World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harness Racing Australia v. Acronym Wiki Pty Ltd

Case No. DAU2011-0007

1. The Parties

The Complainant is Harness Racing Australia of Victoria, Australia represented by Pointon Partners, Australia.

The Respondent is Acronym Wiki Pty Ltd of Sydney, Australia.

2. The Domain Name and Registrar

The disputed domain name <hra.com.au> is registered with DOMAIN8 PTY LTD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2011. On February 21, 2011, the Center transmitted by email to DOMAIN8 PTY LTD a request for registrar verification in connection with the disputed domain name. On February 22, 2011, DOMAIN8 PTY LTD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), 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 April 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.

The Center appointed John Swinson as the sole panelist in this matter on April 29, 2011. The Panel finds that it was properly constituted. 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 Harness Racing Australia, the national peak body for the harness racing industry in Australia. Specifically, the Complainant provides a national forum for harness racing in Australia and policy development between all state harness racing controlling bodies and principal clubs on all harness racing matters. The Complainant owns Australian Registered Trade Mark Number 1297358 for the HRA HARNESS RACING Logo. The Trade Mark was registered on May 5, 2009.

The Respondent is Acronym Wiki Pty Ltd. The disputed domain name was registered on March 22, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

The Complainant is the national harness racing body in Australia. The Complainant currently uses the domain name <harness.org.au> extensively to communicate publicly. The Complainant wishes to secure the disputed domain name and has made numerous attempts to do so.

The disputed domain name was initially registered by Harris Robinson & Associates Pty Ltd. This company was deregistered on March 15, 2008 and as a result the disputed domain name became inactive. The Complainant had requested that the initial owner transfer the disputed domain name to the Complainant; however, a response was never received.

The Complainant then approached the domain name’s registrar to deregister the disputed domain name, which it eventually did. Despite the Complainant’s best efforts to secure the disputed domain name, the disputed domain name was secured by the Respondent.

Identical or Confusingly Similar

The Complainant is the owner of Australian Registered Trade Mark Number 1297358 for the HRA HARNESS RACING AUSTRALIA logo which prominently features the HRA acronym.

The disputed domain name is also identical to the acronym of the Complainant’s name which the Complainant uses extensively. Due to that extensive use, the Complainant is commonly referred to by the initials of the name Harness Racing Australia.

The Complainant meets the eligibility criteria in the current auDA Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs, Policy No. 2008-06 for an applicant wanting to secure a domain name.

The addition of the general country code “.com.au” is of no legal significance (see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001).

Rights or Legitimate Interests

The Complainant has a right to the disputed domain name and to prevent others from registering the disputed domain name.

The Respondent has not shown any bona fide use of the disputed domain name, nor has it demonstrated any intention to use the disputed domain name.

The disputed domain name bears no resemblance to the Respondent’s name.

The Respondent is not authorized by the Complainant to use its trade mark in the disputed domain name.

The Respondent is not commonly known by the disputed domain name and there is no connection between the disputed domain name and the Respondent.

The Respondent has not acquired any trade mark or service mark rights in relation to the disputed domain name.

The Respondent has not made any legitimate use of the disputed domain name. There has been no indication that the Respondent intends on using the disputed domain name for either commercial or noncommercial purposes.

The Respondent is not the registered owner of a trade mark for the HRA acronym, nor has the Respondent secured statutory, common law or other rights of the HRA acronym.

Registered or Subsequently Used in Bad Faith

The Respondent is in the business of registering domain names for no purpose or use.

The disputed domain name is an acronym that corresponds to a number of businesses. The disputed domain name was previously registered to Harris Robinson & Associates. The acronym, HRA, also corresponds with Harness Racing Australia and another organization which uses the HRA acronym, the Historic Rally Association.

The Respondent’s name suggests that it acquires acronyms. In this instance it has acquired a popular and commonly used acronym domain name which could be used by other entities with a real connection to the acronym.

The Respondent has registered the disputed domain name in order to prevent the Complainant and other entities and/or persons whose name can be abbreviated to the HRA acronym from using that acronym in a corresponding domain name because it carries on no business that can be connected to the HRA acronym and does not operate a website at the disputed domain name.

The Respondent has not used the disputed domain name since registration and there is no indication that the Respondent is planning to use the disputed domain name in the near future.

In addition to the Complainant’s incorporated association name, the Complainant is the registered owner of the Trade Mark which contains HRA and its use as an acronym. The Respondent is preventing the Complainant from registering a domain name for which the Complainant is a more appropriate owner and to which it has better rights than the Respondent.

