WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGL Energy Limited v. Leon Palamara

Case No. DAU2011-0033

1. The Parties

The Complainant is AGL Energy Limited of Melbourne, Australia represented by Minter Ellison, Australia.

The Respondent is Leon Palamara of Melbourne, Australia.

2. The Domain Name and Registrar

The disputed domain name <aglsolar.com.au> is registered with NetRegistryPty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2011. On October 11, 2011, the Center transmitted by email to NetRegistryPty Ltd. a request for registrar verification in connection with the disputed domain name. On October 13, 2011, NetRegistryPty 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”), 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 October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Respondent sent an informal communication to the Center on October 17, 2011.

The Center appointed John Swinson as the sole panelist in this matter on November 11, 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 AGL Energy Limited, Australia’s largest private owner, operator and developer of renewable generation assets. Recently, the Complainant has become heavily involved in the solar power industry with the creation of its solar energy information website “www.aglsolarenergy.com.au” in May 2011 and the acquisition of a solar installation business from Rezeko Pty Ltd in June 2011. The Complainant owns 26 registered trade marks in Australia incorporating the term “AGL.”

The Respondent is Leon Palamara, an individual who resides in Victoria and appears to be involved in a number of businesses relating to solar installation and water solutions. The disputed domain name was registered on December 14, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

Identical or Confusingly Similar

The Complainant owns numerous registered trade marks in Australia incorporating the term “AGL,” registered from as early as 1975.

The disputed domain name includes the term “AGL” with the addition of the word “solar.” This additional term is insufficient to distinguish the disputed domain name from the Complainant’s trade mark as it amounts to a generic and commonly used word. The Complainant cites PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 as authority for this proposition.

This is reinforced by the fact that the word “solar” is descriptive of the goods and services covered by the Complainant’s trade marks and in respect of which the Complainant has established a strong reputation in Australia.

Rights or Legitimate Interests

The Complainant’s use of the “AGL” trade marks pre-dates the Respondent’s registration and first use of the disputed domain name by over 30 years. As a result, the burden rests on the Respondent to prove that it has rights or legitimate interests in the disputed domain name.

Specifically, there is no connection between the disputed domain name and the Respondent.

The Respondent is not the registered owner of any trade marks in Australia which reflect or correspond to the disputed domain name. In fact, the Respondent’s registration of the business name “AGL Solar Technology” on December 14, 2007 has expired and is therefore irrelevant to the current Complaint. In any case, the registration of a business name in Australia is subject to the legitimate trade mark rights of third parties and does not confer proprietary rights upon the registrant.

The Respondent is not an officer or shareholder of any Australian company reflecting the disputed domain name.

The Respondent has not shown any bona fide use of the disputed domain name. Significantly, the Complainant has not authorized the use of the term “AGL” by the Respondent. In addition, due to the widespread reputation of the Complainant’s “AGL” brand in Australia, it is unlikely that the Respondent was unaware of the brand at the time it registered the disputed domain name. This creates a presumption that the Respondent registered the disputed domain name in order to misappropriate the Complainant’s goodwill and reputation by creating confusion amongst Internet users as to the Complainant’s affiliation with or endorsement of the Respondent’s business.

Registered or used in Bad Faith

The fact that the Respondent registered the disputed domain name without having any legitimate rights or interests in it is of itself evidence of bad faith.

Furthermore, a presumption arises that the Respondent registered the disputed domain name in order to intentionally confuse Internet users searching for the Complainant’s business via the Internet and redirect their attention to the Respondent’s own website for the Respondent’s commercial gain and profit.

At the time of registration, the Respondent, as an Australian individual, must have been aware of the Complainant’s prior rights and interests in the term “AGL” by virtue of the widespread reputation of the Complainant’s brand. This presumption is reinforced by the overlap in the type of services provided by both the Respondent and the Complainant. The overlap also increases the likelihood of actual confusion among potential customers. As the term “AGL” is not commonly used in Australia and does not have any meaning within the English language independent of the Complainant’s brand, there is no objective reason for the Respondent’s inclusion of “AGL” in the disputed domain name other than to leverage off the Complainant’s goodwill and reputation.

Furthermore, the Respondent has previously been found to have engaged in bad faith involving false claims of affiliation with Commonwealth, State and Local Government authorities (evidence to support these allegations was included in the Annexure to the Complaint).

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

B. Respondent

The Respondent filed very short submissions and makes the following informal submissions and arguments:

“[T]he […] content of the complaint is completely irrelevant, having no connection to the business -- AGL Solar Technology.”

The Respondent has a right to use the disputed domain name, having legally registered, paid for and utilised it for numerous years.

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, trade mark 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. Identical or Confusingly Similar

The Complainant owns several Australian registered trade marks for the term “AGL.” “AGL” is a very well-known brand in Australia. One of the Complainant’s registered trade marks is “AGL” registered in 1999 (Reg. No. 785307) covering services in many different classes.

The disputed domain name differs from the Complainant’s trade marks by the addition of the word “solar.” However, the disputed domain name incorporates the term “AGL” in its entirety as the dominant element. Where this is the case, it has been held that generic or descriptive words are insufficient to distinguish the disputed domain name from the registered trade mark (see PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174 and Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102).

The term “solar” is descriptive of some of the goods and services provided by the Complainant. In that respect, the addition of the term is more likely to increase potential confusion among Internet users searching for the Complainant’s business rather than act as a distinguishing feature.

It is therefore clear that the disputed domain name and the Complainant’s registered trade marks are confusingly similar. As such, the Complainant succeeds on the first element of the Policy.

B. 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 the disputed domain name.

There is no connection between the disputed domain name and the Respondent. Although the Respondent (or an entity that may be associated with the Respondent) had previously registered the business name “AGL Solar Technology,” such registration has since expired. Moreover, the Respondent does not rely on this business name and appears to deny its relevance in the Response.

The Complainant had used the “AGL” trade mark for over 30 years prior to the Respondent’s registration of the disputed domain name. The Respondent is not commonly known as AGL and there is no evidence to suggest that “AGL” or a similar name has been used by the Respondent in combination with a bona fide offer of goods or services.

The Respondent has not demonstrated bona fide use of the disputed domain name.

The fact that the Respondent legally registered, paid for and utilised the disputed domain name for numerous years does not of itself establish rights or legitimate interests in the disputed domain name and is therefore insufficient to rebut the Complainant’s prima facie case.

As such, the Complainant succeeds on this element.

C. 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.

The “AGL” trade mark is well known in Australia and it is unlikely that the Respondent was unaware of the Complainant’s prior rights and interests in AGL. AGL is not a dictionary term and does not have a common meaning within the English language independent of the Complainant’s brand. Further considering that the Respondent operates within the same market as the Complainant, it is this Panel’s view that the only likely purpose for which the Respondent registered the disputed domain name was to intentionally confuse customers searching for the Complainant’s business via the Internet as to the Complainant’s affiliation with, or endorsement of, the Respondent’s website.

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 <aglsolar.com.au> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: November 24, 2011