WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Automobile Club of Victoria (RACV) Limited v. Whois Privacy Services Pty Ltd (Customer ID 22313818946312) / Domain Manager
Case No. D2011-1906
1. The Parties
The Complainant is Royal Automobile Club of Victoria (RACV) Limited of Melbourne, Victoria, Australia, represented by Clayton Utz Lawyers, Australia.
The Respondent is Whois Privacy Services Pty Ltd (Customer ID 22313818946312) of Fortitude Valley, Queensland, Australia / Domain Manager of Balmain East, New South Wales, Australia, represented by Cooper Mills Lawyers, Australia.
2. The Domain Name and Registrar
The disputed domain name <racv.com> (“the Disputed Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2011. On November 3, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Name. On November 4, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 17, 2011.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2011. The Response was filed with the Center on December 7, 2011. On December 23, 2011 the Complainant filed a Supplemental Filing by email to the Center and, on the same date, the Respondent sent an email communication to the Center.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 28, 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Panel Order
In response to receipt of an unsolicited submission of a Supplementary Submission by the Complainant on December 23, 2011, and consistently with paragraph 12 of the Rules, this Panel issued a Panel Order on January 4, 2012 for the reason that according to paragraph 10(b) of the Rules, the Panel has to give each Party a fair opportunity to present its case. The effect of the Panel Order was to give the Complainant an opportunity to present further arguments and evidence by which it may demonstrate the relevance of its Supplemental Filing to the present case, including whether and why it was unable to provide that information in the Complaint, and granted the Respondent, for reasons of procedural fairness, until January 13, 2012 by which to reply to the Complainant’s Supplemental Filing or to make any submissions in relation thereto. This Panel also extended to January 18, 2012, the date by which this Panel was required to forward a decision in this case.
A document titled “Complainant’s Additional Submissions in Support of Supplemental Submission” was sent by email from the Complainant to the Center on January 9, 2012, and the Respondent forwarded a document headed “Supplementary Response” on January 11, 2012 both being received within the period granted pursuant to the Panel Order. According to paragraph 10(d) of the Rules, the Panel has the discretion to determine the admissibility of the submissions and evidence.
Like the panel in Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, WIPO Case No. D2000-1440, this Panel is strongly of the opinion that the parties of a UDRP proceeding in general should refrain from purporting to submit unsolicited supplementary submissions unless these add materially to the record and thereby provide appreciable assistance to the Panel in its deliberations. This Panel rejects the Complainant’s unsolicited supplemental submission for several reasons, including the unexceptional reasons given in response to the Panel Order and the unfairness visited on the Respondent in having to take instructions and respond to a Supplementary Filing made out of time and during the Christmas holiday period.
Ultimately, this Panel felt that in this particular case, while it was desirable for the matter to be decided on the basis of the best available record, an exercise of the discretion in this matter in favor of the Complainant was not appropriate. If a UDRP panel determines in a matter that a supplemental filing is appropriate, the panel has the discretion to request it from the parties, as occurred in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490.
As such, in this case the Panel has determined to exercise its discretion not to admit these supplemental filings since no adequate reason or exceptional circumstances were advanced, and has not taken them into account in reaching its decision.
5. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, and in view that most UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondents Whois Privacy Services Pty Ltd (Customer ID 22313818946312) / Domain Manager are the proper respondents (“Respondents”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is Australia.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. Prima facie evidence of this, apart from the Response, is the “Supplementary Response”, even though the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
6. Factual Background
The Complainant was incorporated in 1901 and operates a motorists association in Australia, predominantly in the State of Victoria, with more than 2,500 employees. The Complainant holds numerous registrations for the RACV trademark and variations of it in Australia, which it uses to designate emergency roadside assistance for motorists in addition to insurances, financial and travel services and resorts. Its Australian registration No. 812796, for example, has been in effect since 1999 but the mark has been used in Australia since 1916. The Complainant has 30,000 voting club members and around 2 million people use its services.
