WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harness Racing Australia Inc v. Electronic Communities Pty Ltd
Case No. DAU2016-0017
1. The Parties
The Complainant is Harness Racing Australia Inc of Flemington, Victoria, Australia, represented by Pointon Partners, Australia.
The Respondent is Electronic Communities Pty Ltd of Middle Park, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <hra.com.au> is registered with Drop.com.au Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2016, the Registrar 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 March 30, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on April 25, 2016. 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 the national peak body for the harness racing industry in Australia. The Complainant uses its website "www.harness.org.au" to communicate publicly. The Complainant provides a national forum for harness racing in Australia and policy development between all Australian state harness racing controlling bodies and principal clubs on all harness racing matters.
The Complainant is the owner of a registered Australian trademark for HRA HARNESS RACING AUSTRALIA and logo, which prominently features the "HRA" abbreviation or acronym, in the phrase "HRA Harness Racing Australia". The trademark was registered on May 5, 2009. The Complainant is also the owner of the registered association name "Harness Racing Australia, Inc.".
As explained in the Complaint, the disputed domain name was initially registered by Harris Robinson & Associates Pty Ltd. This company was deregistered in 2008 and as a result the disputed domain name became inactive. The Complainant requested that the initial owner transfer the disputed domain name to the Complainant; however, a response was never received. The Complainant then approached the registrar of the disputed domain name to deregister the disputed domain name, which occurred. Despite the Complainant's efforts to secure the disputed domain name, the disputed domain name was registered by Acronym Wiki Pty Ltd.
The Complainant then secured the disputed domain name following a previous decision by the auDRP panel in Harness Racing Australia v. Acronym Wiki Pty Ltd, WIPO Case No. DAU2011-0007. The Complainant says that, due to an "administrative oversight", the Complainant failed to renew the disputed domain name registration, after the Complainant's previous registration of it lapsed on or about June 13, 2015. Consequently, the disputed domain name was registered by a company called "Electronic Securities Pty Ltd". (Although the Complaint refers twice to "Electronic Securities Pty Ltd" as the registrant, the Complaint otherwise identifies, and the Registrar has confirmed, the registrant as "Electronic Communities Pty Ltd". As such, the Panel has treated this reference as an error in the Complaint.)
In the absence of a response, there is no information in the case file about the business of the Respondent. The case file provides a screen shot of the website at the disputed domain name, as it was prior to the filing of the Complaint. That webpage shows a basic website with a list of various links, including "Online HRA", "HRA", "Jorge Lorenzo" (the MotoGP rider), and "Lewis Hamilton" (the Formula 1 driver). The website otherwise includes a statement at the bottom of the webpage "This Domain Is for Sale". There was no evidence that this website contains links to sites associated with the business of the Complainant.
5. Parties' Contentions
The Complainant says that the disputed domain name is confusingly similar to its mark. The letters "HRA" are the dominant feature of that mark and are contained in the disputed domain name. The Complainant also claims that it is commonly known by the acronym HRA and has acquired common law trademark rights in that acronym.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not shown any bona fide use of the disputed domain name, nor intention to use it. The disputed domain name bears no resemblance to the Respondent's name. The Respondent is not authorized by the Complainant to use the HRA acronym. The Respondent has not acquired trademark rights in relation to the disputed domain name.
Finally, the Complainant says that the Respondent has registered and subsequently used the disputed domain name in bad faith. The Respondent is not currently using the disputed domain name in connection with a website or a name corresponding to the disputed domain name in connection with any offering of goods or services. The website at the disputed domain name merely offers the disputed domain name for sale. Further, the HRA acronym is not one with a common meaning or association. It appears to only be used in relation to abbreviations of entities' or persons' names or in connection with businesses whose name corresponds to the acronym. Thus the Complainant argues that the only likely purpose for the Respondent's registration of the disputed domain name was to profit at the expense of those who otherwise might have legitimate interests in it. The Complainant has also received no response from the Respondent to its correspondence which it says is further evidence of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered in bad faith or subsequently used in bad faith.