The Respondent registered the disputed domain name for the purpose of disrupting the business and activities of those persons/businesses using the HRA acronym and in particular, the Complainant’s business.

The Complainant’s legal representative sent correspondence to the Respondent on August 16, 2010 demanding that the disputed domain name be transferred to the Complainant. The Respondent did not respond to this letter and this is indicative of bad faith.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(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 or subsequently used in bad faith.

The onus of proving these elements is on the Complainant.

The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case.

A. Procedural Issues

The Respondent did not file a response. This does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no response having been filed.

B. Identical or Confusingly Similar

The Complainant owns an Australian Registered Trade Mark for a stylised logo that includes HRA HARNESS RACING AUSTRALIA. The letters HRA are the dominant feature of this trade mark.

Further, the Complainant’s name is Harness Racing Australia. However, for the Complainant to have any rights in relation to its name, it must be the company, business or other legal or trading name as registered with the relevant Australian government authority. Harness Racing Australia and not HRA is therefore the only name in which the Complainant has rights for the purpose of the Policy.

The Complainant asserts that it is often referred to as HRA.

The Complainant also appears to suggest that it has acquired common law trade mark rights in relation to “HRA” given its extensive use and the fact that it is often referred to as HRA. However, in order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services (see generally, Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123). Here, the Complainant has submitted no evidence in support of common law rights and has merely asserted such rights. This is insufficient and as such, the Panel does not find that the Complainant has common law trade mark rights in HRA.

In any event, the Complainant has registered trade mark rights. Therefore, in order for the Complainant to succeed on this point it must show that the disputed domain name is identical or confusingly similar to the Complainant’s mark.

Here, the Complainant’s mark contains the term “HRA”. As stated above, this is the dominant feature of the trade mark. The disputed domain name is <hra.com.au>. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. The “.com.au” suffix does not render the disputed domain name sufficiently different from the Complainant’s mark.

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

Paragraph 4(b) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in a disputed domain name (refer to Section 5.A, above). Given the Respondent did not file a response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.

Specifically, the Respondent has not demonstrated a bona fide use or, intention to use, the disputed domain name or name corresponding to the disputed domain name in connection with an offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. This is evidenced by the fact that the disputed domain name is not being used and no website resolves from the disputed domain name. Further, it appears that the Respondent is not commonly known by the disputed domain name and has no trade mark or service mark rights in the disputed domain name. The Complainant has not authorized the Respondent to use its trade mark in the disputed domain name.

D. Registered or Subsequently Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered or subsequently used in bad faith. Here, the circumstances suggest that the Respondent registered the disputed domain name in bad faith.

The acronym, HRA is not a generic acronym with a common meaning or association. It appears to only be used in relation to abbreviations of entities’ or persons’ names. As such, in this Panel’s view, the only likely purpose for which the Respondent registered the disputed domain name, as inferred from the surrounding circumstances, was to profit at the expense of those with legitimate interests in respect of the disputed domain name.

Therefore, the Panel finds that the circumstances indicate that the Respondent registered the disputed domain name with the likely knowledge that HRA was the acronym for a business name or trade marked term. In fact, the name of the Respondent includes the word “acronym”. From Internet searches, it appears that the Respondent owns other domain names that are acronyms, such as <mro.com.au> and <nji.com.au>.

The Panel can draw the inference from the evidence provided by the Complainant that the disputed domain name was most likely registered by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to another person for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name or to otherwise profit at the expense of the Complainant and others who have name and trade mark rights in respect of HRA (see paragraph 4(b)(i) of the Policy).

In the absence of a response having been filed, there is nothing to suggest any other purpose for which the disputed domain name has been registered.

Further, the fact that the Respondent did not respond to correspondence sent by the Complainant and did not file a Response is further evidence that reinforces a finding of bad faith on the part of the Respondent (see e.g., Advance Magazine Publishers Inc. v. Moniker Privacy Services, Registrant, Registrant info@fashionid.com / Registrant, WIPO Case No. D2009-0801).

It may also be the case that the Respondent registered the disputed domain name in order to prevent the owner of a name, trade mark or service mark, such as the Complainant, from reflecting that name or mark in a corresponding domain name. However, there is insufficient evidence to definitively decide this point. There is nothing to suggest that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business activities of the Complainant.

However, in light of the surrounding circumstances, and for the reasons set out above, the Panel finds that the Respondent registered the disputed domain name in bad faith and therefore paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hra.com.au> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: May 13, 2011

 

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