The Complainant conducts business on the Internet using numerous domain names containing the word “racv” including <racv.com.au> and <racvclub.com.au> with motoring, insurances, financial, travel and resorts business websites resolving from these domains.
The Disputed Domain Name was created in June 2001. The Respondent became the registered owner of the Disputed Domain Name <racv.com> in or around June, 2011.
The website at the Disputed Domain Name resolves to a web page containing advertisements and links in connection with roadside assistance, insurance and financial services.
7. Parties’ Contentions
The Complainant cites its registrations of the trademark RACV in Australia as prima facie evidence of ownership.
The Complainant submits that its trademark rights predate the Respondent’s registration of the Disputed Domain Name <racv.com>. It submits that the Disputed Domain Name is “identical to the Complainant’s trade mark”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and denies that the Respondent has any trademark rights in or license to use the mark RACV.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “the Complainant’s trade mark is so well known in Australia that there is a sufficiently substantial likelihood that the Respondent would have been
aware of those trade marks even without evidence of such notice” (citing Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169); Parfumes Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226) and that the Disputed Domain Name was registered with “the fact that the term “RACV” has no obvious independent generic meaning, leads to the conclusion that the Disputed Domain Name was chosen with the Complainant’s trade mark in mind” (citing Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181; Blue Cross and Blue Shield Association, Empire HealthChoice Assurance, Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service / Search and Find LLC. / Michigan Insurance Associates / 4 Letter Domains Inc. / New York Health Ins., WIPO Case No. D2010-1699).
On the issue of use, the Complainant contends that the Respondents’ use the Disputed Domain Name for a pay-per-click (“PPC”) landing page: a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <racv.com> is typed in, the website to which the Disputed Domain Name resolves proposes sponsored links for services that compete with those of the Complainant including use of the following hyperlinked words “car insurance, roadside assistance, online car insurance, car insurance quote, home insurance, life insurance and personal loan.”
In defense of their registration of the Disputed Domain Name, the Respondents’ arguments are set out in the Response received by email to the Center on December 7, 2011. These are set out in summary below.
On the issue of confusing similarity to a trademark in which the Complainant has rights, the Respondents contend that:
(i) the acronym RACV “can have an endless number of meanings, for example the Respondent registered the domain for use in its camper hire business , Rent A Camper Van”;
(ii) the website does not use or incorporate the logo or colour scheme of the Complainant’s website;
(iii) the Complainant’s brand and name is known in a limited part of Australia, namely the State of Victoria, and it is contractually restricted from promoting itself outside of the State of Victoria;
(iv) consumers are aware that the Complainant operates from the domain name <racv.com.au> so there would be no confusion.
On the issue of rights and legitimate interests, the Respondents contend that:
(i) they operate a business or businesses comprising a number of “very successful” websites including “www.carrental.com.au”, “www.camperhire.com.au” and “www.getaboutoz.com.au” “through affiliate relationships it has with rental companies which offer car and camper vans.”
(ii) it had made demonstrable preparations to use the Disputed Domain Name prior to being first put on notice of the dispute on November 14, 2011 (citing IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420 and Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792). These include:
(a) selection of the Disputed Domain Name on the basis that it is an acronym for the words “Rent A Camper Van”;
(b) in or about July 2011 engaging the services of a software company to develop the relevant webpage; and
(c) on July 19, 2011, entering into an affiliate agreement with a van hire business.
The Respondents also deny that the registration and use of the Disputed Domain Name were, and currently are, in bad faith, pursuant to paragraph 4(a)(iii) or 4(b) of the Policy. On the issue of registration, the Respondents contend that registering the Disputed Domain Name “as an acronym representing its legitimate camper van hire business” is a bona fide registration. The Respondents submit that they are not preventing the Complainant from reflecting its mark in a corresponding domain name within the meaning of paragraph 4(b)(ii) of the Policy as the Complainant owns “a number of other domain names” and they have only registered one. Finally, the Respondents assert that the Disputed Domain Name was parked only while they made demonstrable preparations to use it.
8. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark RACV. The Panel finds that the Complainant has rights in the mark RACV in the Respondent’s relevant jurisdiction, Australia, pursuant to Australian Trade Mark Registration No. 812796 which protects the trade mark in all States and Territories of the Commonwealth of Australia.
The Complainant having been known by the acronym RACV since 1916 also has common law trademark rights in that acronym which it is entitled to rely upon for its remedy under the Policy, and this Panel so finds (see Jones Apparel Group Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041). The Respondents’ contention that the acronym RACV “can have an endless number of meanings, for example the Respondent registered the domain for use in its camper hire business, Rent A Camper Van” is therefore, even if it were accepted, quite beside the point as the Complainant’s rights in the use of the word “racv” as a trade mark predate any claimed by the Respondents. In any event, the date of the registration of trademark rights is irrelevant in finding rights in a trademark for the purpose of the Policy.
The Respondents also argue that the Complainant’s brand and name is known in a limited part of Australia, namely the State of Victoria, and it is contractually restricted from promoting itself outside of the State of Victoria. However, the Complainant has been operating in the State of Victoria, Australia, as a motoring association comparable to the Automobile Association (AA) and the Royal Automobile Club (RAC) in the United Kingdom of Great Britain and Northern Ireland and the American Automobile Association (AAA) in the United States of America and under the name Royal Automobile Club of Victoria (RACV) since 1916. The registered trade mark covers Australia, not just the State of Victoria. There is uncontested evidence that it has over 30,000 members and 2 million users of its motoring, financial, insurance, and tourism products and services and its resorts.
Having regard to the nature and scope of the organisation, the Panel therefore also finds that, for the purpose of the Policy, the mark RACV is well-known throughout Australia.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the RACV trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the top level domain suffix “.com”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made in this case is with the second level portion of the Disputed Domain Name “racv”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, and there is no additional element; it is identical for the purpose of paragraph 4(a)(i) of the Policy.
There is no evidence to support the Respondents’ contention that consumers are aware that the Complainant operates from the domain name <racv.com.au> “so there can (be) no confusion”. This Panel is therefore not in a position to accept the assertion as fact or fiction, but finds the lack of evidence fatal to this particular submission.
The Respondents also contend that the website does not use or incorporate the logo or colour scheme of the Complainant’s website. In considering the first element of paragraph 4(a) of the Policy, the contents of a website which is the direct manifestation of the potential uses of the domain name, and the respondent’s intentions are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. This Panel finds that the Disputed Domain Name is therefore identical to the RACV trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it 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 Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 2.0, paragraph 2.1)
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name because the Respondents have no trademark rights in or license to use the RACV mark. The Response neither confirms nor denies whether the Respondents are authorized or licensed to use the RACV mark and there is no evidence that the Respondents are commonly known by the Disputed Domain Name. The issue is not whether the Respondent has any rights or legitimate interests in the trademark RACV. Rather, the issue is whether the Respondents have any rights or legitimate interests in the Disputed Domain Name, for example by making a bona fide offering of a product or service called “racv”.
The Complainant provided evidence (in the form of screen capture, Annexure 8 of the Complaint) that typing in the Disputed Domain Name diverts traffic to a PPC website for finance, car insurance, travel and other products and services similar to and in competition with those offered by the Complainant and even includes a link comprising the words “roadside assistance”. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a search engine composed of sponsored links in connection with the Complainant’s mark and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark RACV. In Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, the panel found that using the domain name to mislead users by diverting them to a search engine “does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”.
The Response does not appear to allege the existence of any rights or legitimate interests as per paragraphs 4(c)(ii) or (iii) of the Policy. Plainly, the Respondents’ names are Whois Privacy Services Pty Ltd (Customer ID 22313818946312) and Domain Manager, rather than RACV. The Respondents neither contend that they are commonly known by the Disputed Domain Name, or alternatively, that they are making a legitimate noncommercial or fair use of the domain name. However, the Response contains a claim for rights in the Disputed Domain Name under paragraph 4(c)(i) of the Policy.
