WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Australian Broadcasting Corporation v. Gregory Brown, Acheeva Business Solutions Pty Limited

Case No. DAU2021-0007

1. The Parties

The Complainant is Australian Broadcasting Corporation, Australia, represented by Banki Haddock Fiora, Australia.

The Respondent is Gregory Brown, Acheeva Business Solutions Pty Limited, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <abcstore.com.au> is registered with Synergy Wholesale Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On the same day, the Center transmitted by email to Synergy Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On February 15, 2021, Synergy Wholesale 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”), 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 February 16, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2021. The Response was filed with the Center on March 8, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on March 11, 2021. 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 has been Australia’s national public broadcaster since 1932. The initials of its corporate name are “ABC”. The Complainant provides broadcasting and digital media services. It also operated retail stores known as “ABC Shops” selling merchandise in over 50 locations around Australia until it closed them in 2016. The Complainant is the owner of multiple trademark registrations, including Australian trademark registration number 638540 for ABC SHOP, registered on May 30, 1996 (with a priority date of August 22, 1994), specifying retailing of a wide variety of goods in class 42; and Australian trademark registration number 1561779 for ABC, registered on July 15, 2015 (with a priority date of June 7, 2013), specifying goods and services in classes 9, 16, 24, 25, 28, 38, and 41. Those trademark registrations remain current.

The Respondent is an Australian company registered in 1993. Its sole director and secretary is Mr. Gregory Brown. The Respondent’s business address is on the Gold Coast. It offers domain name registration and web hosting services through a website titled “DomainOne” and holds thousands of domain names.

The Respondent or an entity controlled by Mr. Brown has been found to have registered and/or used a domain name in bad faith in three prior proceedings under the auDRP. See Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd, WIPO Case No. DAU2015-0008; HBI Branded Apparel Limited, Inc. v. G J BROWN FAMILY TRUST,WIPO Case No. DAU2016-0037; and, Godiva B.V.B.A. v. Acheeva Business Solutions Pty Ltd., Greg Brown,WIPO Case No. DAU2017-0033.

The disputed domain name was registered on June 20, 2016. Archived screenshots provided by the Complainant show that from at least 2017 the disputed domain name resolved to a parking page displaying a banner reading “Want this domain name? Contact the owner direct”. The parking page also displayed a disclaimer regarding sponsored listings but the evidence on record does not show that any actual listings were displayed at that time. Since at least 2019, the banner has read “Want this domain name?” and displayed the Respondent’s contact telephone number with a hyperlink where Internet users can obtain details about a possible transfer of the disputed domain name. During this proceeding, the parking page has begun to display Pay-Per-Click (“PPC”) links, including for ABC educational supplies, books, and learning to read and write.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s ABC SHOP trademark. The terms “shop” and “store” have an identical meaning and are entirely interchangeable in the minds of consumers. “ABC” is the distinctive element of both the ABC SHOP mark and “abcstore”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name “ABC Store” nor has it been licensed by the Complainant to use the ABC SHOP or ABC trademarks. The disputed domain name resolves to a parking page with no substantial content, only offers to sell the disputed domain name. The Respondent has been a respondent, or connected to the respondent, in three prior proceedings under the auDRP. A reverse WhoIs lookup shows that 24,313 domain names have been registered by the Respondent. The Respondent’s business is domain names, not any business associated with the name “ABC Store”.

The disputed domain name was registered and is being used in bad faith. From the time that the Respondent registered or acquired the disputed domain name until the present day, it has been offered for sale. The only content on the associated website during this time was insubstantial. The same or very similar conduct by the Respondent in three prior auDRP proceedings was grounds for a finding of bad faith. The facts of these prior proceedings tend to suggest that the Respondent is in the business of registering domain names comprising prominent brand names for the express purpose of selling to another person for valuable consideration. The Respondent, as a professional domainer, would have known at the time of registering the disputed domain name that the Complainant held rights in the mark ABC SHOP.

B. Respondent

The Complainant’s claim that the disputed domain name, and by inference the term “ABC Store”, is identical or confusingly similar to the trademark ABC SHOP, is disputed. The words “store” and “shop” are dictionary words that have similar meanings but the Respondent disputes that they are confusingly similar. These words are consistently used in commerce without confusion, e.g., tyre shop v tyre store; book shop v book store, craft shop v craft store, grocery shop v grocery store. The Complainant has numerous registered trademarks for “ABC [something]” but not the term “ABC” nor the term “ABC Store”. The letters “ABC” are used in commerce to depict a comprehensive and complete coverage of a product range and/or service, e.g., ABC Cleaning, ABC Learning, ABC Consulting, ABC Bookkeeping, and numerous other variations. If the Complainant had intended to seek exclusive use of the term “Store” in connection with the letters “ABC” then it would have had the legal capacity and understanding to do so. The disputed domain name was registered in good faith with no intent to market or sell products and/or services that are covered by the classes for which the trademark ABC SHOP is registered and the Complainant has not submitted any evidence to that effect. The disputed domain name is currently parked and has been parked in a manner that should not allow advertisements to be posted that could be considered to infringe on trademarks owned by the Complainant.

