WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Australian Broadcasting Corporation v. Hussein Elburai
Case No. D2019-1181
1. The Parties
Complainant is Australian Broadcasting Corporation, Australia, represented by Baker & McKenzie, Australia.
Respondent is Hussein Elburai, Canada.
2. The Domain Name and Registrar
The disputed domain name <abc.net> (the “Domain Name”) is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. On June 15, 2019, the Center received an email communication from Respondent asking for a four-day extension. Pursuant to paragraph 5(b) of the Rules, the Response deadline was extended to June 22, 2019. The Response was filed with the Center on June 21, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 27, 2019. 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
Complainant is “an independent public broadcaster funded by the Commonwealth of Australia”. Complainant broadcasts via television, radio, and other media, and has been broadcasting in one manner or another since 1932. Complainant’s television broadcasts commenced in 1956, and its online broadcasts commenced in August 1995. Complainant’s website is located at “www.abc.net.au”.
Complainant has used the mark ABC as a source identifier for its broadcasting services since 1932. In August 1994, Complainant received Australian trademark registrations for ABC SHOP and ABC CENTRE. In June 2013, it received an Australian trademark registration for ABC.
The record contains ample evidence that Complainant’s broadcasting activities within Australia are longstanding and extensive, and that the ABC-formative marks within Australia are well known. Complainant also states that, as of 1995 (the year in which the Domain Name was registered by the Canadian Respondent), it had licensed 26 of its television programs to be broadcast in Canada.
Complainant asserts that, just prior to the registration of the Domain Name, a number of media stories appeared in Canada to discuss Complainant. Some of these June 1995 articles announce the airing in Canada of the television drama series Phoenix, produced by Complainant. For instance, the record contains a June 11, 1995, article in the Toronto Star which summarizes various items in the entertainment industry. One item under discussion is the airing in Canada of the Phoenix series.
(This Toronto Star item refers to Complainant not as “ABC” but as “Australian Broad casting Corporation.” The very next item in this Toronto Star entertainment news summary does refer to “ABC,” but that is a reference to the American Broadcasting Company, another broadcasting network, in connection with a program about pop singer Michael Jackson. Likewise, the June 14, 1995, article in The Globe and Mail, also a summary of entertainment news items, discusses the Phoenix TV series and refers to Complainant not as “ABC” but as “Australian Broadcasting Corp.”. Once again, that Globe and Mail article then touches briefly on the Michael Jackson story with reference to the American “ABC”.)
Complainant also puts into the record a June 9, 1995 Dow Jones article reporting that the British Broadcasting Corporation (“BBC”) had just formed a “global newsgathering alliance” with Complainant and the Canadian Broadcasting Corporation. This article confusingly refers to Complainant as “ABC” while also discussing the American “ABC” broadcasting network, noting that the BBC had formed an alliance with the American “ABC” 18 months earlier. The article goes on to refer several times to “ABC”, sometimes in reference to Complainant and sometimes in reference to the American network. The reader must make an educated guess as to which “ABC” is referred to each time, based largely on context.
A handful of other articles appear in the record to discuss the airing of Phoenix in Canada or the newsgathering alliance between the BBC and Complainant. These articles are less confusing in terms of their references to Complainant as ABC.
According to Respondent, he worked as a customer support manager for a local Canadian Internet Service Provider (“ISP”) from 1994 to 1998. Respondent states that he was the only person at the ISP responsible for domain name registrations. He registered the Domain Name on June 11, 1995. His stated purpose for registering the Domain Name was for “a planned future project in Network services which came to fruition in 1999”. He states that he selected this particular Domain Name because “it was highly generic, short, easy to recall, and implies simplicity as in ‘Easy as ABC.’” He states that he chose the “.net” generic Top-Level Domain (“gTLD”) because he was involved in Internet networking activities and the “.net” gTLD was widely understood to refer to networking and network infrastructure.
The ISP for which Respondent worked was sold in late 1998. By that time, Respondent had taken courses in networking and had become certified as a network systems engineer. In early 1999, Respondent launched two websites under his recently incorporated company, ABC Computer Networks Inc. (“ABCCN”). One website was a web portal offering services such as a search engine, a web directory, a chat feature, a weather forecast service, news headlines, and a free email service. This website portal was maintained in one form or another from 1999 to 2015.
Respondent introduced into the record various archived screenshots which demonstrate that various third parties on the Internet referred to Respondent as “abc.net”.
In June 2017, Respondent sent Complainant an email advising that he was receiving numerous misdirected emails from people evidently intending to reach Complainant but instead reaching Respondent. The problem, Respondent noted, was that Complainant’s email addresses used the suffix “abc.net.au” whereas Respondent’s Domain Name lacked the “.au” country code Top-Level Domain. Complainant responded with thanks and asked Respondent to delete the misdirected emails.
