WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A&G Insurance Services Pty Ltd v. Tiana Smith
Case No. DAU2012-0013
1. The Parties
The Complainant is A&G Insurance Services Pty Ltd of Toowong, Queensland, Australia, internally represented.
The Respondent is Tiana Smith of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <budgetdirectinsurance.com.au> is registered with Crazy Domains Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On April 30, 2012, and May 2, 2012 the Center transmitted by email to Crazy Domains Pty Ltd a request for registrar verification in connection with the disputed domain name. On May 3, 2012, Crazy Domains 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 4, 2012.
The Center verified that the Complaint together with the amendment to 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. An email communication was received by the Center from a third party on May 11, 14, and 30, 2012. An email communication from a different third party was received by the Center on May 30, 2012 and June 5, 2012. The Complainant submitted a Supplemental Filing on May 10 and 16, 2012.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on June 4, 2012. 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.
Upon request to the Center by a third party purportedly representing the Respondent, the Panel issued Administrative Panel Procedural Order No. 1 (the “Order”). Pursuant to the Order, the Center transmitted to the third party a copy of the Complaint, all annexures, and all of the Complainant’s supplemental filings. Further, the Respondent was granted leave to file a request to submit a Response past the Response due date, and to submit the Response and any annexes thereto. The Complainant was granted leave to file evidence in Reply to any of the Respondent’s filings. Nothing was received pursuant to that Order from either the Respondent, its purported representative, or the Complainant.
4. Factual Background
The disputed domain name was created on March 26, 2011.
The Complainant is an Australian corporation. It is a wholly owned subsidiary of Australian Insurance Holdings Pty Ltd. The Complainant and its associated companies have offered a broad range of insurance under its registered business name and trademark BUDGET DIRECT since as early as September 2000. It is the owner of business name registrations in all states of Australia and the Australian Capital Territory. It also owns and/or is the licensee of Australian trademark registrations consisting of or including the words “BUDGET DIRECT” dating from 1999. It has sold over 900,000 insurance policies under its BUDGET DIRECT brand and currently spends over “$10 million” on marketing and promotion of the brand on radio, television, online and other media. Its website at “www.budgetdirect.com.au” is highly rated and it has received many industry and media awards.
The disputed domain name directs to a parking page operated by the registrar for the disputed domain name.
Little information is available regarding the Respondent save that it is a sole trader and the holder of an Australian Business Number (ABN) for the trading names I-Marketing and EC-Marketing and is associated with organizations named Internet Business Solutions and Z-gen Marketing Pty Ltd.
On March 2, 2012, the Complainant sent a letter of demand to the Respondent asserting its rights and requesting transfer of the disputed domain name. The Respondent replied on March 14, 2012 asserting that she was unfamiliar with the Budget Direct business and that she intended to use the disputed domain name for an insurance comparison website but would be prepared to transfer it in return for payment of her costs. The Complainant subsequently received an email sent on behalf of the Respondent offering to sell the disputed domain name for “$12,500”. Invoices for that amount, purporting to be for the costs incurred were attached. The Complainant formed the view that the invoices were not genuine and wrote to the Respondent expressing its concerns. On April 11, 2012 the Respondent offered to sell the disputed domain name for “$8,250”, an amount which the Respondent alleged it had disbursed to a company called Airarena Pty Ltd. The Complainant's investigations lead it to believe that the Tax Invoice attached to the letter was not genuine for reasons including that the ABN quoted on the invoice was that of the Respondent's company Z-gen Marketing Pty Ltd.
5. Parties’ Contentions
The Complainant contends that:
- it has rights in the Australian registered trademark and business name BUDGET DIRECT;
- the disputed domain name is confusingly similar to the Complainant’s name and trademarks; the addition of the word “insurance” does nothing to distinguish the disputed domain name from the trademark, but rather, tends to add to the likelihood of confusion;
- the Respondent has no rights or legitimate interests in the disputed domain name and has not demonstrated any of the circumstances set out in paragraph 4(c) of the Policy, or any other circumstance, upon which it could claim such rights or legitimate interests;
- the Complainant’s name and trademark has a long established and substantial reputation in the Australian insurance market;
- there is a high probability that the Respondent was aware of that reputation when it registered the disputed domain name;
- simple, free searches of Google, IP Australia or ASIC databases would have revealed the Complainant’s rights in its BUDGET DIRECT name and trademark and accordingly the Respondent could not reasonably warrant in her registration application that the disputed domain name would not violate the rights of another party;
- the Respondent’s offers to sell the disputed domain name for sums substantially in excess of its out-of-pocket expenses indicate that it registered the disputed domain name primarily for that purpose;
- alternatively the Respondent registered the disputed domain name to confuse the public and divert traffic from the Complainant’s website and disrupt the Complainant’s business.
The Respondent has not made any substantive response to the Complaint and has not contested any of the Complainant’s evidence or submissions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly demonstrated and substantiated its rights in the name and trademark BUDGET DIRECT. The disputed domain name wholly contains that name and trademark. The addition to it of the word “insurance”, which describes the Complainant’s industry does not distinguish the disputed domain name but rather, adds to the likelihood of confusion (see for example Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. 2003-0251).
The Panel therefore finds that the disputed domain name is confusingly similar to a name and trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the name and trademark BIUDGET DIRECT in the disputed domain name. The Respondent has not demonstrated any basis upon which it might claim rights or legitimate interests in the disputed domain name nor is any basis otherwise apparent. The Respondent has not used or demonstrated preparations for use of the disputed domain name in the bona fide offering of goods or services nor has it disputed the evidence adduced by the Complainant.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The evidence provided by the Complainant of its widespread and substantial use and promotion of its BUDGET DIRECT name and trademark make it highly unlikely that the Respondent was not aware of the Complainant’s rights and reputation in that name and mark. The inclusion in the disputed domain name of that name and mark with a word describing the Complainant’s industry, in the opinion of the Panel, puts beyond reasonable doubt that the Respondent was aware of the Complainant’s rights and reputation and that the Respondent proceeded to register the disputed domain name in order to profit from it either by selling it to the Complainant or using it to attract for commercial gain, users to a website by creating confusion with the Complainant’s name and mark. That is sufficient to establish ground 4(a)(iii) of the Policy, but the Panel notes that the evidence adduced by the Complainant shows also that the disputed domain name has subsequently been used in bad faith. The Respondent attempted, in response to the Complainant’s letter of demand, to extract from the Complainant a substantial sum of money and produced in support of its claim, invoices, which the Complainant believed to be bogus. The Panel has inspected these invoices, annexed to the Complaint, and agrees with the Complainant’s conclusion. In the Panel’s view the Respondent has attempted to use the disputed domain name as an instrument of fraud.
The Panel therefore finds that the disputed domain name was registered and has subsequently been used in bad faith.
For the foregoing reasons and the Complainant’s showing that it satisfies the eligibility requirements for the .au domain, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <budgetdirectinsurance.com.au> be transferred to the Complainant.
Desmond J. Ryan AM
Dated: June 27, 2012