The Respondents submit that the word RACV is an acronym for the words “Rent A Camper Van”. This submission is directed to the issue of whether the use is in connection with “a bona fide offering of goods or services”. The Respondents seek to extend to acronyms the proposition that where a respondent registers a domain name consisting of “dictionary” terms, because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest (see, for example, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304). It is well established that a respondent may have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even in some cases where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2). The acronym selected by the Respondents is not suggestive of the purpose of the organization, such as CARE, or of a descriptive word, such as MAD. Nor does the Disputed Domain Name comprise a series of descriptive words. Rather, the acronym chosen corresponds directly to the Complainant’s well-known mark.
The Respondents submit that they operate a business or businesses comprising a number of websites including “www.carrental.com.au”, “www.camperhire.com.au” and “www.getaboutoz.com.au” “through affiliate relationships they have with rental companies which offer car and camper vans” and that, in pursuance of that business, they have made “demonstrable preparations to use” (within the meaning of Paragraph 4(c)(i) of the Policy) the Disputed Domain Name prior to being first put on notice of the dispute on November 14, 2011. The Respondents submit that on or about July 2011 they engaged the services of a software company to develop the relevant webpage. In support of this submission, the Respondents have provided a copy of four invoices (Annexure 5 of the Response), the first dated October 11, 2011, each addressed by the relevant software company to a company called “We Love Car Rentals Pty Ltd”. A search of Australian Securities and Investments Commission records indicates that the addressee company’s Australian Company Number (ACN) is ACN 135 646 089. This company is not identified or recognized as the party or parties to whom the Disputed Domain Name is registered or a Respondent to this proceeding. The evidence is uninformative because the company We Love Car Rentals Pty Ltd, ACN 135 646 089, is a separate legal entity to the Respondents. This Panel finds that copies of invoices addressed to a third party do not assist the Respondents in this case. A copy of the proposed artwork being prepared by the software company putatively to replace the PPC landing page was provided by Respondents (Annexure 7 of the Response). Even if that artwork had resolved from the Disputed Domain Name, because it shows the letters “R.A.C.V.” prominently displayed in the context of motor vehicles, this Panel finds that this would still be illegitimate use.
The Respondents further stated that on July 19, 2011, they entered into an affiliate agreement with a van hire business. In support of that submission, which again goes to the issue of “demonstrable preparations”, the Respondents have provided a copy of an Agent Registration Form made out by the respective van hire business to We Love Car Rentals Pty Ltd, ACN 135 646 089 (Annexure 6 of the Response). As this too is addressed to a third party, this Panel finds that this evidence does not assist the Respondents in this case.
In any event, paragraph 4(c)(i) of the Policy requires any “demonstrable preparations” prior to notification of the dispute to have been “in connection with a bona fide offering of goods or services”. The overwhelming evidence is that at the time of, or before the filing of the Complaint, typing in the Disputed Domain Name diverted traffic to a PPC website for insurance, financial, travel and other products and services typically offered in connection with a modern motorists association including a link using the words “roadside assistance”. The Respondents’ admission of this is set out in their Response, stating at paragraph 5.C (e) as follows: “while it was making preparations to launch its website , the domain was parked which caused the website contained in Annexure 8 of the Complaint (a PPC landing page) to resolve from the disputed domain name”. In Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313, the panel found that “the Respondent is making a non legitimate commercial use of the disputed domain names that misleadingly diverts consumers […for the reason…] because the Respondent was using the infringing domain name to sell [a competitor product], it could be inferred that the Respondent was opportunistically using Complainant’s mark in order to attract Internet users to its website”. Currently, the website appears to be a PPC website containing links and advertisements in connection with roadside assistance, insurances, loans and travel. In this Panel’s view, such use reinforces the illegitimate use of the PPC parking page prior to the issue of the Complaint (see Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006). A case cited by the Respondents, Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792, treats demonstrable preparations to use as breaking a period of passive holding that might otherwise indicate a lack of bona fide use. In the present case, this Panel finds that deriving revenue from a PPC landing page is not passive holding and that the use of the Disputed Domain Name to divert traffic to a PPC webpage is not bona fide use.