In December 2017, Respondent reached out again to Complainant to advise of the email confusion issues.
On September 7, 2018, Complainant’s counsel sent a letter to Respondent asserting Complainant’s trademark rights, threatening to bring a complaint under the Policy, and offering to resolve the matter amicably by proposing a USD 8,000 payment in exchange for a transfer of the Domain Name to Complainant.
On September 11, 2018, Respondent replied to Complainant’s counsel, rejecting the offer of sale and berating Complainant for not taking more seriously the security issues surrounding the misdirected email issues. Respondent noted in this email that, while he had previously told Complainant in the 2017 correspondence that his Domain Name was up for sale, he made that comment simply to point out that the purchaser of the Domain Name would face the same issue of misdirected emails.
As far as the record reflects, this was the last communication between the Parties until the Complaint in this proceeding was filed on May 23, 2019.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. Essentially, Complainant’s most succinct assertion is: “Complainant submits that the Respondent registered the Domain Name with full knowledge of at least the Complainant’s word mark ABC and for the primary purpose of misleading or redirecting Internet users looking for the Complainant’s services to the Respondent’s website”.
Respondent asserts that he registered the Domain Name for the legitimate purpose of operating a website portal business using the exceedingly commonplace string of letters “A”, “B”, “C”. Respondent notes that innumerable businesses around the world, in myriad spheres of commercial activity, use the moniker ABC. He also denies having any knowledge of Complainant at the time he registered the Domain Name. Respondent asserts that Complainant has no right to monopolize the letters ABC and that Complainant should be guilty of Reverse Domain Name Hijacking by virtue of its overreach here.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark ABC through registration and use demonstrated in the record. The Domain Name is identical to the mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel need not address this issue, given its (related) conclusion below that Complainant has failed to establish bad faith registration and use of the Domain Name by Respondent.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Complaint fails on the third element. The Panel concludes that, even notwithstanding his early work in the Internet/ISP space on the record here, there is little if any basis to conclude that the Respondent had the Complainant’s ABC mark in mind when registering the Domain Name. It is common knowledge that the world is full of businesses trading under the name and/or with the mark ABC. A quick skim through a paper telephone directory and an agile thumb will make this clear. This is not, of course, to say that ABC cannot be a trademark, or that Complainant lacks rights in the mark ABC, but it takes more than mere ownership of trademark rights in ABC on one continent to prove, on a balance of probabilities, that someone has targeted this one specific trademark.
Here, Respondent flatly denies having knowledge of Complainant or its ABC mark, and, based on the record, the Panel finds that denial plausible. The Panel also accepts as probably true Respondent’s explanation for registering the Domain Name back in 1995 – it is short, easy to remember, and implies simplicity.
Without establishing that Respondent had Complainant’s mark in mind when registering the Domain Name, Complainant cannot establish Policy paragraph 4(a)(iii).
D. Reverse Domain Name Hijacking
Respondent asks the Panel to declare Reverse Domain Name Hijacking (“RDNH”) here. This is a close call, but on the record here the Panel declines to make such a finding. Complainant’s case is weak, despite the best efforts of its law firm.
A number of factors, not all of which will be recorded here, suggest that Complainant’s case was not utterly hopeless from the start. There was some media coverage in Canada about Complainant mere hours before Respondent registered the Domain Name. In this case, it appears that this was coincidence, though oftentimes a cybersquatter is found to have registered a domain name within hours of a news story. Respondent did not flatly deny in his pre-Complaint correspondence that he had knowledge of Complainant’s ABC mark back in June 1995, which is relevant to the RDNH issue.
As another factor, the Panel notes that Respondent’s web portal offerings to some extent overlap with broadcasting services, inasmuch as both activities fall within the general category of media services.
Further, Respondent initiated contact with Complainant after he had decided to put the Domain Name up for sale, which Complainant could have interpreted as an overture seeking to sell the Domain Name at a hefty profit. Such an interpretation probably would have been misguided, because Respondent appears genuinely to have reached out to Complainant in good faith to point up a security problem, and because in any event the Domain Name, while not under “.com”, on its face could be a valuable one.
In sum, this may be more a case of lacking appreciation of the nuances of this case than a calculated attempt to wrest a domain name from an innocent and smaller party.
Finally, Complainant’s factual assertions in the Complaint, while slanted to Complainant’s preferred narrative (as one expects in a pleading), are not false, and there are no glaring omissions that Complainant tried to conceal from view. False statements or misleading omissions are not necessary to an RDNH finding, but their absence can be a factor when weighing a close RDNH decision.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: July 11, 2019