venture or selling our Company Assets. Find out more.” The “About Us” section of the website states, relevantly: “P2P manages assets in the form of premium .com and .com.au domain names together with minority share holdings in several companies. Our assets have been acquired in order to dominate the peer to peer finance, money transfer, real estate, STOs, tokenized securities, tokenization and tourism industry.” Under the heading “Core Assets”, a number of domain names are listed, including the disputed domain name The Respondent argues that he has “an inherent legitimate interest” in each of the disputed domain names because “it is generic”, and further that he is using each of them in connection with his business, being “the investment in generic domain names”. Neither of these arguments has substance. In respect of the first argument, the Panel notes, as explained in paragraph 2.2 of the auDA auDRP Overview 1.0, that a respondent cannot rely solely on the fact that the domain name is composed of ordinary language words to ground a claim to rights or legitimate interests in it. If the complainant makes a prima facie case that the respondent has no rights or legitimate interests in the domain name, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the auDRP, or any other basis for rights or legitimate interests, then the respondent will lack a legitimate interest in the domain name even if it is comprised of a dictionary, descriptive or generic word or phrase. In this case, the Respondent has not shown any of the paragraph 4(c) circumstances. The only use to which the disputed domain names have been put is to be listed as assets able to be acquired, through the so-called joint venture projects. The Respondent sought to explain his activities as “a complex business model that entails commercialising synergistic digital assets in joint ventures with multiple parties … which involves development of the ecosystem of businesses involved in the sale of blockchain 'tokens’ with features comparable to classic securities that are fully regulated and accepted within at least one jurisdiction as an alternative to classic debt or equity funding”. The Respondent submitted what it claimed was evidence of this activity, which consisted of an email enquiry by P2P to purchase two “white label” decentralized trading platforms from an entity called Ambisafe, various messaging communications between P2P and an entity called Emurgo setting up a Skype call, and an undated document from P2P addressed to Emurgo listing P2P’s “multimillion-dollar Premium domain portfolios”. Curiously, none of these activities are activities of the Respondent. They are the activities of P2P, not the Respondent. The Respondent has acknowledged that he is not a director or shareholder of P2P, but has provided no explanation of how, if at all, he is connected with P2P. Nevertheless, the implication of the form and content of the Response is that the Respondent considers P2P to be his alter ego. Even assuming that P2P is his alter ego, the Respondent has not established that he has rights or legitimate interests in the disputed domain names. The Panel considers that P2P’s so-called joint venture projects model is merely a “fig leaf” attempt to provide cover for what is, in fact, an operation of registering domain names for subsequent disposal at a profit. That is not a bona fide use of the disputed domain names of the type recognised by the Policy as demonstrating rights or legitimate interests in a domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names The disputed domain name The fact that the motivation for registration of the disputed domain names was the announcement of the introduction of the Fund is strongly suggestive that the Respondent’s intention when registering them was to later transfer them to someone else for profit. Given that the Respondent is an individual, and that P2P is a private company, it is inconceivable that the Respondent had expectations that he, or P2P, would be a member of the consortium established to run the Fund or be otherwise able to use them in good faith. The subsequent actions of P2P confirm what was the Respondent’s intentions for the disputed domain names. P2P expressly identified These facts are sufficient to satisfy the Panel that the Respondent registered the disputed domain names Accordingly, the Panel finds that the Respondent registered and has used the disputed domain names Paragraph 15(e) of the Rules provides that, if the Panel finds that the Complaint “was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder”, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. As explained in section 6.A above, an application for trademark registration in Australia that has not proceeded to grant does not, of itself, satisfy the requirement of the complainant having rights for the purposes of paragraph 4(a)(i) of the Policy. Accordingly, the Complainant’s pending trademark applications for AUSTRALIAN BUSINESS GROWTH FUND and ABGF cannot provide it with a basis for bringing the Complaint. The Complainant asserted that, by virtue of the “widespread media publicity” received by the Fund, both the name “Australian Business Growth Fund” and its initialism “ABGF” have become a well-known expression to refer to the Fund. The Complainant proceeded to refer to ABGF as a trademark in which it has rights, and asserted that The question that arises for consideration is whether the Complainant acted in bad faith in bringing the Complaint in respect of Points (i) and (ii) are positions established through consensus by panels in past decisions under the Policy, and set out in the auDA auDRP Overview 1.0. There was nothing in the Complaint that sought to explain why these established principles should not apply in this particular case. Point (iii) is a logical consequence of points (i) and (ii). Point (iv) is a conclusion drawn from simple and uncontested facts. The Complaint did not contain any reasoning to support the assertion of confusingly similarity between the two disputed domain names and the business names. While the Panel finds it difficult to understand how the Complainant could have thought there was a reasonable basis for the Complaint in respect of the disputed domain names For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel: (i) orders that the domain names Andrew F. Christie The Hon Neil Brown Q.C., Debrett G. Lyons
Presiding Panelist
Panelist
Panelist
Date: November 9, 2020
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