WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A&G Insurance Services Pty Ltd v. AAA Budget Greenslips Pty Ltd
Case No. DAU2012-0014
1. The Parties
The Complainant is A&G Insurance Services Pty Ltd of Toowong, Queensland, Australia, represented internally.
The Respondent is AAA Budget Greenslips Pty Ltd of Narellan, New South Wales, Australia.
2. The Domain Name and Registrar
The Disputed Domain Name <budgetdirectcarinsurance.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 May 1, 2012. On May 1, 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 for the Disputed Domain Name.
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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Response was filed with the Center on May 15, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on June 27, 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.
4. Factual Background
The Complainant promotes and sells car, home and other insurance and related products in Australia under the BUDGET DIRECT trademark through its call centre and website at <budgetdirect.com.au>. The Complainant registered its separate BUDGET DIRECT word mark (Registration Number 1109501) and figurative marks as trade marks in Australia in 2006, and also owns various other figurative marks incorporating the BUDGET DIRECT mark dating from 1999. The Complainant has also registered “Budget Direct” as a business name in all Australian states and territories.
The Respondent provides insurance products but notes that its current focus is its “Budgetgreenslips” business through which it offers compulsory third-party motor insurance. The Respondent owns no relevant trade mark rights but notes that it has a number of trading names including “Budget Truck Insurance”, “Budget Boat Insurance”, “Budget Greenslips” and “Budget Water Carting” and that it has websites for these trading names at the following domain names: <budgetgreenslips.com.au>, <budgettruckinsurance.com.au> and <budgetboatinsurance.com.au>. The Respondent registered the Disputed Domain Name in July 2011.
5. Parties’ Contentions
The Complainant submits that it owns, in particular, a registered trade mark for its BUDGET DIRECT word mark under Registration Number 1109501, dating from 2006, and in addition owns rights in a range of other trade marks, as well as “Budget Direct” business name, all used in relation to the provision of motor insurance and other sorts of insurance in Australia. The Complainant has provided evidence that it has made very significant use of its mark since commencing business in at least 2001. In particular, in the car insurance industry it has sold 900,000 policies and has undertaken considerable advertising of its brand, currently spending AUD 10 million per year, and has driven considerable traffic to its website at <budgetdirect.com.au>, and as a consequence has sold more than 300,000 policies through that website.
It says that the Disputed Domain Name is confusingly similar to its BUDGET DIRECT marks and “Budget Direct” name on the basis that the generic term “car insurance” when added to the “Budget Direct” name does nothing to distinguish the Disputed Domain Name from the Complainant’s BUDGET DIRECT trade mark and is therefore confusingly similar to it.
Although the Respondent’s company name includes the word “budget”, the Complainant says that it does not include the words “car”, “insurance” or “direct” and the Complainant is not otherwise aware of any other evidence that the Respondent trades under the Disputed Domain Name or is generally known by it. It says that the Disputed Domain Name has to its knowledge only resolved to a place holder website and it is not aware that the Respondent has made any bona fide preparations to use the Disputed Domain Name or has otherwise made a legitimate noncommercial or fair use of the Disputed Domain Name.
In view of the Respondent’s registration of the Disputed Domain Name in 2011, its use to direct Internet users to the Respondent’s place holder website, the considerable goodwill and reputation attaching to the Complainant’s “Budget Direct” brand, mark and business names by that date and the Respondent’s lack of legitimate purpose or bona fide use for the Disputed Domain Name, the Complainant submits that the Respondent has purposefully registered and sought to use its mark in the Disputed Domain Name in bad faith, and that this use could never be legitimate, and amounts to evidence of registration and use in bad faith for the purposes of paragraph 4 (b) (iv) of the Policy.
In the alternative the Complainant submits that the Respondent registered the Disputed Domain Name for the purpose of either making a profit by selling the Disputed Domain Name to the Complainant or disrupting the Complainant’s business activities.
The Respondent submits that providing compulsory third-party motor insurance under the “Budget Greenslips” name is its core business, but that it intends diversifying into other business activities and that this is why it has registered the range of business names listed above. It says that all of its company names and trading names are owned by the same director.
The Respondent says also that it owns the company name “Budget Direct Car Insurance and CTP Pty Ltd” and argues that it is therefore entitled to use the “Budget Direct” name throughout Australia. The Respondent appears also to suggest that no one has exclusive rights to use the word “budget” as a name or otherwise in Australia. It also submits that it has been in business much longer than the Complainant and that the Complainant is fighting a rearguard action because of its omission to register the Disputed Domain Name first. Lastly, it suggests that it would be prepared to sell the Disputed Domain Name to the Complainant.