The Complainant makes reference to three prior auDRP proceedings against the Respondent. Each and every domain name purchase by the Respondent is based on criteria assessed at the time of purchase. WIPO Case No. DAU2015-0008, supra, involved a domain name purchased to pursue a passion of the management of the company. Development of the proposed website would only ever have resulted in profit from the sale of licensed merchandise. WIPO Case No. DAU2016-0037, supra, involved a domain name purchased as an acronym in ignorance of the trademark. Development of the proposed website would never have resulted in any breach of the trademarks referenced in that case. WIPO Case No. DAU2017-0033, supra, involved a domain name for a trademark term in complete ignorance of the trademark referenced in that case, as the trademark was not in commercial use in Australia at the time. The intended use of that domain name involved products markedly different from the relevant trademark classes (clothing and lingerie v chocolates).

The regulations governing the ownership of domain names in Australia require that they be monetized if business registrations and/or other eligibility criteria are not met at the time of registration. Accordingly, the services offered by parking companies provide the means to legitimately hold domain names in accordance with those regulations. Monetization of a domain name via a parking company is a legitimate use of a domain name in Australia and is not nor should it be construed to be evidence of any intent to infringe the rights of a trademark owner and/or the lack of any other commercial intent. The Respondent is not the owner of over 24,000 domain names; many have been allowed to lapse or have been developed in joint venture and e-commerce operations. The current portfolio of names held in various capacities is less than 10,000. Many domain names that were previously owned by the Respondent have been sold and the proceeds applied to meet business expenses, development costs for other domain names, and/or to provide equity in business ventures. The assertion by the Complainant that the conduct of these business activities indicates and/or otherwise evidence bad faith at the time of registration of the disputed domain name is incorrect.

6. Discussion and Findings

Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ABC SHOP trademark.

The Complainant claims that the disputed domain name is identical or confusingly similar to the ABC SHOP trademark. This mark has two parts, neither of which is inherently distinctive. The Panel accepts that “ABC” has acquired a reputation as the initials of the Complainant’s corporate name through long-standing and widespread use throughout Australia, and that “ABC” is the dominant part of the ABC SHOP trademark. The disputed domain name incorporates “abc” as its own initial element. While it omits the other part of the trademark (“shop”) and incorporates the word “store” instead, “abc” remains clearly recognizable within it. The Panel recalls that the first element of paragraph 4(a) of the auDRP functions essentially as a threshold requirement to determine whether a complainant has standing to bring a complaint. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark for that purpose.

The Respondent points out that the Complainant does not have rights in a trademark for ABC STORE. Nor does the record show that the Complainant has unregistered rights in such a mark. However, the disputed domain name need not be identical to the Complainant’s trademark for the purposes of standing under the auDRP; it suffices that the disputed domain name be confusingly similar to such a trademark, which is the case here.

The Respondent also submits that the disputed domain name was registered with no intent to market or sell products and/or services covered by the classes for which the ABC SHOP trademark is registered. However, while that issue may be relevant to the second and third elements of paragraph 4(a) of the auDRP, it is not normally relevant to the comparison between a domain name and trademark under the first element.

The disputed domain name also includes the Secondary Level Domain (“2LD”) suffix “.com.au”. A 2LD suffix is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant submits that the Respondent has not been licensed by the Complainant to use its trademarks. The evidence provided by the Complainant shows that the Respondent uses the disputed domain name in connection with a parking page that, at the time of the filing of the Complaint, merely provided contact information for Internet users interested in acquiring the disputed domain name. The Respondent’s name is Acheeva Business Solutions Pty Limited and it operates as “DomainOne”, not “abcstore”. The Respondent’s initials are not “A.B.C.” There is no evidence that the Respondent has been commonly known by the disputed domain name. There is no evidence that the Respondent was making a legitimate noncommercial or fair use of the disputed domain name. Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s case, it argues that the letters “ABC” are used in commerce to depict a comprehensive and complete coverage of a product range and/or service. However, the Panel notes that the examples that the Respondent gives – which all appear to be hypothetical – contain the name of a particular trade or line of business, unlike “ABC store”. The Panel takes note that “ABC” is also a dictionary term that can refer to “the alphabet” or “the basic information about a subject”.¹ The Panel also takes note that “abc” is an acronym for combinations of three words unrelated to the Complainant. However, nothing in the evidence demonstrates that the Respondent used the disputed domain name in connection with any such meaning of “ABC” or “ABC store” prior to the time when the Complaint was filed.

