AGL Energy Limited of Melbourne, Australia just lost its attempt to grab the 15 year old domain name AGL.com.
ESQwire.com represented the domain owner John M. Van John.
Its a pretty interesting case because one member of the three member panel, Andrew F. Christie seemed to apply a new standard to a generic domains subject to a trademarked and wanted to give the domain to trademark holder, the more interesting of which we highlighted in Bold below.
Moreover the panel outright rejected the doctrine of Latches despite the domain being 15 years old, and our opinion of that appears after the decision
Here are the relevant facts and findings by the three member panel:
“”The Complainant is an Australian company which generates and distributes energy and gas, and operates other businesses related energy production and maintenance. The Complainant has been operating since 1837 under the name The Australian Gas Lighting Company.
In 2006, The Australian Gas Lighting Company merged with Alinta Limited to form AGL Energy Limited.
The Complainant’s business generated earnings of over $1 billion (AUD) in the last financial year. The Complainant is the owner of the trademark AGL, including:
Australian Registration No. 785307 for AGL filed February 11, 1999
Australian Registration No. 285852 for AGL & Design filed March 18, 1975
Australian Registration No. 285853 for AGL & Design filed March 18, 1975
The Complainant also owns 14 New Zealand trademark registrations incorporating the mark AGL and 44 domain names incorporating the mark AGL, including and .
The disputed domain name was first registered on or about September 2, 1999 in the name of the Respondent James M. van Johns.
The disputed domain name was subsequently registered in the name of various other parties, with the Respondent re-acquiring the disputed domain name on August 1, 2011 (according to an admission contained in the Response).
The domain name has historically reverted to a parking site providing links to websites of third parties which are unrelated to the energy industry, but the current version of the parking site displays links to websites, most or all of which appear to be related to the Complainant’s field of business.
“The Respondent has raised substantive arguments to the effect that trademark rights in 3 letter combinations such as “agl” are inherently weak and subject to a narrow ambit of protection. ”
“On the factual record set out in this case, the Respondent has shown that there are many users of the “agl” combination for a wide range of businesses across various countries. ”
There is no reason to disbelieve Respondent John M. van John’s avowed ignorance of the Complainant’s trademark rights in AGL at the time of his initial registration of the disputed domain name, particularly in light of the following factors:
(1) the Australian focus for the Complainant’s business activities;
(2) the Respondent’s U.S. residence;
(3) the Respondent’s business model which involves the registration of hundreds of 3-letter domain names on a large commercial scale.
Panelists Pibus and Cabell have considered the questions raised by the Complainant with respect to the Respondent’s recent website activity involving links to energy-related sites. In this regard, the evidence of Mr. Van Johns is noted, to the effect that
(1) over the prior 14 years, no such energy-related links were used; and
(2) all links over the history of the Respondent’s website were auto-generated in any event.
Accordingly, panelists Pibus and Cabell consider that the evidence supports the conclusion that the Respondent has not targeted the Complainant’s trademark rights or reputation in adopting the domain name, but rather has followed its own business model of registering 3 letter combinations, one of which happened to coincide with the Complainant’s trademark.
In all the circumstances, panelists Pibus and Cabell conclude that the Complainant has not established the absence of rights or legitimate interests on the part of the Respondent.
Panelist Christie considers that the question of whether or not the Respondent targeted the Complainant’s trademark rights or reputation when registering the disputed domain name is simply not relevant to the issue of whether the Respondent has rights or legitimate interests in the disputed domain name (although it is relevant to the question of whether Respondent has acted in bad faith).
Panelist Christie accepts that the Respondent has adopted a business model of registering three-letter combinations, but considers that this alone does not give rise to rights or legitimate interests in the disputed domain name. That fact that a domain is commercially attractive of itself is insufficient to establish rights or legitimate interests in it.
If it were otherwise, then the mere fact of registration of a domain name would give rise to rights or legitimate interests in the domain name because it must be assumed that every registered domain name is commercially attractive to the registrant for some reason.
Panelist Christie considers that the Respondent must show something other than mere commercial attractiveness of the disputed domain name to establish rights or legitimate interests in it.
In particular, the Respondent must establish some bona fide connection between its activities (actual or proposed) and the disputed domain name, such as those specified in paragraph 4(c) of the Policy – that is, such as by using the disputed domain name in connection with a bona fide offering of goods or services, being commonly known by the disputed domain name, or making a legitimate non-commercial or fair use of the disputed domain name.
The Respondent has not and, in Panelist Christie’s view, cannot in this case make out any such connection between the disputed domain name and its business activity – which is to capitalize on the value of the Complainant’s trademark by using the disputed domain name to obtain pay-per-click revenue by linking to third party websites most or all of which are related to the Complainant’s field of business, in the most recent version of the Respondent’s website.
Panelist Christie adopts the consensus view set out in paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) on the issue of whether parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name: “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.
As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase).
By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
Accordingly, Panelist Christie finds that the Respondent has not established that it has rights or legitimate interests in the disputed domain name.
In reaching their conclusions, all members of the Panel wish to make it clear that they have not accepted the Respondent’s argument with respect to laches.
Although significant time has passed since the original registration of the disputed domain name in 1999, its ownership has changed hands four times, according to the Respondent’s own admission.
The changing of identity of the Registrant (including James M. Van Johns, Damian Macafee, John Smith) over the course of the past 15 years, renders problematic any argument that the 15 year period ought to accrue to the benefit of any one of the owners, and particularly the last one in the sequence, Respondent James M. Van Johns, who, according to his Response, acquired the disputed domain name on August 1, 2011.
Therefore, a majority of the Panel (panelists Pibus and Cabell) finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the findings under section 6.B., the Panel will not make a finding with respect to bad faith.””
Its seem to me that on the issue of laches, the panel missed the boat.
They rejected Laches because the domain name changed had 4 times over 14 year (winding back with the original registrant).
In my opinion, the Panel missed the point and an opportunity to explain/apply the doctrine.
Here, Complainant watched a 15 year old domain name change hands 4 times and took no action. That is what Laches is all about, resting on your rights.
If the Complainant had really believed its rights were being trampled it would and should have acted sooner, and Respondent would have never been placed in the position to be able to purchase the domain name for the second time in 2011.