Each of these elements are addressed in turn below, immediately following a consideration of the previous auDRP panel decision in Harness Racing Australia v. Acronym Wiki Pty Ltd, supra. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Previous Proceeding
As noted above, the disputed domain name was subject to a similar complaint brought by the Complainant in Harness Racing Australia v. Acronym Wiki Pty Ltd, supra1 . That case was also uncontested by the then respondent, and involved circumstances comparable to this case. The then panel found that the Complainant had established its case against the then respondent, and ordered the transfer of the disputed domain name to the Complainant. That panel did not, however, find that the Complainant had common law rights in HRA, or that the Complainant was entitled to rights in the name of HRA.
The Panel considers this previous decision is a persuasive reason to follow relevantly similar approaches in this case. As noted in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014: "Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts."
To be applied properly, this approach requires a panel, dealing with relevantly similar proceedings, to apply similar approaches even if the panel does not fully agree with an earlier decision. (Of course, if a later panel does fully agree with an earlier decision, the principle stated in Howard Jarvis Taxpayers Association v. Paul McCauley, supra is not necessary.)
In this case, the Panel has some reservations about the strength of the Complainant's case against a mere three-letter combination "HRA". The Panel notes that there is no shortage of prior decisions under the Policy and the UDRP that denied complaints involving three letter combinations. See, e.g., Braunschweiger Maschinenanstalt AG v. SearchMachine, WIPO Case No. D2011-1794. Also, as observed by the Panel in SK Lubricants Americas v. Andrea Sabatini, Webservice Limited, WIPO Case No. D2015-1566: "The Respondent's argument is that he had a right or legitimate interest in the Domain Name because the Domain Name is an acronym and/or a three letter combination and, as such, the Complainant could not have exclusive rights to it as against the Respondent or anyone else. That would seem to be so as a matter of common sense and it is supported by previous UDRP decisions dating from the very beginning of the UDRP."
Despite its reservations, the Panel considers that it is strongly desirable for consistency, certainty and confidence in the Policy, for panels to seek consistency between relevantly similar cases. As this case involves an almost identical dispute to that brought by the Complainant in Harness Racing Australia v. Acronym Wiki Pty Ltd, supra, the Panel has taken a relevantly similar approach to its consideration of the three elements as follows.
B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it has rights in a name, trademark or service mark. The Complainant's provided evidence of its registered trademark rights which are clearly sufficient for this purpose.
The Complainant must next establish that the disputed domain name is identical or confusingly similar.Following the panel's approach in Harness Racing Australia v. Acronym Wiki Pty Ltd, supra, HRA was found to be a "dominant feature" of the Complainant's mark and, as such, confusingly similar with the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case under this first element.
C. Rights or Legitimate Interests
The Complainant has established a prima facie case against the Respondent. The Respondent chose to submit no reply. The prima facie case is, as such, uncontested. There is little other evidence in the case file which self-evidently suggests that the Respondent might have rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has established its case under this second element.
D. Registered or Subsequently Used in Bad Faith
There is no direct evidence of the Respondent's intention in this case in registering the disputed domain name. It is both attached to a parking page and advertised for sale.
The facts of this case are not, on this point, relevantly different to those in Harness Racing Australia v. Acronym Wiki Pty Ltd, supra. Following the approach in that case (for the reasons this Panel has set out above) the Panel draws the inference that, for the purpose of paragraph 4(b)(i) of the Policy, 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 trademark rights in respect of HRA.
If the Respondent thought it had some reasonable argument to make on this point, the Panel would have expected it to have submitted a Response. The Respondent failed to do so.
For these reasons, the Panel finds that the Complainant has established its case under this third element.
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.
James A. Barker
Date: May 9, 2016
1 For completeness, the Panel notes that this is not a case of a "refiled complaint" considered in paragraph 4.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Such cases typically involve the filing of a complaint involving the same domain name and the same respondent.