6. Discussion and Findings
The parties both filed various supplemental submissions prior to the formal appointment of the Panel and the Panel exercises its discretion to accept these filings under its general powers in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns an Australian trade mark registration for its BUDGET DIRECT word mark under Registration Number 1109501 dating from 2006. The Panel finds that the generic expression “car insurance” is commonly used and its addition does not distinguish the Disputed Domain Name from the Complainant’s BUDGET DIRECT mark. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BUDGET DIRECT mark and that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent has submitted that providing compulsory third party motor insurance under the “Budget Greenslips” name is its core business, but that it intends diversifying into other business activities under business names including, “Budget Truck Insurance”, “Budget Boat Insurance”, “Budget Greenslips” and “Budget Water Carting” and that this is why it has registered the range of business names and corresponding domain names.
The Respondent has not provided evidence of a bona fide business or of arrangements preliminary to starting such a business under the “Budget Direct Car Insurance” name. Its’ sole explanation for registration of the Disputed Domain Name in 2011, some 5 years after the Complainant’s trade mark registration and many more years after the Complainant first commenced trading under the BUDGET DIRECT mark, is that it also registered the company name “Budget Direct Car Insurance and CTP Pty Limited” in June 2011, and that the Disputed Domain name corresponds to this company name. There is no evidence before the Panel of bona fide business activity under this company name or of pre-existing activity by the Respondent under the “Budget Direct” name, which might give rise to some degree of co-existing rights to the name.
While the Panel accepts that the Respondent has recently traded under the “Budget Greenslips” name and may well intend to extend its franchise under the “Budget” name to other areas of the insurance business, it does not accept that the Respondent has acted legitimately or has accrued rights in the “Budget Direct” name or mark for the purposes of this element of the Policy merely by choosing to register the corresponding corporate name Budget Direct Car Insurance and CTP Pty Limited in June 2011. This is more particularly the case in light of the Complainant’s very extensive advertising and use of its BUDGET DIRECT name and mark in the motor vehicle insurance industry in Australia by this date, and the Respondent’s use of the Disputed Domain Name to re-direct Internet users to its own website as described under Section C, below. The Respondent has not attempted to suggest that it was unaware of the Complainant or of its BUDGET DIRECT mark, nor has it provided any kind of credible explanation for its registration of the Disputed Domain name and supporting corporate name in mid-2011. The Panel infers as set out below that the Respondent was indeed well aware of its competitor’s mark and illegitimately sought to take advantage of the Complainant’s goodwill by registering a corporate name and corresponding domain name incorporating the Complainant’s mark. As a result the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complaint succeeds under the second element of the Policy.
C. Registered or Subsequently Used in Bad Faith
The Respondent, already having its business established under the “Budget Greenslips” name, only registered the corporate name “Budget Direct Car Insurance and CTP Pty Limited” and the corresponding Disputed Domain Name in July 2011. By this time the Complainant had made a very extensive use of its registered BUDGET DIRECT word and figurative marks in the motor vehicle insurance industry in Australia over a period of many years. The Respondent has not attempted to suggest that it was not aware of the Complainant’s business or BUDGET DIRECT mark. In the circumstances that the parties are competitors, at least in some aspects of the motor vehicle insurance business and of the considerable reputation developed in connection with the Complainant’s mark, the Panel infers that the Respondent must have been well aware of the Complainant’s rights but sought in any event to register a corporate name and the Disputed Domain Name both of which incorporated the Complainant’s BUDGET DIRECT mark.
The subsequent use of the Disputed Domain Name, not for a separate business but rather to re-direct Internet users automatically to the Respondent’s own website for its “Budget Greenslips” business is indicative of the Respondent’s intention to use the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation, of its web site in terms of paragraph 4(b)iv of the Policy. The fact that even if re-direction to this page were subsequently removed, it does not alter the Panel’s view in this regard.
Although it is only necessary under the Policy to find registration or use in bad faith in order to satisfy the third element, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith and also subsequently used it in bad faith. The Complaint therefore succeeds under the third element 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 <budgetdirectcarinsurance.com.au> be transferred to the Complainant.
Dated: July 8, 2012