The Respondent also argues that monetization of a domain name via a parking company is a legitimate use of a domain name in Australia. However, it suffices for the Panel to recall that the evidence does not show that the disputed domain name was actually monetized through sponsored links prior to the time when the Complaint was filed, which in the circumstances of this case gives the Panel the impression that the Respondent’s intent was to target the Complainant and the links were added later in an attempt to obfuscate that fact.

Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(a)(iii) of the auDRP uses the conjunction “or”, which indicates that the Complainant may satisfy this element by showing either that the disputed domain name has been registered in bad faith or that it has been subsequently used in bad faith, without necessarily demonstrating both. This entails a demonstration that the Respondent registered or used the disputed domain name with knowledge of the Complainant’s trademark and an intention to take advantage of that trademark for its trademark significance. See HBI Branded Apparel Limited, Inc. v. G J BROWN FAMILY TRUST, supra. The Complainant claims that the disputed domain name was registered or subsequently used in bad faith on account of knowledge of the ABC SHOP mark. Therefore, the Panel will not consider the Respondent’s awareness of the ABC mark.

The disputed domain name was registered in 2016, decades after the registration of the Complainant’s ABC SHOP trademark in Australia, where the Respondent is established and does business. The operative element of the disputed domain name “abcstore” is not only visually confusingly similar to the ABC SHOP trademark but also semantically virtually identical to that mark, as the word “store” is a synonym of “shop”. The Complainant made long-standing use of its ABC SHOP mark via a network of stores throughout Australia. The Respondent does not deny knowledge of the ABC SHOP trademark. The Respondent registered the disputed domain name in June 2016 during the period leading up to the closure of ABC Shops. In all the circumstances, the Panel considers that the Respondent was aware of the ABC SHOP trademark at the time that it registered the disputed domain name.

The Respondent points out that its parking page makes no reference to the Complainant, to the Complainant’s goods and services, or to ABC Shops. However, that does not exclude the possibility that the Respondent intended to extract commercial gain by some other means from the disputed domain name on the basis of the value of the Complainant’s ABC SHOP trademark. In this regard, it can be observed that the Respondent’s parking page has throughout its existence offered contact details for Internet users interested in acquiring the disputed domain name.

Evidence provided by the Complainant shows that the Respondent and an entity controlled by Mr. Brown have engaged in a pattern of abusive registrations of domain names containing third party trademarks in the .com.au 2LD. See Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd, supra; HBI Branded Apparel Limited, Inc. v. G J BROWN FAMILY TRUST, supra; and Godiva B.V.B.A. v. Acheeva Business Solutions Pty Ltd., Greg Brown, supra. The domain name in the first prior case was not identical to the Complainant’s trademark; nor is the disputed domain name in the present proceeding. The domain names in the first and second prior cases resolved for years to landing pages that offered them for sale, similar to the Respondent’s parking page in the present proceeding. The Respondent seeks to minimize the findings in those prior cases but the panels in all three prior cases concluded that the domain names had been registered and/or used in bad faith.

The Panel takes note that the use of the disputed domain name has changed during this proceeding. The Respondent’s parking page now displays PPC links, including for ABC educational supplies, books, and learning to read and write. This use of the disputed domain name is evidently based on a dictionary meaning of ABC (as set out in Section 6B above). However, the evidence does not show that the parking page displayed any such links for over four years from the registration of the disputed domain name up until the time of the filing of the complaint. Although the parking page has long displayed a disclaimer regarding sponsored listings, the evidence does not show that the parking page actually displayed any such listings until after the Respondent received notice of the Complaint.

The Panel infers that this change of use occurred in response to the filing of the Complaint in order to suggest that there was a purpose aside from targeting the Complainant in registering the disputed domain name. That inference is supported by the fact that comparable changes in use of other domain names also occurred in Jaguar Land Rover Limited v. Greg Brown, Acheeva Business Solutions Pty Ltd, supra, and in HBI Branded Apparel Limited, Inc. v. G J BROWN FAMILY TRUST, supra, after the Respondent received notice of the first of those disputes.

Taking into account all the above circumstances, the Panel does not consider it a coincidence that the Respondent registered a domain name visually confusingly similar and semantically virtually identical to the Complainant’s then-well-known ABC SHOP mark. Rather, the Panel finds that the Respondent targeted the ABC SHOP trademark.

Therefore, the Panel finds that the disputed domain name was registered in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.

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 domain name <abcstore.com.au> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: March 25, 2021

¹ The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched the online Cambridge English Dictionary at <dictionary.cambridge.org> to assess the Respondent’s assertion. See WIPO Overview 3.0, section 3.8.