On any objective view, the Respondents are not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Nor, alternatively, are the Respondents commonly known by the Disputed Domain Name.
This Panel finds that the Respondents are making an illegitimate commercial use of the Disputed Domain Name by having chosen an acronym that corresponds directly to the Complainant’s mark. By misleadingly diverting consumers, it can be inferred that the Respondents are opportunistically using the Complainant’s well-known mark in order to divert Internet traffic to their PPC web page.
The Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, [(relevantly)]:
(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product [...].”
The evidence supports the Complainant’s contention that the Respondents registered and have used the Disputed Domain Name in bad faith. The onus is on the Respondents to make the appropriate enquiries to ensure that the registration of the Disputed Domain Name does not infringe or violate the third party rights. The Response makes no mention of the appropriate enquiries having been made. Paragraph 2 of the Policy clearly states: “It is your [the domain name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The Respondents’ apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, for example by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oreal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448).
The trademark RACV is so widely known in Australia for roadside assistance, financial, insurance, travel services and resorts that it is inconceivable that the Respondents might have registered a domain name similar to this mark without knowing of it. In this Panel’s view, the Respondents’ submission that the Disputed Domain Name was registered as an acronym without making reference to their prior knowledge of the Complainant’s trademark rights, if any, warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel found that a claim that the domain name at issue, <telstra.org>, could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible). The proposed artwork to replace the PPC landing page provided by Respondents (Annexure 7 of the Response) shows the letters “R.A.C.V.” prominently displayed in the context of motor vehicles and it beggars belief that the Respondents are not fully aware of the significance of the acronym.
Further, as here a gap of ten years between registration of the Complainant’s trademarks and the Respondents’ registration of the disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondents registered the Disputed Domain Name twelve years after the Complainant established trademark rights in the RACV mark in 1999 and ninety five years after the Complainant commenced using the mark at common law.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondents’ use of a privacy shield. The Disputed Domain Name resolves to a webpage offering competitor products and services to those offered by the Complainant rather than a website critical of, or satirising, the Complainant’s business which may warrant the use of a privacy service as protection from retribution. In the circumstances it seems reasonable to infer that the main purpose for which the Respondents have used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondents or test the submission that Respondents have “only registered one domain name” (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). This Panel also draws an adverse inference and makes a finding of bad faith as against Whois Privacy Services Pty Ltd for permitting the record of a registrant (“Domain Manager”) by reference to a job title, as obviously a job title can have no legal personality.
Two conclusions can therefore be drawn about Respondents from their use of the Disputed Domain Name resolving to PPC landing pages. First, the conduct is classic domain monetization unconnected with any bona fide supply of goods or services. The Respondents’ admission of this use is set out in their Response, stating at paragraph III.5.C.(e) as follows: “while it was making preparations to launch its website , the domain was parked which caused the website contained in Annexure 8 of the Complaint to resolve from the disputed domain name”. Second, in this Panel’s view, it is in breach of the “Fabulous.com Domain Registration Agreement” for breach of the warranty (at paragraph 10.1): “You warrant that the registration or renewal of the Registered Name is made in good faith and that, to the best of your knowledge and belief, neither the registration nor renewal of the Registered Name nor the manner in which it is or shall be used, either directly or indirectly, infringes the intellectual property rights or other legal rights of any third party. A breach of this warranty shall constitute a material breach of this Registration Agreement.”
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
This Panel finds that the Respondents have taken the Complainant’s trademark RACV and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC landing page for commercial gain. Therefore, the Disputed Domain Name has been registered and used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <racv.com> be transferred to the Complainant.
Dated: January 18, 2012
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office (i.e. Australia).